Ex Parte Miller

Patent Trial and Appeal Board

May 12, 2015

11958337 (P.T.A.B. May. 12, 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.
11/958,337 12/17/2007 Kerry Philip Miller ES-1038 (290110.405) 1942
70336 7590 05/12/2015
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
05/12/2015 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 KERRY PHILIP MILLER
____________________

Appeal 2013-003350
Application 11/958,337
Technology Center 2400
____________________

Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
JOHN A. HUDALLA, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from Final Rejection of
claims 1–31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 The real party in interest is EchoStar Technologies, L.L.C.
2 Our Decision refers to the Appeal Brief filed Aug. 6, 2012 (“App. Br.”),
the Examiner’s Answer mailed Oct. 23, 2012 (“Ans.”), the Reply Brief filed
Dec. 26, 2012 (“Reply Br.”), and the Specification filed Dec. 17, 2007
(“Spec.”).
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STATEMENT OF CASE
Overview of Claimed Subject Matter
The claims recite recording an “advance period” and “following
period” for a program of interest, such as television program. See, e.g.,
claim 1; Spec. ¶ 14. For example, a televised sports program may have an
unscheduled “advance period” covering an athlete’s profile or the history of
a sporting event. See Spec. ¶ 20. A “following period” may occur when a
sports program runs past its scheduled end time, such as when a game goes
into overtime. See Spec. ¶ 21. The start and end times of a sports program
may also be shifted for other reasons, such as delays due to inclement
weather. See Spec. ¶ 21. The “advance period” and “following period” are
referenced by Appellant and the Examiner generically as an “extension
period.” See, e.g., Reply Br. 10, Ans. 5. Appellant’s claims are directed to
comparing “characteristics” of a current program and previously recorded
program for which an “advance period” or “following period” was recorded,
in order to determine whether an “advance period” or “following period”
should be recorded for the current program. See claim 1. A “characteristic”
may be information indicating a program relates to a sporting event, news,
movies, etc. See Spec. ¶ 79.
Representative Claim
1. A method for recording programs, comprising:
identifying a program selected for recording as a program of
interest based upon the program selected for recording having at least
one characteristic corresponding to at least one characteristic of a
previous program for which at least one of an advance period
associated with the previous program or a following period associated
with the previous program was recorded;
recording an advance period associated with the program of
interest, the advance period corresponding to a period before a
beginning of the program of interest; and
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recording a following period associated with the program of
interest, the following period corresponding to a period after a
conclusion of the program of interest.

Prior Art
Kuroda US 6,311,011 B1 Oct. 30, 2001
Otana US 2002/0181935 A1 Dec. 5, 2002
Bumgardner US 2003/0206719 A1 Nov. 6, 2003
Ellis US 2006/0222325 A1 Oct. 5, 2006
Dolph US 2007/0286582 A1 Dec. 13, 2007
Tobiishi US 7,369,744 B2 May 6, 2008
Rejections
Claims 1–25 stand rejected under 35 U.S.C. § 103(a) based on Dolph
and Ellis. Ans. 4–14.
Claims 26, 28, and 29 stand rejected under 35 U.S.C. § 103(a) based
on Dolph, Ellis, and Kuroda. Ans. 14–17.
Claim 27 stands rejected under 35 U.S.C. § 103(a) based on Dolph,
Ellis, Kuroda, and Tobiishi. Ans. 17–18.
Claim 27 stands rejected under 35 U.S.C. § 103(a) based on Dolph,
Ellis, Kuroda, and Otana. Ans. 18–19.
Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) based on
Dolph, Ellis, Kuroda, and Bumgardner. Ans. 19–21.

PRINCIPLES OF LAW
The Board gives claims their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1369 (Fed. Cir. 2004). Although the claims are interpreted in
light of the specification, limitations from the specification are not read into
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the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
References combined in an obviousness rejection are viewed not for what
the individual references themselves suggest but rather for what the
combination of disclosures taken as a whole would suggest to one of
ordinary skill in the art. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).

ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Rejection and the Examiner's Answer as our own. We agree with the
Examiner's decision to reject claims 1–31 for the reasons given in the
Examiner's Answer. We highlight the following for emphasis.
“Was Recorded” Argument
Regarding claims 1–26 and 28–31, Appellant argues Ellis fails to
teach comparison of a characteristic of a current program of interest with a
characteristic of a previous program of interest with an advance period or
following period that “was recorded” as claimed. App. Br. 10–15; Reply Br.
10–11, 13–14. Specifically, Appellant argues Ellis teaches selecting
programs for which record start and stop times are adjusted based on
similarity to previously broadcast programs that have had scheduling time
changes, not whether they had extension periods previously recorded, as
claimed. App. Br. 10–11 citing Ellis Abstract ¶ 81 [sic].3

3 Appellant’s citations appear to be to Ellis, US 2002/0054068 A1, which
was not applied by the Examiner, instead of Ellis ’325 as applied by the
Examiner in the disputed rejection. See Ans. 22. Because Ellis ’068 and the
cited portions thereof were not used in the rejection, they are not relevant
evidence and we give them no weight in our analysis. We do, however,
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The Examiner finds Ellis teaches the “was recorded” limitation. See
Ans. 21–26 citing Ellis ¶¶ 7, 8. Specifically, the Examiner points to
paragraphs 7 and 8 of Ellis, which state as follows:
[0007] In some embodiments, recording options, such as
quality setting, start time or end time, may be modified for the
re-recording of the video. In some embodiments, recording
options may be modified based on prior recordings to
potentially avoid the need to re-record a program. For example,
category information (e.g., episode of a series, program title,
sports program, etc.) of a video scheduled to be recorded may
be compared with the category information of previously re-
recorded videos. The recording options of the video scheduled
to be recorded may then be modified based on the recording
options of the re-recorded videos.

[0008] For example, a prior re-recorded program which was a
Monday Night Football game was originally recorded with the
first four minutes of the broadcast missing. For the scheduled
re-recording, the start time was modified to add a five minute
buffer to the beginning of the program. The five minute
buffer may then be added to all other scheduled recordings of
Monday Night Football in an attempt to avoid the original
problem of missing the first four minutes of the broadcast.

Emphasis added.
Ellis thus teaches that a five minute buffer is added to the beginning of a
program, as well as to other programs in the same category. In so doing,
Ellis compares the characteristic (category) of the current program (one of
the later editions of Monday Night Football) with a characteristic (category)
of a previously recorded program (the original Monday Night Football
program) for which an advance period (five minute buffer) was recorded.

address Appellant’s arguments to the extent they are not strictly dependent
on these erroneous citations.
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Thus, we agree with the Examiner that Ellis teaches the claimed “was
recorded” limitation.
“May Not Have Been Recorded” Argument
Regarding claims 1–16, Appellant argues Ellis’s selection of recording
options may not result in recording of advance or following periods of a
program as claimed. App. Br. 13–14; Reply Br. 11–13 citing Ellis ¶ 50.
Appellant argues Ellis’s conflict checking to determine when to set record
start and end times may impede recording of extension periods for a
program. App. Br. 13 citing Ellis ¶ 50. Appellant also argues Ellis
implements a prioritization scheme, and if a program is selected to have its
extension time recorded at lower priority than another conflicting program,
the extension may not be recorded at all. Id. Appellant further argues the
user’s selection of recording options may override the initial recording
options selected and result in no recording of extension periods. Reply Br.
11–12 citing Ellis ¶ 50.
We disagree with Appellant’s arguments. The proper focus for
obviousness is not whether Appellant can imagine scenarios under Ellis’s
teachings for which a program would have no buffer recorded. Instead, the
focus is on what Ellis’s teachings as a whole would have taught or suggested
to the ordinarily skilled artisan. Such person would interpret Ellis’s
teachings concerning buffer recording for a program to be an optional
feature that could be useful under some circumstances, notwithstanding that
certain other options or alternative embodiments of Ellis may result in a
buffer not being recorded. As the Examiner relied upon the former and not
the latter in the rejection, we are not persuaded the Examiner erred.
Furthermore, Appellant’s claims contain no limitation that the recited
comparing of program characteristics must never occur with a program that
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did not have a buffer period recorded. To the extent Appellant’s argument
depends on such a limitation, Appellant’s argument is not commensurate in
scope with the claims as recited.
“In Response to the Available Memory Capacity Being Less Than”
Argument
Appellant argues the references cited in the rejection do not disclose
the emphasized limitation of claim 27, which recites:
in response to the available memory capacity being less than
the second amount of memory capacity and the third amount of
memory capacity, recording the advance period associated with
the program of interest and the following period associated with
the program of interest until the available memory capacity is
utilized.

App. Br. 15–16, Reply Br. 14–16. Appellant argues claim 27 requires that
separate memory capacities are determined for the program to be recorded,
for the advance period and for the following period. App. Br. 16, Reply Br.
14–16. According to Appellant, Tobiishi describes that “recording is
finished when the capacity of the recording device is full or a preset
recording time has elapsed” without regard to any determined memory
capacity for recording an advance period or following period of the program.
App. Br. 16.
The Examiner explains he relied on Dolph to teach determination of
the amount of memory required for the advanced period (pre-content) and
following period (post-content) (Ans. 27 citing Dolph ¶ 5). The Examiner
cites Kuroda for teaching determining the amount of memory capacity for
recording a program of interest (Ans. 27 citing Kuroda Fig. 3, S104), and
determining an available memory capacity of the memory device in excess
of the first amount of memory capacity for storing the program of interest
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(Ans. 27–28 citing Kuroda Fig. 3, S107). The Examiner cites Tobiishi for
teaching recording until memory capacity is full, i.e., determining a capacity
of the recording device is less than what is needed for the entire program,
and that pieces of the program will only be recorded until the determined
capacity is utilized in full (Ans. 28 citing Tobiishi col. 13, ll. 56–62). The
Examiner concludes Tobiishi teaches the disputed limitation of claim 27.
We agree with the Examiner claim 27 would have been obvious to a
person of ordinary skill in the art considering as a whole the teachings of
Dolph, Ellis, Kuroda, and Tobiishi for the reasons set forth by the Examiner.
Appellant did not address the Examiner’s rejection of claim 27 based
on Dolph, Ellis, Kuroda, and Otana in the Appeal Brief (see Ans. 18–19).
However, Appellant did address this rejection for the first time in the Reply
Brief (See Reply Br. 14–16). Unless good cause is shown, the Board is not
required to address arguments in a Reply Brief that could have been
presented in the Appeal Brief. Ex parte Borden, 93 USPQ2d, 1473, 1474
(BPAI 2010) (informative). As no good cause has been shown, we do not
consider the new arguments made in the Reply Brief and affirm the rejection
of claim 27.
Remaining Claims
As no separate arguments are presented for the remaining claims, we
affirm their rejection for the reasons set forth with respect to their
independent claims.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–31 is
affirmed.
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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

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