Ex Parte Schlarb et al

Patent Trial and Appeal Board

Jul 31, 2013

10683138 (P.T.A.B. Jul. 31, 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.
10/683,138 10/10/2003 John M. Schlarb 60374.0004USC4/968527 9473
62658 7590 07/31/2013
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
PHAM, LINH K
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
07/31/2013 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 JOHN M. SCHLARB,
CHARLOTTE L. BARGE, and ROBERT O. BANKER
__________

Appeal 2011-004512
Application 10/683,138
Technology Center 2100
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method and systems for providing programming to subscribers. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
The invention concerns a method and system “for a subscriber
television system operator to select and designate programs as PPV [pay-
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Application 10/683,138

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per-view] programming and for subscribers to identify such programs as
PPV programming.” (Spec. 2, ll. 18-20.)
Claims 15, 18, 20, 21, and 23-28 are on appeal. Claim 1 is
representative and reads as follows:
1. A method for providing programming to subscribers,
comprising the steps of:
providing a first subscription package to a first set of subscribers;
providing a second subscription package to a second set of
subscribers, the second subscription package comprising at least one channel
that is not included in the first subscription package, the at least one channel
consisting of programming that the second set of subscribers does not pay
for on a per use basis and is not included in the channels normally available
for view as part of the second subscription package; and
designating a block of programming from the at least one channel as
available for purchase by the first set of subscribers as a pay-per-view event
without purchase of a subscription to said at least one channel, said block of
programming comprising an individual program;
wherein said designating is performed by a television system operator
defining a service code for the designated block of programming.
(Emphasis added.)

The Examiner rejected claims 15, 18, 20, 21, and 23-28 under 35
U.S.C. § 103(a) as unpatentable over Leftwich,1 Alten,2 and Hoarty.3

OBVIOUSNESS
The Examiner’s position is that Leftwich differs from the claimed
invention in two respects. (Ans. 4-5.) First, Leftwich failed to teach

1 Patent Application Publication No. US 2005/0138657 A1 by James J.
Leftwich, published Jun. 23, 2005.
2 Patent Application Publication No. US 2008/0216111 A1 by Jerry Alten et
al., published Sep. 4, 2008.
3 US Patent No. 6,100,883 issued to W. Leo Hoarty, Aug. 8, 2000.
Appeal 2011-004512
Application 10/683,138

3
designating a block of programming from the at least one channel as
available for purchase by the first set of subscribers as a pay-per-view event
without purchase of a subscription to said at least one channel said block of
programming comprising an individual program provided during a
predetermined time period wherein said designating step is performed by a
television system operator. (Id. at 4.) However, the Examiner found that
Alten taught this element. (Id. at 4-5.) According to the Examiner, it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to have combine the teachings of Leftwich and Alten to
provide a user with the ability to buy pay-per-view programs. (Id. at 5.)
Second, Leftwich and Alten “fail[ed] to teach headend further
providing a service code for the designated programming.” (Id.) However,
the Examiner found that Hoarty taught providing a service code for the
designated programming. (Id.) According to the Examiner, it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to have included Hoarty’s teaching with the combined method of
Leftwich and Alten “to distribute programming through [a] fiber optic
system.” (Id.)
Appellants contend that that the combined references do not yield a
method or system “wherein said designating is performed by a television
system operator defining a service code for the designated block of
programming,” as required by the claimed inventions. (App. Br. 5-6.)
Appellants assert that while Hoarty discusses service nodes, “Hoarty
nowhere discusses the usage of providing service codes for [] designating
programming.” (Id. at 8.) According to Appellants, “Hoarty nowhere
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Application 10/683,138

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discloses that the service nodes have any relation to establishing service
codes defining designated blocks of programming.” (Reply Br. 3.)
We agree with Appellants. In particular, what is missing from the
Examiner’s rejection is a disclosure in Hoarty supporting the Examiner’s
finding (see Ans. 7) that Hoarty taught providing a service code for
designating programming. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)(“[T]he examiner bears the initial burden… of presenting a prima facie
case of unpatentability.”).
SUMMARY
We reverse the obviousness rejection.

REVERSED

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