Ex Parte Jeffs

Patent Trial and Appeal Board

Jun 26, 2017

11871988 (P.T.A.B. Jun. 26, 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.
11/871,988 10/13/2007 Alistair E. Jeffs PD-207111 7978
141451 7590 06/26/2017
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
GEORGALAS, ANNE MARIE
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
06/26/2017 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 ALISTAIR E. JEFFS
Appeal 2015-0065161
Application 11/871,9882
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—3 and 5—25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
December 22, 2014), Reply Brief (“Reply Br.,” filed June 19, 2015), the
Examiner’s Answer (“Ans.,” mailed April 21, 2015), and Final Office
Action (“Final Act.,” mailed July 21, 2014).
2. Appellant identifies “The DIRECTV Group, Inc.” as the real party in
interest (Appeal Br. 2).
Appeal 2015-006516
Application 11/871,988
CLAIMED INVENTION
Appellant’s claims relate “to a content processing and delivery system
and, more specifically, to a system for ordering content from an interactive
interface of a mobile device in response thereto” (Spec. 11).
Claims 1 and 23 are the independent claims on appeal. Claim 1,
reproduced below, with added bracketed notations and paragraphing, is
illustrative of the subject matter on appeal:
1. A method of ordering content comprising:
[a] accessing an ordering interactive interface from a first
device;
[b] selecting a content selection from the interactive
interface at the first device;
[c] electronically communicating a customer identifier and
a material identification corresponding to the content selection
from the first device to a content processing system;
[d] electronically communicating a control word from the
content processing system having tuning data therein to a user
device disposed remotely from the first device, said tuning data
comprising data to enable the user device to tune to and store
content corresponding to the content selection including a user
device identifier;
[e] controlling the user device to receive and store the
content corresponding to the content selection in response to the
tuning data in the control word;
[f] storing the content in the user device; and
[g] generating an email at the content processing system
or user device indicative of a completion of storing the content
in the user device.
REJECTIONS
Claims 1—3, 5—7, 9, and 14—22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Franco (US 2002/0046407 Al, pub. Apr. 18, 2002) and
Kuether (US 2005/0229212 Al, pub. Oct. 13, 2005).
2
Appeal 2015-006516
Application 11/871,988
Claims 8 and 23—25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Franco, Kuether, and Baumgartner (US 2005/0160458
Al, pub. July 21, 2005).
Claims 10-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Franco, Kuether, and Ellis, (US 2005/0028208 Al, pub. Feb. 3, 2005).
ANALYSIS
Independent claim 1 and dependent claims 2, 3, and 5—22
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Franco and Kuether fails to disclose or suggest “generating
an email at the content processing system or user device indicative of a
completion of storing the content in the user device,” as recited by limitation
[g] of independent claim 1 (see Appeal Br. 5—9; see also Reply Br. 2—7).
The Examiner maintains that the rejection is proper, and cites
paragraphs 14—17 and 31 of Kuether as disclosing the argued limitation (see
Final Act. 4—5, 9). In the Answer, the Examiner also relies on paragraphs
11, 39, and 40, as well as Figure 4e of Kuether (see Ans. 26—30).
Kuether is directed to “a near real time system and method for
downloading and verifying a subscriber’s remote record request via the
satellite broadcast network to control a recording device such as a DVR or
VCR” (Kuether 12). To accomplish this, Kuether discloses
[t]he subscriber selects a program to record and submits a remote
record request that includes a program code and a subscriber ID.
The programming request is sent to a satellite broadcast center
for validation and insertion into a packet that is submitted to the
center’s uplink stream and then broadcast at near real time via
3
Appeal 2015-006516
Application 11/871,988
satellite. This packet is addressed to target only the subscriber’s
integrated receiver decoder (IRD).
{Id. 115). Following the request, Kuether discloses
[t]he subscriber’s IRD receives the packet, extracts the
programming information, determines whether the request is
addressed to that IRD, performs a validation test to check for
programming overlap, passwords and rating limitations. If all
tests are passed, the program code is tagged for recording. At the
selected time, the IRD tunes to the channel specified by the
program code and the DVR records the event.
{Id. 116). Kuether further discloses
[t]he IRD then sends a verification response to the subscriber via
a back channel. The packet contains a setting that allows the IRD
to call out through a phone line, DSL or cable modem via the
IRD’s modem or other communication port, e.g. USE or
Firewire®, to a subscriber utility or web site. The verification
response confirms that the request has been successfully received
or informs the subscriber that the request was denied or failed.
In the latter case, the subscriber may be provided the opportunity
to resolve a programming conflict, sign up for the requested
service, increase a billing limit or change a rating limitation.
{Id. at 117; see also id. H 31, 39, 40).
Franco is directed to “[a] remotely programmable broadcast content
recording system is programmed through a web page to record broadcast
content such as television programs” (Franco 1 13).
We have reviewed the cited portions of Kuether, in view of Franco,
and agree with Appellant that the cited prior art fails to disclose or suggest
“generating an email at the content processing system or user device
indicative of a completion of storing the content in the user device,” as
recited by limitation [g] of independent claim 1. Here, as Appellant points
out, Kuether discloses that
4
Appeal 2015-006516
Application 11/871,988
[t]he verification response indicates that the remote record
“request was received and either executed or rejected.” The
verification response indicates that the request to record a
program is executed. This does not indicate whether the program
is currently being recorded and/or that the recording of the
program is completed, but rather simply that the remote record
request to record the program is executed.
(Appeal Br. 6—7). More particularly, we note that Kuether discloses that its
“verification response confirms that the request has been successfully
received or informs the subscriber that the request was denied or failed”
(Kuether 117). Thus, we agree with Appellant that the verification response
sent by the IRD to the subscriber via back channel “is performed
independent of whether the recording is performed and/or whether the
recording is completed” (Appeal Br. 8; see also Kuether H 17, 31, 40). The
Examiner does not rely on Franco to address this deficiency.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejections of claims 2, 3, and 5—22, which
depend therefrom.
Independent claim 23 and dependent claims 24 and 25
Independent claim 23 includes a limitation substantially similar to
independent claim 1 ’s limitation [g] discussed above. The addition of
Baumgartner does not cure the above identified deficiency. Therefore, we
do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claim 23, and dependent claims 24 and 25 that depend
therefrom, for the same reasons set forth above with respect to independent
claim 1.
5
Appeal 2015-006516
Application 11/871,988
DECISION
The Examiner’s rejections of claims 1—3 and 5—25 under 35 U.S.C.
§ 103(a) are sustained.
REVERSED
6