Ex Parte Karaoguz et alDownload PDFPatent Trial and Appeal BoardSep 16, 201613216457 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/216,457 08/24/2011 51472 7590 09/20/2016 GARLICK & MARKISON (BRCM) P.O. BOX 160727 AUSTIN, TX 78716-0727 FIRST NAMED INVENTOR Jeyhan Karaoguz 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BP2818Cl 4158 EXAMINER LUONG, ALAN H ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 09/20/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): MMURDOCK@TEXASPATENTS.COM ghmptocor@texaspatents.com bpierotti@texaspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT Appeal2015-000309 Application 13/216,457 Technology Center 2400 Before JEFFREYS. SMITH, HUNG H. BUI, and AMBER L. HAGY, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's Final Office Action rejecting claims 26-45, which are all of the claims pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM.2 1 According to Appellants, the real party in interest is Broadcom Corporation. App. Br. 1. 2 Our Decision refers to Appellants' Appeal Brief filed June 16, 2014 ("App. Br."); Reply Brief filed September 28, 2014 ("Reply Br."); Examiner's Answer mailed August 1, 2014 ("Ans."); Final Office Action mailed February 28, 2014 ("Final Act."); and original Specification filed August 24, 2011 ("Spec."). Appeal2015-000309 Application 13/216,457 STATEMENT OF THE CASE Appellants' invention relates to "a media exchange network 100 supporting card-based and independent server-based billing and authorization" and providing "access to media-related services." Spec. i-fi-128-29. According to Appellants, "user billing and authorization for the services are accomplished by purchasing a card or subscribing to a server- based service." Id. at ,-r 28. Claims 26, 35, and 39 are independent. Claim 26 is illustrative of Appellants' invention, as reproduced with disputed limitations emphasized below: 26. A system for communicating multimedia information in a communication network, comprising: at least a first communication device deployed in a first geographic location and coupled to the communication network; and a card carrying information related to one or more user- defined selections of information content, wherein when the card is communicatively coupled to the first communication device, the card allows the first communication device to access: at least a first portion of the one or more user- defined selections of information content, said first portion located at a second communication device deployed at the first geographic location; and at least a second portion of the one or more user- defined selections of information content, said second portion located at a third communications device deployed at a second geographic location and coupled to the communication network. App. Br. 14 (Claims App.). 2 Appeal2015-000309 Application 13/216,457 Examiner's References and Rejections (1) Claims 26-34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shintani et al., (US Publication 2002/0124249 Al; issued Sept. 5, 2002) ("Shintani") and Thomas et al., (US Publication 2002/0059621 Al; May 16, 2002) ("Thomas"). Ans. 4--10. (2) Claims 35-38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and Shintani. Ans. 10-14. (3) Claims 39--45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and Reto (US Publication 2002/0144273 Al; issued Oct. 3, 2002) ("Reto"). Ans. 14--18. ISSUE Based on Appellants' arguments, the dispositive issue presented on appeal is whether the Examiner erred in finding Shintani teaches the disputed limitation: "a card carrying information related to one or more user-defined selections of information content ... [which] allows the first communication device to access" different types of content over a network, including (1) "first portion ... located at a second communication device deployed at the first geographic location" and (2) "second portion ... located at a third communications device" as recited in claim 26. App. Br. 6-9; Reply Br. 3--4. ANALYSIS § 103(a) Rejection of Claims 26--34 based on Shintani and Thomas With respect to independent claim 26, the Examiner finds Shintani teaches a system for communicating multimedia information in a 3 Appeal2015-000309 Application 13/216,457 communication network, shown in Figures 1-2, comprising a first communication device in the form of a set-top box (STB) 22 having a card reader 140 for communicating with a card, so called "smart card" carrying information related to authorization, and access to user-defined content. Ans. 4--5 (citing Shintani i1i120-21, 31, 46, Figs. 1-2). Shintani' s Figure 2 is reproduced below with additional markings, in red, for illustration. f~~''''"~'1 r"''---'"'"'''''''''''l r~::::,:;~~ .. :::"::::~~'} r,,_..: .. ~::~:"'~''l .~ ...-1 ·: 1r; : ....-~ ·:ll.~.:-:.p ... .....,L , i·>c-:~Aio- .. : ... ~ "' Al., .... ~~ t~--: t-.::~Ko ..ru~ .. ~:--. L~ .. '(...«" ~ • .........,. ~ ,,.,...._n.·~'.· •. •. ~r v· ~ · }-... .-'\'.~-.,.. r --*"~ >. "·''''·'·-''''· · ..... )..._ ~: ~)r·s··:R~Me-; t·.::.;.. f-- --1 :-:f•"'"··":"r·'"~ ~ fJ..__~ \·'lt}~~(': .~ ·.• r>. 2 I ,,~~r"'·~ ... L ........ 1 ··1 : ".. . i . ,., •. ! Ma,t.·)v,'" ! rn •. ~ ~ : : / t .. _:.~~ ...... _, 't : \. ;: ~ ~;; !l 1 »~~~i~ZB f ~ -·----~:::=~-----;~~~!~~~;~;'.~:=~:····;····=::;/1 I ................... ~~::::::::::::::::::::: .. ~ ............ J ~· -~~~} ·~ ~~ ~ ~~~ }~ ... f----~~~;:::::·.~:;~:~-~;;··---~ " "' '"' , , ,··.· · ''',f;i:'Lr~0*J ~~ L~;,'.] '%1'~~~~~=1 l, .............................. J t ............................................. ~ Shintani's Figure 2 shows a set-top box (STB) 22 having a card reader 140 to read a user's card for authentication and to authorize the user to access to media content from a media server 10 or other remote server 48, via a network 44. Shintani i131. The Examiner acknowledges Shintani does not expressly teach, but relies on Thomas to expressly teach, user access to different types of content over a network, including (1) "first portion ... located at a second communication device deployed at the first geographic location" and (2) "second portion ... located at a third communications device deployed at 4 Appeal2015-000309 Application 13/216,457 a second geographical location" as recited in claim 26 in order to support the conclusion of obviousness. Ans. 5---6 (citing Thomas i-fi-1 51-54, 58, 87-89, Figs 2 and 6B). Appellants contend the Examiner erred in finding Shintani discloses the disputed limitation: "a card carrying information related to one or more user-defined selections of information content ... [which] allows the first communication device to access" different types of content over a network, including (1) "first portion ... located at a second communication device deployed at the first geographic location" and (2) "second portion ... located at a third communications device" as recited in claim 26. App. Br. 6-9; Reply Br. 3--4. According to Appellants, Shintani's card "is simply used for authentication purposes" and does not carry "information related to one or more user-defined selections of information content" or provide "remote access of media content located at other devices at the same geographic locations as well as other geographic locations." App. Br. 7-8. In addition, Appellants argue "Thomas teaches away from a card, suggesting that on-demand media content is accessed directly through a remote network server." Id. at 8 (emphasis in original). Appellants further argue there is no teaching, suggestion, or motivation (TSM) to combine Shintani and Thomas because (1) there is "no nexus between the card in the STB of Shintani and remote access of content either in a second device at the same geographic location or in communication devices located at other geographic locations," and (2) there is no reason for a person skilled in the art to look to Thomas for making the combination. Id. at 8-9. 5 Appeal2015-000309 Application 13/216,457 We do not find Appellants' arguments persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. Ans. 18-24. As such, we adopt the Examiner's findings and explanations provided therein. Id. For example, as recognized by the Examiner, Shintani's card, as inserted into a card reader 140 of the set-top box (STB) 22, shown in Figure 2, contains not only information used for authentication but, once authorized, permits access (local or remote) to media content available anywhere in the network 100, including the media server 10, via a transmission medium 20 (e.g., cable network, satellite system, or wireless system) or other remote server 48, via the Internet 44, shown in Figure 1. Id. at 19; see also Shintani iTiT 21, 27. Contrary to Appellants' arguments, Thomas is only cited for expressly teaching accessing remote devices at different locations in the same network. Ans. 21. To the extent Appellants' argument would require the Examiner's rationale to conform to a rigid "teaching, suggestion, or motivation" test (TSM test), such an approach was foreclosed by KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The Court repudiated any requirement for such a "precise teaching" to show obviousness. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid approach of the Court of Appeals."). Rather, the requirement is only that the Examiner show "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103)(emphasis added); id. at 418 ("[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court 6 Appeal2015-000309 Application 13/216,457 can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). We conclude that the Examiner provides just such showings in the rejection. Ans. 6-7, 19-24. Additionally, Appellants have not presented evidence sufficient to show that combining the prior art was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellants presented evidence that any of their incorporations of known limitations yielded more than expected results. For these reasons, we sustain the Examiner's obviousness rejection of claim 26 and its dependent claims 27-34, which Appellants do not argue separately. § 103(a) Rejection of Claims 35-38 based on Thomas and Shintani With respect to claims 35-38, Appellants reiterate the same arguments presented against claims 26-34. For the same reasons discussed, we also sustain the Examiner's obviousness rejection of claims 35-38. § 103(a) Rejection of Claims 39--45 based on Thomas and Reta In contrast to claims 26-34, independent claim 39 does not require the use of a card at a set-top box (STB) to access media content. Rather, claim 39 only requires "a subscription with a server" to permit a user to select "at least one multimedia service to be provided to a first communication device at a first geographic location and/or a second communication device at a second geographic location" and then access "the selected at least one 7 Appeal2015-000309 Application 13/216,457 multimedia service by the first communication device, upon authentication of the first communication device." The Examiner finds Thomas teaches Appellants' claimed "method for communication multimedia information in a communication network" including all the recited steps, except for a "subscription allowing for access by the first communication device and the second communication device to the selected at least one multimedia service" as disclosed by Reto. Ans. 14-- 16 (citing Thomas i-fi-138, 52, 53, 70, 74, 77-81, 107-112, Figs. 1-2; Reto i-f 165-167, 173, Fig. 34). Appellants dispute the Examiner's factual findings regarding Reto. In particular, Appellants argue Reto simply teaches "inviting another user to purchase and watch pay-per-view content together on a client device[,]" and such a disclosure "is not equivalent to 'the subscription allowing for access by the first communication device and the second communication device to the selected at least one multimedia service."' App. Br. 12. We disagree with Appellants. As correctly recognized by the Examiner, "[t]he pay-per-view content of Reto" allows "individual purchases of the pay-per-view content for access to multiple devices to the same content using only a single authentication." Ans. 26. For these reason, we sustain the Examiner's obviousness rejection of claim 39 and its dependent claims 40-46, which Appellants do not argue separately. 8 Appeal2015-000309 Application 13/216,457 CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting claims 26-45 under 35 U.S.C. § 103(a). DECISION As such, we AFFIRM the Examiner's final rejection of claims 26-45. 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 9 Copy with citationCopy as parenthetical citation