Ex Parte Lee

Patent Trial and Appeal Board

May 4, 2016

11715185 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111715, 185 0310712007
20991 7590 05/05/2016
THE DIRECTV GROUP, INC.
PA TENT DOCKET ADMINISTRATION
CA I LAI I Al09
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
FIRST NAMED INVENTOR
Sean S. Lee
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.
PD-206091 5332
EXAMINER
THOMAS, JASON M
ART UNIT PAPER NUMBER
2423
MAILDATE DELIVERY MODE
05/05/2016 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 SEAN S. LEE
Appeal2014-008865
Application 11/715,185
Technology Center 2400
Before ALLEN R. MacDONALD, JON M. JURGOV AN, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008865
Application 11/715, 185
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-6, 9-13, 15-23, 34, and 35. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method of operating a system comprising:
generating a request for a list of content from a seat terminal
disposed within a vehicle;
providing a list of content to the seat terminal from a central
server within the vehicle;
selecting a selection from the list of content;
streaming content corresponding to the selection to the seat
terminal;
displaying the content at the seat terminal;
initiating a purchasing event from the seat terminal;
selecting a purchase option from the seat terminal to form a
purchase selection;
purchasing the content after selecting the purchase option by
communicating the purchase selection to the central server within the
vehicle;
coupling a portable device to the seat terminal;
communicating content to the portable device through the seat
terminal after
purchasing from the central server with digital rights associated
therewith; and
storing the content and the digital rights within the portable
device.
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Appeal2014-008865
Application 11/715, 185
Rejections
The Examiner rejected claims 1, 3-6, 9-13, 17-23, and 25-32 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Weinberger et al. (US 6,813,777 Bl, issued Nov. 2, 2004), Wysocki (US
2008/0052704 Al,published Feb. 28, 2008), and Beetcher et al. (US
2008/0040758 Al, published Feb. 14, 2008).
The Examiner rejected claims 15, 16, 34, and 35 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Weinberger,
Wysocki, Beetcher, and Kenner et al. (US 5,956,716, issued Sept. 21, 1999).
Issues on Appeal1
(a) Did the Examiner err in finding the combination of Weinberger
and Wysocki teaches "communicating content to the portable device through
the seat terminal ... and storing the content ... within the portable device,"
as recited in claim 1?
(b) Did the Examiner err in finding the combination of Weinberger
and Wysocki teaches "storing the content and the digital rights within the
portable device," as recited in claim 1?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant's conclusions.
1 Separate patentability is not argued for claims 3-6, 9-13, 17-23, and 25-
32. (App. Br. 10-12). Except for our ultimate decision, these claims are not
discussed further herein.
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Appeal2014-008865
Application 11/715, 185
Regarding above issue (a), Appellant argues each of Weinberger and
Wysocki individually fails to teach communicating content to a portable
device through the seat terminal and storing that content within the portable
device, as required by claim 1 (App. Br. 5-11; Reply Br. 2-5). We do not
find Appellant's arguments persuasive.
Appellant inappropriately attacks each of Weinberger and Wysocki,
individually, where the Examiner relies on the combination of Weinberger
and Wysocki. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Appellant's arguments
overlook and reveal no error in the Examiner's specific findings regarding
Weinberger and Wysocki (see App. Br. 7; Reply Br. 2).
The Examiner finds Weinberger teaches connecting a portable device
(e.g., personal computer) to its entertainment system via its seat terminals
(Fin. Act. 4--5; Ans. 3--4, citing Weinberger col. 57, 1. 60- col. 58, 1. 10).
The Examiner further finds Wysocki teaches communicating content to, and
storing the content on, a portable device (Fin. Act. 4--5; Ans. 4--6, citing
Wysocki i-f 33-37, 48, Abstract). Based thereupon, the Examiner finds the
combination of Weinberger and Wysocki teaches communicating content to
the portable device through the seat terminal and storing the content within
the portable device. Appellant's bare arguments that each of Weinberger
and Wysocki individually does not teach the limitations which the Examiner
relied upon the combination of Weinberger and Wysocki to teach, do not
persuade us of Examiner error.
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Appeal2014-008865
Application 11/715, 185
Regarding issue (b), Appellant argues each of Weinberger, Wysocki,
and Beetcher fails to teach a transfer of digital rights (App. Br. 7, 8, 10;
Reply Br. 3). As it pertains to Weinberger and Beetcher, Appellant's
argument is inappropriate because the Examiner relies upon Wysocki for its
teaching of transferring digital rights (Fin. Act. 5; Ans. 6-7). Regarding
Wysocki, Appellant ultimately argues "Wysocki merely states that all or part
of an electronic package can be encrypted to prevent unauthorized access.
There is no reference to a transfer of digital rights .... " (Reply Br. 3). We
disagree.
The Examiner finds Wysocki teaches media may be encrypted to
provide the digital right of protection from unauthorized access (see Ans. 6-
7; see also Wysocki i-f 43). Additionally, the media may be designed to
execute only on an authorized device, thus providing the digital right of
preventing unauthorized exchange of the media (id.). Appellant's argument
that there is no reference to a transfer of digital rights is not persuasive
because the skilled artisan would recognize that in order for the
aforementioned digital rights to be effectuated upon transfer of the media to
the device, the digital rights also would be transferred. Therefore, we are
not persuaded the Examiner erred in finding the combination of the
references renders obvious "storing the content and the digital rights within
the portable device," as recited in claim 1.
Accordingly, we sustain the rejection of claims 1, 3---6, 9--13, 15-23,
34, and 35.
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Appeal2014-008865
Application 11/715, 185
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3---6, 9--13, 15-
23, 34, and 35 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 3---6, 9--13, 15-23, 34, and 35 are not patentable.
DECISION
The Examiner's rejections of claims 1, 3---6, 9-13, 15-23, 34, and 35
are 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
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