10675489 (P.T.A.B. May. 17, 2016)

Ex Parte Karaoguz et al

Patent Trial and Appeal BoardMay 17, 2016

10675489 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/675,489 0913012003 51472 7590 05/19/2016 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. BP2813 6006 EXAMINER RYAN, PATRICK A ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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 BENNETT Appeal2014-008312 Application 10/675,489 Technology Center 2400 Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-34, 37-39, and 42--44. 1 Claims 35, 36, 40, 41, 45, and 46 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We Reverse. 1 See Final Office Action (hereinafter "Final Act."), mailed December 5, 2013. Appeal2014-008312 Application 10/675,489 STATEivIENT OF THE CASE Invention The invention on appeal relates to "a method and system for providing a media exchange network with a service user interface." (Spec. i-f 4). Illustrative Claim 1. A method for providing information related to a broadcast television program, the method comprising: generating, remotely from a user's home, an announcement corresponding to media content available to the user; delivering said announcement along with the broadcast television program for display on a television screen within said home in response to said indication, wherein said user further chooses when to view said announcement, and wherein said announcement is displayed on said television screen in response thereto, said announcement is independent of media content that is being displayed on said television screen at the time of said announcement, and said announcement is delivered based on a profile of said user; and receiving an input from said user that corresponds to said delivered announcement, wherein the input includes an acceptance of the media content and a scheduled later time and date, selected by the user, to view the media content. (Emphasis added with respect to contested limitation). Rejections 2 A. Claims 1-32, 34, 37, 39, 42, and 44 are rejected under 35 U.S.C. Â§ 102(e) as anticipated by Yen (US 6,668,278 Bl; pub. Dec. 23, 2003). 2 In the event of further prosecution, we direct the Examiner's attention to the question of whether the claims are indefinite under 35 U.S.C. Â§ 112, second paragraph, based on the recitation of "in response to said indication" 2 Appeal2014-008312 Application 10/675,489 B. Claims 33, 38, and 43 are rejected under 35 U.S.C. Â§ 103(a) over the combined teachings and suggestions of Yen in view of Trajkovic (US 6,839,072 B2; pub. Jan. 4 2005). Prior Related PTAB Decision In a related Decision, entered February 8, 2013, in Appeal 2011- 005696, a merits panel of the Board affirmed the Examiner's rejections of claims 1-34, 37-39, and 42--44 under 35 U.S.C. Â§Â§ 102(e) and 103(a). ANALYSIS Issue: Under Â§ 102( e ), did the Examiner err in finding Yen anticipates the contested step of "receiving an input from said user that corresponds to said delivered announcement, wherein the input includes an acceptance of the media content," within the meaning of claim 1? This appeal turns on claim construction. According to the Examiner, "the claims do not explicitly require receiving an input in response to an announcement/alert" because the "corresponds to" language is too broad to enforce a temporal relationship, and therefore, "inputs received prior to the generation of announcement/alert are not precluded from the claims." (Ans. 3) (second emphasis added). As Appellants correctly point out, "the term 'delivered announcement' refers to the past tense. Therefore the announcement has already been delivered when the 'input' is received from the user. This reading of the claim ... follows the rules of grammar." (Reply Br. 3). (emphasis added) in the independent claims. The antecedent basis for the term "said indication" appears to have been deleted by a prior Amendment. 3 Appeal2014-008312 Application 10/675,489 Even if we assume arguendo the claim language "corresponds to" does not limit the recited steps to a particular order (as concluded by the Examiner), we cannot ignore the tense of the word "delivered." (Claim 1). The words of a claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F .2d 319, 321 (Fed. Cir. 1989). Regarding claims 1and11, the "delivered announcement" term refers to the antecedent step of "delivering said announcement" in the past tense, and thus the claimed order of steps are required. Although the broadest reasonable construction of "corresponds to" does not require the received user input to be 'in response to' the delivered announcement, we conclude the user input must nevertheless occur sometime after the announcement is delivered. In light of this construction, Appellants have persuaded us the Examiner erred in mapping the contested limitation to an input that occurs before the announcement is delivered. (See Final Act. 5) (citing Yen col. 11, 11. 46-49, which describes receiving "confirmation from the recipient" when configuring alert preferences, prior to an alert being delivered). Because we are persuaded the Examiner erred, we reverse the anticipation rejection A of claim 1. For the same reasons, we also reverse rejection A of independent claims 11 and 21, which recite commensurate limitations to those contested for claim 1. Likewise, we reverse dependent claims 2-10, 12-20, 22-32, 34, 37, 39, 42, and 44, which depend from respective independent claims 1, 11, and 21, and were also rejected under rejection A. 3 3 We express no opinion as to whether the claims the Examiner rejected as being anticipated by Yen would have been obvious over Yen, or over the 4 Appeal2014-008312 Application 10/675,489 Rejection B of claims 33, 38, and 48 underÂ§ j 03 (a) Regarding rejection B underÂ§ 103(a), the Examiner has not shown how the addition of Trajkovic overcomes the aforementioned deficiencies of Yen. Therefore, we reverse the obviousness rejection of dependent claims 33, 38, and 43. DECISION We reverse the Examiner's decision rejecting claims 1-34, 37-39, and 42--44. REVERSED combined teachings and suggestions of Yen and Trajkovic (or other references). We leave any such further consideration to the Examiner. Although the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) Â§ 1213.02 (9th Ed., Rev. 9, Nov. 2015). 5