Ex Parte Goode et al

Patent Trial and Appeal Board

May 23, 2013

10689005 (P.T.A.B. May. 23, 2013)

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.
10/689,005 10/20/2003 Christopher Goode SEDN/132DIV1 4102
56015 7590 05/24/2013
WALL & TONG, LLP/
SEDNA PATENT SERVICES, LLC
25 James Way
Eatontown, NJ 07724
EXAMINER
THOMAS, JASON M
ART UNIT PAPER NUMBER
2423
MAIL DATE DELIVERY MODE
05/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER GOODE, DONALD F. GORDON,
TOBIE LAROCCA, and PHILLIP A. THOMAS
____________

Appeal 2010-010377
Application 10/689,005
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH,
and JOHN A. EVANS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010377
Application 10/689,005

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18. Claims 19-24 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
1. In an interactive information distribution system containing service
provider equipment and subscriber equipment that is interconnected by a
communications network, a method of providing a subscription-on-demand
(SOD) service for an interactive information distribution system comprising
the steps of:
packaging a number of on-demand subscription programs into
programming packages wherein said programming packages comprise a
hierarchical structure, which may be multi-tiered or grouped;
dynamically defining subsets of content to be created as personal
SOD; and
enabling a subscriber to access any on-demand program within a
subscribed programming package on an on-demand basis by allowing the
subscriber to interface with one or more menu applets.

Prior Art
Brown US 5,771,435 June 23, 1998
Knudson US 6,016,141 Jan. 18, 2000
Goode US 6,163,272 Dec. 19, 2000
Billock US 6,314,575 B1 Nov. 6, 2001
Hamlin US 6,477,504 B1 Nov. 5, 2002
Hendricks US 6,828,993 B1 Dec. 7, 2004
Gordon US 7,032,176 B2 Apr. 18, 2006

Appeal 2010-010377
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Examiner’s Rejections
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knudson, Brown, and Hamlin.
Claims 7-9, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Knudson, Hendricks, and Gordon.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knudson, Brown, Billock, Hamlin, and Goode.
Claims 14-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knudson, Brown, Goode, and Hamlin.

ANALYSIS
Section 103 rejection of claims 1-6
Appellants contend that the combination of Knudson, Brown, and
Hamlin does not teach “enabling a subscriber to access any on-demand
program within a subscribed programming package on an on-demand basis
by allowing the subscriber to interface with one or more menu applets” as
recited in claim 1. App. Br. 8-11. In particular, Appellants contend that
combining the teachings of Knudson and Brown destroys the functionality
of either arrangement, because Brown only transmits video on demand if
system resources are not constrained (App. Br. 10-11; Reply Br. 3), and
Knudson does not implement video on demand or near video on demand
(Reply Br. 2-4). Appellants further contend that the Examiner does not
apply the broadest reasonable interpretation of “video-on-demand.” Reply
Br. 4-5. The Examiner finds that Knudson teaches near video on demand
(Ans. 21) and Brown teaches replacing near video on demand with video on
demand when system resources are available (Ans. 22-23). Appellants’
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Application 10/689,005

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contention that Knudson does not teach near video on demand is inconsistent
with Figure 10 and column 8, lines 13-20, of Knudson, which teaches near
video on demand. We agree with the Examiner that replacing the near video
on demand as taught by Knudson with video on demand when system
resources are available as taught by Brown yields “enabling a subscriber to
access any on-demand program within a subscribed programming package
on an on-demand basis” within the meaning of claim 1.
Appellants contend that the combination of Knudson, Brown, and
Hamlin does not teach dynamically defining subsets of content to be created
as personal subscription-on-demand (SOD). App. Br. 11-12. The Examiner
finds that Knudson teaches this limitation. Ans. 27-28. Appellants provide
support for this limitation on page 21 of Appellants’ Specification (App. Br.
4), which states that consumers can create their own personal SOD service
by selecting their favorite programs or program classes for grouping into an
SOD package such that a single price can be paid to access all the selected
programming over a pre-defined period of time. The scope of “dynamically
defining subsets of content to be created as personal SOD,” when read in
light of Appellants’ Specification, encompasses creating the personal SOD
discussed in columns 6 and 7 and shown in Figures 8 and 9 of Knudson.
Appellants contend that the Examiner improperly paraphrases the
claimed limitation to piece the invention together using hindsight. App. Br.
12-13. Appellants have not identified which claim limitations are not taught
by the prior art.
Appellants contend that the Examiner’s motivation for combining the
teachings of Knudson, Brown, and Hamlin is deficient. App. Br. 13-14.
The Examiner provides motivation on pages 26 and 27 of the Answer. We
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agree with the Examiner for the reasons given by the Examiner in the
Answer.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
do not present arguments for separate patentability of claims 2-6 which fall
with claim 1.

Section 103 rejection of claim 7
Appellants contend that Knudson fails to teach “applets” as recited in
claim 7 and as disclosed on page 13 of Appellants’ Specification. App. Br.
15-16; Reply Br. 5-6. However, the Examiner relies on Hendricks to teach
“applets.” Ans. 8. Appellants have not provided persuasive evidence or
argument to rebut the Examiner’s finding.
Appellants contend that the Examiner paraphrases limitations of the
claim which confuses Appellants and prevents Appellants from ascertaining
the veracity of the Examiner’s assertions. App. Br. 16-17; Reply Br. 6-7.
However,
There has never been a requirement for an examiner to
make an on-the-record claim construction of every term in
every rejected claim and to explain every possible difference
between the prior art and the claimed invention in order to
make out a prima facie rejection. . . . [A]ll that is required of the
[Patent] [O]ffice to meet its prima facie burden of production is
to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35
U.S.C.] § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find that the
Examiner has met this burden. See Ans. 6-8, 29-33. Appellants have not
explained which limitations of claim 7 are not taught by the prior art cited by
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the Examiner. Appellants have not provided persuasive evidence or
argument to rebut the Examiner’s prima facie case. See Jung, 637 F.3d at
1365-66 (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010)
(precedential)).
Appellants contend that the Examiner does not provide an articulated
reason with rational underpinning to support the conclusion of obviousness.
App. Br. 17. The Examiner finds motivation for combining Knudson,
Hendricks, and Gordon. Ans. 6-8. We agree with the Examiner for the
reasons given by the Examiner in the Examiner’s Answer.

Section 103 rejection of claims 8, 9, 12, and 13
Appellants contend that the combination of Knudson, Hendricks, and
Gordon does not teach “decoding and executing said third menu applet
within said subscriber equipment to display a third interactive user interface
through which the subscriber can become a subscriber to the selected
service” as recited in independent claim 7, from which claims 8, 9, 12, and
13 depend. App. Br. 18. The Examiner finds that the combination of
Knudson, Hendricks, and Gordon teaches this limitation. Ans. 33-34.
Appellants have not provided persuasive evidence or argument to rebut the
Examiner’s finding.
We sustain the rejection of claims 8, 9, 12, and 13 under 35 U.S.C.
§ 103.

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Section 103 rejection of claims 10 and 11
Appellants contend that the combination of Knudson, Hendricks, and
Gordon does not teach “decoding and executing said third menu applet
within said subscriber equipment to display a third interactive user interface
through which the subscriber can become a subscriber to the selected
service” as recited in independent claim 7, from which claims 10 and 11
depend. App. Br. 18. The Examiner finds that the combination of Knudson,
Hendricks, and Gordon teaches this limitation. Ans. 33-34. Appellants have
not provided persuasive evidence or argument to rebut the Examiner’s
finding.
We sustain the rejection of claims 10 and 11 under 35 U.S.C. § 103.

Section 103 rejection of claims 14 and 15
Appellants contend that the combination of Knudson, Brown, Goode,
and Hamlin does not teach “dynamically defining subsets of content to be
created as personal SOD” as recited in claim 14. App. Br. 19-20.
Appellants’ contention is inconsistent with columns 6 and 7 and Figures 8
and 9 of Knudson as discussed in our analysis of claim 1.
Appellants contend that the Examiner ‘s reason for modifying the
prior art to include a subscriber identification number as taught by Goode,
which is providing flexible and useful security measures such as
customizable access, is unaccompanied by evidence. App. Br. 20.
Appellants’ contention is inconsistent with columns 1 through 3 of Goode.
We sustain the rejection of claim 14 under 35 U.S.C. § 103.
Appellants do not present arguments for separate patentability of claim 15
which falls with claim 14.
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Section 103 rejection of claims 16-18
Appellants contend that the combination of Knudson, Brown, Goode,
and Hamlin does not teach “dynamically defin[ing] subsets of content to be
created as personal SOD” as recited in claim 16. App. Br. 20-21.
Appellants’ contention is inconsistent with columns 6 and 7 and Figures 8
and 9 of Knudson as discussed in our analysis of claim 1.
Appellants contend that the Examiner’s reason to modify the prior art
to include a signaling mechanism to convey the user’s selection is
unaccompanied by evidence. App. Br. 21-22. Appellants’ contention is
inconsistent with columns 1through 3 of Goode.
We sustain the rejection of claim 16 under 35 U.S.C. § 103.
Appellants do not present arguments for separate patentability of claims 17
and 18 which fall with claim 16.

DECISION
The rejection of claims 1-6 under 35 U.S.C. § 103(a) as being
unpatentable over Knudson, Brown, and Hamlin is affirmed.
The rejection of claims 7-9, 12, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Knudson, Hendricks, and Gordon is affirmed.
The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Knudson, Brown, Billock, Hamlin, and Goode is
affirmed.
The rejection of claims 14-18 under 35 U.S.C. § 103(a) as being
unpatentable over Knudson, Brown, Goode, and Hamlin is affirmed.
Appeal 2010-010377
Application 10/689,005

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
41.50(f).

AFFIRMED

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