Ex Parte Fraleu et al

Patent Trial and Appeal Board

Aug 24, 2016

10562663 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/562,663 0312012007
24498 7590 08/26/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Sebastien Fraleu
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.
PF030101 3950
EXAMINER
LUONG, ALAN H
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIEN FRALEU, ANDRE MAGRAS, and
THIERRY QUERE
Appeal2015-003949
Application 10/562,663
Technology Center 2400
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-10. App. Br. 2. 1 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Throughout this opinion, we refer to (1) the Final Rejection (Final Act.)
mailed May 9, 2014, (2) the Appeal Brief (App. Br.) filed September 23,
2014, (3) the Examiner's Answer (Ans.) mailed December 3, 2014, and
(4) the Reply Brief (Reply Br.) filed January 29, 2015.
Appeal2015-003949
Application 10/562,663
INVENTION
Appellants' invention constructs a list of favorite audio or video
digital services. See Spec. 1: 8-11. Audio or video digital services include
television, radio, and interactive programs. Id. at 1 :32-38. Known
approaches for constructing a favorite-services list require a user to select
items from a long list. Id. at 2: 1---6. The invention, however, automatically
constructs a favorite-services list using selection criteria, such as language or
scrambling, among others. Id. at 2:12-20. Claim 1, reproduced below, is
illustrative:
1. A method for automatic[ally] constructing a list of favorite
audio and/or video digital services in a receiver for receiving
audio and/or video digital services comprising means of storage
of a first list of available audio and/or video digital services in
which each audio and/or video digital service possesses a unique
identifier, wherein the method comprises:
recovering a second list of audio and/or video digital
services comprising for each audio and/or video digital service
the unique identifier and discriminator'/ information
characterizing each audio and/ or video digital service in said
second list;
determining a subset of the second list of audio and/or
video digital services as a function of at least one predetermined
selection criterion being an item of said discriminatory
information forming part of said second list;
creating said list of favorite audio and/or video digital
services by identifying audio and/or video digital services whose
unique identifier belongs to the first list of available audio and/or
video digital services and belongs to the subset of the second list
of audio and/or video digital services, said list of favorite audio
and/or video digital services corresponding to a selection, by said
receiver, of audio and/or video digital services from said first list
according to said at least one selection criterion.
2
Appeal2015-003949
Application 10/562,663
The Examiner relies on the following as evidence of unpatentability:
Davis
Vinson
Arai
us 5,822, 123
US 2003/0172374 Al
US 7,516,467 Bl
THE REJECTIONS
Oct. 13, 1998
Sept. 11, 2003
Apr. 7, 2009
Claims 1, 2, 4--7, 9, and 10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Davis. Final Act. 2-9.
Claim 3 is rejected under 35 U.S.C. § 103(a) over Davis and Vinson.
Final Act. 9-11.
Claim 8 is rejected under 35 U.S.C. § 103(a) over Davis and Arai.
Final Act. 11-12.
THE ANTICIPATION REJECTION
Contentions
The Examiner finds that Davis discloses every recited element of
claim 1. Final Act. 3-5. In particular, the Examiner finds that the recited
first list corresponds to Davis's channel list 80. Final Act. 5; Ans. 3 (citing
Davis, Fig. 8). In the Final Action, the Examiner further finds that the
recited second list corresponds to Davis's viewer preference list 81.
Final Act. 5 (stating "second list (preference list 81 )"). But in the Answer,
the Examiner clarifies that the recited second list corresponds to the channels
associated with each of Davis's categories in list 83. Ans. 3--4 (citing Davis
28: 17----67, Fig. 8); see also Reply Br. 2-3 (noting the clarification).
The Examiner also finds that the recited discriminatory information of
the second list corresponds to Davis's categories, including movies, news,
sports, or children. Ans. 3. According to the Examiner, Davis's processor
3
Appeal2015-003949
Application 10/562,663
16 automatically creates list 81 (e.g., the user's favorite video services) from
user input. Id. at 4--5.
In the principal Brief, Appellants present two arguments based on the
Examiner's rationale presented in the Final Rejection concerning Davis.
App. Br. 8-10. First, Appellants argue that the Examiner erroneously maps
Davis's viewer-preference list 81 to both the recited second list and the
subset of that list. Id. at 8-9. According to Appellants, Davis's ordered
display of items does not teach the recited "determining a subset of the
second list." Id. at 8-9. Second, Appellants argue that the Examiner also
erred in interpreting both the recited list of favorite services and the recited
second list as Davis's viewer-preference list 81. Id. at 9-10. In Appellants'
view, the Examiner's interpretation is incorrect because Davis's list 81 is not
created from a first list and a subset of a second list, as recited. Id.
In the Reply Brief, Appellants present additional arguments based on
the Examiner's explanation presented in the Answer. Reply Br. 2--4.
Appellants argue that Davis's categories are not both unique identifiers and
discriminatory information of that same item, as mapped by the Examiner.
Id. at 3. According to Appellants, claim 1 requires the recited unique
identifier and discriminatory information to be different elements of the
second list. Id. Appellants further contend that Davis's list of categories are
not the recited list of services because categories are not services. Id. at 3--4.
Lastly, Appellants argue that Davis does not automatically construct a
list of favorite services. App. Br. 1 O; Reply Br. 4--6. Appellants argue that
the term "automatic" in claim 1 means that user intervention is not required.
Reply Br. 4. Appellants contend that the objective of the claimed invention
is to avoid user-constructed lists. Id. at 5 (citing Spec. 2:12-20, 8:1-11).
4
Appeal2015-003949
Application 10/562,663
According to Appellants, Davis's user constructs the viewer preference list
81 manually. App. Br. 10.
Issues
Under§ 102, has the Examiner erred in rejecting claim 1 by finding
that Davis discloses:
and
(1) "recovering a second list of audio and/or video digital services";
(2) "creating [a] list of favorite audio and/or video digital services";
(3) "a method for automatic[ally] constructing a list of favorite audio
and/or video digital services"?
Analysis
Davis displays a "Channel Preference menu" as shown below in
Figure 8.
!! .•. FAVORITE
CHANNEL 6:. LEnterj
"VP
-"l
f X,x 1
l.2:25pm
[Q)O.l~eS] !Sele<:tedj
4KCNC
52
115 REQ2
js SHO l0e[eteJ
6 KRMA '84 !3/
7 KMGH · . '1...9 KUSA
8MUN1 7KMGH
9KUSA-90 5SHO
IOKTCI 3 PPV
,11 REQI I MOVIES I
i MOVIES ;
! NE'. WS .J
SPORTS }-&:J
FIG.8
Figure 8 showing a Channel Preference menu.
5
Appeal2015-003949
Application 10/562,663
Davis 28:7-16. In Davis's Figure 8, list 80 displays all channels available
on a particular cable system. Id. at 28:7-12. List 81 displays a list of the
user's preferred channels. Id. To create list 81, the user selects channels
from list 80 to be placed in list 81. Id. at 28: 17-26. The user can also select
categorical entries 83, such as movies, news, or sports, to be put into list 81.
Id. at 28:47-50. If a user selects a categorical entry from list 83 and places
the entry in list 81, Davis displays all channels having program content
corresponding to the category in addition to the preferred channels selected
by the user. Id. at 28:51-56, Fig. 8.
In the Answer, the Examiner explains "a second list as list 83 includes
channels; where each channel associates with each category (i.e. movies,
news, sports or children's shows.)" Ans. 4 (emphasis added). That is, the
Examiner relies on the channels associated with each of the category- not
categories themselves -as "recovering" the second list's services, as
recited. Id. For example, Davis describes the categorical entries in 83 as
"shows" and also discusses the channels as having program content
corresponding to the categories. Davis 28:47-56, cited in Ans. 4.
Therefore, we understand the Examiner to find that the claimed recovered
second list reads on all channels of Davis having program content
corresponding to each categorical entry in list 83. See Ans. 4. Likewise, we
further understand the Examiner to find that the claimed subset reads on
only those channels of Davis having program content corresponding to one
categorical entry from list 83. See id. (" ... 'MOVIES' as the subset of the
second list [831") (emphasis in original).
6
Appeal2015-003949
Application 10/562,663
Notably, in the Final Rejection, the Examiner cites Davis's viewer
preference list 81 for the recited second list. Final Act. 3 (citing Davis
28: 17-56, Fig. 8); see also Final Act. 5 ("second list (preference list 81 )").
The Answer explains the second list corresponds to the channels associated
with each of Davis's categories in list 83. See Ans. 3. Appellants filed a
Reply Brief acknowledging the Examiner's clarification and arguing against
the Examiner's position in the Answer. See Reply Br. 2-3. We, therefore,
confine our discussion to the Examiner's position articulated in the Answer
(see Ans. 2--4) in light of Appellants' arguments for patentability in both
Briefs.
Because of the Examiner's clarification, several of Appellants'
arguments in the principal Brief do not squarely address, let alone persuasive
rebut, the Examiner's rejection. See App. Br. 8-10. In particular,
Appellants argue that ( 1) both the second list and its subset are mapped to
the list 81 (id. at 8-9) and (2) the Examiner incorrectly interprets both the
created favorite list and the second list as viewer preference list 81 (id. at 9).
As discussed above, the Examiner clarifies the recited second list is a list of
channels corresponding to Davis's categorical entries 83. Ans. 4. Because
both of these arguments rely on the Examiner's mapping of list 81 to the
second list (see App. Br. 8-9) rather than list 83 (Ans. 4), these arguments
are unpersuasive.
In the Reply Brief, Appellants argue that Davis's list 83 is a list of
categories, not services, as recited. Reply Br. 2--4. Here again, we
emphasize that the Examiner relies on channels of the categories, not
categories themselves, as the recited second list's services. See Ans. 3. In
particular, we agree that the recited second list covers Davis's list of all
7
Appeal2015-003949
Application 10/562,663
channels having program content corresponding to each categorical entry in
list 83. See Ans. 4.
We are likewise unpersuaded that the Examiner erred in finding that
the channels associated with Davis's list 83 also comprise the recited
discriminatory information and unique identifier. See Ans. 3; Final Act. 3.
Appellants' argument that Davis's categories cannot be both the unique
identifier and discriminatory information (Reply Br. 3) misinterprets the
Examiner's position. To reiterate, the second list is the list of channels
associated with the categories. See Ans. 3. And the Examiner finds that
each of the channels' names in Davis---e.g., "9 KUSA" in Figure 8-
corresponds to the recited unique identifier. Final Act. 3 ("9 KUSA
identifies KUSA of channel 9"). As such, each channel (e.g., a video
service) associated with a category that forms the second list, as explained
above, includes "a unique identifier" (e.g., "9 KUSA"), as recited in claim 1.
Additionally, each channel is associated with a category, such as news, and,
thus, each service (e.g., channel) includes "discriminatory information," as
recited.
Furthermore, the Examiner finds Davis discloses a subset of those
channels or shows having program content corresponding to one categorical
entry from list 83. See Ans. 4 ("'MOVIES' as the subset of the second list
IB}l") (emphasis in original). Like the recited subset, we also agree that
Davis's subset is determined as a function of "selection criterion being an
item of [the] discriminatory information" (e.g., a category like MOVIES)
forming the second list's services. See id. at 3.
When creating the list of favorite services in Davis (i.e., list 81 ), Davis
identifies services whose unique identifiers belong to (1) channels of list 80,
8
Appeal2015-003949
Application 10/562,663
which correspond to the recited first list (Ans. 3), and (2) the channels within
a category, which correspond to the recited subset of the second list (id.).
For example, Davis's list 80 displays all channels available on a particular
cable system, and the channel names (e.g., "5 SHO" and "9 KUSA") are
unique identifiers. Davis 28:7-12, Fig. 8. Davis's channels having
programs with content from a category (e.g., MOVIES or NEWS), which
correspond to the recited subset (Ans. 3), also contain unique identifiers
(e.g., "5 SHO" or "9 KUSA" being a movie or news channel respectively).
See Davis 28:47-56. Davis teaches that these categorical entries may be
highlighted and put into the viewer preference list 81. See Davis 28:49-56,
Fig. 8. So when Davis creates the favorite list of services from the selected
favorite channels and the channels associated with the desired categories
(Id. at 28:51-56), the process identifies unique identifiers (e.g., channel
names) belonging to both the first list and the subset of the second list, as
recited. Davis 28:50-56. For example, favorite list 81 in Figure 8 includes
both "5 SHO," a movie channel name, and the channels with their channel
names associated with the category "MOVIES." See Davis 28:50-56,
Fig. 8; see also Ans. 4.
To the extent that Appellants argue that the recited list of favorite
services must contain only those services belonging to the first list and the
subset of the second list (see App. Br. 7-8), we disagree. To demonstrate
how the recited list of favorite services is created, Appellants provide an
illustration in the Brief. See id. at 7. But support for this illustration is not
found in the Specification. Compare App. Br. 7 with Spec., Fig. 1.2 Nor do
2 Notably, when a disclosure has a single figure, the figure should not be
labeled. See 37 C.F.R. § 1.84(u)(l).
9
Appeal2015-003949
Application 10/562,663
Appellants provide any other support for this illustration in the originally
filed application. See App. Br. 7.
Nevertheless, the claim is not limited to Appellants' discussed
embodiment. The illustration shows a "Favorite" list containing only the
identifiers belonging to the "1st list" and "Subset." Id. The claim, however,
contains "comprising" language in the preamble, which does not exclude
additional, unrecited steps. So although the list of favorite audio or video, as
recited, must be created at least by identifying the services as expressly
recited, the claim does not preclude additional, unrecited steps to create the
list.
Accordingly, we are not persuaded by Appellants' arguments
(App. Br. 7-8) that the Examiner erred by finding that Davis creates the
recited list of favorite audio or video digital services (Ans. 2--4).
We are also unpersuaded by Appellants' arguments regarding the
recited automatic constructing. App. Br. 1 O; Reply Br. 4---6. In particular,
Appellants argue that the term "automatic" means that user intervention is
not required. Reply Br. 4. But we see nothing on the record that precludes
user involvement before the list's creation. For example, the Specification
states that the list of favorite services is constructed from a table. Spec 8: 1-
11, cited in Reply Br. 5. The Specification, however, further states this is a
"preferred embodiment." Spec. 8: 1-11. Although this example informs our
claim construction, the claim is not limited to this embodiment.
As relied upon by the Examiner (Ans. 5), Davis's microcontroller 16
interprets the user input concerning channel selection to create the list.
Davis 28:26--45, cited in Ans. 5. For example, microcontroller 16--not the
user-inserts a selected channel at the bottom of the list, albeit in response
10
Appeal2015-003949
Application 10/562,663
to keypress events. Davis 28:43--46. So even under Appellants' definition
prohibiting user intervention in creating the list (Reply Br. 4 ), Davis's
process is "automatic" because microcontroller 16 automatically creates the
recited list of favorite services by interpreting the user's key press. Accord
Ans. 5. Accordingly, we are unpersuaded that the Examiner erred in finding
that Davis automatically constructs a favorite list.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1, as well as claim 10, not separately
argued with particularity. See App. Br. 11-12; Reply Br. 7.
Claims 2 and 9
Appellants argue that the Examiner does not "raise any argument
against claims 2 and 9." Reply Br. 2. But the Examiner rejects claims 2 and
9 as anticipated over Davis. Final Act. 5-8. The Examiner maintains the
rejection of these claims in the Answer. Ans. 2. Because Appellants do not
separately argue claims 2 or 9 (see App. Br. 11; Reply Br. 2), we sustain the
Examiner's rejection of those claims.
Claim 4
Claim 4 recites, in part, "the selection criterion is a selection criterion
or a logical combination of selection criteria."3 App. Br. 15, Claims App'x
3 Because the recited logical combination is optional and the first alternative
is identical to the term recited in claim 1, it is unclear how claim 4 further
limits claim 1. Moreover, the second alternative option (i.e., "a logical
combination of selection criteria") implies claim 4 is broader than claim 1
for including the logical combination of criteria rather than a criterion. We
11
Appeal2015-003949
Application 10/562,663
(italics added). Appellants argue that claim 4 requires that the user enter
more than one selection criteria. App. Br. 11. But, the recited logical
combination of selection criteria is recited only as one alternative. The
other, recited alternative in claim 4 is a singular criterion. Accordingly,
Appellants' argument (id.) is not persuasive for at least the reason that it is
not commensurate with the scope of claim 4.
For the reasons discussed above in connection with claim 1, the
Examiner has identified at least one selection criterion, a category associated
with Davis's channels. See Ans. 3, 6. That is, claim 1, from which claim 4
depends, recites, in part, "at least one predetermined selection criterion,"
and, thus, the recited selection criterion in Davis teaches "a selection
criterion," as recited in claim 4. We need not reach the issue of whether
Davis discloses the recited logical combination.
Furthermore, Appellants refer to the arguments presented for claim 1.
App. Br. 11; Reply Br. 6. These arguments are not persuasive for the
reasons discussed previously.
Therefore, we sustain the Examiner's rejection of claim 4.
Claim 5
Claim 5 recites, in part, "determining a default criterion or a logical
combination of default selection criteria." App. Br. 15, Claims App'x
(italics added). Appellants argue that claim 5 requires more than one default
selection criteria. App. Br. 11. But, similar to claim 4, the recited logical
combination of selection criteria is recited only as one alternative in the
leave to the Examiner to determine whether claim 4 should be rejected under
35 U.S.C. § 112, second and/or fourth paragraph.
12
Appeal2015-003949
Application 10/562,663
claim. Accordingly, Appellants' argument (id.) is not persuasive for at least
the reasons that it is not commensurate with the scope of claim 5.
Here, the Examiner finds that each of Davis's keys (e.g., those shown
in Figure 4) is associated with one default selection criterion. Ans. 7. To
this finding, Appellants provide no rebuttal. See generally App. Br.;
Reply Br. 6.
Furthermore, Appellants refer to the arguments presented for claim 1.
App. Br. 11; Reply Br. 6. These arguments, however, are not persuasive for
the reasons discussed previously.
Therefore, we sustain the Examiner's rejection of claim 5, as well as
the rejection of claim 6, not argued separately with particularity.
Claim 7
Claim 7 recites, in part, that the second list is "sent by transmission on
a channel able to be received by the receiver." App. Br. 15, Claims App'x.
According to Appellants, Examiner finds that list 81 corresponds to the
recited second list, and Davis does not transmit list 81. App. Br. 11. The
Examiner, however, clarified in the Answer that Davis's second list
corresponds to the channels associated with the categorical entries 83. See
Ans. 3 (discussing movies, news, sports and children shows), 8 (discussing
list 83 in the context of claim 7). The Examiner further finds that Davis
downloads this second list. Ans. 8. To this finding, Appellants present no
rebuttal. See Reply Br. 6. For at least these reasons, we are not persuaded
that the Examiner has erred in rejecting claim 7.
13
Appeal2015-003949
Application 10/562,663
Furthermore, Appellants refer to the arguments presented for claim 1.
App. Br. 11; Reply Br. 6. These arguments, however, are not persuasive for
the reasons discussed previously.
Therefore, we sustain the Examiner's rejection of claim 7.
THE OBVIOUSNESS REJECTIONS
Claims 3 and 8 depend from claim 1. In arguing against these claims'
respective rejections, Appellants refer to the arguments presented for claim
1. App. Br. 12-13; Reply Br. 7. For example, Appellants argue that the
Examiner's reliance on the same feature in Davis (e.g., Davis's list 81) for
different claimed elements is an error. App. Br. 12-13. Regarding these
arguments, the issues before us, then, are the same as those in connection
with claim 1, and we refer Appellants to our previous discussion.
Furthermore, Appellants argue that Vinson does not disclose the first
list is a subset of the second list, as recited in claim 3. Id. at 12. But, the
Examiner relies on Vinson only for the limited purpose of teaching a
geographical zone, not the recited first list. See Ans. 10 (citing Vinson
i-fi-130, 97, 346-47, Fig. 31); Final Act. 10. In claim 3's rejection, the
Examiner finds that Davis discloses the recited first list. See Ans. 10.
Appellants provide no substantive rebuttal to these findings. See
Reply Br. 7. Accordingly, we sustain the Examiner rejection of claim 3.
Regarding claim 8, Appellants further contend that Arai is not related
to constructing lists of favorite audio or video services and does not disclose
any of the features of claim 1. App. Br. 13. But, the Examiner relies on
Arai for the limited purpose of showing the stream-description-table
limitations in the rejection of claim 8. See Ans. 10-11. Appellants provide
14
Appeal2015-003949
Application 10/562,663
no substantive rebuttal to these findings. See Reply Br. 7. Accordingly, we
sustain the Examiner rejection of claim 8.
CONCLUSION
The Examiner did not err in rejecting (1) claims 1, 2, 4--7, 9, and 10
under§ 102, and (2) claims 3 and 8 under§ 103.
DECISION
The Examiner's decision rejecting claims 1-10 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)(l )(iv).
AFFIRMED
15