Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Oct 31, 2012

10675434 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT
____________________

Appeal 2011-012259
Application 10/675,434
Technology Center 2400
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Before JOSEPH L. DIXON, THU A. DANG,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012259
Application 10/675,434

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a media processing system and
method that enables a user to send and receive indication of user activity;
wherein, the user can initiate a request to receive notification of user activity
of another based upon a predefined set of conditions (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method of communicating activity information to
support user interaction in a communication network, the
method comprising:

receiving at least one condition, at a first location, the at
least one condition defining when an indication of media
consumption activity is sent by the first location to a second
location, via the communication network;

receiving a request for consumption of media of a second
user at the second location, from a first user at the first location;

at the time of said receiving the request for consumption
of media of the second user at the second location, from the
first user at the first location, sending at least one indication of
media consumption activity to the second user at the second
location, via the communication network, if the at least one
condition is met, to enable interaction of the first user and the
second user during media consumption by the first user; and
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refraining from sending at least one indication of media
consumption activity to the second user at the second location,
via the communication network, if the at least one condition is
not met.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Reto US 2002/0144273 Al Oct. 03, 2002
Finseth US 6,813,775 Bl Nov. 02, 2004

Claims 1-44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Finseth in view of Reto.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
determining that the combination of Finseth and Reto teaches or would have
suggested the following:
receiving a request for consumption of media of a
second user at the second location, from a first user at the first
location;
at the time of said receiving the request for consumption
of media of the second user at the second location, from the
first user at the first location, sending at least one indication of
media consumption activity to the second user at the second
location, via the communication network, if the at least one
condition is met, to enable interaction of the first user and the
second user during media consumption by the first user
(claim 1, emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Finseth
1. Finseth discloses a system that enables a user to regularly share
preference information using an established share interval, based upon
sharing features (Figs. 11 and 12; col. 12, ll. 49-51; col. 15, ll. 27-42; col.
16, ll. 30-35).
Reto
2. Reto discloses a system that enables a user at a client device to
send a request to the server to generate an invitation icon to be executed on
another one of the client devices; wherein, users of different client devices
can communicate with each other and share an interactive television
watching experience by merely selecting a displayed icon button (¶¶ [0041]
and [0042]). In particular, when the user at a client device selects a share
button 63 while watching pay content streamed from the video-on-demand
server 9, a request is sent to the server 5; wherein, the request includes chat
room data indicating all client devices present in chat room, the client device
identification number of the sender client device, the information identifying
the present user, icon identification data, and present content data (the
television channel and the frame number of the television program presently
being viewed at the sender client device) (¶¶ [0175] and [0176]).
3. After the server investigates which client devices are watching
different television programming, the server sends an invitation icon to these
client devices along with icon identification data, present content data, client
device identification number of the sender client device, and information
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identifying the present user; wherein, the user at the receiving client device
may choose to watch the programming or not (¶ [0176]).

IV. ANALYSIS
Claims 1-44
As to independent claim 1, Appellants contend that “Reto teaches
sending from one client device to a server, a request to display an icon on
second client device, which is quite different from and does not teach,
suggest, or disclose a ‘request for consumption of media of the second user’”
(App. Br. 15). Appellants assert that the server “sending ‘subsequently’ [the
request, as disclosed in Reto,] does not teach, suggest, or disclose sending
the ‘at least one indication’ at the time of receiving a request for
consumption of media” (id.). Appellants argue that “Finseth does not
teach, suggest, or disclose that the sharing of ‘user preference information’ is
done ‘at the time of said receiving the request for consumption of media;’”
“[i]nstead, Finseth teaches that ‘user preference information’ is shared at the
expiration of a ‘share interval’ set by the user” (App. Br. 16).
However, the Examiner finds that Reto teaches “receiving a request
for consumption of media of a second user at the second location, from a
first user at the first location (i.e. first one of client device send request to
server)” (Ans. 16). The Examiner notes that “the claim language is open to
a broader interpretation” and “[t]he claim language is unclear with respect
who/what (i.e. set-top box, head-end, server, another user at different
location, etc.) is ‘receiving a request for consumption of media of a second
user at the second location, from a first user at the first location’” (id.). The
Examiner notes further that “‘consumption of media’ is open to broader
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interpretation of use of any audio/video data by user(s) at the first/second
location(s) and does not strictly limit to personal media of user(s)” (id.).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not place any limitation on what “consumption of
media” means, includes, or represents. The Specification discloses that
consumption may comprise at least one of playing audio, displaying a still
image, displaying video, and displaying data (Spec. ¶ [0010]). Thus, we
give “consumption of media of the second user” its broadest reasonable
interpretation as the playing or displaying of media by a user, as consistent
with the Specification and claim 1.
Further, we find that the language “for consumption of media” is
merely describing the “request” but does not change the functionality of or
provide any additional function to the claimed step of “receiving the
request” of claim 1. That is, this term is merely describing the type of
request, i.e., the type of data being received without changing how the data
is to be received.
When descriptive material is not functionally related to the claimed
medium, the descriptive material will not distinguish the invention from the
prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Circ. 1983). That is,
the descriptive material will not be given patentable weight absent a new and
unobvious functional relationship between the descriptive material and the
medium. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed. Cir. 1994); Ngai,
367 F.3d at 1339 (nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious). See also
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Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential), aff'd,
191 Fed. Appx. 959 (Fed. Cir. 2006).
Finseth discloses a system that enables a user to regularly share
preference information using an established share interval, based upon
sharing features (FF 1). We find that sharing of preference information
comprises at least one condition defining when an indication of media
consumption activity is sent to a second location from a first location. That
is, we find that Finseth’s sharing features comprises “sending at least one
indication of media consumption activity to the second user at the second
location, via the communication network, if the at least one condition is
met” (claim 1).
In addition, Reto discloses a system that enables a client device to
send a request for any of the other client devices within the network to share
an interactive television watching experience; wherein, the request is sent
with chat room data including present content data (FF 2). The server
receives that request and makes a determination as to which client devices to
send an invitation icon including the chat room data and present content data
(FF 3). We find that the request is a request for consumption of the
interactive television. That is, we find that Reto’s client device request
comprises “request for consumption of media of a second user at the second
location, from a first user at the first location” (claim 1).
In view of our claim construction above, we find that the combination
of Finseth and Reto at least suggests providing the following:
receiving a request for consumption of media of a second
user at the second location, from a first user at the first location;
at the time of said receiving the request for consumption
of media of the second user at the second location, from the
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first user at the first location, sending at least one indication of
media consumption activity to the second user at the second
location, via the communication network, if the at least one
condition is met, to enable interaction of the first user and the
second user during media consumption by the first user

as required by claim 1.
The Supreme Court has stated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Thus, we find no error in the Examiner’s finding that the combination
of Finseth’s system (including sharing features) that enables a user to
regularly share preference information with the interactive television client
device request having chat room data and present content data, as disclosed
in Reto, produces a request for consumption of media while at the same time
communicating an indication of consumption activity which would be
obvious (Ans. 6; FF 1-3).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Finseth in
view of Reto. Further, independent claims 11, 22, 30, and 40 having similar
claim language and claims 2-10, 12-21, 23-29, 31-39, and 41-44 (depending
from claims 1, 11, 22, 30, and 40) which have not been argued separately,
fall with claim 1.

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V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-44 under 35 U.S.C. § 103(a) is
affirmed.
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)(iv).

AFFIRMED

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