Ex Parte Poole et al

Patent Trial and Appeal Board

Dec 8, 2016

13197267 (P.T.A.B. Dec. 8, 2016)

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.
13/197,267 08/03/2011 R. Andrew Poole 05-8025C1 5435
7590 12/12/201625537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
LANGHNOJA, KUNAL N
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
12/12/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte R. ANDREW POOLE and ROBERT D. FARRIS
Appeal 2014-09150
Application 13/197,267
Technology Center 2400
Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and
NORMAN H. BEAMER, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 5, 7—15, 17—22, 24, and 25. Claims 3, 6,
16, and 23 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Appeal 2014-009150
Application 13/197,267
Appellants ’ Disclosed Invention
Appellants’ disclosed and claimed invention is a method of and
system for providing playback of broadcast video programs at a customer’s
premises in the event of power loss and/or service interruption (Title; claims
1, 12; Abs.; Spec. 2—6, 9; Fig. 1).
Exemplary Claims
Exemplary independent claims 1,10, and 12 under appeal, with
emphases added to disputed portions of the claims, read as follows:
1. A method comprising:
monitoring, by a device at a customer premises, a
condition relating to power at the customer premises to
automatically detect a power outage at the customer premises,
the power outage comprising a loss at the customer premises of
power supplied from a commercial power grid to the customer
premises and causing an interruption to a video service provided
through a network to a video device within the customer
premises;
sending, in response to the loss at the customer premises
of the power supplied from the commercial power grid to the
customer premises, a notice of the interruption through
the network to a node having a video recorder in the network;
recording, at the video recorder in the network and during
the interruption caused by the power outage at the customer
premises, a video program that was being accessed by the
video device within the customer premises before the
interruption, at least from a point in the video program
substantially corresponding to a point when the interruption
occurred; and
after communication through the network with the video
device within the customer premises is resumed after an end of
the interruption, transmitting at least a portion of the recorded
video program starting from the point substantially
corresponding to the point when the interruption occurred, from
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the video recorder through the network to the video device within
the customer premises.
10. The method of claim 1, further comprising: when
communication through the network to the video device within
the customer premises resumes after an end of the interruption,
transmitting an offer to the viewer within the customer premises
to resume the video program that was being viewed within the
customer premises;
wherein the transmitting of at least a portion of the
recorded video program to the video device within the customer
premises is responsive to an acceptance of the offer by the
viewer.
12. A method comprising:
monitoring, by a device at a customer premises, a
condition relating to power at the customer premises to
automatically detect a power outage at the customer premises,
the power outage causing an interruption to a video-on-demand
service provided through a network to a video device within the
customer premises;
sending, by the device at the customer premises, a notice
of the interruption through the network to a node having a video-
on-demand server in the network;
stopping, by the video-on-demand server in response to
the notice of the interruption, a transmission of a video program
that was being accessed by the video device within the
customer premises before the interruption; and
noting, by the video-on-demand server, a point in the
video program substantially corresponding to a point when the
interruption occurred for use as a new transmission starting point
upon a resumption of the video-on-demand service.
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Application 13/197,267
Examiner’s Rejections
(1) The Examiner rejected claims 1, 2, 4, 5, 7—11, 13—15, 17—22, 24,
and 25 as being unpatentable under 35 U.S.C. § 103(a) over the combination
of Vereen (US 7,287,175 B2; issued Oct. 23, 2007) and Yamada (US
7,636,544 B2; issued Dec. 22, 2009). Final Act. 5—14; Advisory Action
mailed February 5, 2014 (hereinafter, “Advisory Action”), p. 2; Ans. 3—15.
(2) The Examiner rejected claim 12 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Vereen, Yamada, and Katz (US
7,103,906 Bl; issued Sept. 5, 2006). Final Act. 14—15; Advisory Action 2—
3; Ans. 15—18.
Issues on Appeal
Appellants, in the Appeal Brief and Reply Brief, present arguments as
to claim 1, and rely on those arguments as to claims 2, 4, 5, 7—9, 11, 13—15,
17—22, 24, and 25 (App. Br. 15—32; Reply Br. 6—28). In the Appeal Brief,
Appellants, for the first time during prosecution of the instant application,
present arguments as to the Official Notice taken by the Examiner as to
claim 10 (App. Br. 32—33; see also Reply Br. 26—28). Appellants also
present separate arguments as to claim 12 (App. Br. 34—38; Reply Br. 28—
32). Accordingly, we select claim 1 as representative of the group of claims
consisting of claims 1, 2, 4, 5, 7—9, 11, 13—15, 17—22, 24, and 25, and we
will address representative independent claim 1, dependent claim 10, and
independent claim 12 in our analysis infra.
Based on Appellants’ arguments in the Appeal Brief (App. Br. 15—38)
and the Reply Brief (Reply Br. 6—33), the following issues are presented on
appeal:
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(1) Did the Examiner err in rejecting claims 1, 2, 4, 5, 7—11, 13—15,
17—22, 24, and 25 as being obvious over the combination of Vereen and
Yamada because: (a) the combination does not teach or suggest the
limitation at issue in representative claim 1 of “sending, in response to the
loss at the customer premises of the power supplied from the commercial
power grid to the customer premises, a notice of the interruption through
the network to a node having a video recorder in the network,'1'’ and/or
(b) Vereen and Yamada are not properly combinable and there is no
teaching, suggestion or motivation provided for the combination?
(2) Did the Examiner err in rejecting claim 10 as being obvious
over the combination of Vereen, Yamada, and Official Notice because the
combination fails to teach or suggest “transmitting an offer to the viewer
within the customer premises,” as set forth in claim 10?
(3) Did the Examiner err in rejecting independent claim 12 as being
obvious over the combination of Vereen, Yamada, and Katz because the
combination, and specifically Katz, does not teach or suggest the limitation
at issue in claim 12 of “stopping, by the video-on-demand server in response
to the notice of the interruption, a transmission of a video program that was
being accessed by the video device within the customer premises before the
interruption”?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 5—15) in light
of Appellants’ contentions in the Appeal Brief (15—38) and the Reply Brief
(6—33) that the Examiner has erred, as well as the Examiner’s (i) Advisory
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Action (pp. 2—3), and (ii) response to Appellants’ arguments in the Answer
(Ans. 3—18). We disagree with Appellants’ arguments.
Claims 1, 2, 4, 5, 7—11, 12—15, 17—22, 24, and 25
With regard to representative claim 1 and dependent claim 10, we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Act. 5—7), as well as the
Advisory Action (p. 2); and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 2—
15). We concur with the conclusions reached by the Examiner with regard
to the obviousness of claims 1 and 10 in view of the combination of Vereen
and Yamada. We also agree with the Examiner that Appellants did not
timely object to the Official Notice that the transmission of offers were well
known, as evidenced by Ellis (US 7,370,343 Bl; issued May 6, 2008) and/or
Elcock (US 2005/0160308 Al; published July 21, 2005).
With regard to representative claim 1, the Examiner is correct that the
combination of Vereen and Yamada teaches or suggests “sending, in
response to the loss at the customer premises of the power supplied from the
commercial power grid to the customer premises, a notice of the interruption
through the network to a node having a video recorder in the network”
(Ans. 8). In addition, the broadest reasonable interpretation of the disputed
limitation of claim 1 does not require the “node” be remote from the
customer premises. In this light, Appellants’ contentions in the Appeal Brief
(App. Br. 15—21) that the “sending . . .” limitation is neither disclosed nor
suggested by Vereen and Yamada are not persuasive.
We are also unpersuaded by Appellants’ contentions (App. Br. 25—27)
that the Examiner has failed to provide evidentiary support for the
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motivation to combine Yamada with the teachings of Vereen. Evidentiary
support from the reference is not necessary because the motivation can
come, for instance, from general knowledge within the art.1 However,
Appellants have not responded to or refuted the Examiner’s explanation that
it would have been obvious to modify Vereen with Yamada “for the purpose
of generating record necessity or record cancel commands to [a] remote
recording server based on status information of the terminal in order to
provide [the] user with missed content: due to interruptions” (Final Act. 7).
Further, we agree with the Examiner’s response (Ans. 1Q--12) to Appellants’
arguments concerning any lack of motivation, teaching away, and/or
changed operating principals (App. Br. 21—30), including that it would have
been obvious to “implement features of detection and transmission of
terminal status information i ncludi ng reception of a TV broadcast as well as
battery capacity, taught by Yamada el al into [the] optical network terminal
1 In re Semaker, 702 F,2d 989, 994—95 (Fed. Cir. 1983); see also Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.IJ. Patrick, Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006):
Indeed, we have repeatedly held that an implicit motivation to
combine exists not only when a suggestion may be gleaned from
the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references
results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller,
more durable, or more efficient. Because the desire to enhance
commercial opportunities by improving a product or process is
universal... -and even eommon-sensical-...-we have held that there
exists in these situations a motivation to combine prior art
references even absent any hint of suggestion in the references
themselves.
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of Vereen et al in order to provide [a] user with missed content due to
interruptions (Yamada: Abstract: Col.2 lines 32-34).” Ans. 12 (underlined
emphasis omitted and italicized emphasis added).
With regard to dependent claim 10 separately argued, we agree with
the Examiner (Ans. 15) that Appellants did not timely or adequately traverse
the Official Notice taken as to modifying Vereen and Yamada to include
transmission of an offer in order to conserve network bandwidth (see Final
Act. 9). Specifically, the Examiner first took Official Notice that
transmitting an offer to conserve network bandwidth was well-known prior
to Appellants’ claimed invention in the Non-Final Office Action mailed
March 15, 2013 (p. 11). Appellants’ response filed June 27, 2013 did not
refute this Official Notice. The Examiner took Official Notice again in the
Final Office Action mailed October 30, 2013, and again, Appellants’
response filed January 22, 2014 failed to refute the Official Notice taken. In
this light, Appellants’ contentions on appeal that the Examiner’s reliance on
Official Notice is somehow improper (App. Br. 32—33; Reply Br. 26—28) are
untimely and not well taken. The time to object or refute the Official Notice
taken was in Appellants’ response made June 27, 2013, after the Examiner’s
Non-Final Office Action mailed March 15, 2013, and/or in Appellants’
response made January 22, 2014, after the Examiner’s Final Office Action
mailed October 30, 2013. See MPEP § 2144.03(C).
Assuming arguendo that Appellants’ traversal of the Official Notice
was timely, an adequate traverse of the Examiner’s taking of Official Notice
must contain sufficient information or argument to create on its face a
reasonable doubt regarding the circumstances justifying the Examiner’s
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notice of what is well known to one of ordinary skill in the art. In re Boon,
439 F.2d 724, 728 (CCPA 1971).
To adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner’s
action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art.
See 37 CFR 1.111(b). See also [In re Chevenard, 139 F.2d 711,
713 (CCPA 1943)] (“[I]n the absence of any demand by
appellant for the examiner to produce authority for his statement,
we will not consider this contention.”). A general allegation that
the claims define a patentable invention without any reference to
the examiner’s assertion of official notice would be inadequate.
If applicant adequately traverses the examiner’s assertion of
official notice, the examiner must provide documentary evidence
in the next Office action if the rejection is to be maintained.
See 37 CFR 1.104(c)(2). See also [In re Zurko, 258 F.3d 1379,
1386 (Fed. Cir. 2001)] (“[T]he Board [or examiner] must point
to some concrete evidence in the record in support of these
findings” to satisfy the substantial evidence test). If the examiner
is relying on personal knowledge to support the finding of what
is known in the art, the examiner must provide an affidavit or
declaration setting forth specific factual statements and
explanation to support the finding. See 37 CFR 1.104(d)(2).
MPEP § 2144.03(C); see also K/SHIMPP v. Hear-Wear Techs., LLC, 751
F.3d 1362, 1365-66 (Fed. Cir. 2014).
After Appellants’ belated arguments regarding Official Notice in the
Appeal Brief (App. Br. 26—28), the Examiner provided references (Ellis and
Elcock) showing the noticed facts to be well-known (Ans. 15). Ellis and
Elcock, taken with the other applied references of Vereen and Yamada and
the knowledge of a person of ordinary skill in the art at the time of
Appellants’ claimed invention, teach or suggest the feature recited in claim
10 of “transmitting an offer to the viewer within the customer premises.”
The Examiner has pointed to concrete evidence (e.g., Ellis at Fig. 22a and
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col. 19, line 46 to col. 20, line 46 and Elcock at 129, cited in the Answer at
page 15) in support of the findings regarding transmission of offers being
well known at the time of the invention. See In re Zurko, 258 F.3d 1379,
1386 (Fed. Cir. 2001) (“the Board [or Examiner] must point to some
concrete evidence in the record in support of these findings” (referring to
assertions by PTO of facts not of record, such as officially noticed facts) to
satisfy the substantial evidence test); see also In re Berg, 320 F.3d 1310,
1313, 1315 (Fed. Cir. 2003) (affirming the Board’s affirmance of an
Examiner’s obviousness rejection which relied upon a noticed fact where
appellant did not sufficiently rebut the prima facie case). Appellants’
arguments that Ellis and Elcock do not disclose or suggest transmitting an
offer to view missed video programming (App. Br. 32—33; Reply Br. 26—
28), are not persuasive since the Examiner’s obviousness rejection of claim
10 also relied on Vereen and Yamada, as well as the knowledge of the
ordinarily skilled artisan that it is desirable to prevent unnecessary
transmission of missed content, and network bandwidth can thus be
conserved, by transmitting an offer to the user at the customer premises and
resuming responsive to offer acceptance (see Final Act. 9).
Claim 12
With regard to independent claim 12, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 14—15), as well as the Advisory Action (pp. 2—3);
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (see Ans. 15—18). We concur with the
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conclusions reached by the Examiner with regard to the obviousness of
claim 12 in view of the combination of Vereen, Yamada, and Katz.
Specifically, we agree with the Examiner (Final Act. 15; Advisory Action 3;
Ans. 16—17) that (i) Katz teaches a video-on-demand service that, in
response to the notice of the interruption, stops the transmission of a video
program that was being accessed by a video device at the
customer’s premises before an interruption as recited in claim 12 (see Final
Act. 15; Advisory Action 3; Ans. 16—17); and (ii) it would have been
obvious to modify Vereen and Yamada with the video-on-demand stop
feature of Katz “for the purpose of allowing users to terminate content and
resume said content on demand basis subsequent to interruption(s)” (Final
Act. 15; Advisory Action 3; Ans. 17).
CONCFUSIONS
(1) The Examiner did not err in determining the combination of
Vereen and Yamada teaches or suggests the limitations of representative
claim 1 and dependent claim 10, because: (a) the combination of Vereen and
Yamada teaches or suggests the contested limitations (i) “sending, in
response to the loss at the customer premises of the power supplied from the
commercial power grid to the customer premises, a notice of the interruption
through the network to a node having a video recorder in the network?'' as
recited in representative claim 1, and (ii) “transmitting an offer to the viewer
within the customer premises” as recited in claim 10 when taken with the
knowledge of a person of ordinary skill in the art, including the Officially
Noticed facts; and (b) Vereen and Yamada are properly combinable.
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(2) The Examiner did not err in rejecting claim 12 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Vereen,
Yamada, and Katz because the combination teaches or suggests the
limitation of “stopping, by the video-on-demand server in response to the
notice of the interruption, a transmission of a video program that was being
accessed by the video device within the customer premises before the
interruption.”
DECISION
We affirm the Examiner’s obviousness rejections of claims 1, 2, 4, 5,
7-13-15, 17-22,24, and 25.
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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