Ex Parte Singh et al

Patent Trial and Appeal Board

Feb 5, 2016

12533225 (P.T.A.B. Feb. 5, 2016)

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
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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:
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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
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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
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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
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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)).
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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,
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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
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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
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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
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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
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