Ex Parte Marsh et al

Patent Trial and Appeal Board

May 13, 2015

11843049 (P.T.A.B. May. 13, 2015)

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.
11/843,049 08/22/2007 Christopher Marsh TWC 07-37/1033-7 4386
98417 7590 05/13/2015
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807-0381
EXAMINER
TOPGYAL, GELEK W
ART UNIT PAPER NUMBER
2481
MAIL DATE DELIVERY MODE
05/13/2015 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 CHRISTOPHER MARSH, JAY THOMAS, WILLIAM WEBB,
and DAVID BELL
____________

Appeal 2013-002156
Application 11/843,049
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JAMES W. DEJMEK, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1–20, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to techniques for remote
control of a digital video recorder. Spec. 1:6.

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Claim 1 is illustrative:
1. A method for controlling a set of one or more digital
video recorders, said method comprising the steps of:
storing at least a first permission parameter associated
with a first user of said set and at least a second permission parameter
associated with a second user of said set, said second permission
parameter defining a different level of permission for controlling said
set than said first permission parameter;
receiving, at at least one server remote to said set, a first
request to control said set from said first user and a second request to
control said set from said second user; and
controlling said set in accordance with: (i) said first
request, based on said first permission parameter, and (ii) said second
request, based on said second permission parameter, said controlling
comprising at least communicating with said set over a network.

Appellants appeal the following rejections:
1

R1. Claims 1–6, 14, 15, and 18 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Ellis (US 2009/0019485 A1, Jan. 15, 2009);
R2. Claims 9, 10, 13, and 20 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Jaff (US 2003/0005446 A1, Jan. 2, 2003);
R3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jaff and Tsukidate (US 6,507,950 B1, Jan. 14, 2003);
R4. Claims 7, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ellis and Inoue (US 7,123,813 B2, Oct. 17, 2006);
and
R5. Claims 8 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis and Jaff.

1
Appellants filed a Terminal Disclaimer to overcome the Examiner’s
provisional obviousness-type double patenting rejection of claims 9–13 and
20 over claims 1, 15–17, 20, and 44 of copending Application No.
11/843,036 (see Final 7–10).
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Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 9, 14, and 19 as set forth below. See 37
C.F.R. 41.37(c)(1)(iv).

ANALYSIS
Rejection under § 102(e) over Ellis
Claims 1–6
Issue 1: Did the Examiner err in finding that Ellis discloses at least
one server, remote to a set of one or more digital video recorders, as set forth
in claim 1?
Appellants contend that “[t]he plain meaning of the word ‘remote,’
and one consistent with the way that [the] term is used in the Specification,
is ‘far removed in space, time, or relation’” (App. Br. 7). Appellants further
contend “Ellis at least fails to describe a server far removed in space (i.e.,
remote) to a set of one or more digital video recorders in the manner
claimed” (id.). Appellants also contend that “the Examiner appears to
concede that Ellis does not anticipate all the limitations of independent claim
1” because in rejecting claim 19 the Examiner “expressly states that Ellis
‘fails to particularly teach at least one server remote to said set where the
requests are received’” (id. at 7–8).
2

The Examiner finds that Ellis discloses “that a video cassette recorder
or other recording devices are separate from a typical set-top box and

2
For reasons presented infra, we do not treat the Examiner’s statements
regarding independent claim 19 as an admission that Ellis does not anticipate
all the limitations of independent claim 1, as we find the Examiner has set
forth a proper basis for rejecting claim 1 (see also Ans. 13-14).
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therefore is separate/remote from one another” (Ans. 14; citing Ellis ¶ 102).
We agree with the Examiner.
Although Appellants contend that “remote” signifies “far removed in
space, time, or relation” (see App. Br. 7), we agree with the Examiner that
Appellants’ Specification has not limited the term “remote” to solely “far
removed in space, time, or relation” and the term can merely mean “separate
from” (see Ans. 14). A claim meaning is reasonable if one of ordinary skill
in the art would understand the claim, read in light of the specification, to
encompass the meaning. See In re American Academy of Science Tech
Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, we find that “remote”
can merely indicate one device being separate from the other, i.e., without
coming into physical contact with. See Merriam-Webster’s Collegiate
Dictionary, p. 996-997 (9
th
Edition 1990).
For at least these reasons, we are not persuaded the Examiner erred in
finding that Ellis discloses the argued “server remote to said set,” as recited
in independent claim 1 and in dependent claims 2–6, not separately argued.
Therefore, the Examiner did not err in rejecting claims 1–6 under
35 U.S.C. § 102(e) for anticipation by Ellis.

Rejection under § 102(e) over Ellis
Claims 14, 15, and 18
Issue 2: Did the Examiner err in finding that Ellis discloses a content-
based network coupled to the set of one or more digital video recorders, as
set forth in claim 14?
Appellants contend that “Ellis, in comparison, fails entirely to teach
an equivalent content-based network link between the set-top box 26 and the
video recorder 28” (App. Br. 10).
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The Examiner finds Ellis “paragraph 92 teaches bi-directional
communication paths connected to user television equipment 20” (Ans. 5,
citing Ellis ¶ 92; see also Ans. 15). We agree with the Examiner.
For example, Ellis discloses that “[t]elevision distribution facility 16
distributes program guide data and other information to the user television
equipment 20 of multiple users via communication paths 24.
Communication paths 24 are preferably bidirectional to support two-way
communications” (¶ 92). In other words, Ellis discloses transmitting
programming information to the user television equipment, including the
set-top box, video recorder, and television.
Claim 14 recites, inter alia, a content-based network coupled to the
set (see claim 14). Appellants’ Specification merely indicates an example of
a content-based network as a cable television network (see Spec. 23:20–24).
As such, we find that Appellants’ contentions do not demonstrate how the
aforementioned disclosure of Ellis fails to disclose such a content-based
network as exemplified in the Specification.
For at least these reasons, we are not persuaded the Examiner erred in
finding that Ellis discloses the argued “content-based network,” as recited in
independent claim 14 and in dependent claims 15 and 18, not separately
argued. Therefore, the Examiner did not err in rejecting claims 14, 15, and
18 under 35 U.S.C. § 102(e) for anticipation by Ellis.

Rejection under § 102(e) over Jaff
Claims 9, 10, 13, and 20
Issue 3: Did the Examiner err in finding that Jaff discloses DVR data,
as set forth in claim 9?
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Appellants contend that “[w]hile the tasks of deleting recorded
programming content and manipulating user preferences and other functions
using the access device 44 in Jaff may benefit from receiving DVR data,
there is no evidence to support the assertion that the receipt of such
information is necessary to perform those functions” (App. Br. 12).
The Examiner finds that because Jaff’s user may use the access device
44 to record programming content and delete recorded programming content
“the access device 44 has to receive DVR data” (see Ans. 15–16). We agree
with the Examiner.
Specifically, Jaff discloses “[t]he user may also use the access device
44 to schedule events to occur at the client system 20 . . . . those events can
include, but are not limited to, recording programming content, deleting
recorded programming content . . .” (¶ 42). We find it reasonable for the
Examiner to conclude that in order to delete recorded programming content,
the user in Jaff must necessarily receive DVR data related to recorded
content in order to select the desired content to delete (see Jaff ¶ 47 “the user
may retrieve data”). Appellants fail to demonstrate how this deletion
function is otherwise performed, absent receipt of the DVR data.
For at least these reasons, we are not persuaded the Examiner erred in
finding that Jaff discloses the argued “DVR data,” as recited in independent
claim 9, and commensurately recited in independent claims 13 and 20, and
in dependent claim 10, not separately argued. Therefore, the Examiner did
not err in rejecting claims 9, 10, 13, and 20 under 35 U.S.C. § 102(e) for
anticipation by Jaff.

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Rejections under § 103(a)
Claims 7, 8, 11, 12, 16, and 17
Appellants have not presented separate arguments for dependent
claims 7, 11, 12, 16, and 17 (see App. Br. 13–15). Therefore, these claims
fall with the claims from which they depend. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection under § 103(a)
Claim 19
Issue 4: Did the Examiner err in finding that the combined teachings
of Jaff and Ellis, particularly Jaff, discloses at least one server remote to said
set, as set forth in claim 19?
Appellants contend that “[w]ith regard to the server 34 in Jaff, Jaff
provides no evidence that the server 34 is remote (i.e., far removed in space)
from the DVR 49” (App. Br. 16) and “Jaff provides no evidence that the
authentication service 42 receives requests to control the set-top terminal, as
required by independent claim 19” (App. Br. 17).
Here, the Examiner finds that “Jaff teaches in Fig. 3 of a server 34
[sic] or authentication service/manager 42/48 that is able to receive user’s
request to connect to the set top box. At least authentication
service/manager 42/48 is remote to STB 22 and server 34 is remote to DVR
49” (Ans. 13; see also Ans. 17). We agree with the Examiner.
For example, Jaff discloses that “[t]he set top box 22 illustrated in
FIG. 3 is also associated with the authentication service 42 . . . . the
authentication manager 24 of the set top box 22 is able to automatically
authenticate a user that attempts to access or remotely program the set top
box 22 through the authentication service 42” (¶ 44). In other words, Jaff’s
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authentication service 42 remotely controls the set top box 22 which
includes DVR 49 (see FIG. 3). As such, we find that the claimed at least
one server remote to said set and the receiving of a first request to control
limitations read on Jaff’s authentication service 42 connection to the set top
box 22 and the association therewith. Furthermore, as noted supra regarding
the rejection of claim 1, Ellis also discloses a server remote to the DVR.
For at least these reasons, we are not persuaded the Examiner erred in
finding that at least Jaff discloses the argued limitations as recited in
independent claim 19. Therefore, the Examiner did not err in rejecting claim
19 under 35 U.S.C. § 103(a) as obvious over Jaff and Ellis.

DECISION
We affirm the Examiner’s § 102(e) and § 103(a) rejections R1–R5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
lv