Ex Parte Smetana et al

Patent Trial and Appeal Board

Jun 17, 2016

11460709 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111460,709 07/28/2006
124235 7590
Lowenstein Sandler LLP
65 Livingston A venue
Roseland, NJ 07068
06/20/2016
FIRST NAMED INVENTOR
KARENL. SMETANA
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.
25832.709 (L0709) 2452
EXAMINER
CASTRO, ALFONSO
ART UNIT PAPER NUMBER
2421
MAILDATE DELIVERY MODE
06/20/2016 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 KAREN L. SMETANA and JEROME 0. VOGEDES 1
Appeal2014-001270
Application 11/460,709
Technology Center 2400
Before KRISTEN L. DROESCH, JOHN A. EV ANS, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1---6 and 8-18, which are all of the pending claims
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants indicate the real party-in-interest is Motorola Mobility LLC.
App. Br. 3.
Appeal2014-001270
Application 11/460,709
The disclosed invention relates to receiving preview information for
content at a wireless terminal, and includes the wireless terminal receiving
expiration notification metadata for the content. Spec. i-fi-f 13, 14, 16-20.
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows (disputed limitation in italics):
1. A method in a wireless terminal, the method
compnsmg:
receiving preview information,
the preview information referencing content not yet
received by the wireless terminal;
receiving an electronic service guide, the electronic
service guide including expiration notification metadata for the
content referenced by the preview information,
the expiration notification metadata enabling presentation
of content expiration information on a user interface of the
terminal,
the expiration notification metadata providing a prompt
indicating that an availability of the content referenced by the
preview information will expire as the expiration of the
availability of the content approaches.
REJECTIONS
Claims 1, 8, 15, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boortz (US 2005/0144635 Al; published June 30,
2005), Hoang (US 2002/0059620 Al; published May 16, 2002), and
Dougherty et al. (US 6,725,461 Bl; issued Apr. 20, 2004) ("Dougherty").
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boortz, Hoang, Dougherty, and Seppala (US
2006/0019618 Al; published Jan. 26, 2006).
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Appeal2014-001270
Application 11/460,709
Claims 4, 5, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boortz, Hoang, Dougherty, and Anttila et al. (US
2006/0019702 Al; published Jan. 26, 2006) ("Anttila").
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boortz, Hoang, Dougherty, and Knight et al. (US
2008/0109528 Al; published May 8, 2008) ("Knight").
Claims 9, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boortz, Seppala, Hoang, and Dougherty.
Claims 11, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boortz, Seppala, Hoang, Dougherty, and Anttila.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boortz, Hoang, Dougherty, Anttila, and Vance et al. (US
2006/0174274 Al; published Aug. 3, 2006) ("Vance").
ANALYSIS
We have revie\ved the Examiner's rejections in light of Appellants'
arguments in the Appeal Brief presented in response to the Final Office
Action, and the Examiner's Answer. We agree with the Examiner's findings
of fact and conclusions of law to the extent that they are consistent with the
below analysis. Specific findings and arguments are highlighted and
addressed below for emphasis.
Claims 1-6, 8, 15, 16, and 18
The Examiner relies on the combined teachings of Boortz and Hoang
to teach or suggest "receiving preview information ... referencing content
not yet received ... [and] receiving an electronic service guide ...
including expiration notification metadata for the content referenced by the
preview information," as recited in claim 1. See Final Act. 5 (citing Boortz
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Appeal2014-001270
Application 11/460,709
Abstract, ilil 7-9, 34, 45-50; Hoang ilil 15, 52). Appellants argue that Hoang
does not disclose, teach, or suggest the claim limitations identified above
because in Hoang, the data-on-demand (DOD) program is already
downloaded and stored on a the client device, and the expiration information
imposes a time limit on access to the already downloaded DOD program.
See Br. 9-10 (citing Hoang i-fi-123, 52-56).
Appellants' arguments are not persuasive of Examiner error because
they address teachings of Hoang not relied upon by the Examiner. The
Examiner relies on Hoang's teachings from paragraphs 15 and 52. See Final
Act. 5; Ans. 27-28. Appellants do not sufficiently address Hoang's
teachings from paragraph 52, except to assert "[a]t paragraphs [0052]-
[0053], Hoang describes that a client device downloads and stores a DOD
program and its corresponding expiration information in memory." Br. 9.
We agree with the Examiner's finding that Hoang teaches that after the user
selects the program, the client device utilizes the expiration information
available via the electronic program guide (EPG) program before the set-
top-box (STB) tunes to receive the selected service via a stream transmitted
by the data-on-demand (DOD) server. See Ans. 27 (citing Hoang i152);
accord Hoang Fig. 9 (depicting the corresponding flow chart). We also
agree that Hoang teaches the client device retrieves the expiration
information from EPG program before receiving content. See Ans. 27;
accord Hoang Fig. 9, steps 704, 707. We are not persuaded of Examiner
error by Appellants' argument that the combination of Boortz, Hoang, and
Dougherty would not result in the method of claim 1. See Br. 12-13
(relying on the same misplaced teachings of Hoang) ..
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Application 11/460,709
In addition, the Examiner relies on the combined teachings of Boortz,
Hoang, and Dougherty to teach or suggest "the expiration notification
metadata providing a prompt indicating that an availability of the content
referenced by the preview information will expire as the expiration of the
availability of the content approaches," as recited in claim 1. See Final Act.
5---6 (citing Boortz Abstract, i-fi-17-9, 34, 45-50; Hoang i-fi-f 15, 52; Dougherty
Figs. 5---6, 1 :47-58). Appellants assert that Dougherty discloses a reminder
interactive application that enables a viewer to establish a reminder related
to a future broadcast or non-broadcast events based on a currently viewed
broadcast item, such as a commercial advertisement. See Br. 11 (citing
Dougherty 2:30-48). Appellants further assert the user must set the
reminder by interacting with the reminder interactive form described in
Figures 5 and 7. See Br. 11-12. Appellants contend that in Dougherty the
reminder indicates when the event will occur or become available, as
illustrated in Figure 6. See id. Appellants argue that Dougherty's reminder
cannot be construed as "a prompt indicating that an availability of the
content referenced by the preview information will expire" based on the
plain meaning of "expire" as "to come to an end." See id. at 12 (citations
omitted). Appellants further argue Dougherty's future broadcast and non-
broadcast events are not "the content referenced by the preview information
[that] will expire," and Dougherty's reminder is not "a prompt indicating
that an availability of the content referenced by the preview information will
expire." See id.
Appellants' arguments are not persuasive of Examiner error. We
agree with the Examiner that one with ordinary skill in the art
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Appeal2014-001270
Application 11/460,709
would have been able to employ an inference that the prompt
reminder displaying a time remaining for the availability of pay-
per-view programs could serve as a reminder to alert the user that
the availability of a pay-per-view program is for a limited time
(Fig. 6 suggests the availability for the broadcast content on
channel 99 be available for the next "1 minute").
Ans. 31-32 (citing Dougherty Fig. 6) (footnote omitted). We further agree
with the Examiner that "the reminder could alert the user that the expiration
of the availability of an impending program is approaching." See id. at 32.
We note that the display in Dougherty's Figure 6 including the following
reminder "'It's A Wonderful Life' is showing in I minute on Channel 99"
also suggests a prompt indicating that the availability of the content will
expire as the expiration of the availability of the content approaches because
the content (i.e., "It's A Wonderful Life") has a finite length. For this
reason, one with ordinary skill in the art would understand from the
aforementioned reminder depicted in Dougherty's Figure 6 that the
availability of the same referenced content (i.e., "It's A Wonder±hl Life")
will expire when the broadcast of the content has reached the end of its finite
length.
For all these reasons we sustain the rejections of claim 1 and claims
2---6, 8, 15, 16, and 18 not argued separately. See Br. 14, 19.
Claims 9-14
Appellants present arguments addressing the rejection of independent
claim 9, and dependent claims 10 and 13 under a separate heading. See Br.
14. Appellants assert that independent claim 9 recites limitations similar to
claim 1, and that the subject matter of claim 9 is not obvious over Boortz,
Hoang, and Dougherty for the same reasons as claim 1. See id. at 15.
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Appellants further contend that Seppala fails to remedy the deficiencies of
Boortz, Hoang, and Dougherty. See id. at 15-16.
For the same reasons as those explained above with respect to claim 1,
we are not persuaded of error in the Examiner's rejection of independent
claim 9, and dependent claims 10-14 not argued separately. See Br. 14--16,
19. Accordingly, we sustain the rejections of claims 9-14.
Claim 17
The Examiner relies on the combined teachings of Boortz, Hoang,
Dougherty, Anttila, and Vance to teach or suggest "pushing the content
expiration notification metadata to the communication terminal in the
absence of a request from the communication terminal," as recited in
dependent claim 17. See Final Act. 20. Specifically, the Examiner finds
Anttila teaches an embodiment where a specific request for the metadata is
not made based on Anttila's teaching that notification reminders are sent to
the terminal device after the network facility receives confirmation from the
terminal device regarding received promotions. See id. at 20-21 (citing
Anttila Fig. 4: 162, i-fi-1 6, 16, 106). The Examiner also finds that Vance
teaches transmitting content to the terminal device related to broadcast
promotions independent of receiving a request from the terminal device. See
Final Act. 21 (citing Vance i-fi-16, 9, 30, claims 3, 10).
Appellants argue that Vance's teachings of broadcasting movie
previews independent of requesting a particular preview, amount to
previews of content which are not "content expiration notification
metadata." See Br. 18. Appellants' arguments are not persuasive of
Examiner error because they address the teachings of Vance alone.
Appellants do not address the similar teachings of Anttila relied upon by the
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Application 11/460,709
Examiner, and most importantly, do not address the Examiner's findings that
rely on the combined teachings of Boortz, Hoang, Dougherty, Anttila, and
Vance. See Br. 16-18; Final Act. 20-21; Ans. 44--46. One cannot show
non-obviousness by attacking references individually where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
For these reasons, in addition to the reasons explained above with
respect to claim 1, we sustain the rejection of dependent claim 17.
DECISION
We AFFIRM the rejections of claims 1---6 and 8-18.
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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