NBCUniversal Media, LLCDownload PDFPatent Trials and Appeals BoardOct 1, 20212020001040 (P.T.A.B. Oct. 1, 2021) Copy Citation 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. 15/216,325 07/21/2016 Glenn A. Reitmeier 248414-4 (NBCU:0017-1) 1467 12640 7590 10/01/2021 NBCUniversal Media, LLC c/o Fletcher Yoder, P.C. PO Box 692289 Houston, TX 77269-2289 EXAMINER PENG, HSIUNGFEI ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 10/01/2021 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): ceaser@fyiplaw.com docket@fyiplaw.com wimmer@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GLENN A. REITMEIER, PETER SMITH, THOMAS M. DUFF, and MICHAEL F. STEIB Appeal 2020-001040 Application 15/216,325 Technology Center 2400 Before ROBERT E. NAPPI, JAMES R. HUGHES, and JOHN P. PINKERTON, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-001040 Application 15/216,325 2 STATEMENT OF THE CASE Claims 35, 36, 39–45, 48–54, 57–61, and 64–66 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1, 2 See Non-Final Act. 1–2; Appeal Br. 2.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally “relates to methods and systems for combining programming content in a controlled synchronized manner. The systems and methods allow the combined content to be delivered simultaneously to users as part of a standard programming signal.” Spec. ¶ 2. More specifically, Appellant’s claimed subject matter is directed to a machine-readable media and methods for distributing customizable program content from a first distributor to a second distributor, where the content comprises multiple program segments to be displayed on different portions of a display. The distribution includes 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NBCUniversal Media, LLC. Appeal Br. 2. 2 Claims 37, 38, 46, 47, 55, 56, 62, and 63 are also pending, but objected to by the Examiner. The Examiner finds these claims “would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.” Non-Final Act. 11. 3 We refer to Appellant’s Specification (“Spec.”), filed July 21, 2016 (claiming benefit of US 60/627,084, filed Nov. 12, 2004); Appeal Brief (“Appeal Br.”), filed June 24, 2019; and Reply Brief (“Reply Br.”), filed Nov. 11, 2019. We also refer to the Examiner’s Non-Final Office Action (“Non-Final Act.”), mailed Dec. 10, 2018, and Answer (“Ans.”), mailed Sept. 23, 2019. Appeal 2020-001040 Application 15/216,325 3 modification permission data such that segments of content can be replaced by the second distributor customized program content. See Spec. ¶¶ 7–12; Abstr. Claim 35 (directed to a method), claim 44 (directed to a method), claim 53 (directed to a machine-readable medium), and claim 60 (directed to a machine-readable medium) are independent. Claim 35, reproduced below, is illustrative of the claimed subject matter: 35. A method of distributing customizable program content, comprising: distributing, via a first distributor to a second distributor, a program comprising multiple program segments configured to be displayed spatially adjacent to one another on different portions of a display, wherein each segment of the multiple program segments is related to a program content; and distributing modification permission data that indicates one or more segments of the multiple program segments that can be replaced by the second distributor with replacement content to enable customized program content to be distributed to a plurality of user devices by the second distributor. Appeal Br. 21 (Claims App.) (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Martin et al. (“Martin”) US 7,174,512 B2 Feb. 6, 2007 Reitmeier et al. (“Reitmeier”) US 9,420,230 B2 Aug. 16, 2016 Rowe et al. (“Rowe”) US 2005/0060759 A1 Mar. 17, 2005 Appeal 2020-001040 Application 15/216,325 4 REJECTIONS4 1. The Examiner rejects claims 35, 44, 53, and 60 under the non- statutory ground of obviousness-type double patenting over claims 1–36 of Reitmeier.5 See Non-Final Act. 2–5. 2. The Examiner rejects claims 35, 36, 39, 41–45, 48, 50–54, 57, 60, 61, 64, and 66 under 35 U.S.C. § 102(e) as being anticipated by Martin. See Non-Final Act. 5–8. 3. The Examiner rejects claims 40, 49, 58, 59, and 65 under 35 U.S.C. § 103(a) as being unpatentable over Martin and Rowe. See Non- Final Act. 8–11. ANALYSIS Anticipation Rejection The Examiner rejects claims 35, 36, 39, 41–45, 48, 50–54, 57, 60, 61, 64, and 66 as being anticipated by Martin. See Non-Final Act. 5–7; Ans. 7– 12. Specifically, the Examiner finds that various portions of Martin disclose 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103. Because the present application has an effective filing date prior to the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). 5 Appellant does not address the Examiner’s double patenting rejection in the Appeal Brief. Instead, Appellant states that “[w]hile the Appellant does not necessarily agree with this rejection, the Appellant may be willing to submit a terminal disclaimer upon indication that the claims are otherwise allowable. Thus, the obviousness-type double patenting rejection is not part of this Appeal.” Appeal Br. 6. Accordingly, the Examiner’s double patenting rejection is uncontested, and we summarily affirm the rejection. Appeal 2020-001040 Application 15/216,325 5 multiple distributors, permission data, and modifying or replacing cells displayed on a display. See Non-Final Act. 5–6; Ans. 7–12. Appellant contends that Martin does not disclose the disputed limitations of claim 35. See Appeal Br. 6–16; Reply Br. 2–6. Specifically, Appellant contends, inter alia, that “Martin fails to disclose modification permission data that indicates particular program segments that may be replaced by a second distributor to enable customized program content to be distributed to a plurality of user devices.” Appeal Br. 12 (emphasis omitted); see Appeal Br. 11–13; Reply Br. 2–4. To anticipate, a prior art reference must “disclose all elements of the claim within the four corners of the document, and it must disclose those elements arranged as in the claim.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017) (internal quotation marks omitted). See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); Manual Patent Examining Procedure (“MPEP”) § 2131. We agree with Appellant that the Examiner has not persuasively shown that Martin discloses the recited process and functionality of claim 35. See Appeal Br. 11–13; Reply Br. 2–4. In particular, the Examiner has not shown that Martin discloses two distributors. See, e.g., Martin 5:51–6:6, 10:60–11:4. Even if we were to find that Martin discloses two distributors as urged by the Examiner, Martin does not distribute modification permission data to a second distributor such that program segments can be replaced (with replacement content) to enable distribution (by the second distributor) of customized program content to multiple user devices. See, e.g., Martin 5:51–6:6, 10:60, 11:1–4, 11:33–35, 12:1–9, 13:50–14:14; Figs. Appeal 2020-001040 Application 15/216,325 6 2, 4A, 4B. Further, the Examiner does not clearly map the features recited in the claims to Martin’s disclosure. Instead, the Examiner cites to disparate portions of Martin and generally maintains that the cited portions of Martin disclose the features of the claims. See Non-Final Act. 6; Ans. 8–12. Thus, we are persuaded by Appellant’s arguments that the Examiner-cited portions of Martin do not disclose the disputed features of claim 35 (and the other pending claims). Consequently, we are constrained by the record before us to find that the Examiner erred in finding Martin anticipates Appellant’s independent claim 35. Independent claims 44, 53, and 60 include limitations of commensurate scope. Dependent claims 36, 39, 41–43, 45, 48, 50–52, 54, 57, 61, 64, and 66 depend from and stand with their respective base claims. Accordingly, Appellant’s contentions persuade us of error in the Examiner’s anticipation rejection of claims 35, 36, 39, 41–45, 48, 50–54, 57, 60, 61, 64, and 66, and we reverse the Examiner’s rejection of these claims. Obviousness Rejection The Examiner rejects claims 40, 49, 58, 59, and 65 as obvious over Martin and Rowe. See Non-Final Act. 8–9. In the rejection, the Examiner relies on Martin to teach two distributors and distributing modification permission data (that indicates particular program segments that may be replaced by a second distributor to enable customized program content to be distributed to a plurality of user devices) as recited in the claims (supra). As discussed with respect to claim 35 (supra), Martin does not teach these features and functionality. The Examiner does not find that Rowe cures the deficiencies of Martin (supra). Therefore, we do not sustain the Examiner’s Appeal 2020-001040 Application 15/216,325 7 obviousness rejection of claims 40, 49, 58, 59, and 65 for the same reasons set forth for claim 35 (supra). CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 35, 44, 53, and 60 under the ground of non-statutory obviousness-type double patenting. Appellant has shown that the Examiner erred in rejecting claims 35, 36, 39, 41–45, 48, 50–54, 57, 60, 61, 64, and 66 as being anticipated by Martin under 35 U.S.C. § 102(e). Appellant has also shown that the Examiner erred in rejecting claims 40, 49, 58, 59, and 65 under 35 U.S.C. § 103(a). We, therefore, sustain the Examiner’s rejection of claims 35, 44, 53, and 60, but do not sustain the Examiner’s rejection of claims 36, 39–43, 45, 48–52, 54, 57–59, 61, and 64–66. Appeal 2020-001040 Application 15/216,325 8 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 35, 44, 53, 60 Nonstatutory Double Patenting 35, 44, 53, 60 35, 36, 39, 41–45, 48, 50–54, 57, 60, 61, 64, 66 102(e) Martin 35, 36, 39, 41–45, 48, 50–54, 57, 60, 61, 64, 66 40, 49, 58, 59, 65 103(a) Martin, Rowe 40, 49, 58, 59, 65 Overall Outcome 35, 44, 53, 60 36, 39–43, 45, 48–52, 54, 57–59, 61, 64–66 TIME PERIOD FOR RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation