Ex Parte Jeffs

Patent Trial and Appeal Board

Jun 16, 2016

12200905 (P.T.A.B. Jun. 16, 2016)

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.
12/200,905 08/28/2008 Alistair E. Jeffs PD-208041 8471
20991 7590 06/17/2016
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
06/17/2016 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 2014-008442
Application 12/200,905
Technology Center 2600
____________

Before BRUCE R. WINSOR, JON M. JURGOVAN, and
AARON W. MOORE, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 2, 4–16, and 18–23, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 3, 17,
and 24–28 are cancelled. (App. Br. 2.)
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2013).

1 The real party in interest identified by Appellant is The DIRECTV Group,
Inc. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellant’s disclosed invention “relates to a content processing and
delivery system and, more specifically, to a system for ordering content
using a voice menu system.” (Spec. ¶ 1.) Claim 1, which is illustrative,
reads as follows:
1. A method of initiating a recording at a user
device comprising:
communicating between a voice device and a voice
menu system using a phone signal, wherein said voice menu
system is separate from the user device;
determining a phone number associated with the voice
device from the phone signal;
in response to recognizing the phone number,
generating a voice prompt for recording a content selection
from the voice menu system;
selecting a recording content option;
generating prompts for determining a content title;
selecting a content title by communicating a selection
signal from the voice device to the voice menu system;
communicating a control word having a content
location from a content processing system to the user device
for recording content corresponding to the content title;
tuning the user device in response to the control word
using the content location from the control word;
receiving the content at the user device; and
storing the content corresponding to the content title in
the user device.
Claims 1, 4–10, 15, 16, 18–20, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Chen et al. (US
2007/0118857 A1; May 24, 2007; hereinafter “Chen”) and Pinder et al. (US
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2004/0237100 A1; Nov. 25, 2004; hereinafter “Pinder”). (See Final Act. 4–
19.)
Claims 2, 11–14, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen, Pinder, and Levin (US 2003/0061039 A1;
Mar. 27, 2003). (See Final Act. 19–23.)
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Jan. 14, 2014; “Reply Br.” filed July 22, 2014) and the
Specification (“Spec.” filed Aug. 28, 2008) for the positions of Appellant
and the Final Office Action (“Final Act.” mailed Aug. 14, 2013) and Answer
(“Ans.” mailed May 22, 2014) for the reasoning, findings, and conclusions
of the Examiner.

ISSUES
Based on Appellant’s arguments, we discuss the appeal by referring to
claim 1. The issues presented by Appellant’s contentions are as follows:
Whether the Examiner errs in finding Chen discloses “determining a
phone number associated with the voice device from the phone signal[,
and] in response to recognizing the phone number, generating a voice
prompt for recording a content selection from the voice menu system” (the
“determining and generating limitations”), as recited in claim 1.
Whether the Examiner errs in finding the combination of Chen and
Pinder teaches or suggests “communicating a control word having a
content location from a content processing system to the user device for
recording content corresponding to the content title[, and] tuning the user
device in response to the control word using the content location from the
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control word” (the “communicating a control word and tuning limitations”),
as recited in claim 1.

ANALYSIS
The Determining and Generating Limitations
Appellant contends “Chen . . . do[es] not disclose determining a phone
number, associated with a voice device, from a phone signal at a voice menu
system.” (App. Br. 7.) We disagree. First of all, the claim does not recite
that the determining limitation occurs “at [the] voice menu system.” Chen
discloses the following:
The communication server(s) 194 can associate the call
with a user’s set-top box device 116, 124, for example by
querying the subscriber and system store 148 for an identifier of
a set-top box device 116, 124 associated with caller ID
information, a voice print match, or other personal identifier
received during the call.
(Chen ¶ 35 (italics added, bold facing omitted).) Appellant argues
Chen’s “calls are routed to the communication servers based on telephone
numbers of the communication servers 194. . . . [T]he telephone
numbers are for the communication server(s) 194. Thus, the phone numbers
are of the devices receiving the calls, not of the devices sending the calls.”
(Reply Br. 3.) Appellant misinterprets Chen’s disclosure. Chen discloses
that the communication server associates an incoming call with the identifier
of a set-top box device from, inter alia, “caller ID information . . . received
during the call,” e.g., from Chen’s “user phone.” (Accord Chen ¶ 61
(“These credentials may include caller identification information, one or
more voice prints associated with the caller, a personal identification number
(PIN), a password or passcode, any other suitable credential, or any
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combination thereof.” (emphasis added)).) We find Chen discloses
“determining a phone number associated with the voice device” (Chen’s
“user phone” and “cell phone” (Fig. 1 (items 178, 182)) from the phone
signal (from Chen’s caller ID information (¶ 35)), i.e., the determining
limitation.
Appellant contends as follows:
[S]ince Chen . . . fail[s] to disclose determining a phone number
associated with a voice device from a phone signal at a voice
menu system, [i.e., the determining limitation,] Chen . . . cannot
disclose [‘]in response to recognizing the phone number at the
voice menu system, generating a voice prompt for recording a
content selection from the voice menu system[’] [i.e., the
generating limitation].”
(App. Br. 8.) Because we find Chen discloses the determining limitation,
Appellant’s argument does not persuade us of error in the Examiner’s
findings regarding the generating limitation.
The Communicating a Control Word and Tuning Limitations
The Examiner relies on Pinder to suggest the communicating a control
word and tuning limitations. (Final Act. 6–9 (citing Pinder ¶¶ 35, 47–48, 64,
70–73, Figs. 1, 2, 4A, 5); see also Ans. 26–31 (additionally citing Pinder
¶¶ 32, 44; Spec. ¶¶ 72, 76, 168, 235, 237, 248-49).) Appellant contends that
Pinder’s “control word” (see, e.g., Pinder ¶¶ 47–48) is a part of Pinder’s
authentication and encryption scheme, and does not include a “content
location” that is used to “tun[e] the user device.” (See App. Br. 8–10; Reply
Br. 4–7.) We agree with Appellant.
During prosecution, the terms used in claims are given their broadest
reasonable interpretation consistent with the Specification, In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997), without importing un-recited limitations
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into the claims from the Specification, In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). The Examiner is correct that Appellant’s
Specification does not explicitly define “content location.” (Ans. 27–28.)
We note that the Specification similarly gives no explicit definition of
“control word.” Nevertheless, we do find guidance in the Specification as to
broadest reasonable interpretation of “content location” and “control word.”
Claim 1 describes the “content location” as being used to tune the user
device. Appellant’s Specification describes the “control word” as being
generated in response to a request signal (Spec. ¶ 235) and communicated to
a specified user device (id.). In Appellant’s preferred embodiments, the
“control word” may be a “conditional access packet” (CAP) (id.) or an
encrypted “control word packet” (CWP) (Spec. ¶ 76). Appellant’s
Specification describes a “CAP or control word [that] may include various
information such as the particular content delivery network or the particular
transponder on the satellite that will correspond to the content. Content
time, duration channel, location may be information provided in the CAP.”
(Spec. ¶ 235.) In view of the foregoing, we conclude the broadest
reasonable interpretation of “control word” is a command in digital form
(i.e., packet or packets) that includes “content location” and causes the user
device to be tuned to receive the desired “content.” The broadest reasonable
interpretation of “content location” is the tuning information necessary for
the user device to receive the desired “content.”
The passages relied upon by the Examiner (Final Act. 6–9; Ans. 26–
31) describe a “control word” that is used to encrypt and decrypt a service or
content (Pinder ¶¶ 32, 35, 44, 47–48, 64, 70–73, Figs. 1, 2, 4A, 5), but do
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not describe using Pinder’s “control word” to tune a user device as recited in
claim 1.
Summary
Appellant has persuaded us that the Examiner erred in finding Pinder,
when combined with Chen, teaches or suggests the communicating a control
word and tuning limitations. Accordingly, we do not sustain the rejections
over various combinations of Chen, Pinder, and Levin of claim 1;
independent claim 16, which recites limitations similar to those of claim 1
and which was rejected on substantially the same bases (compare Final Act.
14–17 with Final Act. 4–9); and claims 2, 4–15, and 18–23, which variously
depend, directly or indirectly, from claims 1 and 16.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1 and 16 are rejected on a new ground of rejection under 35
U.S.C. § 102(b) as anticipated by Chen.
Claim 1
Except as discussed supra regarding the communicating a control
word and tuning limitations, we adopt the Examiner’s findings regarding
Chen’s disclosure of the limitations of claim 1 as our own. (See Final Act.
4–6). We do not adopt the Examiner’s following finding:
Chen does not explicitly disclose communicating a control
word having a content location from a content processing system
to the user device for recording content corresponding to the
content title or tuning the user device in response to the control
word using the content location from the control word.
(Final Act. 6.) Nor do we adopt the Examiner’s findings regarding Pinder.
(See Final Act. 6–9.)
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We find that Chen discloses the communicating a control word and
tuning limitations of claim 1. Although Chen does not use the term “control
word,” the application of references to a claim is not an ipsissimis verbis
test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Chen discloses
“issuing a programming command to a device via the IPTV[2] system to
record the selected video content” (Chen ¶ 12), i.e., issuing a “control word”
that causes a user device to tune to the selected content. Commands issued
via Internet Protocol are inherently in digital form. Chen further discloses
that, in response to a user’s selection of content, “the IVR[3], or hardware or
software communicating with the IVR, can transmit programming
commands to the DVR[4] to record the selected video content, as
scheduled.” (Chen ¶ 65.) Chen explains that programming commands
include “time, station, and other data.” (Chen ¶ 77.) In other words, Chen
discloses that the commands or “control words” (claim 1) include time and
station data necessary to record the selected content, i.e., the “content
location,” as recited in claim 1.
Claim 16
Except as discussed infra, we adopt the Examiner’s findings regarding
Chen as our own. (See Final Act. 14–16.)
We do not adopt the Examiner’s following finding:
Chen does not explicitly disclose a content processing
system communicating a control word having a content location
to the user device or said user device tuning a tuner using the
content location of the control word to receive the content and
recording the content in response to the control word.

2 Internet Protocol Television. (Chen ¶ 12.)
3 Interactive Voice Response logic module. (Chen ¶ 56.)
4 Digital Video Recorder. (Chen ¶ 20.)
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(Final Act. 16.) Nor do we adopt the Examiner’s findings regarding Pinder.
(See Final Act. 16–17.)
For the reasons discussed supra regarding the communicating a
control word and tuning limitations of claim 1, we find Chen discloses “a
content processing system communicating a control word having a content
location to the user device; and said user device tuning a tuner using the
content location of the control word to receive the content and recording the
content in response to the control word.”
Dependent Claims
We have entered new grounds of rejection for independent claims 1
and 16. We leave to the Examiner to consider the patentability of dependent
claims 2, 4–15, and 18–23 in light of our findings and conclusions supra
regarding the independent claims. The fact that we did not enter new
grounds of rejection for the dependent claims should not be construed to
mean that we consider the dependent claims to be patentable over the prior
art of record.

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DECISION
The decision of the Examiner to reject claims 1, 2, 4–16, and 18–23 is
reversed.
We enter a new ground of rejection for claims 1 and 16 under
35 U.S.C. § 102(b).
Section 41.50(b) provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)