Ex Parte Gray et al

Patent Trial and Appeal Board

Sep 19, 2012

10611454 (P.T.A.B. Sep. 19, 2012)

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.
10/611,454 06/30/2003 James Harold Gray ATT030075 1616
84326 7590 09/19/2012
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
INGVOLDSTAD, BENNETT
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
09/19/2012 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 JAMES HAROLD GRAY, THOMAS JEFFERSON BROTHERS,
and WILLIAM RANDLOPH MATZ
____________

Appeal 2010-004828
Application 10/611,454
Technology Center 2400
____________

Before CARLA M. KRIVAK, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004828
Application 10/611,454

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-21 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Exemplary Claim 1 follows:
1. A method comprising:

determining at a data center whether to inform a user of
an interactive television service of alternate content, the user
connected with the data center via a network;

responsive to determining to inform the user of the
alternate content, generating a hot key signal indicating
availability of the alternate content; and

inserting the hot key signal into a content signal
transmitted to the user from the head-end and data center via
the network;

wherein the determining is independent of any request by
the user for the alternate content, but based at least in part on a
search for alternate content having subject matter that is related
to subject matter of content being viewed by the user when the
search is conducted.

The Examiner rejected claims 1, 2, 5-9, 12-16, and 19-21 under 35
U.S.C. § 102(e) as being anticipated by Omoigui (U.S. 2005/0086687) (Ans.
3-7).
The Examiner rejected claims 3, 4, 10, 11, 17 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Omoigui in view of Agnihotri (U.S.
2003/0163828) (Ans. 7-8).
Appeal 2010-004828
Application 10/611,454

3
ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner err in ruling that Omoigui discloses determining
whether to inform a user of an alternate content service “based at least in
part on a search for alternate content having subject matter that is related to
subject matter of content being viewed by the user when the search is
conducted,” as recited in independent claim 1 (emphasis added) and as
similarly recited in independent claims 8 and 15?

ANALYSIS
The Examiner found that Omoigui meets the claim limitation
emphasized above because it discloses that “[r]ecommended alternate
content is based on . . . programs that are currently being viewed by Figures
13-15” (Ans. 11). Appellants argue that the Examiner erred because
Omoigui’s Figures 13-15 show that “processing of correlations occur based
on collective information -- after the identification of patterns that arise from
the analysis of multiple programs” (App. Br. 9). We agree with Appellants.
Each of Omoigui’s Figures 13-15 contains data regarding how long certain
programs were viewed by a viewer during a past time period, and not which
program a viewer is currently viewing, as required by each of independent
claims 1, 8, and 15. Accordingly, for these reasons as expressed more fully
by Appellants (App. Br. 5-10), we find that the Examiner erred in rejecting
independent claims 1, 8, and 15 as well as claims 2, 5-7, 9, 12-14, 16, and
19-21 dependent therefrom as anticipated. We also find that the Examiner
erred in rejecting dependent claims 3, 4, 10, 11, 17 and 18 as obvious
Appeal 2010-004828
Application 10/611,454

4
because the secondary reference does not teach the limitation from the
independent claims that is missing from Omoigui (see Ans. 7-8).

DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, 5-9, 12-16,
and 19-21 as anticipated and claims 3, 4, 10, 11, 17 and 18 as obvious.

REVERSED

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