Ex Parte van Willigenburg

Patent Trial and Appeal Board

Feb 25, 2015

11554062 (P.T.A.B. Feb. 25, 2015)

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.
11/554,062 10/30/2006 Willem van Willigenburg LCNT/128374 4837
46363 7590 02/25/2015
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
TAYLOR, JOSHUA D
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
02/25/2015 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 WILLEM VAN WILLIGENBURG
____________

Appeal 2012-009254
Application 11/554,062
Technology Center 2400
____________

Before KEN B. BARRETT, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 6–11, 13–15, and 18–25. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
In reaching the decision, we have considered only the arguments
Appellant actually raised. Arguments that Appellant did not make are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2012).

STATEMENT OF THE CASE
The present invention relates to communication networks. See
generally Spec. 1. Claim 1 is exemplary:
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1. A method for providing video programs from a video server toward
a client device via a video distribution network, comprising:
receiving, from the client device, a request for a first channel
conveying a first video program;
providing a first video program stream from the video server toward
the client device via a first channel of the video distribution network, the
first video program stream conveying the first video program, the first video
program being provided at a first quality level;
identifying, at the video server using preference information
associated with one or more users of the client device, a plurality of
preferred channels preferred by one or more users of the client device, the
preferred channels conveying a respective plurality of second video
programs; and
providing a plurality of second video program streams from the video
server toward the client device via a second channel of the video distribution
network, the plurality of second video program streams conveying the
plurality of second video programs, the second video programs each being
provided at a second quality level below the first quality level;
wherein the first video program stream and the second video program
streams are adapted for use by the client device in locally switching from
presenting the first video program at the first quality level to presenting a
selected one of the second video programs at the second quality level.

THE REJECTIONS
Claims 1–4, 8–11, 15, 18, 19, and 21–24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Nohrden (US 2005/0078757A1; Apr. 14,
2005), Kennedy (US 2004/0013192 A1; Jan. 22, 2004), and Park (US
2006/0117341 A1; Jun. 1, 2006).
Claims 6–7, 13–14 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nohrden, Kennedy, Park, Jahanghir (US 6,275,616 B1;
Aug. 14, 2001), and Michael (US 6,141,033; Oct. 31, 2000).
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Claim 25 is rejected under 35 U.S.C. § 103 as being unpatentable over
Nohrden, Kennedy, Park, and Lin (US 6,934,917 B2; Aug. 23, 2005).

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred by finding Nohrden,
Kennedy, and Park collectively teach, “identifying, at the video server using
preference information associated with one or more users of the client
device, a plurality of preferred channels preferred by one or more users of
the client device,” as recited in claim 1 (emphases added)?
1

ANALYSIS
Claims 1–4, 6–11, 13, 14 and 21–23
On this record, we find the Examiner did not err in rejecting claim 1.
We disagree with Appellant’s arguments (App. Br. 14–20; Reply Br.
2–6), and agree with and adopt the Examiner’s findings and conclusions on
pages 4–7, 19–26, and 27 (first two paragraphs) of the Answer as our own.
Therefore, we limit our discussion to the following points for emphasis.
First, Appellant asserts Park does not teach the disputed claim
limitation because Park teaches content preference received from multiple
receivers. See App. Br. 14–16; Reply Br. 3. Appellant argues “the cited
portions of Park are devoid of any teaching or suggestion that content
preferred by one or more of the users of a single receiver is determined such
that the preferred content can then be provided to that single receiver.” App.
Br. 15; see also Reply Br. 3. Appellant contends the combination of

1
Other issues are discussed in the Analysis section.
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Nohrden and Park would have resulted in a system “providing a set of
broadcast content reflective of the content preferences of all of the users of
the broadcast system taken together, not a set of content preferred by the
user(s) of a single receiver (i.e., not at the granularity of the individual
receiver level).” App. Br. 17; see also Reply Br. 2–3.
Appellant fails to show reversible error because the Examiner does
not rely on Park’s multiple receivers for mapping claim 1. It is undisputed
Nohrden teaches “identifying, . . . using preference information associated
with one or more users of the client device, a plurality of preferred channels
preferred by one or more users of the client device,” as recited in claim 1.
See Ans. 19–20.
The Examiner correctly finds Park teaches identifying content
preferred by users at the video server and therefore, Park teaches the claim
element “at the video server.” See Ans. 7, 20–21 (citing Park, Figs. 2 and 6,
¶¶ 39–44, 61–62). As a result, Nohrden and Park collectively teaches
“identifying, at the video server using preference information associated
with one or more users of the client device, a plurality of preferred channels
preferred by one or more users of the client device,” as recited in claim 1.
Combining Nohrden’s method with Park’s video server technique would
have predictably used prior art elements according to their established
functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
Further, Appellant’s argument about the proposed combination is
unpersuasive because it is well settled that “a determination of obviousness
based on teachings from multiple references does not require an actual,
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physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Second, Appellant contends Kennedy cannot be combined with
Nohrden and Park. See App. Br. 18–20; Reply Br. 4–6. Appellant argues
while Nohrden and Park are directed toward broadcasting content from a
source to multiple receivers, Kennedy is directed toward transmitting
content from multiple user devices to a single base device. See App. Br. 18–
20; Reply Br. 4–6.
Appellant’s argument is unpersuasive, because “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” KSR, 550 U.S. at 417.
The Examiner correctly finds Nohrden, Park, Kennedy are analogous
art because the references and the invention all relate to the same field of
transmitting video over channels. See Ans. 4–7. Appellant fails to
adequately rebut that finding. See App. Br. 18–20; Reply Br. 4–6.
Appellant mainly cites Park’s paragraph 11 (App. Br. 18–19), but even that
paragraph supports the Examiner’s finding that Kennedy relates to the field
of transmitting video over channels. See Park ¶ 11 (“With a system that is
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adapted to transmit data at multiple picture qualities . . . This dynamic
assignment of channels therefore allows much greater flexibility.”).
2

Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–4, 8–11, and 21–23 for similar reasons.
Appellant argues claims 6, 7, 13, and 14 should be allowed for the
same reasons as claims 1 and 8, because the Examiner does not rely on
Jahanghir and Michael to remedy the alleged deficiencies discussed above.
3

Therefore, for similar reasons, we sustain the Examiner’s rejection of claims
6, 7, 13, and 14.

Claims 15, 18, 19, 20, and 24
On this record, we find the Examiner did not err in rejecting claim 15.
We disagree with Appellant’s arguments (App. Br. 21–25; Reply Br.
6–8), and agree with and adopt the Examiner’s findings and conclusions on
pages 9–12 and 30–32 of the Answer as our own. Therefore, we limit our
discussion to the following points for emphasis.
First, Appellant asserts Kennedy does not teach “when the selected
one of the second video programs is further selected at the client device
during presentation of the selected one of the second video programs at the
client device using the second quality level, propagating a channel change
request from the client device toward the video server, wherein the channel

2
Appellant’s discussions under the Second Point (Reply Br. 4–5) are
unpersuasive of error, because they do not persuasively rebut the Examiner’s
finding that Nohrden, Park, Kennedy, and the invention are from the same
field of endeavor.
3
Appellant includes claim 20 in this group, but claim 20 depends from claim
15.
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change request is a request for the video server to provide the selected one of
the second video programs at the first quality level,” as recited in claim 15
(emphasis added). See App. Br. 21–25; Reply Br. 6–8. Appellant argues
Kennedy’s paragraph 11 fails to teach “the Director selects one of the low-
quality preview feeds and then further selects that selected one of the low
quality preview feeds when it is being presented,” and “the example
provided in this portion of Kennedy fails to even discuss selection of one of
the low quality feeds.” App. Br. 23–24.
Appellant fails to show reversible error because the Examiner relies
on the combination of Nohrden and Kennedy to teach claim 15, Appellant
cannot establish nonobviousness by attacking Kennedy individually. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Indeed, the
Examiner finds, and we agree:
Appellant does not take into account the teaching in Nohrden of
the ability of a user to select video programming, as disclosed
in Nohrden’s paragraphs [0007] and [0014]-[0017]. This
teaching, when combined with the teaching of Kennedy, means
that there will be both high and low quality channels which may
be selected. Based on the teaching of Kennedy that the high
quality feeds are more desirable for viewing, Examiner takes
the position that it would have been obvious to one of ordinary
skill in the art at the time of the invention to modify Nohrden to
allow for a user to make a request to change the quality of a
channel (taught by Kennedy) after selecting said channel
(taught by Nohrden).
Ans. 32.
Second, Appellant argues Kennedy does not teach the “further
selected” claim limitation because Kennedy does not teach further selected
at the client device “during presentation of the selected one of the second
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video programs at the client device using the second quality level,” as
recited in claim 15. See Reply Br. 7–8. Appellant contends Kennedy’s
paragraph 11 does not teach displaying low quality or high quality feeds to
the Director at the base system, and merely teaches displaying high quality
feed to the end user. See Reply Br. 7–8.
Appellant fails to show reversible error. Kennedy teaches:
a very low quality preview picture could be transmitted
continuously during an event to the base system. This preview
feed would require only minimal bandwidth. When a Director
at the base system wished to use the picture from a particular
mobile portion a signal could be sent to the mobile portion over
the back channel to change the quality of transmission.
Kennedy ¶ 11 (emphases added).
Therefore, presenting the very low quality preview feeds (mapped to
the recited second quality level) to the Director at the base system is taught
by, or at least obvious in light of, the above Kennedy teachings. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference teaches a
claim limitation “is not an ‘ipsissimis verbis’ test”). Further, it is undisputed
Nohrden teaches the claim element “at a client device.” See Ans. 9–11.
Therefore, Kennedy and Nohrden collectively teach the claim element
“during presentation of the selected one of the second video programs at the
client device using the second quality level.” Combining the teachings of
Nohrden and Kennedy would have would have predictably used prior art
elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.

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Finally, Appellant argues Kennedy cannot be combined with Nohrden
and Park (App. Br. 24; Reply Br. 8), and such arguments are unpersuasive
for the reasons stated above with respect to claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 15, and
claims 18, 19, 20, and 24 for similar reasons.

Claim 25
We agree with Appellant that the Examiner fails to show the recited
references teach “wherein the further selection of the selected one of the
second video programs at the client device is an automatic selection made in
response to a determination that the selected one of the second video
programs is presented at the client device for a threshold length of time,” as
recited in claim 25 (emphasis added). See Reply Br. 9.
The Examiner cites Lin’s Figure 5, and columns 1, 3, and 4, and finds
“it would have been obvious to one of ordinary skill in the art at the time of
the invention to modify Nohrden, Kennedy and Park to allow for the switch
from low quality to high quality, which obviously would have been desirable
were a user to remain on a channel for an extended period of time, to be
made automatically, as per the teaching of Lin.” Ans. 37–38 (emphasis
added). However, the cited portions of Lin merely teach “generating a list of
favorite channels or media selections by determining the length of time a
viewer tunes to each channel or selection.” Lin 1:52–54. Therefore, we
agree with Appellant that the Examiner fails to adequately show the cited
Lin portions teach the claim element emphasized above. See Reply Br. 9
Accordingly, we do not sustain the Examiner’s rejection of claim 25.
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DECISION
The Examiner’s decision rejecting claims 1–4, 6–11, 13–15, and 18–
24 is affirmed.
The Examiner’s decision rejecting claim 25 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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