Ex Parte Ellis et al

Patent Trial and Appeal Board

Feb 13, 2018

13295026 (P.T.A.B. Feb. 13, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/295,026 11/11/2011 Michael D. Ellis 003597-0084-117 7963
75563 7590
Haley Guiliano LLP
75 Broad Street
Suite 1000
NEW YORK, NY 10004
02/15/2018 EXAMINER
TESFAYE, AKLIL M
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
02/15/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
haleyguiliano_PAIR @ firsttofile. com
HGPatentDocket @ hglaw. com
DocketRequests @ hglaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL D. ELLIS, WILLIAM L. THOMAS,
and THOMAS R. LEMMONS
Appeal 2016-007168
Application 13/295,026
Technology Center 2400
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 330, 332—335, 337—339, 342, and 343, which are all the
claims pending in this application.1 Claims 1—329, 331, 336, 340, and 341
are cancelled. An oral hearing was conducted on February 6, 2018. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We refer herein to the Final Office Action (“Final Act.”), mailed March
25, 2015; the Appeal Brief (“App. Br.”), filed December 7, 2015; the
Examiner’s Answer (“Ans.”), mailed May 18, 2016; and the Reply Brief
(“Reply Br.”), filed July 15, 2016.
Appeal 2016-007168
Application 13/295,026
STATEMENT OF THE CASE
The disclosed and claimed invention on appeal “relates to interactive
television program guide systems, and more particularly, to interactive
television program guide systems that allow users to record programs and
program guide data on a media server.” Spec. 1.
Illustrative independent claim 330 is reproduced below:
330. A method comprising:
receiving a first user input to access a broadcast program;
accessing the broadcast program;
storing the accessed broadcast program on a user equipment;
receiving a second user input after a portion of the broadcast
program is accessed, while the broadcast program is broadcast;
[LI] determining whether the second user input indicates a
request to rewind the broadcast program to a point after the
broadcast program was accessed or to a point prior to when the
broadcast program was accessed',
[L2] when it is determined that the second user input indicates a
request to rewind the broadcast program to a point after the
broadcast program was accessed, retrieving the broadcast
program stored on the user equipment; and
[L3] when it is determined that the second user input indicates a
request to rewind the broadcast program to a point prior to
when the broadcast program was accessed, retrieving a version
of the broadcast program that is stored on a server.
(Contested limitations LI, L2, and L3 emphasized in bold and italics).
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Application 13/295,026
Rejections
A. Claims 330, 332—335, and 337—339 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Girard et al. (US 5,751,282, May 12, 1998) (hereinafter
“Girard”), in view of O’Connor (US 6,480,667 Bl, Nov. 12, 2002).
(Final Act. 6).
B. Claims 342 and 343 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Girard,
O’Connor, and Baker et al. (US 5,583,561, Dec. 10, 1996)
(hereinafter “Baker”). (Final Act. 10).
ANALYSIS
In reaching this decision, we consider all the evidence presented and
all arguments actually made by Appellants. We focus our analysis on the
contested “determining” step or act of independent method claim 330
(limitation LI), which we find is dispositive to this appeal. Independent
“system” claim 335 recites similar functional language having
commensurate scope.
Rejection A—Independent Claim 330
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err in
finding the cited Girard and O’Connor references collectively teach or
suggest contested limitation LI:
determining whether the second user input indicates a request
to rewind the broadcast program to a point after the broadcast
program was accessed or to a point prior to when the
broadcast program was accessed[,]
within the meaning of independent claim 330? (Emphasis added).
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Appeal 2016-007168
Application 13/295,026
Rejection A — Independent Claim 335
Independent system claim 335 similarly recites:
processing circuitry configured to:
determine whether the second user input indicates a request to
rewind the broadcast program to a point after the broadcast
program was accessed or to a point prior to when the
broadcast program was accessed;
Claim Construction
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Independent claim 330 is exemplary of the
unique issues that are presented by a method claim that recites conditional
steps or acts, i.e., steps or acts that are not required to be performed within
the scope of the claim unless and until the recited condition precedent is
satisfied. Here, the recited condition precedents further involve two
temporal conditions (“when it is determined” . . . “after” or “prior to”),
which further depend upon the outcome of a preceding recited step or act of
“determining.” (See method independent claim 330).
As an initial matter of claim construction, we conclude the contested
dispositive “determining” step or act of independent method claim 330 is
positively recited as being unconditionally performed within the scope of
the claim.2 To the extent the two recited “when it is determined” steps or
2 We note the alternative “or” language recited in the “determining” step or
act of method claim 335 (“to a point after” ... or to a point prior”)
(emphasis added). When a claim covers several alternatives (e.g., using
“or” language), the claim may be unpatentable if any of the alternatives
within the scope of the claim are taught by the prior art. See Brown v. 3M,
265 F.3d 1349, 1351 (Fed. Cir. 2001).
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Application 13/295,026
acts of method claim 330 are conditionally performed in a mutually
exclusive manner (or never performed) as a result of the outcome of the
claimed “determining” step, we find the guidance of Ex parte Schulhauser,
No. 2013-007847, 2016 WL 6277792 at *4 (PTAB April 28, 2016)
(precedential) is inapplicable here, because we find the contested,
unconditionally performed “determining” step is dispositive of this appeal,
for the reasons discussed infra?
We emphasize that if the recited “second user input indicates a
request to rewind the broadcast program” (and not some other type of user
input, such as a request to fast-forward or pause), then both possibilities of
the temporal condition precedent (“after” and “prior to”) are covered
within the scope of the claim, as pertaining to the two conditional “when it is
determined” steps or acts of method claim 330.3 4
Nor do we apply Schulhaser to independent system (apparatus) claim
335, which is not a method or a means-plus-function claim, these being the
two specific types of claims addressed within the limited holding of
3 See also the commensurate “determine” function, as recited in independent
“system” independent claim 335.
4 We particularly note if the second user input indicates any other type of
input that is not a request to rewind the broadcast, then neither of the
“when it is determined” steps or acts is reached. Nor is method claim 330
limited in terms of who or what performs the steps or acts of the method.
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Schulhauser.5 6
Appellants contest the aforementioned “determining” limitation LI
in both the Appeal Brief (8—11), and the Reply Brief (3—4). Appellants
contend, inter alia:
The Examiner has failed to present a prima facie case of
obviousness in rejecting independent claims 330 and 335 at least
because the Examiner has not identified any teaching in
Girard or O'Connor of a determination of whether a user
input indicates a request to rewind a broadcast program to a
point before or after a time the broadcast program was
accessed.
(App. Br. 8) (emphasis added).
Appellants further contend:
Girard discloses the simple proposition that, if a user wishes to
access a portion of a program that is earlier than the presently
5 See Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4 (PTAB April
28, 2016) (precedential) (holding “[t]he Examiner did not need to present
evidence of the obviousness of the remaining method steps of claim 1 that
are not required to be performed under a broadest reasonable interpretation
of the claim . . . see also Ex parte Katz, No. 2010-006083, 2011 WL
514314, at *A-5 (BPAI Jan. 27, 2011).
6 See also Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court’s interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); accord Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
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broadcast portion of the program, the user will do so by receiving
a video stream from Girard’s head end. This is without regard
to whether the user wishes to access a point of a program that
is after the broadcast program was accessed, or prior to the
point the program was accessed. Thus, Girard certainly does
not disclose the claimed “determining” element at least because
Girard does not, and has no need to, determine whether a user
is rewinding to a point that is before or after a program was
accessed: whatever the case, the user will receive a video
stream from Girard's head end. And for the same reason,
Girard similarly does not disclose conditionally retrieving the
broadcast program from user equipment, as is claimed.
O’Connor does nothing to remedy this deficiency in
Girard’s supposedly pertinent disclosure: O’Connor, like
Girard, is agnostic as to when a program was accessed, and
simply discloses a system that allows a user to rewind a
program without interrupting a recording process. Thus, it is
no surprise that there is no teaching or suggestion in either
reference to make the claimed determination, as there is no
need, or even utility, in either reference, to have a decision
point based around when a broadcast program was accessed,
as is claimed.
(App. Br. 10) (emphasis added).
The Examiner disagrees (Ans. 3—4), and finds Girard teaches:
rewinding a video data stream stored in a storage at a server
and playback [of] the video data stream from any point in the
video stream based on the user input (see col. 7, lines 5-25 for
disclosing retrieving video data stream directly from digital
storage and the viewer can manipulate the video data stream as
desired in a manner similar to controlling conventional VCR
systems and scan the stored video segment). In addition, Girard
discloses determining whether a user input indicates a
request to playback past program or current program (see
fig. 6-8 and col. 5, lines 56- 67 and col. 6, lines 1-7, 34-68, col.
7, lines 1-25 for disclosing when the viewer selects a past
program, the head end server retrieves a stored video data
stream of the selected past program and transmits it to the set-
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top box and when the viewer selects a future program, the head
end server retrieves a stored video preview clip of the future
program and transmits it to the set-top box). (Emphasis added).
Turning to the secondary O’Connor reference, the Examiner finds
O’Connor teaches (Ans. 4—5):
[A] method of providing a time-shifted video stream received
and recorded to a storage unit (see abstract). O’Connor further
discloses a portion of the video stream is retrieved from the
storage unit and provided at an output while the video stream
continues to be recorded (see abstract and fig. 2). O’Connor
further discloses storing the accessed broadcast program on a
user equipment and retrieving the broadcast program stored on
the user equipment based on user input (see col. 5, lines 9-35 for
teaching fast forwarding (or rewinding) through the time-shifted
video stream and an image frame from the video stream can be
retrieved from the storage unit and when playback of the time-
shifted video stream catches up to the point at which the
incoming video stream is being recorded, the record and
playback system 100 may display the incoming video stream
directly from incoming video stream without retrieving the video
stream from the storage unit).
Regarding the combined teachings and suggestions of Girard and
O’Connor, the Examiner finds (Ans. 4—5):
Therefore, the combination of Girard and O’Connor discloses
determining whether a second user input indicates a request to
rewind to a point after a broadcast program was accessed or to a
point prior to when the broadcast program was accessed, and
retrieving the broadcast program from a user equipment or from
a server, based on the determination. Since all claimed
elements are known in the art, it would have been obvious to one
of ordinary skill in the art at the time the invention was made to
modify Girard’s method with the teaching of retrieving recorded
data from local storage based on determined user input, as
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Application 13/295,026
taught by O’Connor, in order to provide a method that allows
relatively quick access to any portion of the stored video stream.
(Emphasis added).
Thus, based upon our review of the record, and as found by the
Examiner (Ans. 3), Girard “discloses rewinding a video data stream stored in
a storage at a server and playback [of] the video data stream from any point
in the video stream based on the user input.” (emphasis added). As also
found by the Examiner (Ans. 4): “Girard discloses determining whether a
user input indicates a request to playback [a] past program or current
program (see fig. 6-8 and col. 5, lines 56- 67 and col. 6, lines 1-7, 34-68, col.
7, lines 1-25.” (Emphasis added). We note a request to playback a past
program is not necessarily (i.e., inherently) a rewind request.7
After reviewing the portions of Girard cited by the Examiner, we find
the only mention of “rewind” or “rewinding” is found at column 7, lines 11—
25:
It is further noted that a combination of viewing current
and past programs can be employed. For instance, suppose a
viewer is watching the real-time video data stream of the
current “Seinfeld” program, but is distracted during the
middle portion of the show. The viewer could simply
“rewind” to the point at which they were distracted and
replay it. The viewer is not really rewinding the show, in the
sense of a VCR cassette, but instead is changing from the
real-time video data stream of the current "Seinfeld" program
to the stored video data stream of the earlier segment
7 Thus, in considering a finding of inherency under §103, we find the
evidence cited by the Examiner (Ans. 4) insufficient to show that “the
natural result flowing from the operation as taught would result in the
performance of the questioned function.” PAR Pharm., Inc. v TWI Pharms.,
Inc., 773 F.3d 1186, 1194—95 (Fed. Cir. 2014) (internal citation omitted).
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of the same “Seinfeld” program. The viewer will be able to
scan the stored segment and catch up to the real-time video
data stream. The possibilities afforded by this fully interactive
television system offer tremendous flexibility and control
to the viewer.
(Emphasis added).
Given this description in Girard of “not really rewinding the show”
and given the Examiner’s findings that Girard actually rewinds directly to a
point in the video based solely upon the user input (Ans. 3—4), we find a
preponderance of the evidence supports Appellants’ contention that Girard
accesses a particular point in the video content as stored in the head end
(server 22, Fig. 1, program storage 72) “without regard to whether the user
wishes to access a point of a program that is after the broadcast program
was accessed, or prior to the point the program was accessed.” (App. Br.
10).
Thus, in Girard, we agree with Appellants there would have been no
need to determine “whether the second user input indicates a request to
rewind the broadcast program to a point after the broadcast program was
accessed or to a point prior to when the broadcast program was accessed'1'
(claims 330, 335), because the access taught by Girard is based solely upon
the user input which indicates what point to go to in the video.
We note the Examiner also finds O’Connor teaches “retrieving the
broadcast program stored on the user equipment based on user input.”
(Ans. 4) (emphasis added). This finding is supported by the evidence which
teaches that rewinding to a different part of the video in O’Connor is
performed based solely on user input: “The user may then view the video
stream time shifted by the amount of time that he suspended the incoming
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video stream, or he may fast forward (or rewind) through the time-shifted
video stream.” (O’Connor, col. 5,11. 16—19).
The Examiner has not shown where O’Connor teaches the claimed
contested step of determining “whether the second user input indicates a
request to rewind the broadcast program to a point after the broadcast
program was accessed or to a point prior to when the broadcast program
was accessed'1'’ (claims 330, 335), because the access taught by O’Connor is
based solely upon the user input which indicates what point to go to in the
video.
Therefore, based upon our review of the portions of O’Connor cited
by the Examiner (Final Act. 7, citing O’Connor fig. 5, step 510, col. 4,11.
27—33, fig. 2, col. 5,11. 9-26), we find a preponderance of the evidence
supports Appellants’ contention that “O’Connor, like Girard, is agnostic as
to when a program was accessed, and simply discloses a system that
allows a user to rewind a program without interrupting a recording process.”
(App. Br. 10) (emphasis added).
Accordingly, we find the Examiner’s proffered combination of Girard
and O’Connor does not teach or reasonably suggest the contested LI step or
act of “determining.” (Claim 330). Moreover, neither Girard nor
O’Connor contemplate the selective retrieval of the broadcast program from
user equipment storage or from a server, based upon the claimed
determining step, in the manner recited in independent method claim 330.
As noted above, independent system claim 335 recites “processing circuitry
configured to” perform a similar “determine” function using language of
commensurate scope, (emphasis added).
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Because we find O’Connor does not remedy the deficiency of Girard,
we are constrained on this record to reverse the Examiner’s rejection A of
independent claims 330 and 335, and of associated respective dependent
claims 332—334, and 337—339, also rejected under rejection A.
Rejection B of claims 342 and 343
Regarding rejection B of claims 342 and 343, on this record, the
Examiner has not shown how the additionally cited Baker reference
overcomes the aforementioned deficiencies of Girard and O’Connor, as
discussed above regarding rejection A of independent claims 330 and 335.
Accordingly, we reverse the Examiner’s rejection B of dependent claims 342
and 343.
DECISION
We reverse the Examiner’s decision rejecting claims 330, 332—335,
337—339, 342, and 343 under pre-AIA 35 U.S.C. § 103(a).
REVERSED
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