Ex Parte Kortum et al

Patent Trial and Appeal Board

Feb 8, 2016

11346616 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111346,616 0210212006
84326 7590 02/08/2016
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Philip T. Kortum
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.
LB1164 1624
EXAMINER
CHACKO, JOE
ART UNIT PAPER NUMBER
2456
MAILDATE DELIVERY MODE
02/08/2016 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 PHILIP T. KORTUM, MARC A. SULLIVAN,
JAMES L. CANSLER, JR.,
and ALYSSA LENORAH NOLL WILLIAMS
Appeal2014-003256
Application 11/346,6161
Technology Center 2400
Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-23, which are all the pending claims. Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, LP. App. Br. 1.
2 Our Decision refers to the Final Office Action (mailed Mar. 27, 2013)
("Final Act."); Appellants' Appeal Brief (filed Sept. 5, 2013) ("App. Br.");
the Examiner's Answer (mailed Dec. 17, 2013) ("Ans."); Appellants' Reply
Brief (filed Jan. 16, 2014) ("Reply Br."); and the Specification (filed Feb. 2,
2006) ("Spec.").
Appeal2014-003256
Application 11/346,616
REJECTION ON APPEAL
Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomas et al. (US 2002/0059621 Al, May 16, 2002)
("Thomas"), J. Walker et al., Share-It!-A Rights-Managed Network of
Peer-to-Peer Set-Top Boxes - System Architecture ("Walker"), and Sakai et
al. (US 2006/0031682 Al, Feb. 9, 2006) ("Sakai"). Final Act. 3.
THE CLAIMED INVENTION
According to the Appellants, "[t]he present disclosure relates
generally to sharing content and more particularly to a system and method
for sharing content with a remote device." Spec. i-f 1. Independent claims 1
and 11 are directed to systems and independent claims 15 and 19 are
directed to methods. Claim 1 recites the following (disputed limitations
italicized):
1. A system for facilitating a sharing of content, the
system comprising:
a housing;
a wide area network connector coupled to the housing;
a graphical user interface engine located within the
housing, wherein the graphical user interface engine outputs a
first list navigable with a remote control and a second list
navigable with the remote control, wherein the first list
comprises at least one selectable identifier for a portion of
content controlled by a user and the second list comprises at least
one selectable alias, wherein each selectable alias in the second
list corresponds to another user that is a share partner; and
a sharing engine to:
send a message via the wide area network
connector to a share partner whose alias is selected in the second
list in response to receipt by the graphical user interface engine
of user input to send an offer to the share partner, wherein the
message indicates a desire of the user to share content
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Appeal2014-003256
Application 11/346,616
corresponding to one or more selected identifiers in the first list
with the share partner, wherein a number of share partners for
particular content of the content corresponding to the one or more
selected identifiers in the first list is limited to a first number of
share partners;
receive an acceptance response to the message; and
send, in response to the acceptance response, a
notification to a display device of the user that sharing of the
content corresponding to the one or more selected identifiers in
the first list is active for the share partner and wherein the
notification includes a first indicator of a current number of share
partners for the particular content and a second indicator of the
first number of share partners.
App. Br. 12.
ANALYSIS
We have reviewed the rejection of claims 1-23 in light of Appellants'
arguments presented in the Appeal Brief and Reply Brief that the Examiner
erred in rejecting all the pending claims as unpatentable under 35 U.S.C.
§ 103(a). We are not persuaded that Appellants identify reversible error.
We agree with and adopt the Examiner's findings, reasoning, and
conclusions as set forth in the Final Office Action (Final Act. 2-13) and the
Examiner's Answer (Ans. 3--4). We highlight the following for emphasis.
Independent Claims l, 11, 15, and 19
Appellants argue that the cited combination of references fails to teach
or suggest a sharing engine to "send a message via the wide area network
connector to a share partner ... wherein the message indicates a desire of
the user to share content corresponding to one or more selected identifiers in
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Application 11/346,616
the first list with the share partner ... ; [and] receive an acceptance response
to the message," as recited in independent claim 1. App. Br. 8; Reply Br. 2.
The Examiner cites Walker as teaching the disputed limitations. Ans. 3--4;
Final Act. 2-3, 5. Appellants attempt to distinguish Walker on the basis that
"Walker describes users that request content" rather than sending or sharing
content. App. Br. 8; Reply Br. 2. However, in addition to describing users
that request content, Walker also clearly teaches users that send or share
content. Walker on page 3 states, "Users are also able to publish content,
which may be of interest to other users, to specific Share it! User groups if
the content rights allow them to do so" and "The Share it! platform enables
users to easily distribute content that they have created." And, in the Reply
Brief on page 2, the Appellants indicate their agreement with the
interpretation of Walker presented on page 3 of the Examiner's Answer
which states:
In response [to] the above argument, Walker does clearly
disclose a content sharing and exchange through a Share It! User
Interface which is used to select and acquire the content they
desire. (See Figure 3 & pg. 3, first paragraph)
Also, Walker discloses that users may publish content,
which may be of interest to other users or to specific Share It!
User groups. (see page 3, paragraph 2) Further, Walker discloses
users can easily distribute content that they have created such as
sending images or videos to a friend that can be easily uploaded
onto the Share It! box and sent to friends. (see page 3, "Creating,
editing and publishing by consumers")
Further, Walker discloses in Figure 6 that user first sends
a query that is propagated to Box B and then receives a message
back from Box B that shows the matching content and rights
metadata. Then Figure 6 discloses that the user sends a message
that a user selects content to acquire. Further, Figure 6, shows
that after a user selects content there is a message that is
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Application 11/346,616
transmitted by the share partner which 1s equivalent to the
acceptance message.
We are not persuaded of error by this argument and affirm the rejection of
claim 1.
With regard to independent claims 11, 15, and 19, which contain
analogous limitations, Appellants present arguments similar to those
presented in support of claim 1. App. Br. 9-11; Reply Br. 3--4. We affirm
the rejection of claims 11, 15, and 19 for the reasons stated above with
regard to claim 1.
Dependent Claims 2-10, 12-14, 16--18, and 20--23
Appellants do not separately argue the patentability of any dependent
claim. App. Br. 9-11; Reply Br. 2--4. Therefore, for the reasons stated
above with regard to the independent claims, we affirm the rejection of
dependent claims 2-10, 12-14, 16-18, and 20----'23.
DECISION
The rejection of claims 1-23 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)(l )(iv).
AFFIRMED
hh
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