Ex Parte Lee

Patent Trial and Appeal Board

Feb 26, 2018

11715185 (P.T.A.B. Feb. 26, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/715,185 03/07/2007 Sean S. Lee DTV206091 5332
141451 7590 02/26/2018
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2423
MAIL DATE DELIVERY MODE
02/26/2018 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 S. LEE
Appeal 2017-009917
Application 11/715,185
Technology Center 2400
Before ALLEN R. MacDONALD, JON M. JURGOVAN, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-009917
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, 16, 18—23, and 25—32. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows (emphases and
bracketed material added):
1. A method of operating a system comprising:
[A.] generating a request for a list of content from a seat
terminal disposed within a vehicle;
[B.] providing a list of content to the seat terminal from a
central server within the vehicle;
[C.] selecting a selection from the list of content;
[D.] streaming content corresponding to the selection to
the seat terminal,
[E.] displaying the content at the seat terminal;
[F.] initiating a purchasing event from the seat terminal;
[G.] selecting a purchase option from the seat terminal to
form a purchase selection;
[H.] purchasing the content not fully viewed in its
entirety after selecting the purchase option by communicating
the purchase selection to the central server within the vehicle;
[I.] coupling a portable device to the seat terminal;
[J.] communicating the content not fully viewed in its
entirety to the portable device through the seat terminal after
purchasing from the central server with digital rights
associated therewith said digital rights comprising a time limit
for playing back the content not fully viewed in its entirety or a
number of playback limit;
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Application 11/715,185
[K.] storing the content not fully viewed in its entirety
and the digital rights within the portable device; and
[L.] preventing playback of the content not fully viewed
in its entirety when a current time is beyond the time limit or a
number of playbacks exceeds the playback limit.
Rejection
1. The Examiner rejected claims 1, 3—6, 9-13, 15, 16, 18—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; iss. Nov. 2, 2004), Wysocki (US
2008/0052704 Al; pub. Feb. 28, 2008), Beetcher et al. (US 2008/0040758
Al; pub. Feb. 14, 2008), and Read et al. (US 2008/0109368 Al; pub. May 8,
2008).1
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANAFYSIS
We have reviewed the Examiner’s rejection 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, 15, 16, 18—23,
and 25—32. Except for our ultimate decision, claims 3—6, 9—13, 15, 16, 18—
23, and 25—32 are not discussed further herein.
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Appeal 2017-009917
Application 11/715,185
Claim 1
A
First, Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Weinberger, Wysocki, Beetcher and Read, individually and in
combination, do not teach or render obvious the combination of:
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.
App. Br. 6.
As to Appellant’s above contention, it does not persuade us that the
Examiner erred. Appellant merely recites the particular language of steps D.
through K. of claim 1 and asserts the cited prior art references do not teach
or suggest the claim limitations. Without more, this fails to constitute an
argument on the merits. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011).
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Application 11/715,185
Appellant similarly contends:
There is no teaching or suggestion for a system in Read that
includes the elements missing from the references as described
above. That is, the Read system does not include a system that
couples a portable device to the seat terminal, communicates
content to the portable device through the seat terminal after
purchasing from the central server, storing the content not fully
viewed in its entirety and the digital rights within the portable
device, and preventing playback of the content not viewed in its
entirety when a current time is beyond the time limit or a number
of playbacks exceeds the playback limit.
App. Br. 11.
As above, Appellant merely recites the particular language of steps I.
through L. of claim 1 and assert the cited prior art references do not teach or
suggest the claim limitations. Again, this does not persuade us that the
Examiner erred.
B
Further, Appellant contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
Weinberger is silent as to streaming content to a seat terminal,
displaying that content at the seat terminal, purchasing that
content not fully viewed in its entirety (streamed to and displayed
at the seat terminal), communicating that content not fully
viewed in its entirety (streamed to, displayed at, and purchased
at the seat terminal) to a portable device through the seat
terminal, and storing that content not fully viewed in its entirety
within the portable device, as in claim 1.
Additionally, Weinberger is entirely silent as to
communication of digital rights associated with purchased
content that was not fully viewed in its entirety.
App. Br. 7—8 (emphasis omitted; Panel emphasis added).
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Application 11/715,185
As to Appellant’s above contention, we disagree. Appellant is
mistaken in arguing “Weinberger is silent as to streaming content to a seat
terminal [and] displaying that content at the seat terminal.” App. Br. 7.
Weinberger teaches these limitations at the sections cited by the Examiner
(e.g., column 8, lines 1—13; column 39, lines 3—10 and 55—67; and column
57, line 60, through column 58, line 10).
In addition, we conclude the remainder of Appellant’s argument does
not address the actual reasoning of the Examiner’s rejection. Instead,
Appellant attacks the Weinberger reference singly for lacking teachings that
the Examiner relied on the Wysocki, Beetcher and Read references in a
combination of all four references to show. It is well established that 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 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). This form of argument is inherently unpersuasive to show Examiner
error. Our reviewing court requires that references must be read, not in
isolation, but for what they fairly teach in combination with the prior art as a
whole. Id.
Appellant presents similar arguments attacking individually the
Wysocki (App. Br. 9:7—18) and Beetcher (App. Br. 10:3—15) references. As
with Appellant’s attack on the Weinberger reference singly, these arguments
are unpersuasive to show Examiner error.
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Appeal 2017-009917
Application 11/715,185
C
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
The Examiner alleges that Wysocki teaches
communication of digital rights to a portable device and storage
of the digital rights within the portable device. See the Final
Office Action, p. 3. This is a factual error as to the teachings of
Wysocki.........As the Examiner has factually erred as to the
teachings of Wysocki, the Examiner has failed to set forth a
prima facie case of obviousness.
App. Br. 9.
As to Appellant’s above contention, we agree as to the factual error
set forth by Appellant. However, we disagree with Appellant’s conclusion
that this alone is sufficient to show “the Examiner has failed to set forth a
prima facie case of obviousness.” Appellant overlooks that the Examiner
also correctly found “Read discloses the use of digital rights . . . where the
requested content is provided to and stored on a portable media device.”
Final Act. 8. Although Appellant disputes the Examiner’s findings as to
other aspects of Read (addressed infra), Appellant does not dispute this
finding by Examiner.
We see no reason to reverse the Examiner’s rejection based on this
argument.
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Application 11/715,185
D
Also, Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Read also does not teach or suggest content that was not viewed
in its entirety. The Read reference is directed to an archival type
system that is used to store both content and the digital rights
associated therewith.
App. Br. 11 (emphasis added).
In the Answer, the Examiner responds:
As an initial matter it is the examiners position that
Appellant has failed to effectually delineate any differences
between the pre-amended claim which recited “the content” and
the amended claim which recites “the content not fully viewed in
its entirety”. Although the terms are different the end result is the
same.
Given its broadest reasonable interpretation, with respect
to video content which is transferred from a first device to a
portable device the examiner interprets “the content” as being
identical to “the content not fully viewed in its entirety”. In other
words, whether or not a user has viewed content prior to
transferring said content from a first device to a portable device,
the content which is transferred “not fully viewed in its entirety”
does not render “the content not fully viewed in its entirety” to
be any different from “the content” and is thus interpreted as
being the same content in form.
Ans. 4—5.
As to Appellant’s above contention, we disagree. First, we find no
detail beyond the claim language in Appellant’s Specification (see paragraph
73) to assist in construing this claim limitation. Second, we interpret “not
fully viewed in its entirety” to be the entire content (part viewed, part
unviewed), rather than some designated sub-portion of the entire content.
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We agree with the Examiner that the added claim 1 limitation “not
fully viewed in its entirety” does not serve to distinguish over the prior art
“content.” The Examiner correctly points out “whether or not a user has
viewed content” does not cause the content to be different. Ans. 5. We
conclude the language of the “not fully viewed in its entirety” limitation
describes an intangible property of the content (no measurable change in the
content due to the property as the content is unmodified by viewing).
Also, the property of “not fully viewed in its entirety” is subjective.
The term “viewed” is descriptive of the user not the content. That is, an
objective observer must ask the user to see if this intangible property exists.
For example, did the user fall asleep as the content played.
As with a tangible property, for the claimed intangible property the
Examiner has established a prima facie case for obviousness by showing a
product identical or substantially identical in structure or composition. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). “[Wjhen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.” In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). However, the prima facie case
can be rebutted by evidence showing that the prior art product does not
necessarily possess the characteristics of the claimed product. Best, 562
F.2d at 1255; see also Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed.
Cir. 1985). Appellant has presented no evidence that the prior art content,
which is identical to the claimed structure, meaningfully differs from the
claimed content. The burden of going forward has shifted to Appellant.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3—6, 9-13, 15,
16, 18—23, and 25—32 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 3—6, 9-13, 15, 16, 18—23, and 25—32 are not patentable.
DECISION
The Examiner’s rejection of claims 1, 3—6, 9-13, 15, 16, 18—23, and
25—32 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
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