Ex Parte Stevens

Patent Trial and Appeal Board

May 17, 2016

11846069 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111846,069 08/28/2007
110936 7590 05/19/2016
Great Lakes Intellectual Property, PLLC /CableLabs
44750 Yorkshire
Novi, MI 48375
Clarke Stevens
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.
CTL60150PUS I 60150 9779
EXAMINER
MENDOZA, TIJNIOR 0
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
05/19/2016 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):
j. buser@ greatlakesiplaw. com
d.smith@cablelabs.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLARKE STEVENS 1
Appeal2014-008221
Application 11/846,069
Technology Center 2400
Before DEBRA K. STEPHENS, JASON V. MORGAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 27-31 and 34--49, which are the only claims still pending. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to automatically switching between different
TV channels based upon an event occurring in the non-viewed channel, such
as a goal being scored in a channel not currently being watched. Spec. 1;
Abstract. The channel not currently being watched can be recorded so that if
1 According to Appellant, the real party in interest is Cable Television
Laboratories, Inc. App. Br. 1.
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an event occurs, playback of that channel can begin a short time before the
event occurred. Spec. i-f 16.
Representative Claims
Claim 27 is representative and reproduced below with key limitations
emphasized:
27. A method for automatically switching between a plurality of
television channels used to deliver television programs wherein
the television channels are transmitted in real-time with (i)
closed-captioning to textually describe events and (ii) event
coding to identify particular events, the event coding providing a
timing feature that identifies when each of the particular events
occur relative to a beginning of the corresponding television
program, the method comprising:
tuning to a first television channel of the plurality of
television channels for display to a viewer, including processing
the closed-captioning associated with the first television channel
for use in facilitating display to the viewer;
monitoring event coding for a second television channel
of the plurality of television channels while the first television
channel is being tuned to for display to the vie\ver, including
dynamically determining an elapse time since a most recently
occurring one of the particular events identified with the event
coding of the second television channel, the most recently
occurring one of the particular events changing as the event
coding changes;
generating a first recording of the second television
channel while the first television channel is being tuned to for
display to the viewer, including dynamically adjusting a length
of the first recording as the elapse time since the most recently
occurring one of the particular events increases and decreases;
and
automatically instigating a first tuning operation after a
first event occurs within the second television channel while the
first television channel is being tuned to for display to the viewer,
the first event corresponding with one of the particular events
identified within the event coding of the second television
channel, the first tuning operation resulting in playback of the
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first recording for display to the viewer, the playback beginning
at a beginning of the first recording.
Rejections
Claims 27, 29, 31, 34--38, 40---44, 46, 48, and 49 stand rejected under
the first paragraph of 35 U.S.C § 112 as failing to comply with the written
description requirement. Final Act. 6.
Claims 27-31, 34--36, and 38--49 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Ellis et al. (US 2008/0066111 Al; Mar.
13, 2008) ("Ellis '111") in view ofRashkovskiy (US 7,383,563 Bl; June 3,
2008). Final Act. 10.
Claim 37 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Ellis '111 in view of Rashkovskiy and in further view of
Ellis et al. (US 2008/0066106 Al; Mar. 13, 2008) ("Ellis '106"). Final Act.
25.
Claims 45 and 46 \Vere also rejected under the second paragraph of
35 U.S.C. § 112 as being indefinite. Final Act. 10. However, that rejection
is not before us on appeal.
ISSUES
1. Did the Examiner err in finding that "dynamically determining
an elapse time since a most recently occurring one of the particular events
identified with the event coding of the second television channel" and
"dynamically adjusting a length of the first recording as the elapse time
since the most recently occurring one of the particular events increases and
decreases" as recited in independent claim 27 and similar limitations as
recited in independent claims 38 and 44 lack written description?
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2. Did the Examiner err in finding that "events not matching with
the plurality of events are prevented from increasing and decreasing the
length of the first recording" as recited in claim 40 lack written description?
3. Did the Examiner err in finding that "adjusting the length of the
first recording to approximate the elapse time since the most recently
occurring one of the particular events identified within the event coding of
the second television channel, thereby causing the length of the first
recording to varying with each one of the particular events identified within
the event coding of the second television channel" as recited in claim 48 and
the similar limitation as recited in claim 49 lack written description?
4. Did the Examiner err in finding Ellis '111 teaches or suggests
"dynamically determining an elapse time since a most recently occurring
one of the particular events identified with the event coding of the second
television channel" and "dynamically adjusting a length of the first
recording as the elapse time since the most recently occurring one of the
particular events increases and decreases," as recited in independent claim
27, and similar limitations as recited in independent claims 38 and 44?
5. Did the Examiner err in finding Ellis ' 111 teaches or suggests
"adjusting the length of the first recording to approximate the elapse time
since the most recently occurring one of the particular events identified
within the event coding of the second television channel, thereby causing the
length of the first recording to varying with each one of the particular events
identified within the event coding of the second television channel," as
recited in claim 48, and the similar limitation as recited in claim 49?
6. Did the Examiner err in finding Ellis '111 teaches or suggests
"events not matching" or a first event that "matches," as recited in claim 40?
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ANALYSIS
Written Description
For claim 27, the Examiner finds the Specification fails to provide
adequate written description for "dynamically determining an elapse time
since a most recently occurring one of the particular events identified with
the event coding of the second television channel" and "dynamically
adjusting a length of the first recording as the elapse time since the most
recently occurring one of the particular events increases and decreases."
Final Act. 6-7.
Appellant contends the Examiner erred because the Specification
discloses a "timing feature" sufficient to support the claimed "dynamically
determining the elapse time"; a "recording time" sufficient to support the
claimed "dynamically adjusting a length of the first recording"; and ongoing
events and event data sufficient to support the remainder of the disputed
claim language. App. Br. 7-11. We have considered all of Appellant's
arguments but do not find them persuasive of error.
For "dynamically adjusting a length of the first recording as the elapse
time since the most recently occurring one of the particular events increases
and decreases," Appellant relies upon a series of non-consecutive paragraphs
discussing recording a non-viewed channel using a buffer of "a limited
period of time" so that if an event occurs in the non-viewed channel, the
system could rewind the buff er to a time before the occurrence of the event.
App. Br. 10-11 (citing Spec. i-fi-f 16, 18, 25; original claim 7). For example,
if a goal was scored in a non-viewed channel, such a buffer would allow
rewinding to watch the scoring of the goal rather than merely switching to
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the non-viewed channel after the goal had happened. We find that Appellant
has failed to show how this sufficiently supports the claim language as
written.
First, such a recording happens before any event occurs. Appellant
has not persuasively shown how the length of such a recording varies based
upon the elapse time after an event when the determination of the
recording's length happens before the event occurs. Appellant's reliance
upon pre-event buffering is even less persuasive for independent claim 38,
which requires the length of the recording be "approximately equal to the
elapse time since" the event (i.e., because the pre-event buffer already was
recording before the event occurred so its length would be longer than the
elapse time since the event, not approximately equal to it).
Second, we agree with the Examiner that Appellant has not
persuasively shown the length of the recording is ever adjusted, let alone
adjusted dynamically. Ans. 26. The Specification discloses the recording is
for "a limited period of time" such as a length "sufficient to rewind the
program to a period in time before the occurrence of the events prompting
the channel change." Spec. i-f 18. Yet Appellant has not shown sufficient
written description for this buffer length being adjustable, whether
dynamically or otherwise, rather than being fixed to a "limited period of
time."
Third, Appellant has not persuasively shown written description for
the "most recently occurring" event as recited in the claim. For example, in
a hockey game, a first event might be a penalty sending a player to the
penalty box for two minutes, and a second event might be a goal scored
while that player is in the penalty box. Appellant merely points out different
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events can occur during a game, yet we determine that this observation fails
to give sufficient guidance that the elapse time must be from the "most
recently occurring" event (i.e., the goal) rather than a prior event (i.e., the
penalty).
Fourth, Appellant argues "the originally filed application clearly and
reasonably conveys a 'timing feature' sufficient 'to limit recording time' to a
'portion' of the second channel." App. Br. 11. This is the same "timing
feature" that Appellant relies upon as written description for the claimed
"dynamically determining the elapse time." App. Br. 7. Yet the
Specification discloses this timing feature is "for coordinating channel
switch back" by determining when a given event has ended, not for
determining the length of a recording. Spec. i-f 26. Put another way, the
timing feature only activates after an event, whereas the recording buffer
occurs before an event. Thus, Appellant is conflating unrelated disclosures.
Appellant's arguments regarding "dynamically determining an elapse
time since a most recently occurring one of the particular events identified
with the event coding of the second television channel" fail for similar
reasons to persuasively show, for example, written description regarding an
elapse time since the "most recently occurring" event. See App. Br. 7-9;
Ans. 27.
Appellant also argues that independent claims 3 8 and 44 do not
include the word "dynamically" like claim 27, and that claim 38 includes the
limitation "approximately equal to the elapse time" not found in claim 2 7.
App. Br. 5. However, having reviewed the claims, we agree with the
Examiner's determination that claims 27, 38, and 44 also lack written
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description "even if worded a bit differently." Ans. 23-24. Our findings
above apply equally to claims 38 and 44.
We similarly agree with the Examiner's findings regarding the lack of
written description for dependent claims 40, 48, and 49. For example, we
agree with the Examiner that claims 48 and 49 lack written description based
on reasoning discussed above for claim 27, including lack of written
description for the "most recently occurring" event as well as adjusting or
varying the length of the recording.
We also are unpersuaded by Appellant's arguments for claim 40. For
example, the Specification disclosing the user can set a preference to switch
channels based on certain events fails to provide sufficient written
description for events being "prevented from increasing and decreasing the
length of the first recording." See App. Br. 12.
Accordingly, we sustain the Examiner's§ 112 rejection of claims 27,
38, 40, 44, 48, and 49, as well as claims 29, 31, 34--37, 41--43, and 46, which
fall with their respective independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
Obviousness
The Examiner rejects all three independent claims (27, 38, and 44) as
obvious over Ellis '111 in view of Rashkovskiy. Final Act. 10. The
Examiner determines that Ellis '111 teaches a "sliding buffer window" for
recording a game not currently being watched, and that the size of the
sliding buffer window can change depending upon what sport is shown, such
as recording the past 45 minutes for football but only the past 30 minutes for
basketball. Ans. 29-30 (citing Ellis '111 i-fi-1 59-60).
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Appellant contends the Examiner erred because Ellis ' 111 "sets
recording length according to a pre-set, fixed period specified in advance,"
rather than "as a function of events ongoing within the television program."
App. Br. 18. The specific claim limitations Appellant believes are missing
for claim 27 are "dynamically determining an elapse time since a most
recently occurring one of the particular events identified with the event
coding of the second television channel" and "dynamically adjusting a
length of the first recording as the elapse time since the most recently
occurring one of the particular events increases and decreases." App. Br. 15.
We are not persuaded by Appellant's arguments with respect to
independent claim 27. Appellant's argument that changes must occur "as a
function of events ongoing within the television program" (App. Br. 18
(emphasis added)) contradicts the language of claim 27, which instead
requires events "of the second television channel" (emphasis added). We
agree with the Examiner that a TV "channel" is broader than a TV
"program." Ans. 29. Accordingly, we find that a non-viewed channel
transitioning from one sport program to another would constitute an event
that could change the sliding buffer window. For example, the channel
changing from a basketball game to a football game would change the size
of the sliding buffer window from 3 0 minutes to 45 minutes. Ellis '111
i-f 60. Regardless of whether the new game caused the sliding buffer window
to start over at 0 minutes or instead keep the last 30 minutes from the prior
game, for at least the next 15 minutes the length of recording in the buffer
would dynamically adjust based upon the elapse time since the start of the
new game, assuming no other events occurred. We agree with the Examiner
that Ellis '111 in view of Rashkovskiy renders this claim obvious.
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We also find Appellant's argument regarding "content" for claim 3 8
or "program" for claim 44 unpersuasive. For example, claim 44 requires
"determining an elapse time since a most recently occurring one of the
events identified with the event coding of the second television program."
Yet similar to above, we find the start of a new game would be an event "of
the second television program." Again, similar to above, a program with no
other events other than the start of the game would meet these claims.
While we do not believe the relevant portions of the preamble breathe
life into claim 27 (e.g., because the "timing feature" in the preamble does
not appear in the body of the claims), Appellant's argument that the
preamble limits claim 27 to "programs" rather than "channels" (App. Br. 22)
is moot given our findings for claims 38 and 44.
Appellant separately argues the obviousness of dependent claims 39,
40, 48, and 49 based on contentions similar to claim 27, and we are not
persuaded for similar reasons. See, e.g., App. Br. 21 ("Claim 39 is believed
to be patentable for the same reasons that claim 38 is patentable"). For
example, Appellant argues for claims 48 and 49 that Ellis '111 fails to teach
the recording length changing for "each one of the particular events
identified with an event coding." App. Br. 20, 22. But again we determine
it would have been obvious to an ordinarily skilled artisan that the only
event coding could be for the start of a new game involving a new sport. For
example, a scoreless soccer game without any penalties may have no event
coding other than the start of the game.
Similarly, for claim 40, Appellant argues that Ellis '111 fails to teach
events that adjust recording length if they "match" but not adjusting
recording length if they do "not match." App. Br. 21-22. Yet Appellant
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concedes that the recording length is changed for the start of a new game in
a new sport (which as discussed above we find to be an event) yet the
recording length is not changed for any other events (such as a goal being
scored). Id.; Ellis '111 i-f 60. Thus, Appellant has not persuasively shown
error in the Examiner's finding that Ellis '111 teaches or suggests the
additional limitation of claim 40.
Appellant does not individually dispute the remaining dependent
claims and thus, these claims fall with their respective independent claims.
Accordingly, we sustain the Examiner's§ 103 rejection of
independent claims 27, 38, and 44, and dependent claims 28-31, 34--37, 39-
43, and 45--49.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 2 7-31 and 34--49. 2
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
2 Should there be further prosecution, the Examiner should consider whether
dependent claims 28, 30, 39, 45, and 47 should be rejected under 35 U.S.C.
§ 112, first paragraph for lack of written description because they contain the
same limitations that lack written description in the independent claims.
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