Ex Parte Watson et al

Board of Patent Appeals and Interferences

Jun 19, 2008

10028153 (B.P.A.I. Jun. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL T. WATSON,
SCOTT R. SWIX, and JAMES H. GRAY
____________

Appeal 2008-0381
Application 10/028,153
Technology Center 2600
____________

Decided: June 19, 2008
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and SCOTT R. BOALICK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-30, which are all of the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
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Appellants’ invention relates to content transmission and determining
whether to transmit content using a broadcast network or a broadband
network.
Claim 1, which is representative of the claims on appeal, reads as
follows:
1. A method for content transmission network selection in a
system coupled in parallel through both of a broadcast network and a
broadband network to a viewer location wherein the broadcast
network and the broadband network are different, the method
comprising the steps of:

identifying video programming content to be transmitted to the
viewer location based on a transmission request;

selecting one of the broadcast network or the broadband
network for transmission of the video programming content to the
viewer location based upon characteristics of the transmission request
comprising a future time at which the video programming content is
requested to be viewed, the selection based at least in part on an
option of delivering the video programming content either at a time
that the request is received or at the future time; and

transmitting the video programming content on the selected one
of the broadcast network or the broadband network to the viewer
location coupled to both of the broadcast and broadband networks.

The prior art applied in rejecting the claims on appeal is:
Ellis (Ellis ‘790) WO 99/60790 Nov. 25, 1999
Kaplan US 6,016,307 Jan. 18, 2000
Rai US 6,438,110 B1 Aug. 20, 2002
(filed Aug. 26, 1999)
Ellis (Ellis ‘526) US 6,766,526 B1 Jul. 20, 2004
(filed Dec. 3, 1999)
Rakib US 6,889,385 B1 May 3, 2005
(filed Jun. 23, 2000)

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Claims 1, 2, 6-11, 14-16, 19, and 22-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ellis ‘526 in view of Ellis ‘790 and Rai.
Claims 12, 13, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ellis ‘526, Ellis ‘790 and Rai and further in view of
Rakib.
Claims 3-5, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ellis ‘526, Ellis ‘790, Rai and further in view of
Kaplan.
We affirm.

ISSUE
The issue on appeal turns on whether, under 35 U.S.C. § 103, the
combination of Ellis ‘526, Ellis ‘790, and Rai, as proposed by the Examiner,
teaches or suggests the claimed subject matter, and specifically the claimed
step of “selecting one of the broadcast network or the broadband network”
based on “an option of delivering the video programming content either at a
time that the request is received or at the future time.”

PRINCIPLES OF LAW
To reach a conclusion of obviousness under section 103, the Examiner
bears the burden of producing factual basis supported by teaching in a prior
art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed.
Cir. 1984).
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Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006), In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA
1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739-40). “One of the ways in which a
patent’s subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” KSR, 127 S. Ct. at 1742.

ANALYSIS
1. Claim rejection over Ellis ‘526, Ellis ‘790 and Rai
Appellants do not dispute the teachings of Ellis ‘526 with respect to
the claimed identifying video programming content to be received.
However, Appellants’ contentions focus on whether the combination of Ellis
‘790 and Rai teaches the claimed step of selecting the network at least based
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on an option of delivering the programming content at a time the request is
received or at the future time (App. Br. 8-9).
With respect to claim 1, Appellants specifically contend that, as
acknowledged by the Examiner (Ans. 5), Ellis ‘790 does not teach or
suggest selecting one of a broadcast network or a broadband network for
transmission (App. Br. 9; Reply Br. 11). Appellants further assert that Rai
relates to reserving network connections in advance and has nothing to do
with selecting the network based on an option of delivering the
programming content either at a time the request is received or at a future
time (App. Br. 9; Reply Br. 11-12).
The Examiner argues that Ellis ‘790 is relied on for teaching the
options available for delivery when video programming is requested on a
video distribution network, which comprises a number of different network
types (Ans. 12). The Examiner states that such options include those related
to delivering the programming content either at a time the request is received
or at the future time (id.). With respect to Rai, the Examiner asserts that the
reference teachings provide for selection among multiple networks for
delivery of the video programming (Ans. 13).
We agree with the Examiner’s line of reasoning and find that Ellis
‘790 does describe different options selected by the user for video
programming delivery (p. 3, ll. 22-25). Among the delivery options
controlled by controller 39 in video server 29 (fig. 2 and 3), is coordinating
program broadcast times (p. 11, ll. 7-19). Ellis ’790 further discloses using
data fields for entering the user’s choices such as “program start-time” or
“start program now” (p. 23, ll. 6-12; p. 25, ll. 28-32). Rai, on the other hand,
focuses on choosing time slots on different connections or networks
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available on a communication network (col. 1, ll. 8-11). Rai selects a
specific network based on the time and duration of the service (col. 6, ll. 30-
37). Rai further discloses a connection schedule including a list of “time
slots” associated with data and describing a particular route or routes (col. 6,
l. 58 through col. 7, l. 6).
Therefore, one of ordinary skill in the art, when faced with situations
that require selecting different options related to delivery of video
programming, such as content, start time and duration, and the best route or
link from those available in a communications network, would have
combined the teachings of Ellis ‘790 and Rai with those of Ellis ‘526. Each
prior art reference adds additional criteria for selecting the specific option(s)
that would satisfy the viewer’s requirements.
We also disagree with Appellants that, because Rai provides for time
slots in the future (col. 10, ll. 51-54), it is limited to scheduling over a look
ahead period (Reply Br. 7). In fact, although Rai provides for a start time in
the future, there is nothing in Rai that precludes setting a start time as soon
as the request is received over an available link.
Appellants further contend that it would not have been obvious to
combine the references since the Ellis references discuss television systems
while Rai relates to a computer network (App. Br. 12; Reply Br. 14-15). We
agree with the Examiner’s analysis of Ellis ‘526 (Ans. 16) indicating that the
program selection, which may be implemented using the user’s television
based on a personal computer, a WebTV box, a personal computer
television, or a handheld computing device (col. 10, ll. 39-43), would also
benefit from the computer network of Rai. We also note that Rai allocates
network time slots in support of services such as distance learning or
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teleconferencing (col. 6, ll. 30-36), which similarly deliver video
programming content.
Based on our analysis above, we find no error in the Examiner’s
position that scheduling a video service over a network such that a specific
link is selected based on the requested time slot and duration of Rai would
be recognized by the skilled artisan as an obvious enhancement to the
selection of options for delivering programming content of Ellis ‘526 and
Ellis ‘790. According to the Leapfrog holding, when combination of
familiar elements according to methods known to the skilled artisan achieves
a predictable result, such as selecting the network based on the time the
programming content is to be delivered, it is likely to be obvious. The
combined teachings of Ellis ‘526, Ellis ‘790, and Rai present no more than a
combination of familiar elements according to known methods, with no
unpredictable results. Appellants have not shown, nor do we find, evidence
to the contrary.
With respect to claims 25, 27, and 29, Appellants contend the
proposed rejections based on the same assertions made with respect to
claims 1, 16, and 19 and repeat the argument that it would not have been
obvious to combine the references since the Ellis references discuss
television systems while Rai relates to a computer network (App. Br. 12;
Reply Br. 14-15).
Therefore, for all the reasons discussed above, we sustain the rejection
of claims 1 and 25, as well as claims 2, 6-11, 14-16, 19, 22-24, and 26-30
which are argued together with claims 1 and 25 over Ellis ‘526, Ellis ‘790,
and Rai.

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2. Claim rejections over Ellis ‘526, Ellis ‘790 and Rai and further
in view of Kaplan and Rakib

Appellants do not argue any of the rejections based on the
combination of these references. We find the Examiner’s rejections based
on the additional references to Kaplan and Rakib to be reasonably supported
by the factual findings outlined in the Answer, which remain unrebutted by
Appellants. Therefore, as the Examiner has set forth a prima facie case of
obviousness and for the same reasons discussed above with respect to claim
1, we sustain the rejection of claims 12, 13, 18, and 21 over Ellis ‘526, Ellis
‘790, Rai, and Rakib and of claims 3-5, 17, and 20 over Ellis ‘526, Ellis
‘790, Rai, and Kaplan.

CONCLUSION
Because Appellants have failed to point to any error in the Examiner’s
position, we sustain the 35 U.S.C. § 103 rejection of claims 1-30.

ORDER
The decision of the Examiner is affirmed.

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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

KIS

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