Ex Parte St. John-Larkin

Patent Trial and Appeal Board

Aug 19, 2016

11871306 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111871,306 10/12/2007
70336 7590 08/22/2016
Seed IP Law Group/EchoStar (290110)
701 FIFTH A VENUE
SUITE 5400
SEATTLE, WA 98104
FIRST NAMED INVENTOR
David Christopher St. John-Larkin
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.
ES-1076 (290110.483) 6548
EXAMINER
LUONG, ALAN H
ART UNIT PAPER NUMBER
2425
MAILDATE DELIVERY MODE
08/22/2016 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 DAVID CHRISTOPHER ST. JOHN-LARKIN
Appeal2014-006449
Application 11/871,3061
Technology Center 2400
Before CAROLYN D. THOMAS, SHARON PENICK, and
JOHN R. KENNY, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3-13, 15, 16, 18-25, and 27-29. (Appeal Br. 2.)
Claims 2, 14, 17, and 26 are cancelled. (Id.) We have jurisdiction under 35
U.S.C. § 6(b)(l).
We affirm and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Invention
Appellant's invention relates to a television service provider providing
a number of channels to a user. The television service provider creates a
1 Appellant identifies EchoStar Technologies L.L.C. as the real party in
interest. (Appeal Br. 1.)
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subset of the channels by identifying the viewing history of users in a
geographic area. The subset is sent to user devices, so when the electronic
programming guide is accessed, the condensed list may be presented to the
users. (Spec. i-fi-15, 29, Abstract; Appeal Br. 9.)
Representative Claims
Claims l, 3, 4~ and 12, reproduced below with key limitations
emphasized, is representative:
1. A method of generating a condensed list of channels for
display on a client device of a broadcasting system, the method
compnsmg:
monitoring, at a broadcast service provider location,
programming channels viewed via a plurality of client devices
that are each configured to receive a plurality of programming
channels, at least two of the plurality of client devices located at
separate locations in at least one of a geographic area that
includes multiple households and a broadcast service area that
includes multiple households;
selecting, at the broadcast service provider location, a
subset of the plurality of programming channels based at least in
part on at least one of a frequency and an amount of time of
viewing of the programming channels;
associating the subset of the plurality of programming
channels together into a group;
generating a condensed list of the programming channels
in the group, the condensed list of programming channels being
for display on a presentation device associated with at least one
of the plurality of client devices; and
transmitting the condensed list of the programming
channels for presentation on the presentation device via at least
one of the plurality of client devices.
3. The method of claim 1, further comprising storing, in the
at least one of the plurality of client devices, the condensed list
of programming channels.
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4. The method of claim 3, further comprising updating the
stored condensed list of programming channels, at least one of
periodically and continuously.
12. The method of claim 1, wherein selecting the subset
comprises ranking the monitored programming channels and
identifj;ing a defined number of programming channels for
selection based on the ranking.
Rejections
The Examiner rejects claims 1, 3-13, 15, 16, 18-25, and 27-29 under
35 U.S.C. § 103(a) as unpatentable over Caputo (US 2003/0217365 Al;
Nov. 20, 2003), Roberts et al. (US 7,954,120 B2; May 31, 2011) (hereinafter
"Roberts"), and Ellis et al. (US 2005/0028208 Al; Feb. 3, 2005) (hereinafter
"Ellis"). (Final Action 5-22.)
Issues
A: Did the Examiner err in finding that the combination of Caputo,
Roberts, and Ellis teaches or suggests generating a condensed list of the
programming channels in the group, as in claims 1, 13, 25, and 2 7?
B: Did the Examiner err in finding that the combination of Caputo,
Roberts, and Ellis teaches or suggests that the condensed list of
programming channels is "for display on a presentation device associated
with at least one of the plurality of client devices" and the step of
"transmitting the condensed list of programming channels for presentation,
as in claims 1, 13, 25, and 27?
C: Did the Examiner err in combining the teachings of Ellis and
Caputo?
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D: Did the Examiner err in finding that the combination of Caputo,
Roberts, and Ellis teaches or suggests, at a client device, updating a stored
condensed list of programming channels, as in claims 4 and 16?
E: Did the Examiner err in finding that the combination of Caputo,
Roberts, and Ellis teaches or suggests that selecting a subset of channels
comprises ranking the monitored channels and identifying a number of them
based on the ranking, as in claims 12 and 24?
ANALYSIS
A: "generating a condensed list of the programming channels in the group"
The Examiner finds, in part, that Caputo teaches (a) selecting of a
subset of a plurality of programming channels based on the frequency and
amount of time of viewing of the channels (Final Action 6-7), (b)
associating this subset of channels together into a group (id. at 7) and ( c)
generating a condensed list of programming channels in the resultant group
(id.) Appellant argues that the Examiner's findings regarding the generation
of a condensed list of programming channels is in error. (Appeal Br. IO-
11.)
Caputo concerns the provision of cable programming over a group of
combined modulated carriers (Caputo i-f 3), and specifically "identifying
'popular' program channels" and providing a popular channel with a carrier
on a permanent basis, saving system resources which would be wasted if a
popular channel needed to be reassigned to a carrier after being temporarily
tuned away from (id. f 6). The Examiner finds that Caputo teaches the
selection of a subset of a plurality of programming channels based on the
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frequency and amount of time viewing the channels (Appeal Br. 6-7), citing
various portions of Caputo including Caputo's disclosure that:
[b ]ased on the viewing statistics, a period in which the program
channel is in a particular status (being popular or unpopular) is
determined . . . Further, by aggregating the viewing statistics
concerning multiple service areas which comprise a region ...
regional acceptance of a program element may be determined.
(Caputo i-f 10.)
The subset of channels, according to the claim, is "associated together
into a group" after which the claim recites the disputed limitation of
generating a condensed list of the programming channels in the group. The
Examiner finds that this generation of a condensed list is taught or suggested
by Caputo's generation of viewing statistics, as shown in Caputo's Figure
10. (Final Action 7.) The Examiner also refers to Caputo's Figure 9 as
teaching or suggesting a condensed list in the Answer (at 32-23.) However,
Appellant argues that Figures 9 and 10 and the related disclosure of viewing
statistics concern the entire plurality of programming channels, and not the
condensed list of programming channels as claimed. (Appeal Br. 10-11;
Reply Br. 2-3.) Appellant is correct that the viewing statistics in Figure 9
and 10 do not clearly teach or suggest a condensed list of programming
channels in the "popular" channel subset. We agree with Appellant that the
viewing statistics shown in Figure 9 represent the viewing statistics collected
for all channels, and that Figure 10 represents a portion of a table of channel
popularity by time for all channels. (Caputo i1i1 44--46.)
However, we find that the Caputo does teach or suggest the claimed
step of "generating a condensed list of the programming channels in the
group" in the analysis of data to determine popular program channels and
periods in which they are popular and the assignment of carriers to the
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popular program channels on a permanent basis for these periods. (Caputo if
43.)
Thus, we agree that the portions cited by the Examiner for the
monitoring and selecting steps of claim 1 (Final Action 6-7, citing Caputo if
43) teach monitoring programing channels viewed and selecting a subset of
the plurality of programming channels, and that these same portions would
suggest to one of ordinary skill in the art the association of such channels
together into a group and the association and the generation of a condensed
list of programming channels. In addition, we find that description in
Caputo that certain channels are assigned to a carrier on a permanent basis
for the period of their popularity and are thus protected from being subject to
switched broadcasts teaches or suggests the generation of a condensed list of
such protected channels. (Caputo iii! 41--43.)
B: "a condensed list of the programming channels in the group ... for
display on a presentation device associated with at least one of the plurality
of client devices" and "transmitting the condensed list ofprogramming
channels for presentation"
The Examiner finds that Caputo and Roberts are silent with respect to
the condensed list of channels in the group being for presentation on a
presentation device associated with at least one of the plurality of client
devices, and the transmission of the list for presentation, but that these
limitations are taught by Caputo and Roberts in combination with Ellis.
(Final Action 8-9.)
Ellis teaches or suggests a remote program guide in which a subset of
channels are displayed on a presentation device to a user as a favorites
screen. (Ellis Fig. 10, iii! 38, 125.) The Examiner finds this to teach or
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suggest that the condensed list of programming channels be "for display on a
presentation device" and be transmitted to the presentation device for
display. (Final Action 9.) Appellant argues that "Ellis teaches generating a
viewer's personal list of favorite program channels" and that no teaching or
suggestion appears in Ellis of subset of channels which is selected based on
viewing statistics of other viewers. (Appeal Br. 13; Reply Br. 3.) However,
the Examiner cites Ellis, not for the selection of a subset of channels, but
rather for the disclosure of the presentation of such a subset to a user. (Final
Action 9; Answer 29-30.)
We agree with the Examiner that Ellis teaches a condensed list of
programming channels being for display on a presentation device and the
transmission of the condensed list for presentation, and thus we are not
convinced of error in the Examiner's findings with respect to the teachings
of Ellis.
Additionally, we do not find convincing Appellant's arguments that
the Examiner is using impermissible hindsight in the combination of Ellis
and Caputo. (Appeal Br. 13; Reply Br. 3.) We find that the Examiner has
provided a reason having rational underpinnings for making the proposed
modification. If the Examiner has articulated a reason having rational
underpinnings for making a proposed modification or combination of prior
art teachings, then that articulated reasoning demonstrates the combination is
not based on hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") (cited with approval in KSR,
550 U.S. at 418 (2007)). As the Examiner indicates, combining Ellis and
Caputo will allow the user access to the condensed list of geographic area
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user preference data from Caputo in the favorites programming guide format
of Ellis. (Answer 29.)
C: Change in Principle of Operation in Combining Ellis and Caputo;
Teaching Away Argument
Appellant argues that combining the teachings of Caputo and Ellis
would change the principle of operation of Caputo (Appeal Br. 11-12) and
that Caputo teaches away from the suggested combination with Ellis
(Appeal Br. 12-13). Aspects of these arguments are based on the
Examiner's finding that the viewing statistics of Caputo teach or suggest the
claimed condensed list of programming channels in the group which is a
subset of channels, addressed supra. However, we will address the general
arguments against combining Caputo and Ellis.
Appellant argues that "the headend 100 of Caputo would not be able
to transmit the viewing statistics for presentation without changing the
principle of operation of the headend 100" because "the data
analyzer/controller 812 is not capable of providing data to the switching unit
104 or the modulator bank 106." (Appeal Br. 12.) We note that Caputo
discloses a control carrier CC which transmits control information including
carrier assignments. (Caputo i-fi-127, 31, 32, 37.) Thus it is clear that,
according to Caputo, control information regarding the results of analysis
performed by analyzer/controller 812 are transmitted on the control carrier.
Thus, we see no change in a principle of operation between the transmission
of such information on a control carrier and similar teachings in Ellis. (E.g.
Ellis i-f 67.)
With respect to teaching away (Appeal Br. 12-13), Appellants argue
that because Caputo teaches there are more programs than available
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bandwidth, Caputo would teach away from transmitting anything other than
programs themselves (e.g., information about popular channels). The
disclosure in Caputo regarding control information being transmitted,
however, shows that Caputo does not teach away from transmission of
additional information.
Claim 1
With respect to claim 1, having considered the Examiner's rejections
in light of the Appellant's arguments and the evidence of record, we find
that claim 1 is unpatentable over Caputo, Roberts, and Ellis. Because we
make new findings/reasonings with respect to the term "condensed list" and
the teachings of Caputo, we designate our affirmance of the Examiner's
rejection as including a new ground of rejection to ensure that Appellant
have a fair opportunity to respond.
With regard to claims 3, 5-11, 13, 15, 18-23, 25, and 27-29,
Appellant does not separately contest the Examiner's rejections, and
therefore we find these claims unpatentable on the same grounds as claim 1.
D: "updating the stored condensed list of programming channels,
at least one of periodically and continuously"
With respect to claim 4, the Examiner finds that Caputo teaches
updating the stored condensed list of programming channels periodically.
(Final Action 10-11; Answer 36-37.) Appellant argues that Caputo does
not teach such updating. (Appeal Br. 14.) We agree with the Examiner that
Caputo's disclosure of changing the plurality of programming channels
associated together into a group based on popularity at a given time or day
teaches or suggests this limitation, and thus we do not find error in the
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Examiner's findings. We affirm the Examiner's 35 U.S.C. § 103(a)
rejection of claim 4 as unpatentable over Caputo, Roberts, and Ellis, and the
rejection of claim 16, argued on the same basis.
E: "ranking the monitored programming channels and identifYing a defined
number of programming channels for selection based on the ranking"
With respect to claim 12, the Examiner finds that Caputo teaches
ranking the programming channels and identifying a defined number for
selection. (Final Action 13; Answer 37-39.) Appellant argues that Caputo
does not teach such ranking. (Appeal Br. 14--15.) Although we agree with
Appellant's characterization that Caputo teaches "ranking program channels
and then assigning the highest ranked channels to a carrier" (id. at 15), we
find the assignment of highest ranked channels to carriers, as taught by
Caputo, teaches or suggests the limitation of identifying a defined number
(available carriers) of channels for selection based on ranking. Therefore we
do not find error in the Examiner's findings and affirm the Examiner's 35
U.S.C. § 103(a) rejection of claim 12 as unpatentable over Caputo, Roberts,
and Ellis, and the rejection of claim 24, argued on the same basis.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-13, 15, 16,
18-25, and 27-29 under 35 U.S.C. § 103(a) as unpatentable over Caputo,
Roberts, and Ellis
Because the claim interpretation and/ or fact finding and reasoning
relied on by the Board to sustain the rejections of the claims differs from the
facts and reasoning relied on by the Examiner, we designate our affirmance
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of the modified rejection of these claims as a NEW GROUND OF
REJECTION so as to provide Appellant with a full and fair opportunity to
respond to the thrust of the rejections.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking
any subsequent action in connection with this appeal may be extended.
AFFIRMED
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