Ex Parte Singh et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201612533225 (P.T.A.B. Feb. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/533,225 07/31/2009 25537 7590 02/09/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Satish K. Singh 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20090252 7186 EXAMINER TOPGY AL, GELEK W ART UNIT PAPER NUMBER 2481 NOTIFICATION DATE DELIVERY MODE 02/09/2016 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 SA TISH K. SINGH and ANIL K. P ADI Appeal2013-010039 Application 12/533,225 Technology Center 2400 Before JAMES R. HUGHES, KRISTEN L. DROESCH, and MELISSA A. RAAP ALA, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1, 2, 4--13, and 15-22. Claims 3 and 14 have been canceled. (Final Act. l; App. Br. 8.)1 We have jurisdiction under 35 U.S.C. § 6(b). 1 We refer to Appellants' Specification ("Spec."), filed July 31, 2009; Appeal Brief ("App. Br.") filed February 22, 2013; and Reply Brief ("Reply Br.") filed August 6, 2013. We also refer to the Examiner's Answer ("Ans.") mailed June 6, 2013, and Final Office Action (Final Rejection) ("Final Act.") mailed August 2, 2012. Appeal2013-010039 Application 12/533,225 We affirm. Appellants' Invention The invention at issue on appeal concerns video recording devices, computer-readable media, and methods for controlling video recording devices including the steps of receiving information from a user (including titles for at least two different television programs), and outputting a list of programs including the provided titles. (Spec. i-fi-f l, 40-43; Abstract.) Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method, comprising: receiving, at a recording device, an instruction or command from a user to record television programming on a first channel for a period of time, wherein the period of time includes a duration that spans at least two television programs; receiving, at the recording device, information from the user, the information comprising: information identifying a first name or title to associate with a first one of the at least two television programs, and information identifYing a second name or title to associated with a second of the at least two television programs, wherein the second name or title is different than the first name or title; recording the television programming on the first channel for the period of time; receiving, at the recording device, a request to view a list of recorded programs, the list including the television programming recorded on the first channel for the period of time; and 2 Appeal2013-010039 Application 12/533,225 outputting, by the recording device, the list of the recorded programs, the list including the first name or title associated with the first television program and the second name or title associated with the second television program. Rejections on Appeal 1. The Examiner rejects claims 1, 2, 4--7, 11, 13, 15, 16, and 18- 21under35 U.S.C. § 103(a) as being unpatentable over Devlin (US 2009/0010618 Al, published Jan. 8, 2009), Uchida (US 2006/0120688 Al, published June 8, 2006), and Barron (US 2006/0085820 Al, published Apr. 20, 2006). 2. The Examiner rejects claims 8-10 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Devlin, Uchida, Barron, and Nichols (US 2010/0235408 Al, published Sept. 16, 2010 (filed Apr. 15, 2010, claiming benefit of 11/728,734, filed on Mar. 27, 2007)). 3. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Devlin, Uchida, Barron, and Kim (US 2005/0210145 Al, published Sept. 22, 2005). 4. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Devlin, Uchida, Barron, and Murphy (US 2004/0250285 Al, published Dec. 9, 2004). ISSUE Based upon our review of the administrative record, Appellants' contentions, and the Examiner's findings and conclusions, the pivotal issue before us follows: Does the Examiner err in finding that Devlin, Uchida, and Barron collectively would have taught or suggested: 3 Appeal2013-010039 Application 12/533,225 receiving, at the recording device, information from the user, the information comprising: information identifying a first name or title to associate with a first one of the at least two television programs, and information identifying a second name or title to associated with a second of the at least two television programs, wherein the second name or title is different than the first name or title; outputting, by the recording device, the list of the recorded programs, the list including the first name or title associated with the first television program and the second name or title associated with the second television program. (claim 1) (App. Br. 31, Claims Appendix) within the meaning of Appellants' claim 1 and the commensurate limitations of claims 13 and 19? FINDINGS OF FACT We adopt the Examiner's findings in the Answer and the Final Office Action mailed August 2, 2012, as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. ANALYSIS Appellants do not separately argue independent claims 1, 13, and 19 or dependent claims 2, 4, 5, 7, 15, 16, 18, 20, and 21. (App. Br. 9-17, 20- 22.) Appellants provide separate arguments for claims 6 and 11. (App. Br. 17-20.) Similarly, Appellants provide nominal separate arguments for claims 8, 10, 12, and 17, but do not separately argue claims 9 and 22. (App. Br. 22-28.) Accordingly, we select independent claim 1 and dependent 4 Appeal2013-010039 Application 12/533,225 claims 6, 8, 10-12, and 17 as representative of Appellants' arguments and grouping with respect to claims 1, 2, 4--13, and 15-22. 37 C.F.R. § 41.37(c)(l)(iv). 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. 2-5, 7- 11; see Ans. 2-11), and (2) the reasons set forth by the Examiner in the Examiner's Answer (Ans. 11-18) in response to Appellants' Appeal Brief. We concur with the findings and conclusions reached by the Examiner, and we provide the following for emphasis. The § 103 Rejection of Claim 1 Appellants contend that Devlin, Uchida, and Barron do not teach the disputed features of representative claim 1, namely, ( 1) "receiving" "information identifying a first name or title to associate with a first one of ... at least two television programs" and "information identifying a second name or title to associated vvith a second of the at least tvvo television programs, wherein the second name or title is different than the first name or title;" and (2) "outputting, by the recording device, the list of the recorded programs, the list including the first name or title associated with the first television program and the second name or title associated with the second television program" (claim 1). (See App. Br. 9-17; Reply Br. 3-5.) Specifically, Appellants contend that none of the cited prior art, in particular Barron, describes receiving: information from the user, the information compnsmg information identifying a first name or title to associate with a first one of the at least two television programs, and information identifying a second name or title to associate with a second one 5 Appeal2013-010039 Application 12/533,225 of the at least two television programs, wherein the second name or title is different than the first name or title .... (App. Br. 11.) Appellants also contend that the "Final Office Action ... does not address" the outputting limitation (enumerated limitation 2, above). (App. Br. 13). Appellants further contend that "the alleged motivation for combining Barron with the combination of Devlin and Uchida is merely a conclusory statement providing an alleged benefit of the combination [, which] does not satisfy the requirements of 35 U.S.C. § 103." (App. Br. 17.) We find Appellants' contentions unavailing of Examiner error. As explained by the Examiner, Barron's "Paragraph 2 clearly teaches 'information may be entered interactively ... using an on-screen keyboard."' (Ans. 11 (quoting Barron i-f 2).) And, Barron further discloses receiving information from a user concerning multiple television programs and providing titles for multiple television programs (Final Act. 4; Ans. 4, 11-12 (citing Barron i-fi-113-16; Figs. 2--4).) Appellants do not dispute (see App. Br. 9-13) the Examiner's findings that Devlin and Uchida teach "splitting of a reservation into two separate timers and split recordings of a single timer." (Ans.11; see also Ans. 13-14.) Thus we agree with the Examiner that Barron at least suggests a user providing names or titles for multiple program recordings, where the recordings result from a request (instruction) to record a time period (period of time) on a first channel, and where the time period spans multiple television programs. (See Final Act. 3-5; Ans. 2-5, 11-12.) As further explained by the Examiner, Barron describes displaying (outputting) a list of timers (television programs) and each timer includes title (name) information- a title string. Barron further explains that the 6 Appeal2013-010039 Application 12/533,225 information in the title string (default title string) can be replaced using data extracted from the vertical blanking interval (see i-f 3). (Final Act. 5---6; Ans. 5---6, 12-13 (citing Barron i-fi-115-17; Figs. 3, 4).) Additionally, as previously discussed, Barron explains that it is known to enter data, including title information, into a timer. (Barron i-f 2.) Accordingly, we agree with the Examiner that Barron at least suggests outputting a list of television programs including the title of the first television program and a second title associated of the second television program, where the titles were provided by the user. (Final Act. 5-6; Ans. 5---6, 12-13.) With respect to Appellants' arguments concerning the Examiner's rationale for combining Devlin, Uchida, and Barron (App. Br. 16-17), Appellants concede that "Barron, Devlin and Uchida all involve video recording devices," but contend that the references have "different goals and purposes." (App. Br. 17.) Appellants misconstrue the relevant requirement (that the Examiner provide a "motivation" for combining the references) and do not persuasively explain why one of ordinary skill in the art would not have combined the teachings of Barron, Devlin and Uchida as proffered by the Examiner. The Examiner provides a rationale for combining the references - improved effectiveness and efficiency (by allowing a recording system to schedule recordings when a program guide is unavailable (Final Act. 5; Ans. 5---6)). Thus, the Examiner has stated "some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 7 Appeal2013-010039 Application 12/533,225 Appellants' arguments do not take into account what the combination of Barron, Devlin and Uchida would have suggested to one of ordinary skill in the art- The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; ... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). We find that it would have been well within the level of skill of one skilled in the art to combine such known techniques to utilize Barron's program listing and displaying techniques, in particular utilizing user provided titles, with the television program recording techniques - recording a period of time on a channel, and where the period of time spans multiple television programs - taught by Devlin and Uchida. See KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill" (citations omitted)). We are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been "uniquely challenging or difficult for one of ordinary skill in the art" at the time of Appellants' invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus, Appellants do not persuade us of error in the Examiner's obviousness rejection of representative independent claim 1. Accordingly, we affirm the Examiner's obviousness rejection of representative claim 1, 8 Appeal2013-010039 Application 12/533,225 independent claims 13 and 19, and dependent claims 2, 4, 5, 7, 15, 16, and 18, 20, and 21, not separately argued with particularity (supra). The § 103 Rejection of Claim 6 Appellants contend that Barron, Devlin and Uchida do not teach the disputed features of representative claim 6, namely, "selecting, by the user, a first icon associated with the television programming on the first channel for the period of time, the first icon being selected from a plurality of icons, [and] ... outputting the first icon with the first name or title and the second name or title" (claim 6). (App. Br. 18-19.) Specifically, Appellants contend "Devlin merely discloses storing content in particular folders and displaying the content of the folders. In other words, the labels shown in Figs. 6 and 7 do not correspond to icons, as recited in claim 6." (App. Br. 18.) We disagree. As explained by the Examiner, Devlin describes selecting (by a user) and displaying icons associated with recordings. (Final Act. 7; Ans. 6--7, 15). Devlin describes associating user selectable indicators with file folders, which we broadly but reasonably interpret as icons, designated by the user. (Devlin i-fi-128, 29; Figs. 6, 7.) Thus, Appellants do not persuade us of error in the Examiner's obviousness rejection of claim 6. Accordingly, we affirm the Examiner's obviousness rejection of claim 6. The § 103 Rejection of Claim 11 Appellants contend that Barron, Devlin and Uchida do not teach the disputed features of claim 11, namely, "receiving, from the user, an addition or modification to a programming description provided in a programming guide for a third program to be recorded[] and displaying ... the third 9 Appeal2013-010039 Application 12/533,225 program in the list of recorded programs" (claim 11). (App. Br. 19-20.) Specifically, Appellants contend "Devlin discloses generating file folders that include a collection of items associated with a particular party and displaying content-based directories." (App. Br. 19-20.) We disagree. As explained by the Examiner, Devlin describes adding and displaying collection information associated with a program recording listing. (Final Act. 7; Ans. 7, 15-16 (citing Devlin i1i128, 29; Figs. 6, 7).) Appellants do not sufficiently explain why such information would not have been utilized (by one skilled in the art) with the multiple program naming and displaying features of Barron. Thus, Appellants do not persuade us of error in the Examiner's obviousness rejection of claim 11. Accordingly, we affirm the Examiner's obviousness rejection of claim 11. The§ 103 Rejection of Claims 8-10 and 22 The Examiner rejects claims 8 and 10 as obvious over Devlin, Uchida, Barron, and Nichols. (Final Act. 8, 9; Ans. 8, 9, 16--17.) Appellants contend that Nichols does not teach the disputed feature of claim 8 (and 10), namely, "an importance measure associated with the television programming" (claim 8). (App. Br. 22-25.) Specifically, Appellants contend that the Examiner cited "portions of Nichols are not at all related to recording television programming, much less prompting the user to identify an importance measure associated with the television programming on the first channel for the first period of time, and receiving the importance measure from the user, as recited in claim 8." (App. Br. 23.) We disagree. As explained by the Examiner, "Nichols allows a user to provide ratings for media files, which clearly meets the claimed 'importance measure' prompted from a user." (Ans. 16.) Nichols describes adding a 10 Appeal2013-010039 Application 12/533,225 rating (metadata) to a user selectable media file (listing) and displaying the media file in a list of media files. (Final Act. 8; Ans. 8, 16-17 (citing Nichols i-fi-f 16-17; Fig. 2).) Additionally, the Examiner provides a rationale for the combination including Nichols. (Final Act. 8; Ans. 8, 16-17 (citing Nichols i14).) Thus, Appellants do not persuade us of error in the Examiner's obviousness rejection of claims 8 and 10, and claims 9 and 22 not separately argued with particularity (supra). Accordingly, we affirm the Examiner's obviousness rejection of claims 8-10 and 22. The § 103 Rejection of Claim 12 The Examiner rejects claim 12 as obvious over Devlin, Uchida, Barron, and Kim. (Final Act. 9-10; Ans. 9-10, 17-18.) Appellants contend that Kim does not teach the disputed feature of claim 12, namely, "information identifying a location or time in a third one of the programs identified in the list of recorded programs" (claim 12). (App. Br. 26-28.) \Ve disagree. Kim describes a multimedia bookmark (location) including a time and duration for a video and displaying the bookmark in a media list. (Final Act. 9-10; Ans. 9-10, 17-18 (citing Kim i-fi-1207-209; Figs. 1-3).) Additionally, the Examiner provides a rationale for the combination including Kim. (Final Act. 9-10; Ans. 9-10, 17-18 (citing Kim i-fi-f 111-113).) Thus, Appellants do not persuade us of error in the Examiner's obviousness rejection of claim 12. The § 103 Rejection of Claim 17 The Examiner rejects claim 17 as obvious over Devlin, Uchida, Barron, and Murphy. (Final Act. 10-11; Ans. 10-11, 18.) Appellants contend that the Examiner does not provide a proper rationale for the 11 Appeal2013-010039 Application 12/533,225 combination including Murphy. (App. Br. 28-29.) We disagree and find the Examiner provides a rationale for the combination including Murphy. (Final Act. 11; Ans. 11, 18.) As with claim 1 (supra), the Examiner explains the motivation for the combination would have been to improve effectiveness and efficiency. (Final Act. 11; Ans. 11.) Thus, Appellants do not persuade us of error in the Examiner's obviousness rejection of claim 1 7. CONCLUSION Appellants have not shown that the Examiner erred in rejecting claims 1, 2, 4--13, and 15-22 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner's rejections of claims 1, 2, 4--13, and 15-22. 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 12 Copy with citationCopy as parenthetical citation