Ex Parte McCarthy et al

Patent Trials and Appeals Board

Feb 26, 2013

11021096 - (D) (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/021,096 12/22/2004 Tom McCarthy 03-646-A 3819
20306 7590 02/26/2013
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
ALCON, FERNANDO
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
02/26/2013 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 TOM MCCARTHY, JATEEN PAREKH, and MARK GOODWIN
____________________

Appeal 2010-009127
Application 11/021,096
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and JUSTIN
BUSCH, Administrative Patent Judges.

Per curiam.

DECISION ON APPEAL
Appeal 2010-009127
Application 11/021,096

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 59-76. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-58 and 77-78 have been cancelled.
We AFFIRM.

Introduction
According to Appellants, the invention relates to a system and method
for delivering media content on a pay-per-play basis (Spec. 1, § FIELD OF
INVENTION).

STATEMENT OF THE CASE

Exemplary Claim
Claim 59 is an exemplary claim and is reproduced below:
59. A method for recording renderable media content for time-
shifting on a system of the invention comprising:

allowing a user to specify criteria for recording renderable
media content on a second platform and media client;

recording the selected shows, and

updating a content registry on the first platform and second
platform to reflect the recorded media content.

References
Payton US 5,790,935 Aug. 4, 1998
Dureau US 2003/0135860 A1 Jul. 17, 2003
Appeal 2010-009127
Application 11/021,096

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Rejections
Claims 59-76 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Payton and Dureau.

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

ISSUE
35 U.S.C. § 103(a): claims 59-76
Appellants assert their invention is not obvious over Payton and
Dureau because Payton does not teach a user-specified criteria for recording
media content (App. Br. 7). Instead, according to Appellants, Payton
teaches user ratings of programs watched by the user (App. Br. 7-9). Thus,
Appellants contend, Payton’s rating system provides a feedback rating from
the user on programs already requested and viewed by the user (App. Br. 9).
Appellants argue a distinction exists between a “rating” and a “criteria” and
thus, a program rating that does not establish a standard does not specify a
criteria (App. Br. 9-10; Reply Br. 2-3).
Appellants further argue Payton “does not disclose the user
specifying the standard, i.e., the ‘criteria’ determining which programs the
Appeal 2010-009127
Application 11/021,096

4
user wishes to watch” (App. Br. 8-10; Reply Br. 3). Instead, according to
Appellants, Payton teaches using prediction algorithms (Reply Br. 3).
Appellants additionally argue the Examiner’s use of embodiments in
Appellants’ Specification is misplaced since these embodiments are not
claimed (Reply Br. 4).
Issue: Has the Examiner erred in finding the combination of Payton
and Dureau teaches or suggests “allowing a user to specify criteria for
recording renderable media content on a second platform and media client”
as recited in claim 59?
ANALYSIS
We are not persuaded by Appellants’ arguments. We agree with and
adopt the Examiner’s findings and reasoning (Ans. 10-21). We emphasize
the following. We are not persuaded by Appellants’ claim interpretation.
Firstly, Appellants have not provided a proper cite, including a copyright
date, to provide evidence for determining the ordinary and customary
meaning of the claim term as viewed by a person of ordinary skill in the art
at the time of the invention. Thus, we consult a general dictionary definition
of the word for guidance. We find that although “criteria” may be indeed
interpreted as a standard on which a judgment or decision may be based, the
term “criteria” is also broadly, but reasonably interpreted in light of the
Specification as a characterizing mark or trait (see Merriam-Webster’s
Collegiate Dictionary p. 274 (10th edition 2000). Using either interpretation,
we find that Payton’s rating teaches or at least suggests criteria, i.e., the user
rates the program based on their own judgment or decision according to their
own standard and a rating is a characterizing trait.
Appeal 2010-009127
Application 11/021,096

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We also agree with the Examiner that the subscriber rating is the
criteria the user selects for recording renderable media content (Ans. 13-14).
Although the system may then use a procedure to determine the programs to
record, the user has nevertheless specified the criteria to be used in making
that determination and thus, the user specifies the criteria for recording
renderable media content.
Accordingly, Appellants have not persuaded us the Examiner erred in
finding the combination of Payton and Dureau teaches or suggests “allowing
a user to specify criteria for recording renderable media content on a second
platform and media client” as recited in independent claim 59;
commensurately recited independent claim 68; and dependent claims 60-67
and 69-76, not separately argued. Therefore, the Examiner did not err in
rejecting claims 59-76 under 35 U.S.C. § 103(a) for obviousness over
Payton and Dureau.

DECISION
The Examiner’s rejection of claims 59-76 under 35 U.S.C. § 103(a) as
being unpatentable over Payton and Dureau 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)(1)(iv) (2011).

AFFIRMED

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