Ex Parte Eyer

Patent Trial and Appeal Board

Oct 29, 2018

13039005 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/039,005 03/02/2011 Mark Kenneth Eyer
22850 7590 10/31/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
395662US8 9922
EXAMINER
MESA,JOSEM
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK KENNETH EYER
Appeal2018-004227
Application 13/039,005
Technology Center 2400
Before LARRY J. HUME, JENNIFER L. McKEOWN, and
JOHN P. PINKERTON, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-21, 23, and 24. Claim 22 has been cancelled.
We reverse.
1 According to Appellant, the real party in interest is SATURN LICENSING
LLC. App. Br. 2.
Appeal2018-004227
Application 13/039,005
STATEMENT OF THE CASE
Appellant's disclosed and claimed invention is directed to:
A method consistent with certain implementations
involves receiving a triggered declarative object (TDO) at a
digital television receiver device that carries out a programmed
routine when user activated; the TDO further including a scripted
control object that when activated by the viewer implements a
Personal Video Recorder (PVR) function; and executing the
TDO to cause the TDO to generate a signal that presents the
scripted control object. This abstract is not to be considered
limiting, since other embodiments may deviate from the features
described in this abstract.
Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method, comprising:
receiving an application at a digital television receiver
device that carries out a programmed routine when user
activated, the application further including a scripted control
object that when activated by the user implements a Personal
Video Recorder (PVR) function on an identified item of program
content;
storing the application in a memory;
receiving after the application is stored in the memory, via
a broadcast stream or the Internet, control information that
includes an identifier identifying the stored application to be
executed by a processor, the control information and the
application being provided separately;
invoking, automatically in response to the received control
information, execution of the stored application;
displaying the control object on a display;
receiving a signal indicating user activation of the control
object; and
carrying out, by the application being executed by the
processor, the PVR function responsive to receipt of the signal,
where the PVR function comprises retrieval and storage
functions related to the said identified item of program content.
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Appeal2018-004227
Application 13/039,005
THE REJECTIONS
The Examiner rejected claims 1-21 under 35 U.S.C. § I02(b) as
anticipated by McKenna (US 2003/0018977 Al; pub. Jan. 23, 2003). Final
Act. 6-16.
The Examiner rejected claims 23 and 24 under 35 U.S.C. § 103 as
unpatentable by McKenna and Blackketter (US 2003/0204854 Al; pub.
Oct. 30, 2003). Final Act. 17-20.
ANALYSIS
THE ANTICIPATION REJECTION BASED ON MCKENNA
Claims 1-21
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-21 as anticipated by McKenna.
The Examiner finds that McKenna discloses each and every limitation
of claim 1. In particular, the Examiner relies on McKenna' s actions 504 as
the claimed control information. See, e.g., Final Act. 7; Ans. 18-19.
For example, the Examiner explains
see figs. 1, 5-6, 14-16 paragraphs 35, 39, 75, 86-87, 85-91, 97,
100-101, 103, 130, 138-140 for the claimed limitations of
independent claim 1 that recites "receiving, after the application
(i.e. [program interface objects ("PIO")]) is stored in the
memory, control information (i.e. actions 504) via a broadcast
stream or the Internet, the control information (i.e. actions 504)
and the application (i.e. PIO) being provided separately." For
instance, "receiving a trigger (i.e. actions 5 04/, 5 04a) after the
application (P!Os 502) is stored in the memory, via a broadcast
stream or the Internet" as shown in figs. 3, 14-16 paragraphs 84,
130, 138-140.
Ans. 18 ( emphasis added); see also Ans. 18 ("[I]t should be noted that the
actions 504 as disclosed in McKenna perform the same function as control
information as claimed.").
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Appeal2018-004227
Application 13/039,005
Appellant, on the other hand, contends that McKenna fails to disclose
"receiving after the application is stored in the memory, via a broadcast
stream or the Internet, control information that includes an identifier
identifying the stored application to be executed by a processor, the control
information and the application being provided separately" and "invoking,
automatically in response to the received control information, execution of
the stored application." App. Br. 7-9. Appellant first notes that "[t]he
Office Action appears to assert on pages 3, 4, 7, and 8 that the PIOs (502a-
502f) in McKenna correspond to the recited 'stored application,' [and]
action (504) embedded in a PIO corresponds to the recited 'received control
information."' Ans. 16. Appellant then explains that
the Examiner still fails to indicate where McKenna describes that
an action embedded in a first PIO (i.e., the asserted "control
information") includes an identifier identifying a stored second
PIO (i.e., the asserted 'application,' the control information and
the application being provided separately) to be executed in order
to perform the action. Instead, McKenna only describes that the
receiving action is to be executed by a receiving STB, and is still
silent regarding whether such the action further identifies another
PIO that is to be executed in order to perform the action.
Reply Br. 2 ( emphasis omitted).
McKenna discloses PIOs that include actions that will result in
operations that may be performed for that PIO. See, e.g., McKenna ,r,r 35,
100-103; see also Fig. 5 (depicting actions 504 as part of the PIO 502).
McKenna also discloses that PIOs, including the attributes and actions, are
portable and may be transferred between set top boxes or other devices. See,
e.g., McKenna ,r,r 93, 138-140, 146-147.
Claim 1, however, requires that the control information, i.e. actions
according to the Examiner, is provided separately from the application. See
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Appeal2018-004227
Application 13/039,005
also Spec. p. 8, 11. 6-7 ( explaining that a trigger, i.e. control information, is
provided at a later time). McKenna's actions included in a PIO are not
transmitted separately from that PIO or application and could not satisfy the
claim limitations with respect to that PIO or application. Thus, as Appellant
argues, in order for McKenna's actions to satisfy the claimed limitations, the
actions or control information must identify a separate already stored PIO or
application, not the PIO with which the actions were transmitted. Reply
Br. 2. The Examiner has not shown how McKenna's actions within one PIO
automatically invoke execution of a separate, already stored PIO. Therefore,
based on the record before us, we are persuaded that the Examiner erred in
rejecting claim 1 as anticipated by McKenna. 2 Because claims 2 and 12
recite similar limitations, we, likewise, agree that the Examiner also erred in
rejecting these claims as anticipated by McKenna.
Accordingly, based on the record before us, we reverse the
Examiner's rejection of claims 1-21 as anticipated by McKenna.
THE REJECTION UNDER 35 U.S.C. § 103 BASED ON MCKENNA AND
BLACKKETTER
Claims 23 and 24
Claims 23 and 24 depend from independent claim 2. As discussed
above, we determine that the Examiner erred in rejecting claim 2 as
anticipated by McKenna. Blackketter does not cure the deficiencies of
22 We note that while not identified or discussed by the Examiner, McKenna
also teaches an ATVEF trigger for attributes of a PIO and a conventional
trigger that may notify a user of the PIO. See McKenna Fig. 18, item 1904
and ,r 150. As the issue is not before us, we do not consider whether this
teaching ofMcKenna discloses or renders obvious the recited control
information.
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Appeal2018-004227
Application 13/039,005
McKenna so we, accordingly, reverse the rejection of claims 23 and 24 as
unpatentable over McKenna and Blackketter.
DECISION
We reverse the Examiner's decision to reject claims 1-21, 23, and 24.
REVERSED
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