Ex Parte Gabriel et al

Board of Patent Appeals and Interferences

Oct 25, 2010

10627002 (B.P.A.I. Oct. 25, 2010)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/627,002 07/25/2003 Michael Gabriel 12510/20 3720
26646 7590 10/25/2010
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
NGUYEN BA, HOANG VU A
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
10/25/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MICHAEL GABRIEL, BRUCE PROBST, and
JEFFREY DIBARTOLOMEO
________________

Appeal 2009-002576
Application 10/627,002
Technology Center 2400
____________________________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002576
Application 10/627,002

2
Appellants invoke our review under 35 U.S.C. § 134(a) from the final
rejection of claims 2-16, 18-21, 23-30, and 32-35. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims.

STATEMENT OF THE CASE
Appellants claim a content player system and method that controls
access to content for a plurality of users. A user selects content, and
metadata associated with the selected content is compared to a profile
including filtering criterion that has both characteristics for permitting and
for prohibiting viewing.2 Claim 9 is illustrative:
9. A method to control access to content via a player system
accessible by a plurality of users, the method comprising:
providing a default profile including at least one filtering criterion, the
filtering criterion describing at least one of a characteristic of content
permitted for all of the plurality of users and a characteristic of content
prohibited for all of the plurality of users;
comparing metadata associated with a selected content and the
filtering criterion of the default profile, the metadata including information
related to the selected content; and
permitting or denying access to the content based on the comparison,
wherein the metadata is associated with the selected content using a URL in
connection with the selected content, and wherein the method further
comprises obtaining the metadata using the URL, wherein the URL
associates the metadata with the selected content.
The Examiner relies on the following prior art references to show
unpatentability:3
Kamen US 2003/0014750 A1 Jan. 16, 2003
alSafadi US 2003/0088420 A1 May 8, 2003

2 See generally Spec. 2:27–3:2; 7:6-9; 9:25–10:2, 9-11, 31-35; Figs. 1, 2.
3 Effective filing dates for these documents precede Appellants’ earliest
effective filing date and are not at issue.
Appeal 2009-002576
Application 10/627,002

3
Ozer US 6,704,929 A1 Mar. 9, 2004
Horiwitz US 6,785,901 B1 Aug. 31, 2004
Ozer et al., Tracking Viewing Behavior of Advertisements on a Home
Entertainment System, US Patent Application S/N 09/376,631 (filed Aug.
18, 1999) [hereinafter Ozer ‘631].4
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 2-5, 9-14, 16, 19-21, 23-25, 27-30, and 32-35 as unpatentable
over Horiwitz and Ozer (Ans. 3-14);
2. Claims 6 and 26 as unpatentable over Horiwitz, Ozer, and alSafadi
(Ans. 14-15); and
3. Claims 7, 8, 15, and 18 as unpatentable over Horiwitz, Ozer, and
Kamen (Ans. 15-16).

APPELLANTS’ CONTENTIONS
I
Appellants separately argue independent claim 9 for grouped claims
2-5, 9-14, 16, 19-21, 23-25, 27-30, and 32-35 (App. Br. 6-14; Reply Br. 2-
4). Accordingly, we select claim 9 as representative for the group. See 37
C.F.R. § 41.37 (c)(1)(vii).
The Examiner finds Horiwitz “discloses . . . usage of ‘metadata
associated with the selected content’ in conjunction with ratings data derived
from an electronic program guide (Figures 4 and 5; Col[] 7, Line 17 – Col 8,
Line 38)” (Ans. 4), and the Examiner also acknowledges that Horiwitz “is
silent with respect to how the particularly tuned program is associated with
its corresponding metadata” (Ans. 4). For the subject matter not taught by
Horiwitz, the Examiner finds:

4 This document is incorporated by reference into Ozer (col. 14, ll. 14-20).
Accordingly, citation to the Ozer patent includes citation to Ozer ‘631.
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Application 10/627,002

4
[Ozer] teaches that viewer programming is monitored and that
information such as that associated with ratings “metadata” as
derived from the EPG [i.e., electronic program guide] is
captured (Col 7, Line 53 – Col 8, Line 23; Col 11, Lines 16-28).
. . . The incorporated Ozer et al. (‘631) application in
conjunction with identifying programming and associated
metadata including ratings, discloses that “metadata is
associated with the selected content using a URL in connection
with the selected content, and wherein the method further
comprises obtaining the metadata using the URL, wherein the
URL associates the metadata with the selected content” (Page
15, Line[s] 1-23; Page 16, Line 22 – Page 17, Line 6; Page 17,
Line 18 – Page 19, Line 10).
(Ans. 4-5.)
Appellants acknowledge that Horiwitz “describes locking and
unlocking of program content” (App. Br. 7), but argue that Ozer and Ozer
‘631 “relate to tracking viewing behavior” (id.). Appellants explicitly argue:
At most, Ozer et al., including the Ozer ‘631 application,
indicate that data can be referenced using a URL. However,
merely because a URL can be used for accessing data stored at
an address indicated by the URL does not provide any
suggestion to modify the system of Horiwitz et al. to provide
for the program content unlocking using metadata accessed via
a URL.
(Reply Br. 3.)

II
Appellants also contend that the Examiner erred in rejecting
dependent claims 7, 8, 15, and 18 under § 103(a) as being unpatentable over
the combination of Horiwitz, Ozer, and Kamen because:
Appeal 2009-002576
Application 10/627,002

5
(A) Appealed method claim 7, which depends from base independent
claim 10, covers “providing the selected content on a removable
medium” (App. Br. 15; Reply Br. 5).
(B) Appealed content player claim 18, which depends from base
independent claim 21, similarly covers “the selected content
[being] provided on a removable media” (id.).
(C) Ozer teaches away by “refer[ing] to data available on an
electronic program guide, which would not likely be available for
content stored on a removable medium as referred to by Horiwitz
et al. and Kamen” (App. Br. 15).
(D) Further, though, Kamen discloses parental content control and
recording, e.g., on a removable media,
Kamen suggests that, once it has been determined
that content is unlocked to allow for its local
recordation, there is no further reason to perform an
unlocking procedure, and indeed no further
unlocking procedure is performed . . . . Accordingly,
even if Horiwitz et al. is modified to include the
features taught by Kamen, the resulting combinatory
system would not disclose or suggest “a processor
configured to compare metadata associated with
selected content [provided on a removable media] . .
. ” as required by claim 18.
(Reply Br. 6 (brackets in original).)

ISSUES
The issues on appeal are:
Whether the Examiner erred under § 103(a) in combining the
Horiwitz disclosed content locking and unlocking teachings with the Ozer
Appeal 2009-002576
Application 10/627,002

6
teachings for accessing content metadata via a URL in rejecting
representative claim 9; and
Whether the Examiner erred under § 103(a) in rejecting claims 7 and
18 because the combination of Horiwitz, Ozer, and Kamen does not teach or
suggest the recited limitations.

ANALYSIS
Claims 2-5, 9-14, 16, 19-21, 23-25, 27-30, and 32-35
Appellants argue that the Examiner erred in rejecting representative
claim 9, because Ozer, with its teachings for tracking viewer behavior,
provides no suggestion for modifying the Horiwitz described locking and
unlocking of program content (see supra APPELLANTS’ CONTENTIONS,
I). We disagree.
The Examiner pointedly indicates (Ans. 20) that the Supreme Court
has held with respect to combining teachings that it is erroneous to conclude
that “a person of ordinary skill attempting to solve a problem will be led
only to those elements of prior art designed to solve the same problem.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). In accord, the
Examiner reasons, and we concur, that:
The Horiwitz reference is in the field of video distribution and
relates to problems associated with controlling viewing of
content similar to the instant application. Ozer (‘929) is also in
the same field of appellant[s’] endeavor namely video
distribution systems and it is also reasonably pertinent to the
problem in so far as the Ozer (‘929) provides ‘metadata’ (- or
electronic program guide data similar to Horiwitz) that can be
used for parental control applications as understood in the art.
(Ans. 19.)
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7
We do not find evidence or persuasive argument in the record that it
would be beyond the skill of an ordinarily skilled artisan to implement the
Ozer taught link to content metadata in Horiwitz, or that such an artisan
would not appreciate how the Ozer selection of content metadata could
improve Horiwitz. In such circumstances, the Supreme Court has held that
“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.
Based on the record, we, accordingly, will sustain the rejection of
representative claim 9, and also the rejection of independent claims 10, 21,
27, 30, 33, and 35 that are not separately argued along with the respective
dependent claims that fall with their base independent claims.
Claims 6 and 26
Appellants argue these claims are patentable because their base
independent claims 10 and 21 are patentable (App. Br. 14). As addressed
supra, we will sustain the rejection of claims 10 and 21, and, therefore, we
will also sustain the rejection of these dependent claims 6 and 26.
Claims 7, 8, 15, and 18
Appellants argue that the Examiner erred in combining Horiwitz,
Ozer, and Kamen to reject dependent claims 7 and 18 because (i) Ozer
teaches away by “refer[ing] to data available on an electronic program
guide, which would not likely be available for content stored on a removable
medium as referred to by Horiwitz et al. and Kamen” (App. Br. 15); and (ii)
Kamen suggests unlocking content to allow local recordation without further
reason to perform an unlocking procedure (Reply Br. 6). We disagree.
Appeal 2009-002576
Application 10/627,002

8
Alternative examples and preferred embodiments do not constitute a
teaching away from nonpreferred embodiments. In re Susi, 440 F.2d 442
(CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from . . . alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
We, accordingly, are persuaded by the Examiner’s findings that:
Appellants fail to point out any teachings in Ozer (‘929) (or any
of the other references) that would dissuade or somehow
materially render the combination of references inoperative for
“providing the selected content on a removable medium”.
Similarly, appellants fail to specifically identify any passages in
Ozer (‘929) that would somehow suggest that the existence of
EPG information for recorded programs was not in fact
available. In fact, Kamen provides evidence regarding the
particular usage of EPG information for previously recorded
programming that is on removable media such as optical disks
(Para. [0007] and [0026] – [0028]).
(Ans. 23.)
Based on the record, we do not find evidence or persuasive argument
that (i) the cited references criticize, discredit, or otherwise discourage the
solution claimed; (ii) an ordinarily skilled artisan would be unable to
recognize the improvement provided by the combination; or (iii) actual
application of the combination would be beyond his or her skill.
For the foregoing reasons, we will sustain the rejection of claims 7, 8,
15, and 18.

Appeal 2009-002576
Application 10/627,002

9
ORDER
The Examiner’s decision rejecting claims 2-16, 18-21, 23-30, and 32-
35 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)(v).

AFFIRMED

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