Ex Parte Ostrowka

Patent Trial and Appeal Board

Jun 20, 2013

11163755 (P.T.A.B. Jun. 20, 2013)

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.
11/163,755 10/28/2005 Barbara Ostrowka 60374.0293US01/966256 4754
62658 7590 06/20/2013
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
LANGHNOJA, KUNAL N
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
06/20/2013 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 BARBARA OSTROWKA
____________

Appeal 2011-002067
Application 11/163,755
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002067
Application 11/163,755

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to a networked multimedia system having a
multi-room interactive network guide (Spec. ¶ [2]).
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A networked multimedia system (NMS)
comprising:

a primary device for receiving and tuning presentations
from broadband signals received from a headend;

a network guide on said primary device; and

at least one remote device in communication with said
primary device, each remote device being configured to receive
said network guide and to request a presentation to be recorded
to said primary device, wherein said network guide provides an
indication that either said primary device or a remote device
requested said presentation for recording.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Iwata

Proebstel
US Pat. Appl. Pub.
2006/0156344 A1

US Pat. Appl. Pub.
2006/0215990 A1
July 13, 2006
(PCT filed June 7,
2004)
Sept. 28, 2006
(filed Mar. 4, 2005)
Appeal 2011-002067
Application 11/163,755

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ReplayTV® 4500 User’s Guide, SONICblue, Inc. (2002) (hereinafter
“ReplayTV”).

REJECTIONS
Claims 1, 6-9, 12, 13, 18, and 21-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Proebstel and Iwata.
Claims 2-5, 10, 11, 14-17, 19, 20, 25, and 26 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Proebstel, Iwata, and ReplayTV.

ANALYSIS
Appellant contends that
The present application is a CIP of U.S. App. Nos.
11/069,439 [the “ ’439 application”] and 11/069,440, both filed
on March 1, 2005. The filing date of Proebstel is March 4,
2005. The subject-matter for which Proebstel is relied upon for
rejection was disclosed by Applicants at least as early as March
1, 2005 and therefore Proebstel is inapplicable for rejection.

(App. Br. 5). Appellant cites specific portions of the ’439 application to
show the subject matter of claim 1 was disclosed as of the March 1, 2005,
filing date of the ’439 application, and is therefore entitled to the priority
benefit of that earlier filing date (see App. Br. 5-6). We disagree with
Appellant for the following reasons.
“[I]f a claim in a continuation-in-part application recites a feature
which was not disclosed or adequately supported by a proper disclosure
under 35 U.S.C. 112 in the parent nonprovisional application, but which was
first introduced or adequately supported in the continuation-in-part
Appeal 2011-002067
Application 11/163,755

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application, such a claim is entitled only to the filing date of the
continuation-in-part application.” MPEP § 201.11(I)(B) (Rev. 5, Aug.
2006). To satisfy the written description requirement under 35 U.S.C. § 112,
the disclosure must reasonably convey to skilled artisans that Appellant
possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
In this case, the claim 1 feature of “each remote device being
configured . . . to request a presentation to be recorded to said primary
device, wherein said network guide provides an indication that either said
primary device or a remote device requested said presentation for
recording” (emphasis added) is not disclosed in the ’439 application as
required by § 112. Appellant cites to page 8, line 15 through page 11, line 2
and page 11, lines 15-32 of the ’439 application to show written description
support for this feature (App. Br. 6). However, we agree with the Examiner
(Ans. 12) and find the described network guide embodiments merely
indicate which presentations are being viewed at particular remote devices,
and not which device requests any presentations for recording. For example,
the network guide in Figure 5 shows that “Remote Device – 1 ‘Kip’s
Room’” is viewing the recorded program “JAG,” however, this does not
indicate which remote device requested recording of the program.
Appellant’s argument that “[a] change in status may appear each time there
is a sta[t]us change in the remote device, such as a request to record a
program” (‘439 Application, page 11, lines 15-32)” (App. Br. 8) is
unavailing because the ’439 application does not actually disclose a request
to record a presentation is a possible status for a remote device (see‘’439
application, p. 11, ll. 15-32).
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Application 11/163,755

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Accordingly, we conclude the ’439 application does not reasonably
convey to skilled artisans that Appellant possessed the subject matter of
independent claim 1, and independent claims 7, 12, 18, and 21 which recite
similar limitations to claim 1, as of the filing date of the ’439 application.
Therefore, independent claims 1, 7, 12, 18, and 21, and claims 2-6, 8-11, 13-
17, 19, 20, and 22-26 depending therefrom, are not entitled to the benefit of
the earlier filing date of the ’439 application. We are thus not persuaded that
Proebstel fails to qualify as prior art.
Appellant presents no arguments on the merits of the obviousness
rejections of claims 1, 6-9, 12, 13, 18, and 21-24 over Proebstel and Iwata,
and claims 2-5, 10, 11, 14-17, 19, 20, 25, and 26 over Proebstel, Iwata, and
ReplayTV, and we are therefore not persuaded of error in the Examiner’s
rejections.

CONCLUSION
The Examiner did not err in rejecting claims 1-26 under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-26.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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