Ex Parte Sharkey et alDownload PDFPatent Trial and Appeal BoardDec 1, 201411828935 (P.T.A.B. Dec. 1, 2014) Copy Citation 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. 11/828,935 07/26/2007 JEFFREY L. SHARKEY PD-207033 1212 20991 7590 12/02/2014 THE DIRECTV GROUP, INC. PATENT DOCKET ADMINISTRATION CA / LA1 / A109 2230 E. IMPERIAL HIGHWAY EL SEGUNDO, CA 90245 EXAMINER KIM, TAELOR ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 12/02/2014 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 JEFFREY L. SHARKEY and HUY Q. TRAN ____________ Appeal 2012-007416 Application 11/828,935 Technology Center 2100 ____________ Before BRUCE R. WINSOR, CATHERINE SHIANG, and MICHELLE N. WORMMEESTER, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–35, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ “disclosure relates to a content processing and delivery system and, more specifically, to a system for coordinating content, content data and forming programming guide and menu structures in response thereto.” (Spec. ¶ 1.) Claim 1, which is illustrative, reads as follows: 1 The real party in interest identified by Appellants is DIRECTV Group, Inc. (App. Br. 2.) Appeal 2012-007416 Application 11/828,935 2 1. A method comprising: providing a content provider category for a first content that is assigned by a content provider, wherein said first content comprises programming content that is provided by the content provider or a title associated with programming content that will be provided by the content provider; providing a global guide category different than the content provider category for the first content; performing a global search using the global guide category; displaying the first content based on performing the global search; performing a content provider search using the content provider category; and displaying the first content based on performing the content provider search. Claims 1–9, 11–21, and 23–35 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ellis et al. (US 2003/0020744 A1; June 30, 2003; hereinafter “Ellis”). (Ans. 5–20.) Claims 10 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ellis and Cavicchia (US 2008/0022298 A1; Jan. 24, 2008). (Ans. 21–22.) Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Sept. 1, 2011; “Reply Br.” filed Feb. 9, 2012) for the positions of Appellants and the Answer (“Ans.” mailed Dec. 9, 2011) for the positions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-007416 Application 11/828,935 3 ISSUE The pivotal issue presented by Appellants’ arguments is as follows: Does Ellis disclose (1) “providing . . . a global guide category [for a first content] different than [a] content provider category for the first content” and (2) “performing a global search using the global guide category . . . [and] displaying the first content based on performing the global search” (the “providing” and “performing” limitations, respectively), as recited in claim 1? ANALYSIS Claim 1 We have reviewed Appellants’ arguments and contentions (App. Br. 5–8; Reply Br. 2–5) in light of the Examiner’s findings (Ans. 5–6) and explanations (Ans. 23–25) regarding claim 1. We agree with the Examiner’s findings and explanations (Ans. 5–6, 23–25) and, except as set forth below, we adopt them as our own. The following discussion, findings, and conclusions are for emphasis. Appellants contend Ellis does not disclose the “providing” limitation of claim 1 (App. Br. 6–7) and contend Ellis cannot disclose the “performing” limitation because it does not disclose the “providing” limitation (App. Br. 7–8). Accordingly, our discussion focuses on the “providing” limitation. The Examiner maps the recited “content provider category for the first content” to Ellis’s listing of content “By Channel” explaining “[n]etwork channels are content providers that provide programming of content to Appeal 2012-007416 Application 11/828,935 4 viewers.” (Ans. 24 (citing Ellis Fig. 5; ¶¶ 69–70, 74–75); see also Ans. 5 (citing Ellis ¶ 39).) The Examiner maps the recited “global guide category [for a first content] different than [a] content provider category” to Ellis’s listing of content by the categories “movies, sports, pay-per-view programming, etc.” (Ans. 24 (citing Ellis Fig 5)), which are categories that “may apply to many or all of the content from the content providers” (Spec. ¶ 54), i.e., “global categor[ies].” (Ans. 24 (citing Ellis Fig. 5; ¶¶ 69–70, 74– 75); see also (Ans. 5 (citing Ellis ¶¶ 39, 65).) The Specification further describes that “[a] guide category may be a global category established for use of on-demand programming and linear programming.” (Spec. ¶ 54 (emphasis added).) As conceded by Appellants (Reply Br. 3), such conditional language falls short of a definition that limits the scope of the claim. Accordingly, we conclude that a global category may be a category that applies to on-demand programming, a category that applies to linear programming, or a category that applies to both on-demand programming and linear programming. That said, however, although the Examiner has characterized the categories disclosed in Ellis’s Figure 5 as categories of linear programming (Ans. 24), the listed categories (e.g. “pay-per-view” (Ellis Fig. 5)) also apply to on-demand programming. (See also Ellis ¶ 78 (“User selectable criteria may also include what program guide server 25 searches for such as, for example, program listings, program information, web sites, video-on- demand videos, software, or any other suitable program guide data, other information, or videos.”) (emphasis added).) Therefore, we agree with the Examiner’s mapping of the recited “content provider category” and “global Appeal 2012-007416 Application 11/828,935 5 guide category different than the content provider category” to Ellis’s disclosure. Appellants contend the passages of Ellis (¶¶ 39, 65) relied on by the Examiner “merely describe a single content listing (the programming guide data). In contrast, Appellants claim is directed to providing both a content provider category for a first content and a global guide category different than the content provider category for the first content.” (App. Br. 6.) This argument is unpersuasive because Appellants do not persuasively identify any limitation of the claim that precludes the “content provider category” and the “global guide category different than the content provider category” from both being included in the program guide data. Appellants additionally contend as follows: [T]he main facility of Ellis provides data to the various distribution facilities, which each include a program guide server for maintaining program guide data for users of the corresponding distribution facility. Appellants submit that the claimed method is different than the cited portions of Ellis above. Specifically, each distribution facility of Ellis provides its own program guide data to its own users using its own program guide server. Neither the main facility nor the program guide servers, however, provides a global guide category for a first content different than a content provider category for the first content. Ellis, therefore, does not teach “providing . . . a global guide category [for a first content] different than [a] content provider category for the first content.” (App. Br. 7 (first brackets added, subsequent brackets in original) (citing Ellis ¶¶ 6–7); see also Reply Br. 4.) Appellants’ contention is unpersuasive for the reasons discussed supra, and because Appellants do not persuasively identify any limitation in claim 1 that precludes a program guide from being Appeal 2012-007416 Application 11/828,935 6 maintained at a distribution facility or program guide server separate from a main facility. Appellants contend in the Reply Brief that the Examiner failed to appropriately construe the claim term “global guide category different than the content provider category.” (See generally Reply Br. 2–4.) We disagree in view of our discussion and claim construction supra. In particular, we conclude that the Examiner did not, as alleged by Appellants (Reply Br. 2– 3) (citing Spec. ¶ 54)), improperly limit “global guide category” to linear programming, but rather, cited Ellis’s categories of linear programming as anticipating examples of the global guide category, encompassed within the broadest reasonable interpretation of “global guide category different than the content provider category.” (See Ans. 24.) Appellants contend the Examiner has improperly characterized the “global guide category” as “the content provider category,” arguing that “the global guide category and the content provider category are clearly defined throughout Appellants’ specification as separate and distinct elements.” (Reply Br. 3.) Consistent with our discussion supra, we conclude the Examiner mapped “global guide category” and “the content provider category,” to separate and distinct elements disclosed by Ellis. (See Ans. 24 (citing Ellis Fig. 5; ¶¶ 69–70, 74–75); see also (Ans. 5 (citing Ellis ¶¶ 39, 65).) Appellants further contend that “[p]aragraph [0054] [of the Specification] would appear to support an interpretation of the ‘global guide category’ as a guide category associated with the system provider and not the content provider.” (Reply Br. 3–4.) Appellants’ contention is unpersuasive because it invites us to import into the claim a narrowing (not Appeal 2012-007416 Application 11/828,935 7 broadening, as asserted by Appellants (id.)) limitation from the Specification that does not appear in the claim. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Furthermore, as conceded by Appellants, paragraph 54 of the Specification gives examples, not a limiting definition, of the “global guide category.” (See Reply Br. 2–3.) Appellants contend, for the first time in the Reply Brief, that “the mere recitation of retrieval from a server cannot anticipate [the ‘performing’ limitation]. At best, Ellis appears to teach content provider level searching.” (Reply Br. 5 (citing Ans. 25, ll. 9–12.) Putting the Examiner’s explanation in the context provided by the Examiner: “Ellis teaches a server and a system that retrieves from a server. (Ellis [0069]). Such retrieval of content is necessarily by performing a search of the server. [I]d. at 0007; 0041; 0046; 0048. Since global guide category is explained above, performing a search as claimed is anticipated by Ellis.” (Ans. 25, ll. 9–12.) Appellants’ argument, which does not address the entirety of the Examiner’s explanation, is unpersuasive. Appellants fail to persuade us of error in the rejection of claim 1. Accordingly we sustain the rejection of (1) claim 1; (2) independent claims 19 and 35, which were argued relying on the arguments made for claim 1 (App. Br. 10–11, 12); and (3) claims 2–4, 8, 9, 11, 18, 20, 21, 23–26, 33, and 34, which variously depend, directly or indirectly, from claims 1 and 19 and were not separately argued with particularity (App. Br. 8–11). Appeal 2012-007416 Application 11/828,935 8 Claims 5–7 and 12 Appellants present arguments for the separate patentability of claims 5–7 and 12. (App. Br. 8–10.) However, Appellants’ arguments amount to no more than a recitation of the claim language and an assertion that Ellis does not disclose the recited limitations. (See App. Br. 9.) In particular, Appellants arguments do not address the Examiner’s findings regarding claims 5–7 and 12 (see Ans. 7–8 (citing Ellis ¶¶ 70–71; Figs. 5, 6), 9–10 (citing Ellis ¶ 44)). Merely reciting the language of the claims and asserting that the cited prior art reference does not disclose each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Furthermore, Appellants concede that claim 5–7 and 12 stand or fall with claim 1. (Reply Br. 5 (“Claims 2–9 and 11–18 stand or fall with claim 1.”).) Accordingly, for the reasons set forth supra regarding claim 1, we sustain the rejection of (1) claims 5–7 and 12; (2) claim 27, which was argued relying on the arguments made for claim 12 (App. Br. 11); and (3) claims 13–17 and 28–32, which depend from claims 12 and 27 respectively and were not separately argued with particularity (App. Br. 10, 11). Claims 10 and 22 Appellants present arguments for the separate patentability of claims 10 and 22. (App. Br. 12–13; Reply Br. 5, 6.) However, Appellants’ Appeal 2012-007416 Application 11/828,935 9 arguments amount to no more than recitation of the claim language and assertions that Cavicchia does not overcome the deficiencies of Ellis because Cavicchia does not teach the disputed limitations as recited in claims 1 and 19. (See App. Br. 13.) As explained supra regarding claims 5–7 and 12 such an argument is insufficient. See 37 C.F.R. § 41.37(c)(vii); see also Lovin, 652 F.3d at 1357. Furthermore, as discussed supra regarding claim 1, Appellants have not persuaded us that Ellis does not disclose the disputed limitations. Accordingly, we sustain the rejection of claims 10 and 22. DECISION The decision of the Examiner to reject claims 1–35 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation