Ex Parte Jackson

Patent Trial and Appeal Board

Feb 27, 2017

12611650 (P.T.A.B. Feb. 27, 2017)

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.
12/611,650 11/03/2009 Markus Wayne Jackson P2009-08-05 (290110.469) 2909
70336 7590 02/27/2017
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
LEWIS, JONATHAN V
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
02/27/2017 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 MARKUS WAYNE JACKSON
Appeal 2016-001823
Application 12/611,650
Technology Center 2400
Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and
JOHN R. KENNY, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—20, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is EchoStar Technologies
LLC. App. Br. 1.
Appeal 2016-001823
Application 12/611,650
STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention generally relates to “determining whether a
presentation device is capable of presenting high definition content and
filtering the content selection menu accordingly to remove duplicative
content which is not compatible with the output format of the presentation
device.” Spec. 19. Claim 1, which is illustrative, reads as follows:
1. A video output device comprising:
an output interface that communicatively couples to a
display; and
a processor operable to:
determine whether the display is capable of
presenting high definition content;
identify a set of video programming available for
output;
filter the set of video programming responsive to a
determination regarding whether the display is capable of
presenting high definition content; and
output a selection menu, identifying the filtered set
of video programming, for presentation by the display.
Rejections
Claims 1—5, 7—13, 15—17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Potrebic et al. (US
2010/0162292 Al; published June 24, 2010) (“Potrebic”) and Zustak (US
2010/0175098 Al; published July 8, 2010). Final Act. 3—10.
2
Appeal 2016-001823
Application 12/611,650
Claims 6, 14, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Potrebic, Zustak, and Megeid (US
2004/0246372 Al; published Dec. 9,2004). Final Act. 11-12.
Issues on Appeal
Did the Examiner err by finding that the combination of Potrebic and
Zustak teaches or suggests “a processor operable to . . . filter the set of video
programming responsive to a determination regarding whether the display is
capable of presenting high definition content,” as recited in claim 1?
ANALYSIS
Claim 1
Appellant contends the combination of Potrebic and Zustak fails to
teach or suggest “a processor operable to . . . filter the set of video
programming responsive to a determination regarding whether the display is
capable of presenting high definition content,” as recited in claim 1. App.
Br. 8—10; Reply Br. 2—A. In particular, Appellant contends “the system of
Potrebic determines the capabilities of the client to output HD content to the
display instead of determining whether the display itself is capable of
presenting HD content,” as required by claim 1. App. Br. 9. Appellant
contends, therefore, “instead of filtering the set of ‘video programming
responsive to a determination regarding whether the display is capable of
presenting high definition content’ as recited in claim 1, the system in
Potrebic is acting responsive to capabilities of the client to output content.”
App. Br. 9. Appellant further contends Zustak does not teach or suggest the
disputed limitation because “instead of filtering out the set of video
3
Appeal 2016-001823
Application 12/611,650
programming, the system of Zustak filters out certain icons of devices.” Id.
We do not find Appellant’s contention persuasive. Potrebic describes
a client, such as a set-top box, for providing users access to content.
Potrebic 23, 26. Potrebic teaches that the client typically includes
hardware and software to transport and decrypt content and electronic
program guide (EPG) data received from a head end for rendering by a
display device. Potrebic 130. The Examiner finds, and we agree, Potrebic
teaches determining whether the client is capable of outputting content in
high-defmition and providing access to the content via the high-defmition
channel and restricting access to the content via the standard-definition
channel if the client is capable of outputting the content in high-defmition.
Final Act. 3 (citing Potrebic, Figs. 1, 2, 6; 62, 64). The Examiner
additionally finds Zustak teaches that when a user positions a cursor over an
icon of a display, a menu appears indicating whether the display is capable
of presenting high-defmition content and, therefore, teaches or suggests
determining whether the display is capable of presenting high definition
content. Final Act. 4 (citing Zustak 131); Ans. 12. Based on these findings,
the Examiner concludes the combination of Potrebic and Zustak teaches or
suggests the disputed limitation. Appellant’s contentions fail to persuasively
address the Examiner’s findings regarding the combined teachings of the
references and, therefore, are unpersuasive of error. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We note for emphasis Potrebic
teaches that the access module of the client is configured to determine the
hardware and software content capabilities of the client and that this
determination may be based on an input received from a user “specifying]
whether a television connected to a set-top box [e.g., the client] supports
4
Appeal 2016-001823
Application 12/611,650
high definition.” Potrebic 147. As such, Potrebic also teaches, or at least
suggests, determining whether the display is capable of presenting high
definition content. Therefore, we are not persuaded the Examiner erred in
finding the combination of Potrebic and Zustak teaches or suggests the
disputed limitation.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 and claims 2—20, which recite corresponding limitations and are not
argued separately with particularity. See App. Br. 10-11.
DECISION
We affirm the Examiner’s rejection of claims 1—20.
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
5