Ex Parte St. John-Larkin

Patent Trial and Appeal Board

Mar 14, 2017

14610908 (P.T.A.B. Mar. 14, 2017)

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.
14/610,908 01/30/2015 David Christopher St. John-Larkin 290110.478D1 3024
70336 7590 03/14/2017
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
03/14/2017 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
Appeal 2016-007428
Application 14/610,9081
Technology Center 2400
Before JEREMY J. CURCURI, HUNG H. BUI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 According to Appellant, the real party in interest is EchoStar Technologies
LLC. App. Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed January 19, 2016
(“App. Br.”); Reply Brief filed July 27, 2016 (“Reply Br.”); Examiner’s
Answer mailed May 27, 2016 (“Ans.”); Final Office Action mailed August
17, 2015 (“Final Act.”); and original Specification filed January 30, 2015
(“Spec.”).
Appeal 2016-007428
Application 14/610,908
STATEMENT OF THE CASE
Appellant’s invention relates to “a method and a system to transmit
recurring data once to a user in order to optimize performance of a
bandwidth in a network system.” Spec. 3:2 4. According to Appellant,
[t]his system [] allows a source to transmit data, which is
typically sent multiple times (“recurring data”), once to a user
within a predetermined time frame, such that the data is gradually
or incrementally transmitted over a period of time to the user . . .
Once recurring data is stored on the device, such an embodiment
[] allows the source to more efficiently employ the available
transmission bandwidth to transmit more data and/or improve the
quality of the data that is being transmitted to the user, because
recurring data is transmitted a single time and therefore does not
repeatedly consume transmission bandwidth. Additionally, this
system [] allows the user to store data prior to its being used or
displayed and retrieve that data based on a predetermined
trigger or event.
Spec. 5:9—19 (emphasis added). In other words, a remote data transmission
source, such as a broadcast station or satellite system, is only required to
transmit recurring data (e.g., movies, ads, or news) once (a single time) on a
program channel, and need not retransmit the same recurring data on a
repeated basis over a period of time in order to optimize transmission
bandwidth. Id. Once the recurring data is stored at a set-top box (STB), the
recurring data can be retrieved based on a predetermined trigger or event.
Id.
Claims 1,7, and 15 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics'.
1. A method to communicate data, comprising:
receiving a plurality of segments of data over a period of
time from a remote data transmission source, such that the data
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Application 14/610,908
is received only once, a first segment of the plurality of
segments having an associated first event identifier;
storing the plurality of segments of data prior to
presenting the plurality of segments of data to an output port;
storing the first event identifier associated with the first
segment;
presenting the plurality of segments of data to the output
port;
receiving from the remote data transmission source a
repeated event identifier identical to the first event identifier;
in response to receiving the repeated event identifier,
retrieving the first segment corresponding to the associated first
event identifier; and
presenting the first segment of data to the output port.
App. Br. 22 (Claims App’x).
Examiner’s Rejections and References
(1) Claims 1, 3—5, 7, 8, 12, 13, 15, 16, and 19 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Flickinger et al. (US
2007/0089127 Al; published Apr. 19, 2007; “Flickinger”). Final Act. 3—6.
(2) Claims 6, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flickinger and Cohen (US 2006/0031892 Al;
published Feb. 9, 2006). Final Act. 7.
(3) Claims 2, 9, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flickinger and Kawaguchi et al. (US 6,271,893 Bl;
issued Aug. 7, 2001). Final Act. 8.
(4) Claims 10, 11, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Flickinger and Rodriguez et al. (US 8,745,656
B2; issued June 3, 2014). Final Act. 9.
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Application 14/610,908
Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether Flickinger discloses several limitations of each of Appellant’s
independent claims 1, 7, and 15. App. Br. 10-20; Reply Br. 2—6.
ANALYSIS
35 U.S.C. § 102(e): Claims 1, 3—5, 7, 8, 12, 13, 15, 16, and 19
In support of the anticipation rejection of claim 1, the Examiner finds
Flickinger discloses Appellant’s claimed “method to communicate data”
comprising, inter alia:
(1) “receiving a plurality of segments of data . . . from
a remote data transmission source, such that the data is received
only once, a first segment . . . having an associated first event
identifier” in the form of a set-top box (STB) receiving ads
including an identifying tag or label from a broadcast channel,
shown in Flickinger’s Figure 4; and
(2) “receiving from the remote data transmission source
a repeated event identifier identical to the first event identifier;”
and “in response to receiving the repeated event identifier,
retrieving the first segment corresponding to the associated first
event identifier” in the form of Flickinger’s ad insertion module
904 used to receive an identification of an ad and create a
program stream with inserted adds.
Final Act. 3^4 (citing Flickinger || 68—71, 73, 91—96, Fig. 4);
Appellant disputes the Examiner’s factual findings regarding
Flickinger. In particular, Appellant acknowledges Flickinger teaches an ad
insertion module 904 “as a module in the STB that determines which ads are
output into the program stream.” App. Br. 16. Appellant also acknowledges
Flickinger’s STB receives ads from the ad channel and then stores the ads
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Application 14/610,908
specified by the repeated transmission of advertisement identifiers. Reply
Br. 2 (citing Flickinger 158).
Appellant contends, however, that Flickinger does not teach
Appellant’s claimed “receiving from the remote data transmission source a
repeated event identifier identical to the first event identifier;” and
“retrieving the first segment corresponding to the associated first event
identifier” in response to receiving the repeated event identifier, as recited in
claim 1. App. Br. 15. According to Appellant, Flickinger’s “ads are merely
stored until they are delivered” and “[tjhere is no teaching found in
Flickinger of the claimed features that present recurring data segments.”
Reply Br. 2.
In response, the Examiner takes the position that:
the steps detailed by Flickinger of receiving
advertisements with identifying tags; receiving a carousel with
instructions identifying which advertisement to store and a
control channel identifying which advertisements to display; and
displaying the identified advertisements anticipate the claim
limitations identified by appellant.'1'’
Ans. 3 (emphasis added).
We are persuaded by Appellant’s arguments and disagree with the
Examiner’s position. Anticipation under 35 U.S.C. § 102 is a question of
fact. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described in a single prior art reference.
Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987). Contrary to the Examiner’s position, Flickinger only
teaches an advertisement storage and filtering system, shown in Figure 4, for
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Application 14/610,908
selectively identifying targeted ads to be stored in memory of the STB.
Abstract.
Flickinger’s Figure 4 shows a process flow of selecting and storing
targeted ads in memory of the STB, as reproduced below:
Flickinger’s Figure 4 shows a process flow of selecting and storing targeted
ads in memory of the STB.
As shown in Flickinger’s Figure 4, the targeted ads from an ad
channel received at the STB can be: (1) stored temporary via a hard drive
(HD) at block 403 and then processed by the STB at block 405 to determine
whether such an ad is appropriate for retention at block 411, or alternatively,
(2) buffered in STB memory at block 415 and subsequently stored in HD at
block 423. Flickinger H 69—71.
As recognized by Appellant, Flickinger does not teach Appellant’s
claimed “receiving from the remote data transmission source a repeated
event identifier identical to the first event identifier,” and “retrieving the first
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Application 14/610,908
segment corresponding to the associated first event identifier” “in response
to receiving the repeated event identifier,” as recited in claim 1. App. Br.
15; see also Spec. 5:9-19.
Because Flickinger does not teach the above limitations of claim 1, we
decline to sustain the Examiner’s anticipation rejection of claim 1 and its
dependent claims 2—6.
Independent claim 7 recites similar limitations of claim 1, i.e., “later
receiving an event identifier corresponding to the recurring event identifier”
and “in response to the later received event identifier, retrieving the
recurring segment.” Likewise, independent claim 15 recites, inter alia: “a
control module configured ... to process a repeated event identifier later
received from the remote data transmission source, wherein processing said
later received repeated event identifier includes directing the re-presentation
of said recurring segment of data to the output port.”
For the same reasons discussed, we also decline to sustain the
Examiner’s anticipation rejection of claims 7 and 15 and the anticipation and
obviousness rejections of their respective dependent claims 8—14 and 16—20.
CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 102(e) and
§ 103(a).
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DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1—20
under 35 U.S.C. § 102(e) and § 103(a).
REVERSED
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