Ex Parte Kelley

Patent Trial and Appeal Board

May 18, 2018

13655208 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/655,208 10/18/2012
84326 7590 05/21/2018
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Sean M. Kelley
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.
2012-0332 5089
EXAMINER
HASAN, SYED Y
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
05/21/2018 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 SEAN M. KELLEY 1
Appeal2018-000137
Application 13/655,208
Technology Center 2400
Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
IRVINE. BRANCH, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all the claims pending in
this application. App. Br. 1. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
designate our affirmance as new grounds of rejection.
1 Appellant lists AT&T Intellectual Property I, L.P ., as the real party in
interest. Appeal Brief 1, filed February 26, 2016 ("App. Br.").
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
August 20, 2015 ("Final Act.") and the Examiner's Answer mailed
September 8, 2016 ("Ans.").
Appeal2018-000137
Application 13/655,208
STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A method includes initiating playback of recorded media
content and receiving a record command from a remote control
device at the digital video recorder device during playback of the
recorded media content, and, in response to receiving the record
command, recording a portion of the media content to produce
second recorded media content. The method includes receiving
a stop recording command, and in response to receiving the stop
recording command, stopping the recording of the media
content. Playback of the recorded media content may continue
after the stop recording command is received. The method
includes storing the second recorded media content at a memory.
Abstract.
Claims 1, 3-5, 7, and 9-16 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Son (US 2003/0067886 Al; issued April 10, 2003). Final
Act. 6-10.
Claims 2, 6, 8, and 17-20 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Son and Sparrell
(US 2008/0163330 Al; published July 3, 2008). Final Act. 11-14.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
CLAIMS 1, 7, 9-14, AND 16
Independent claim 1 illustrates the present claim group:
1. A method comprising:
initiating playback of recorded media content at a digital
video recorder device, wherein the playback of the recorded
media content includes displaying the recorded media content at
a display device coupled to the digital video recorder device; and
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during the playback of the recorded media content:
receiving first user input of a record
command at the digital video recorder device; and
in response to receiving the record command,
storing second recorded media content to a memory
associated with the digital video recorder device,
wherein the second recorded media content
corresponds to the recorded media content being
sent to the display device after receipt of the record
command.
Contentions
Appellant argues that Son does not disclose claim 1 's requirement of
during the playback of the recorded media content: ... in response
to receiving the record command, storing second recorded media
content to a memory associated with the digital video recorder
device, wherein the second recorded media content corresponds
to the recorded media content being sent to the display device
after receipt of the record command.
App. Br. 4.
Appellant describes Son's functionality, as follows:
Son describes a system that executes a clipping function
to allow a user to select a portion of recorded content. While
normally watching the recorded content on a display device, a
user can designate a start point using a start key when content the
user wants clipped is displayed. The user can designate an end
point using a stop key when the content the user wants clipped is
at an end. The start key, the stop key, or both can be a recording
key ( e.g., a record button). The content between the start point
and the end point is a clipping region. After at least one clipping
region is set and when the user does not want to set an additional
clipping region, the user presses a completion key. When the
completion key is pressed, the at least one clipping region is
stored to a hard disc drive. Son also describes using the clipping
function to record portions of a program being broadcast in real
time. For this process, a user pushes a start key at a start of a first
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portion of the program that the user wants to record, the user
pushes a stop key at a start of a second portion of the program
that user does not want to record, and the user presses a
completion key to store the first portion in a memory.
App. Br. 4--5 (citing Son, Abstract; ,r,r 56, 58, 60, 61).
Appellant then argues that Son's functionality does not disclose the
disputed claim language:
For previously recorded content or for a program
broadcast in real time, Son describes that the user presses a start
key to define a beginning of a clipping region and presses a stop
key to define an end of the clipping region during playback of
content. Pressing the start key and pressing the stop key
correspond to defining location markers in the content. Between
pressing the start key and pressing the stop key, none of the
content is being stored as the clipping region to a memory (i.e.,
no content is being recorded at all when the content is the
recorded content, and the program is being recorded, not the
clipping region, when the content is a program broadcast in real
time). After the stop key is pressed, the user gives a record
command by pressing a completion key to record the clipping
region to the memory. The clipping region is displayed before
the user gives the record command. The cited portions of Son do
not disclose storing content sent to the display device after the
user gives the record command (i.e., after the user presses the
completion key). Thus, the completion key is not pressed during
playback of the clipping region, but after the clipping region is
defined.
Id. at 5.
Analysis
We agree with Appellant's description of Son's functionality. But
Appellant's argument that Son does not anticipate claim 1 is unpersuasive
because the argument is based on at least one inaccurate premise. We agree
with Appellant (id.) that the claimed "first user input of a record command"
can read on Son's pressing of the completion key. However, the fact that the
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completion key is only pressed after the clipping region is defined does not
demonstrate reversible error.
Contrary to Appellant's argument (id.), claim 1 does not set forth that
the first user input is received during playback of the clipping region. Nor
does claim 1 require that the second recorded media content is sent to the
display device during playback of the clipping region. Claim 1 is drafted
more broadly, instead requiring that the actions take place "during the
playback of the recorded media content" ( emphasis added).
Son's selected clipping region is only a sub-portion of the recorded
media content that is being played back. See, e.g., Son, FIG. 4. Nothing in
Son indicates that the playback must be completed before the completion
key can be pushed. Son instead indicates that the clipping completion key
can be inputted after the clipping region is set, but during the time period
that the recorded media content is being played back----or "during the
playback of the recorded media content," as claimed. See, e.g., Son ,r 58
(indicating that the completion key can be pushed any time after the clipping
region is selected).
We, therefore, affirm the anticipation rejection of independent
claim 1, as well as that of independent claim 12, which recites similar
language and for which Appellant presents substantially similar arguments.
App. Br. 6. We likewise affirm the anticipation rejection of dependent
claims 7, 9-14, and 16, which Appellant does not argue separately. Id.
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CLAIMS 3 AND 15
Claim 3 reads as follows:
3. The method of claim 1, further comprising, during the
playback of the recorded media content:
receiving second user input of a stop recording command
at the digital video recorder device; and
in response to receiving the stop recording command,
stopping storage of the second recorded media content to the
memory, wherein the playback of the recorded media content
continues after the stop recording command is received.
Contentions
Appellant argues
The cited portions of Son do not disclose ... "receiving second
user input of a stop recording command at the digital video
recorder device; and in response to receiving the stop recording
command, stopping storage of the second recorded media
content to the memory," as in claim 3.
[]Son describes receiving an indication that a user presses
a start key to define a beginning of a clipping region and presses
a stop key a second time to define an end of the clipping region
during playback of content. The clipping region is not recorded
during a time period between pressing the start key and pressing
the stop key. The user sends a record command by pressing a
completion key to record the clipping region. The cited portions
of Son do not disclose that the storage of the clipping region can
be stopped after the user presses the completion key.
App. Br. 6-7.
Analysis
Appellant's argument is unpersuasive. Claim 3 does not require that
the second user input of a stop recording command is received after the first
user input of a record command is received. Cf claim 3 with claim 4
(discussed infra). As such, claim 3 is anticipated by Son because the
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claimed first user input of a record command can be mapped to Son's input
of the completion key (FIG. 3, step 305), and the second user input of a stop
recording command can be mapped to Son's disclosure of pressing the
recording key a second time to designate the end point of the clipping region
(FIG. 3, step 304).
We, therefore, affirm the Examiner's rejection of claim 3, as well as
claim 15, which recites similar limitations to claim 3 and which is not
argued separately. App. Br. 7.
CLAIMS 4 AND 5
Claim 4 reads as follows:
4. The method of claim 3, wherein the record command is
received at a first time during the playback of the recorded media
content, wherein the stop recording command is received at a
second time during the playback of the recorded media content,
and wherein the second recorded media content corresponds to
the recorded media content displayed at the display device
between the first time and the second time.
Contentions
Appellant argues
Son describes pressing a start key to set a first marker during
presentation of media content, pressing a stop key to set a second
marker during the presentation, and giving a record command
(i.e., pressing a completion key) to save a portion of the content
corresponding to media content between the first marker and the
second marker. When the record command is received, the
portion is saved without an ability to stop saving of the portion.
The cited portions of Son do not disclose a stop recording
command.
App. Br. 8.
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Analysis
Appellant's argument is unpersuasive. Nothing in claim 4 ( or in
claim 1 or 3, from which claim 4 depends) requires that the second recorded
media content is stored in response to receiving only a record command.
Claim 4 instead is drafted broad enough to read on a method wherein second
media is stored in response to receiving a record command, as well as
receiving one or more other commands.
Under this interpretation, Son discloses all of the limitations of
claim 4. Son's designation of a start point (FIG. step 303) can be interpreted
as corresponding to the claimed user input of a record command, recited in
claim 1. Son's designation of the endpoint (FIG. 3, step 304) can be
interpreted as corresponding to the claimed second user input of a stop
recording command, recited in claim 3. The recording starts in response to
the user input of a record command, as well as the input of the completion
key (FIG. 3, step 305). Son then records content displayed at the display
device between the first time, associated with the start point input, and the
second time, associated with the endpoint input.
We, therefore, affirm the Examiner's rejection of claim 4, as well as
claim 5, which depends from claim 4 and is not argued separately. App.
Br. 4--8.
CLAIMS 2, 6, 8, and 17-20
Claim 2 reads as follows:
2. The method of claim 1, further comprising:
initiating display of an electronic programming guide at
the display device, wherein the electronic programming guide
includes a selectable option to display a clips menu; and
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in response to a selection of the option to display the clips
menu, presenting a list of media content clips, the list of media
content clips including an identifier of the second recorded media
content, wherein the list of media content clips is determined
based on metadata associated with each media content clip
included in the list of media content clips.
Findings and Contentions
The Examiner finds that Son does not teach any of the language of
claim 2, but that Sparrell teaches these additional limitations. Final Act. 11
( citing Sparrell ,r 53).
Appellant first argues that the obviousness rejection should be
reversed because Sparrell does not overcome the alleged deficiencies of Son
associated with the limitations of claim 1. App. Br. 8-10. This argument is
moot because, as explained above, we affirm the anticipation rejection of
claim 1 over Son.
Appellant next argues that the cited portions of Sparrell fail to
disclose "initiating display of an electronic programming guide at the
display device, wherein the electronic programming guide includes a
selectable option to display a clips menu." Id. at 11. According to
Appellant, "[t ]he cited portions of Sparrell do not disclose displaying the
[electronic programming guide (EPG)] at a display device, where the EPG
includes a selectable option to display a clips menu." Id. Appellant also
argues that the Examiner admits that Son does not disclose this limitation.
Id.
Analysis
We understand the Examiner's position to be that Son teaches saving
program clips as second content media. We further understand the
Examiner's position to be that Sparrell teaches, inter alia, an electronic
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programming guide that includes a selectable option to display menus of
media programs or content, albeit not menus specifically of media content
"clips" extracted from recorded media content during playback. We further
understand the Examiner's position to be that it would have been obvious to
incorporate Sparrell's EPG functionality into Son's system, and, thereby,
provide an EPG that can display a menu of Son's saved "clips," as well as
menus of other saved programs, as taught by Sparrell.
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art at the time of the invention to categorize the content
of such an EPG so as to provide within the directory, a menu specifically of
the saved clips. Categorizing saved content under submenus ( e.g., comedies,
drama, news) was well known at the time of the invention. It also was well
known in various recording endeavors to provide compilations of
"Favorites." The record does not indicate that providing a menu specifically
for "clips" files provides any unexpected results or additional functionality.
We, therefore, affirm the obviousness rejection of claim 2. We
likewise affirm the Examiner's rejection of claims 6 and 8, which are not
argued separately. App. Br. 8-11.
We affirm the obviousness rejection of claim 17 for the reasons set
forth above in relation to claims 2 and 3. See App. Br. 10.
We affirm the obviousness rejection of claims 18-20 for the reasons
set forth above in relation to claims 2 and 4. See App. Br. 10-12 (wherein
claims 19 and 20 are not argued separately from claim 18).
DECISION
The Examiner's decision rejecting claims 1-20 is affirmed.
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Because the thrust of our reasoning for affirming the rejections differs
from that of the Examiner's, we designate our affirmance of the rejections as
constituting new grounds pursuant to our discretionary authority under
37 C.F.R. § 4I.50(b). Rule 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Rule 4I.50(b) also provides the following:
When the Board enters such a non-final decision, the 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 prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 4I.50(b)
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