Ex Parte Mickle et al

Patent Trial and Appeal Board

Apr 13, 2015

11321556 (P.T.A.B. Apr. 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.
11/321,556 12/28/2005 Jacklyn A. Mickle 050241 (BLL0364US) 2351
36192 7590 04/14/2015
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
CHU, WUTCHUNG
ART UNIT PAPER NUMBER
2468
MAIL DATE DELIVERY MODE
04/14/2015 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 JACKLYN A. MICKLE, MICHAEL W. SMITH,
and JAMES CHILTON
____________

Appeal 2013-001617
Application 11/321,556
Technology Center 2400
____________

Before CARLA M. KRIVAK, JEFFREY S. SMITH,
and JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 3, 4, 8–10, 12, 13, and 17–19.
Ans. 3. Claims 2, 5–7, 11, 14–16, and 20 have been canceled. Id. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, L.P. Br. 1.
Appeal 2013-001617
Application 11/321,556

2
STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to providing troubleshooting
services to customer premises equipment, such as, for example, a set-top
box, coupled to an Internet Protocol television (IPTV) network. Spec. ¶ 4.
Claim 1, which is illustrative, reads as follows:

1. A method of providing troubleshooting services to
customer premise equipment, the method comprising:
operating a network element as a troubleshooting
terminal server, the network element being part of a
communications network;
receiving customer premise equipment status information
indicating the status of the customer premise equipment;
receiving a request from the customer premise equipment
for troubleshooting information;
accessing a troubleshooting server, separate from the
troubleshooting terminal server, coupled to the communications
network, the troubleshooting server executing a troubleshooting
process to interact with the customer premise equipment; and
providing the troubleshooting information to the
troubleshooting terminal server for routing to the customer
premise equipment;
wherein the troubleshooting process includes:
transferring status information from the customer
premise equipment to the troubleshooting server;
accessing account information associated with the
customer premise equipment to determine if there is an
administrative issue with the customer premise
equipment associated with an account balance;
presenting a series of questions to the user and
receiving responses from the user;
Appeal 2013-001617
Application 11/321,556

3
executing an analysis routine on the status
information to detect trends that indicate an issue is likely
in the customer premise equipment; and
sending commands from the troubleshooting
server to the customer premise equipment and detecting
responses from the customer premise equipment;
wherein the customer premise equipment executes a
diagnostic application program interface to transmit the
customer premise equipment status information, the customer
premise equipment status information includes network
communication parameters, memory allocations within the
customer premise equipment and hard disk space in the
customer premise equipment;
wherein the diagnostic application program interface
sends diagnostic information at predetermined intervals and
upon the detection of a change in the customer premise
equipment.

References
The Examiner relies on the following prior art in rejecting the claims:
Drake et al. US 2002/0078441 A1 June 20, 2002
(hereinafter “Drake”)
Ryal US 2005/0050578 A1 Mar. 3, 2005
Chatterton US 7,116,894 B1 Oct. 3, 2006
Stanek et al. US 2007/0050836 A1 Mar. 1, 2007
(hereinafter “Stanek”)
Wood et al. US 2007/0074258 A1 Mar. 29, 2007
(hereinafter “Wood”)
Samele et al. US 2007/0115860 A1 May 24, 2007
(hereinafter “Samele”)
Appeal 2013-001617
Application 11/321,556

4
Rejections
Claims 1, 8–10, and 17–19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samele, Stanek, Chatterton, Drake, and Ryal. Final
Act. 3.
Claims 3, 4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samele, Stanek, Chatterton, Drake, Ryal, and Wood.
Id. at 13.

Issues on Appeal
Does Ryal teach or suggest that “the customer premise equipment
status information includes . . . memory allocations within the customer
premise equipment and hard disk space in the customer premise equipment,”
as recited in claim 1?
Did the Examiner err in combining Ryal with the combination of
Samele, Stanek, Chatterton, and Drake to reject claim 1?

ANALYSIS
Appellants do not substantively argue the claims separately, but
instead rely on the same arguments for all claims. See Br. 7–12. In
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select independent claim 1
as the representative claim. Remaining claims 3, 4, 8–10, 12, 13, and 17–19
stand or fall with claim 1.

Contention 1
Appellants contend Ryal does not teach or suggest that “the customer
premise equipment status information includes . . . memory allocations
Appeal 2013-001617
Application 11/321,556

5
within the customer premise equipment and hard disk space in the customer
premise equipment,” as recited in claim 1, because Ryal does not teach using
memory allocation as status information. Br. 7. Appellants acknowledge
that Ryal references a disk allocation table to track hard disk utilization but
argue that Ryal does not teach or suggest using the disk allocation table as a
separate piece of status information. Id.
In response, the Examiner finds:
Ryal in paragraph [0069] teaches that programming can control
content transfers in response to any change in available content
space, space requirements, or user preferences. The routine may
be entered at block 50, such as in response to a periodic check,
and/or a change in the amount of content retained on the device,
or a pending change as would arise in response to a upcoming
scheduled recording. The available amount of content space is
then tracked as represented by block 52, where the amount of
content space corresponds to hard disk space as claimed. Ryal
in the paragraph [0069] also teaches the system determines disk
utilization from some form of disk allocation table or
mechanism maintained for the disk blocks mechanism
maintained for the disk blocks which together comprise each
element of content, although the system can be adapted for
tracking content availability with any form of content storage.
Ryal teaches several different ways of tracking available
content space, and one of the ways is system determines disk
allocation table that is a separate piece of status information
from other piece of information (such as a periodic check,
and/or a change in the amount of content retained on the device,
or a pending change as would arise in response to a upcoming
scheduled recording) which corresponds to “memory
allocations within the customer premise equipment”.
Ans. 5–6. Based on these findings, the Examiner concludes Ryal teaches the
disputed limitation. Id.
We do not find Appellants’ contentions persuasive. We adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
Appeal 2013-001617
Application 11/321,556

6
from which the appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer (Ans. 5–6) in response to Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner.
Accordingly, we are not persuaded that the Examiner erred.

Contention 2
Appellants contend Ryal fails to teach or suggest the status
information limitation because Ryal’s status information is not used for
troubleshooting customer premise equipment as required by claim 1. Br. 7.
We do not find Appellants’ arguments persuasive. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
Examiner relies on the combination of Samele, Stanek, Chatterton, and
Drake for teaching every element except that the customer premise
equipment status information includes memory allocations within the
customer premise equipment and hard disk space in the customer premise
equipment, for which the Examiner relies on Ryal. See Final Act. 3–8. As
discussed supra, Ryal, at a minimum, suggests status information including
information indicating an amount of memory that is currently allocated for
storing data. See Ryal ¶ 69.
Accordingly, we are not persuaded that the Examiner erred.

Combination of References
Appellants contend the Examiner erred in combining Ryal with the
combination of Samele, Stanek, Chatterton, and Drake because “[t]here is no
Appeal 2013-001617
Application 11/321,556

7
predictable manner for combining Ryal with Samele, Stanek, Chatterton and
Drake to result in a system that uses memory allocations within the customer
premise equipment and hard disk space in the customer premise equipment
as part of a troubleshooting process as claimed.” Br. 8. Appellants argue:
In the present case, Ryal’s disclosure of using hard disk
capacity to shift content from one PVR to another does not
provide a predictable basis for modifying Samele, the primary
reference relied upon for remote diagnostics, to use memory
allocation and hard disk capacity for troubleshooting. As, such
the reliance on Ryal is improper.
Id.
We do not find Appellants’ contentions persuasive.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A prima facie
conclusion of obviousness may be supported by a showing that the claims
are directed to a process, machine, manufacture, or composition of matter
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, and such modification yields a
predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40
(1966)).
Appellants have not presented evidence sufficient to show that
combining the prior art was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418–19).
With regard to combining Ryal with the combination of Samele,
Stanek, Chatterton, and Drake, the Examiner concludes:
Appeal 2013-001617
Application 11/321,556

8
Thus, it would have been obvious to one of ordinary skill in the
art at the time of the invention was made to use a periodic/upon
a change check of content storage utilization, allocations, and
availability; and verification results as taught by Ryal in the
modified system of Samele, Stanek, Chatterton and Drake. One
of ordinary skill in the art would be motivated to do so for
improving user control of retained content.
Final Act. 8 (citing Ryal ¶¶ 12, 69, Fig. 2); see also Ans. 6. Here,
Appellants have not presented evidence or argument sufficient to show that
the combination yielded more than expected results. As such, we are not
persuaded that the Examiner erred in combining Samele, Stanek, Chatterton,
Drake, and Ryal.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 1, 3, 4, 8–10, 12, 13, and 17–19.

DECISION
The Examiner’s rejection of claims 1, 3, 4, 8–10, 12, 13, and 17–19 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).

AFFIRMED

msc