Ex Parte Whitfield et al

Patent Trial and Appeal Board

Dec 23, 2016

14058252 (P.T.A.B. Dec. 23, 2016)

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.
14/058,252 10/20/2013 Lloyd T. Whitfield 050050 CONI 7135
38516 7590 12/23/2016
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
KHAN, S HER A
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
12/23/2016 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 LLOYD T. WHITFIELD and RANDY S. ZIMLER
Appeal 2016-000232
Application 14/058,2521
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, L.P. App. Br. 4.
Appeal 2016-000232
Application 14/058,252
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "generally relate[] to
pathfmding or routing in multiplex communications and to interactive video
distribution systems and, more particularly, to storing and queuing
arrangements and to video distribution systems with local interaction."
Spec. 12.
Exemplary Claims
Claims 1 and 2, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method, comprising:
receiving content at a device;
storing the content in memory of the device;
locking, in the memory, the content with a lock that
expires at a date and time;
receiving, prior to the date and time, a request for early
access to the content prior to expiration of the date and time;
and
allowing, by the device, the early access to the content
following a payment for the early access.
2. The method of claim 1, further comprising
previewing the content prior to the date and time.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Apr. 2, 2015); Reply Brief ("Reply Br.," filed Sept. 28, 2015); Examiner's
Answer ("Ans.," mailed July 27, 2015); Final Office Action ("Final Act.,"
mailed Oct. 31, 2014); and the original Specification ("Spec.," filed
Oct. 20, 2013).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Peterson, Jr. ("Peterson") US 5,857,020 Jan. 5, 1999
Essa US 2005/0177386 A1 Aug. 11,2005
Abburi WO 01/46782 A2 June 28,2001
Rejections on Appeal
Rl. Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abburi and Essa. Final Act. 5.
R2. Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Peterson and Essa. Final Act. 10.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7—25), we decide the
appeal of obviousness Rejection Rl of claims 1, 3—8, 10-15, and 17—20 on
the basis of representative claim 1; and we decide the appeal of obviousness
Rejection Rl of claims 2, 9, and 16 on the basis of representative claim 2.
We decide the appeal of obviousness Rejection R2 of claims 1—20 on the
basis of representative claim 1.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
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We disagree with Appellants' arguments with respect to claims 1—20,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 2 for emphasis as follows.
1. $ 103 Rejection R1 of Claims E 3—8, 10-15, and 17—20
Issue 1
Appellants argue (App. Br. 7—16; Reply Br. 4—12) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Abburi and Essa is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of "receiving ... a
request for early access to the content prior to expiration of the date and
time; and allowing, by the device, the early access to the content following a
payment for the early access," as recited in claim 1?
Analysis
Appellants make several arguments that the Examiner erred in
rejecting claim 1 under § 103 over the combination of Abburi and Essa.
First, Appellants contend the Examiner's reliance upon paragraph 15 of Essa
as teaching or suggesting the contested step of receiving the "request for
early access" is misplaced, purportedly because "Essa provides NO 'access'
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until the content becomes 'available.'" App. Br. 8. Appellants further
contend "[t]he proposed combination of Abburi with Essa is simply distilled
[because] Abburi with Essa distributes 'encrypted' content prior to a release
time . . . [and] the decryption key is released 'no earlier than the release
time.'" Id. (emphasis omitted) (citing Abburi p. 3,11. 9-11 andp. 15,
11. 17-21).
Appellants further argue Essa only permits preordering a movie prior
to its release, and once the movie is available or publicly released, it is
delivered, i.e., Essa allegedly only teaches ordering the movie prior to its
release, and not delivering the content. App. Br. 8—9 (citing Essa ^fl[ 10-14,
36-38, 43, and 47^19).
Appellants also contend:
The proposed combination of Abburi with Essa allows a user to
request electronic content prior to its release. Yet Abburi with
Essa still performs a query to determine when electronic
content is released. This teaching of Essa thus fails to modify
Abburi's express disclosure of never releasing the decryption
key "earlier than the release time." Independent claim 1, in
contradistinction, allows "early access" to content ’’prior to
expiration of the date and time" of the "lock."
App. Br. 10.
In further support of their position, Appellants argue Essa teaches
payment processing only if the desired product is available. App. Br. 11
(citing Essa 115 and Fig. 5). "At the time of release, the decryption key is
then distributed, making the product 'available' for payment, as Essa teaches.
The proposed combination of Abburi with Essa still never releases the
decryption key 'earlier than the release time,' and the Appellant sees nothing
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in Essa that modifies this express Abburi requirement." App Br. 14
(emphasis omitted).
In response to Appellants' contentions, the Examiner finds Essa
acknowledges the problem of, and provides various embodiments which
allow, pre-purchase and delivery of electronic titles prior to general public
release. Ans. 3 (citing Essa 17); see also Essa 9 and 18.
We agree with the Examiner's finding that Essa Figure 5 and related
disclosure in paragraphs 55 through 58 disclose allowing pre-release
purchase and access to electronic products. For example, Step 502 of Essa
Figure 5 states "DISPLAY AVAILABLE PRE-RELEASE PRODUCTS."
"At 502, the process is commenced upon displaying the available pre-release
electronic titles. Next, at 504, a desired product is selected. Once the
desired product is chosen, the system determines if the desired product is
available at 506." Essa 1 56.
Thus, we find Essa teaches or at least suggests a distinction, relied
upon by the Examiner in the rejection of claim 1, between pre-release
products that are available, and pre-release products that are not available.
The disclosure of Essa relied upon the Examiner as teaching or suggesting
the contested limitations of claim 1 allows, at least in some instances,
purchase and delivery of pre-release electronic products that would not
otherwise generally be releasable. See Final Act. 6—7; Ans. 3—7.
Appellants are unpersuasive in their arguments that, because Abburi
would never release the decryption key earlier than the release time and Essa
allegedly does not teach or suggest early release, the Examiner erred in
rejecting claim 1 as being obvious under § 103. App. Br. 8, 12. We
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disagree because Essa's disclosure discussed above teaches or at least
suggests conditions for an "early" release, i.e., release of pre-release
electronic titles before they are otherwise generally available. In such a case
of "release," we find Abburi's decryption key could then be released.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 3—8, 10-15, and 17—20 which fall therewith. See Claim Grouping,
supra.
2. $103 Rejection R1 of Claims 2, 9, and 16
Issue 2
Appellants argue (App. Br. 17—19; Reply Br. 12—13) the Examiner's
rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious over the
combination of Abburi and Essa is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, that further includes the step of
"previewing the content prior to the date and time," as recited in claim 2?
Analysis
Appellants contend "[ejven though Abburi with Essa mentions a
preview option, the Examiner forgets that Abburi with Essa would only
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preview 'available' titles, as Essa repeatedly explains. That is, if the product
is 'not available,' Essa 'prompts for another selection,' as Essa's FIG. 5
illustrates." App. Br. 17. Appellants reiterate their argument regarding
claim 1, Issue 1, in connection with the rejection of claim 2. See Reply
Br. 13.
Because the Examiner rejects the claims as obvious over the
combined teachings of Abburi and Essa, the test for obviousness is not what
the references show individually but what the combined teachings would
have suggested to one of ordinary skill in the art. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
In response to Appellants' contentions, the Examiner finds, and we
agree as discussed above with respect to claim 1, Issue 1, Essa distinguishes
between pre-release content that is available, and pre-release content that is
not available. Furthermore, the Examiner finds paragraph 72 of Essa teaches
"nre-viewing of available pre-release product/electronic title before
purchase." Ans. 7.3
We agree with the Examiner's finding that Essa teaches or at least
suggests the contested limitation of claim 2.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 2, nor do we find error in the Examiner's
3 "It will further be understood that the system and method in accordance
with the present innovation may include a preview logic to enable a user to
preview a desired electronic title prior to purchase." Essa 172 (emphasis
added).
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resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 2, and grouped claims
9 and 16 which fall therewith. See Claim Grouping, supra.
3. $103 Rejection R2 of Claims 1—20
Issue 3
Appellants argue (App. Br. 19—24; Reply Br. 14) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Peterson and Essa is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of "receiving ... a
request for early access to the content prior to expiration of the date and
time; and allowing, by the device, the early access to the content following a
payment for the early access," as recited in claim 1?
Analysis
Appellants contend:
The proposed combination of Peterson with Essa describes a
"lock" for content, so that the content is "inhibited" from
viewing until a date and time of "premier." Indeed, Peterson
expressly explains how a controller "will not enable access to
the secured content until the date and time . . . associated with
the premier event" .... Once again, though, the Examiner
proposes to modify Petersen with Essa's paragraph [0015]. As
this Appeal Brief already explained, though, Essa's paragraph
[0015] teaches nothing about "early access."
App. Br. 19 (emphasis omitted) (citing Peterson col. 4,11. 36-43).
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Thus, Appellants continue to assert Essa fails to teach or suggest
"early access" to pre-release content, for essentially the same reasons as for
claim 1, Issue 1, supra. We disagree with Appellants' contentions for the
same reasons discussed above.
Appellants' contention does not persuade us of error on the part of the
Examiner because Appellants are responding to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. In re Merck, 800
F.2d at 1097.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2—20 which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4—14) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see
37 C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
and R2 of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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