Ex Parte McLean

Patent Trial and Appeal Board

Feb 28, 2017

12628170 (P.T.A.B. Feb. 28, 2017)

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.
12/628,170 11/30/2009 James G. McLean RPS920090105US1 5388
63638 7590 02/28/2017
STREETS & STEELE - IBM CORPORATION (ROC)
13100 WORTHAM CENTER DRIVE, SUITE 245
Suite 245
HOUSTON, TX 77065
EXAMINER
MESA, JOSE M
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
02/28/2017 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 JAMES G. McLEAN
Appeal 2016-006676
Application 12/628,17c1
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1—14 and 16—20. Appellant has canceled claim 15. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is International Business
Machines Corp. App. Br. 2.
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Application 12/628,170
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to customized
playback of broadcast media. Spec. 11.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method comprising:
identifying a subset of preferred channels from a set of
available broadcast channels, each broadcast channel providing
streaming content including media segments;
receiving and storing complete media segments of the
streamed content from the preferred channels',
maintaining a plurality of queues, each queue associated
with a respective one of the preferred channels and placing the
received content from each channel in the respective one of the
queues in the order the content is received;
generating a customized playback sequence by applying
a channel-selection criteria to selecting the queued media
segments from the plurality of queues', and
playing back complete media segments as selected from
the plurality of queues according to the customized playback
sequence.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Dec. 23, 2013); Examiner's Answer ("Ans.," mailed Mar. 13, 2014); Non-
Final Office Action ("Non-Final Act.," mailed July 25, 2013); and the
original Specification ("Spec.," filed Nov. 30, 2009). We note Appellant did
not file a Reply Brief to rebut the Examiner's factual findings and legal
conclusions.
2
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Application 12/628,170
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chang et. al. ("Chang") US 5,367,643 Nov. 22, 1994
Valizadeh US 5,765,032 June 9, 1998
Kedem et al. ("Kedem") US 2001/0042222 Al Nov. 15,2001
Shnier US 2002/0049974 Al Apr. 25, 2002
Houskeeper US 6,542,692 B1 Apr. 1,2003
Chandhok et al. ("Chandhok") US 2006/0023748 Al Feb. 2, 2006
Eschbach et al. ("Eschbach") US 2006/0140207 Al Jun. 29, 2006
Sarakkai et al. ("Sarukkai") US 2008/0060013 Al Mar. 6, 2008
Ikeda et al. ("Ikeda") US 7,356,094 B1 Apr. 8, 2008
Stallings et al. ("Stallings") US 2008/0155595 Al Jun. 26, 2008
Petit et al. ("Petit") US 2008/0301189 Al Dec. 4, 2008
Michaeli et al. ("Michaeli") US 7,627,870 B1 Dec. 1, 2009
Edwards et al. ("Edwards") US 2010/0114857 Al May 6, 2010
Robertson et al. ("Robertson") US 2010/0333132 Al Dec. 30, 2010
Johnson US 2011/0107213 Al May 5, 2011
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Appeal 2016-006676
Application 12/628,170
Rejections on Appeal
Rl. Claims 1, 4, 10, and 12 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of Stallings,
Chang, Edwards, and Houskeeper. Ans. 10.
R2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Chang,
Edwards, Houskeeper, and Valizadeh. Ans. 20.
R3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Chang,
Edwards, Houskeeper, and Robertson. Ans. 21.
R4. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Chang,
Edwards, Houskeeper, and Sarukkai. Ans. 22—23.
R5. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Chang,
Edwards, Houskeeper, Kedem, and Shnier. Ans. 24.
R6. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Chang,
Edwards, Houskeeper, and Johnson. Ans. 26.
R7. Claims 8—9 and 13 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Stallings,
Chang, Edwards, Houskeeper, and Eschbach. Ans. 27.
R8. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Chang,
Edwards, Houskeeper, and Chandhok. Ans. 33—34.
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R9. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Stallings,
Edwards, Petit, Ikeda, and Valizadeh. Ans. 35.
R10. Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Stallings,
Edwards, Michaeli, and Petit. Ans. 41.
R11. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Edwards,
Michaeli, Petit, and Robertson. Ans. 49.
R12. Claim 19 stands rejected under 35 U.S.C. 103(a) as being
obvious over the combined teachings and suggestions of Stallings, Edwards,
Michaeli, Petit, and Sarukkai. Ans. 51.
R13. Claim 20 is rejected under 35 U.S.C. 103(a) as being obvious
over the combined teachings and suggestions of Stallings, Edwards,
Michaeli, Petit, Kedem, and Shnier. Ans. 52.
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CLAIM GROUPING
Considering Appellant's arguments (App. Br. 7—27) and our authority
under 37 C.F.R. § 41.37(c)(iv), we decide the appeal of Rejections R1
through R13 of claims 1—14 and 16—20 based upon the following claim
groupings and Issue(s):
Rejection Claim(s) Remarks Issue(s)
R1 1, 10, 12 Representative claim 1 1,2
R1 4 Separately argued 1,3
R2 2 Non-analogous art only 1
R3 3 Not separately argued 4
R4 5 Not separately argued 4
R5 6 Separately argued 1,3
R6 7 Not separately argued 3
R7 8, 9, 13 Representative claim 9 5
R8 11 Non-analogous art only 1
R9 14 Non-analogous art only 1
R10 16, 18 Non-analogous art only 1
Rll 17 Not separately argued 4
R12 19 Not separately argued 4
R13 20 Non-analogous art only 1
Based upon our review of the record before us with respect to the
rejection of numerous claims on appeal identified supra, we find Appellant
fails to present substantive arguments supported with specific factual
evidence of sufficient character and weight to persuade us of error regarding
the Examiner's findings of facts and ultimate legal conclusion of
obviousness, particularly regarding the allegations of non-analogous art.
Mere attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
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1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, WL 2477843, slip
op. at 7—8 (BPAI Aug. 10, 2009) (informative).3 See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."); cf In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.").
Arguments not made are therefore waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. Arguments not made are waived.
37 C.F.R. §41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1—14
and 16—20, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments for emphasis with
respect to claims 1 and 2, as follows.
3 See http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
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1. Rejections Rl, R2, R5, R8, R9, RIO, and R13 — Analogous Art
Issue 1
Appellant contends the Examiner erred in rejecting various claims on
appeal because selected references are purportedly non-analogous art to the
claimed invention as indicated in the table below:
Rejection Rl, claim 1 Chang (App. Br. 15),
Houskeeper, (App. Br. 17—18);
Rejection R2, claim 2 Valizadeh (App. Br. 19—20);
Rejection R5, claim 6 Kedem (App. Br. 21);
Rejection R8, claim 11 Chandhok (App. Br. 23);
Rejection R9, claim 14 Valizadeh (App. Br. 24);
Rejection R10, claim 16 Michaeli (App. Br. 25);
Rejection R13, claim 20 Kedem (App. Br. 21, 26—27).
Analvsis-
Our reviewing court provides guidance for determining whether prior
art is analogous to a claimed invention. Two separate tests define the scope
of analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d
436, 442 (Fed. Cir. 1986)).
We find Chang's teaching of ordering queues of data packets is
reasonably pertinent to the claimed limitation of "maintaining a plurality of
4 We note "non-analogous art" is the only substantive argument presented
with respect to Rejections R2, R8—R10, and R13. See App. Br. 19 et seq.
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queues . . . as recited in claim 1. Further, the Examiner finds Chang to be
analogous art because it discloses similar features as the claimed limitations.
Ans. 79-82, citing Chang Fig. 2, Col. 11,11. 67-68, Col. 12,11. 1-11, col. 34,
11.51-54, Col. 52,11. 29-38. Accordingly, we find that Chang is at least
"reasonably pertinent to the particular problem with which the inventor is
involved." See In re Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011) (citing
Bigio, 381 F.3d at 1325).
We find Houskeeper pertains to "a method and system for playing
back sequences of segments of video media data stored on a storage media"
(Houskeeper, Abstract) and is within the field of the inventor's endeavor of
customized playback of broadcast media. We agree with the Examiner's
finding Houskeeper is analogous art because it discloses similar features as
the claimed limitations. In particular, we agree with the Examiner's finding
Houskeeper's peripheral board CPU 30 taking the next queue elements from
the commit queues and beginning the process by playing back the frame
teaches or at least suggests the disputed limitation "as selected from the
plurality of queues" as recited in claim 1. Ans. 88—91, citing Houskeeper,
Figs. 1, 4, col. 6, 32—59.
Further, while Appellant raises additional non-analogous art
arguments regarding Rejections R2, R5, R8—R10, and R13 for the claims
and references indicated, supra, we find that the Examiner has rebutted each
of those arguments in the Answer by a preponderance of the evidence.
Ans. 98-99, 102-104, 121-123, 128-129, 13^U135. Therefore, we adopt
the Examiner's findings and underlying reasoning, which we incorporate
herein by reference.
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Consequently, we find no reversible error in the Examiner's reliance
upon the identified analogous prior art references in rejections Rl, R2, R5,
R8—RIO, and R13 of claims 1, 2, 4, 6, 11, 14, 16, and 20.
Accordingly, on this record, and based upon non-analogous art being
the only argument presented by Appellant, we sustain the Examiner's
rejections R2 of claim 2, R8 of claim 11, R9 of claim 14, R10 of claims 16,
and 18, and R13 of claim 20.5
2. Rejection Rl of Claims E 10, and 12
Issue 2
Appellant argues (App. Br.13—18) the Examiner's Rejection Rl of
claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of
Stallings, Chang, Edwards, and Houskeeper is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the limitations of "receiving and storing complete media
segments of the streamed content from the preferred channels," "channel
selection criteria," "queued media segments," and "playing back complete
media segments as selected from the plurality of queues according to the
customized playback sequence," as recited in claim 1?
5 We note Appellants set forth additional arguments with respect to
Rejection Rl of claims 1 and 4, and Rejection R5 of claim 6, as discussed
infra. Thus, we find Appellant's non-analogous art arguments are not
completely dispositive with respect to these rejections and claims.
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Analysis
Appellant contends:
The rejection of claim 1 further asserts that Stallings discloses
"receiving and storing complete media segments of the
streamed content from the preferred channels." (Office Action
dated July 25, 2013; page 89). The rejection then refers to
Stallings at paragraph 48 as saying that "various portions of
media content, program guide data, and other data may be
temporarily and/or permanently stored in the storage device
134." (Office Action dated July 25, 2013; page 89; citing
Stallings at para. 48). However, the Applicant asserts that a
storage device 134 capable of storing various portions of media
content, is not a disclosure of "receiving and storing complete
media segments of the streamed content from the preferred
channels."
App. Br. 14.
Appellant further contends Edwards also does not teach this limitation
and, in particular, points out "according to Edwards, no media segment is
downloaded from a website until after a user has specifically selected
individual multimedia content." App. Br. 16.
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Because "applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
Regarding the disputed limitation "receiving and storing complete
media segments of the streamed content from the preferred channels," we
agree with the Examiner's finding that the combination of the teachings of
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Stallings and Edwards teaches the disputed limitation. Non-final Act. 89—
94. In particular, we agree with the Examiner's findings because Edwards'
users' favorite programs, specified playlists, and selected channels for
playback on the media player teaches or at least suggests the disputed
limitation. Ans. 58—63, 75—76 (citing Edwards H 51, 54).
Appellant further argues "the navigation through a linear program
guide in accordance with Stallings, is not a disclosure of 'channel-selection
criteria.' Stallings 'selection tool 162' provides an ability to make a channel
selection, but does not disclose any 'channel-selection criteria.'" App.
Br. 14-15.
We are not persuaded by Appellant's argument because Appellant is
arguing the references separately. The Examiner also cites Edwards, not
only Stallings, to teach the limitation "channel selection criteria" as recited
in claim 1. Non-Final Act. 92—93, citing Edwards, Fig. 2,151. The
Examiner specifically cites Edwards' client input 203 specifies a playlist or
queue, and that the client input 203 specifies certain selection criteria, such
as ratings. We agree with the Examiner because Edwards' client input 203's
specifying selection criteria for the electronic program guide teaches or at
least suggests the disputed limitation "channel selection criteria," as recited
in claim 1.
Appellant also argues:
Edwards fails to teach "selecting the queued media segments
from the plurality of queues." A "queued media segment" is a
segment of media that has already been downloaded and stored
locally in a queue. Edwards doesn't download content from a
website until it has already been selected.
App. Br. 16.
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We agree with the Examiner's finding that Edwards' multimedia
content comprising episodes teaches or at least suggests "media segments."
Ans. 85—86. We agree with the Examiner because Edwards' client
input 203, which specifies a queue selected in accordance with the user's
criteria, causes "selecting the queued media segments." Ans. 86; Edwards,
Figs. 1-2,151.
Appellant further argues "Edwards does not teach selecting 'playing
back complete media segments as selected from the plurality of queues
according to the customized playback sequence.'" App. Br. 17. In
particular, Appellant asserts Edward's electronic program guide allows a
user to select desired content that can be delivered from a website, but does
not teach "the plurality of queues", where each queue is associated with one
of the preferred channels. Id.
We agree with the Examiner unrebutted finding that Edwards teaches
this limitation because Edwards' client input 203, which specifies queues,
and the multimedia content delivered over the internet 130 for playback on
the media player 121 teach or at least suggest the disputed limitation.
Ans. 83—87, Edwards, Figs. 1—2,151.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and claims 10 and
12 which fall therewith. See Claim Grouping, supra.
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3. Rejections R1, R5, R7, and R8 (Claims 4, 6, 9, 11)
Issue 3
While Appellant raised additional arguments for patentability of
dependent claims 4, 6, 9, and 11, we find the Examiner has rebutted each of
those arguments in the Answer by a preponderance of the evidence.
Ans. 92—99, 102—121. Accordingly, we adopt the Examiner's findings and
underlying reasoning, which we incorporate herein by reference.
Consequently, we find no reversible error in the Examiner's rejections
Rl, R5, R7, and R8 of claims 4, 6, 9, and 11, respectively, and claims 8 and
13, grouped with claim 9. See Claim Grouping, supra.
4. Rejections R3, R4, R6, and R9-R13 (Claims 3, 5, 7, 14, 16, 18—20)
Issue 4
In view of the lack of any substantive or separate arguments directed
to the obviousness rejections R3, R4, R6, and R9-R13 of claims 3, 5, 7, 8,
13, 14, 17, and 19, under § 103, we sustain the Examiner's rejection of these
claims, as they fall with their respective independent claims. Arguments not
made are waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections Rl
through R13 of claims 1—14 and 16—20 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
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DECISION
We affirm the Examiner's decision rejecting claims 1—14 and 16—20.
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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