Ex Parte Marsh et al

Patent Trial and Appeal Board

Aug 15, 2016

12039795 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/039,795 02/29/2008
98417 7590 08/15/2016
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807-0381
FIRST NAMED INVENTOR
Christopher Marsh
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.
TWC 07-4211033-12 8195
EXAMINER
TOPGY AL, GELEK W
ART UNIT PAPER NUMBER
2481
MAILDATE DELIVERY MODE
08/15/2016 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 CHRISTOPHER MARSH, JAY THOMAS, WILLIAM WEBB,
DAVID BELL, and PHUDUC NGUYEN
Appeal2015-002613
Application 12/039,795
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's final rejection of claims 1-7, 11, and 13-25, all the pending
claims in the present application. Claims 8-10 and 12 are canceled. See
Claims Appendix. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
The present invention relates generally to techniques for remote
control of a digital video recorder (DVR). See Spec. 1: 11-12.
Appeal2015-002613
Application 12/039,795
Claim 1 is illustrative:
1. A method for resolving conflicts in connection with
controlling at least one digital video recorder interconnected with a
content-based network, said method comprising the steps of:
querying at least one server to obtain program data from
said server and DVR data from said digital video recorder;
receiving said program data from said server and said
DVR data from said digital video recorder, said program data
comprising electronic program guide data, and said DVR data being
obtained from said digital video recorder substantially in real time
over said content-based network and comprising a listing of any
programs currently scheduled for recording on said digital video
recorder, said listing comprising at least a unique program identifier
for each of said currently scheduled programs;
displaying said program data and/or said DVR data on a
device, remote from said digital video recorder and said server, in
communication with said content-based network;
receiving, at said device, a request to record a given
program on said at least one digital video recorder;
determining respective time slots of each of any
programs currently scheduled for recording on said digital video
recorder at least in part by accessing said electronic program guide
data with said unique program identifiers;
detecting a conflict associated with said request to record
said given program at least in part by comparing a time slot of said
given program with any time slots determined for said currently
scheduled programs;
offering on said device one or more options to resolve
said conflict; and
resolving said conflict based at least on a user input
received at said device.
Appellants appeal the following rejections:
RI. Claims 1-7, 11, and 19-25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cantalini (US 2006/0277272 Al, Dec. 7, 2006),
Green (US 2004/0218905 Al, Nov. 4, 2004), Franco (US 2002/0046407 Al,
Apr. 18, 2002), and Folk, II (US 2006/0136966 Al, June 22, 2006) (Final
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Act. 3-19);
R2. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cantalini, Green, Franco, Folk II, and Ellis (US
2004/0103434 Al, May 27, 2004) (id. at 19-20);
R3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cantalini, Green, Franco, Folk II, Ellis, and Kuroda (US
6,311,011 Bl, Oct. 30, 2001) (id. at20-21); and
R4. Claims 16-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cantalini, Green, Franco, Folk II, Ellis, and Plourde, Jr.
(US 2003/0110504 Al, June 12, 2003)) (id. at 21-22).
ANALYSIS
Claims 1-7, 11, 13, and 15-25
Issue 1: Did the Examiner err in finding that the combined cited prior
art teaches or suggests the DVR data being obtained from said digital video
recorder ... comprising at least a unique program identifier; and
determining respective time slots ... by accessing said electronic program
guide with said unique program identifiers, as set forth in claim 1?
Appellants contend "Franco does not teach 'receiving ... DVR data
from said digital video recorder ... Rather, in Franco, a user may identify
programs that the user has chosen to record by an identifier when providing
programming instructions 118 to the host system 102" (App. Br. 9).
Appellants further contend that "in Franco, it appears that, if program
identifiers are utilized, it is a user providing those identifiers. Those
identifiers are not received from a digital video recorder, as required by
independent claim l" (id. at 10).
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Application 12/039,795
In response, the Examiner finds that in Franco "the DVR sends DVR
data (shows currently scheduled to be recorded, amongst other data in Fig.
2C) to remote user ... comprises a unique identifier ... it is clear that the
remote user is 'receiving' from the DVR via the server" (Ans. 21). We
agree with the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
For example, Franco discloses that "[t]he user 110 provides
programming instructions 118 to the host system 102 ... The programming
instructions 118 preferably identify one or more programs ... that the user
110 has chosen to record. A program ... can be identified ... by an
identifier" (see i-f 64). Although Appellants contend that "a user" provides
the identifiers and not the DVR (see App. Br. 10), we note that even if the
user initially provides an identifier to set up programming parameters,
Franco's DVR displays a Program Schedule Page 220 that includes a
Recording Schedule section 224 that includes any programming instructions
initially provided by the user, i.e., the identifier (see i-f 74 and Fig. 2C). As
such, we agree with the Examiner that the claimed limitations are met
because "the remote user is 'receiving' from the DVR via a server ... a
listing of programs scheduled to be recorded" (see Ans. 21 ), albeit based on
the user's programming instructions, which is typically the case. Claim 1
does not require that the DVR initially provides or even generates the unique
program identifier, only that the DVR data be obtained from the DVR.
Appellants further contend that "in Folk, an identifier for a program is
utilized only after that program has already been found to be in conflict.
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Application 12/039,795
That is ... it is limited only to programs in conflict. This is different from
'determining time slots of each of any programs currently scheduled for
recording'" (App. Br. 11 ).
In response, the Examiner notes that "Folk is relied upon to teach the
basic and general concept/features of searching EPG using UPIDs [and]
[ t ]he prior arts of Cantalini and Green teaches detecting timeslots using an
EPG, however, Folk further teaches the basic/general ability to search based
on UPIDs" (see Ans. 22). The Examiner further finds "that the
[A ]ppellant[ s'] arguments are arguing each of the references separately,
when the rejection is based on a combination of said references" (id.). We
agree with the Examiner.
As outlined by the Examiner, Appellants' arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art and are therefore ineffective to rebut the
Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413,
425 (CCP A 1981 )("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.") (citations omitted). This reasoning is applicable
here because the Examiner is relying on the combined teachings of
Cantalini, Green, and Folk to teach or suggest at least determining respective
time slots ... by accessing said electronic program guide data with said
unique program identifiers," as set forth in claim 1, and Appellants only
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argue that Folk does not teach this feature (see App. Br. 11 ). Thus, we find
Appellants' aforementioned contention regarding Folk unavailing.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the Examiner's rejection of independent
claims 19-21 rely on the same arguments as for claim 1, and Appellants do
not argue separate patentability for dependent claims 2-7, 11, 13, 15-18, and
22-25. See App. Br. 8-13. We, therefore, also sustain the Examiner's
rejection of claims 2-7, 11, 13, and 15-25.
Claim 14
Issue 2: Did the Examiner err in interpreting the claimed "to clip," as
set forth in claim 14?
Appellants contend that "[t]he ordinary meaning of the phrase 'to
clip,' and one consistent with the manner in which that phrase is used in the
Specification, is to curtail or diminish" (App. Br. 12, citing Merriam-
Webster Online Dictionary). Appellants further contend that "Ellis, in
contrast, does not describe curtailing one recording in order to accommodate
another overlapping recording (i.e., clipping), in the manner claimed.
Instead, Ellis, in FIGS. 24--27, appears to discuss the canceling of one of the
recordings in its entirety" (App. Br. 13). We agree with Appellants.
Although the Examiner finds that "Ellis to altogether not perform the
recording [sic] reads on the broadest reasonable interpretation of the term 'to
clip"' (see Ans. 23), the Examiner fails to first construe the term and then
explain how canceling a recording in its entirety reads on the broadest
reasonable interpretation of "to clip." Here, we agree with Appellants'
construction of the phrase "to clip," i.e., to curtail or diminish, and also find
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that this is consistent with Appellants' Specification. We find that the
Examiner's canceling in its entirety interpretation fails to read on to curtail
or diminish.
In view of the above discussion, we are of the opinion that the
interpretation set forth by the Examiner does not support the obviousness
rejection. We, accordingly, do not sustain the rejection of dependent claim
14.
DECISION
We affirm the Examiner's§ 103(a) rejections of claims 1-7, 11, 13,
and 15-25.
We reverse the Examiner's§ 103(a) rejection of claim 14.
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-IN-PART
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