Ex Parte Du Breuil et al

Patent Trial and Appeal Board

Oct 31, 2014

11608488 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS L. DU BREUIL and THOMAS F. KISTER
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Appeal 2012-005155
Application 11/608,488
Technology Center 2400
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Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
MINN CHUNG, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–4, 6–11, 13 and 15–20.1 Claims 5, 12, and 14 are canceled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to a video processing apparatus and method
for managing operations based on telephony signals. Abst. Claim 1,
reproduced below, is representative of the claimed subject matter with the
disputed limitation emphasized in italics:
1. A digital video recording device, comprising:
a processor configured to receive multimedia content;
a memory element coupled to the processor for storing at
least a portion of the multimedia content received by the
processor,
wherein the processor is configured to perform at least
one of a plurality of digital video recording operations on the
received multimedia content in response to a telephony device
associated with the digital video recording device receiving an
incoming telephone call including caller ID signals;
a first display device coupled to the processor for
displaying the received multimedia content received; and
a second display device coupled to the processor for
displaying the received multimedia content,
wherein the processor is configured to pause the
playback of multimedia content displayed on the first display
device in response to the incoming telephone call being
answered but not to pause the playback of multimedia content

1 Appellants erroneously include canceled claims 12 and 14 among those
pending and on appeal (App. Br. 2–3) and erroneously include canceled
claim 12 among the grounds of rejection to be reviewed on appeal (App. Br.
5).
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displayed on the second display device in response to the
incoming telephone call being answered.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee US 5,917,892 June 29, 1999
Allen
Cool
Ellis
Groff
Asmussen
US 2003/0041332 A1
US 2004/0177378 A1
US 2005/0251827 A1
US 2006/0031904 A1
US 7,565,680 B1
Feb. 27, 2003
Sept. 9, 2004
Nov. 10, 2005
Feb. 9, 2006
July 21, 2009 (filed June 30, 2000)

REJECTIONS2
The Examiner made the following rejections:
Claims 1–4 and 7–11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen, Ellis, and Asmussen. Ans. 4–10.
Claims 6, 15, 16, and 18–20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Allen, Ellis, Asmussen, and Groff. Ans. 10–12.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen, Ellis, Asmussen, and Cool. Ans. 12–13.

2 Appellants collectively argue the rejection of independent claims 1 and 9
under 35 U.S.C. § 103(a). Separate patentability is not argued for claims 2–
4, 6–8, 10, 11, 13 and 15–20. “A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(2010) (last sentence). Further,
merely restating with respect to a second claim an argument, previously
presented with respect to a first claim, is not an argument for separate
patentability of the two claims. Therefore, based on Appellants’ arguments,
we decide the appeal of claims 1–4, 6–11, 13 and 15–20 based on claim 1
alone. See 37 C.F.R. § 41.37(c)(1)(vii).

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Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen, Ellis, Asmussen, Groff, and Lee. Ans. 13–14.

APPELLANTS’ CONTENTION
Asmussen’s description of automatically messaging an incoming
telephone so that it cannot be answered, although also not interrupting
programming, does not teach “‘not to pause the playback of multimedia
content displayed on the second display device in response to the incoming
telephone call being answered.’” App. Br. 7–8.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6–9),
the issue presented on appeal is whether the Examiner erred in concluding
the combination of Allen, Ellis, and Asmussen teaches or suggests the
disputed limitation of claim 1.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–14) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 14–18) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellants contend,
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Asmussen does recite an option for setting up “time periods when
calls shall not interrupt programming and shall be automatically
messaged instead” (emphasis added). However, Asmussen fails to
teach Applicant's claimed feature of “not to pause the playback of
multimedia content displayed on the second display device in
response to the incoming telephone call being answered”
(emphasis added).
App. Br. 7–8. The Examiner responds by finding Asmussen provides a user
with an option to turn off automatic program pausing so that the system will
not pause playback of media content in response to a communications or
other triggering event. Ans. 16. The Examiner concludes the combination
of (i) Asmussen’s option to turn off an automatic program pause function
with (ii) Allen’s pausing playback of multimedia content displayed on a
display and (iii) Ellis’s second display teaches or suggests the disputed
limitation. Ans. 5–6, 15–16.
We agree with the Examiner. Appellants indicate the disputed
functionality is disclosed by paragraphs 32–35 of the Specification and
Figure 2 of the drawings. In relevant part, the Specification discloses
In addition to being able to select or determine which incoming
calls will cause the video processing device 10 to pause the playback
of multimedia content, the end user can set or establish which display
devices are to be affected or not affected by incoming calls. For
example, if two display devices are connected to the video processing
device 10, it is possible to configure the processor 22 and/or the video
processing device 10 to pause the playback of multimedia content on
the first display device in response to all or a select group of
telephony signals, but not to pause the playback of multimedia content
on the second display device. Thus, all or a select group of incoming
calls may cause a display device in the end user's recreation room to
pause the playback of multimedia content, while the same incoming
calls (and/or other calls) may not cause a display device in the end
user's bedroom to pause the playback of multimedia content.
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Spec. ¶ 0034. That is, the argued feature simply requires not performing
pausing of playback. Notably there is no disclosure of performing some
action in response to an incoming telephone call being answered such as, for
example, displaying a message notifying a user of a call and an option to
pause playback. All that is required is that nothing happen or, at least, no
pause of the playback of multimedia content displayed on the second device
in response to (i.e., when) the incoming telephone is answered. In effect,
consistent with the Specification, requiring no pause in response to an
incoming call being answered means having no response to an incoming call
being answered, i.e., a requirement of do not respond. Accordingly, under a
broad but reasonable interpretation consistent with the Specification, the
disputed feature of not pausing playback of multimedia content in response
to an event includes and is taught by Asmussen’s option for not interrupting
programming, i.e., turning automatic program pausing off (Asmussen col.
21, ll. 34–42.) Therefore, we further agree with the Examiner in concluding
the entirety of the disputed limitation of not to pause the playback of
multimedia content displayed on the second display device in response to the
incoming telephone call being answered is taught or suggested by the
combination of Allen, Ellis, and Asmussen. Ans. 16.
For the reasons supra, we are unpersuaded of Examiner error.
Accordingly, we sustain the rejections of independent claim 1 and, for the
same reasons, independent claim 9 under 35 U.S.C. § 103(a) over Allen,
Ellis, and Asmussen together with the rejection of dependent claims 2–4, 7,
8, 10, and 11 not separately argued. For the same reasons we further sustain
the rejection of claims 6, 15, 16, and 18–20 under 35 U.S.C. § 103(a) over
Allen, Ellis, Asmussen, and Groff; claim 13 over Allen, Ellis, Asmussen,
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and Cool; and claim 17 over Allen, Ellis, Asmussen, Groff, and Lee, these
dependent claims also not separately argued.

CONCLUSION
The Examiner did not err in concluding the combination of Allen,
Ellis, and Asmussen teaches or suggests the disputed limitation of claim 1.

DECISION
The Examiner’s decision to reject claims 1–4, 6–11, 13 and 15–20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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