Ex Parte Arsenault et al

Patent Trial and Appeal Board

Dec 22, 2017

11731977 (P.T.A.B. Dec. 22, 2017)

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.
11/731,977 04/02/2007 Robert G. Arsenault DTV207010 9426
141451 7590
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
EKPO, NNENNA NGOZI
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
12/22/2017 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 ROBERT G. ARSENAULT and
XAVIER D. RILEY
Appeal 2017-0015731 2
Application 11/731,977
Technology Center 2400
Before CARLA M. KRIVAK, JASON V. MORGAN, and
DANIEL N. FISHMAN, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1—29, 31—34, 36—76, and 79, all remaining claims of the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants assert the real party in interest is The DIRECTV Group, Inc.
2 In this Opinion, we refer to the Appeal Brief (“App. Br.,” filed March 14,
2016), the Reply Brief (“Reply Br.,” filed November 2, 2016), the
Examiner’s Answer (“Ans.,” mailed September 20, 2016), the Final Office
Action (“Final Act.,” mailed October 13, 2015), and the original
Specification (“Spec.,” filed April 2, 2007).
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Application 11/731,977
STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to communicating prior broadcasted
programs or content to a user device. Spec. 11. Specifically, the invention
involves using popularity information regarding content to determine which
of multiple networks to use to broadcast content. Spec. 134.
Independent claim 1, reproduced below, is illustrative:
1. A method of operating a communication system
comprising:
coupling a user device to a first network and a second
network;
generating a program guide for programming including
currently broadcasting programs and past programming, the
programming guide comprising program guide elements;
selecting a first program guide element from the past
programming to form a selection signal;
communicating the selection signal to a service provider;
retrieving a program corresponding to the selection from
a content repository associated with the service provider;
generating a popularity measurement of the program in
an audience measurement module of the service provider by
determining how often the program is being requested by
various users;
selecting one of the first network and the second network
to form a selected network at a service provider in response to
the popularity measurement; and
communicating the program to a user device through the
selected network.
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THE REJECTIONS
Claims 1, 2, 4, 5, 12-15, 17, 19, 29, 31, 65-69, 76,3 and 79 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Needham (US
2003/0177495 Al), Lin (US 7,797,722 B2), and Nadeau (US 2007/0121612
Al).
Claims 32—34, 36, 38, 39, 46-49, 51—53, 58, 63, and 64 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Needham, Lin, Nadeau, and
Lawler (US 5,805,763).
Claims 3, 6—10, 24, and 70-74 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Needham, Lin, Nadeau, and Dua (US 7,624,417 B2).
Claims 37 and 40-44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Needham, Lin, Nadeau, Lawler, and Dua.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Needham, Lin, Nadeau, and Lawler.
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Needham, Lin, Nadeau, and Lee (US 2003/0037339 Al).
Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Needham, Lin, Nadeau, Lawler, and Lee.
3 We note the Examiner’s headings of the rejections grouped claim 76 with
claim 32 and its associated dependent claims (Final Act. 13) and omits claim
76 from the heading associated with rejection of claim 65 from which claim
76 depends (Final Act. 5). The substance of the rejection of claim 76
correctly relates the rejection to that of independent claim 65 from which it
depends (Final Act. 12). At least because Appellants do not separately argue
error in the rejection of claim 76, we find the Examiner’s error to be
harmless.
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Application 11/731,977
Claims 11, 20—23, 25—28, and 75 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Needham, Lin, Nadeau, and Mickle (US
2007/0162932 Al).
Claims 45, 54—57, and 59-62 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Needham, Lin, Nadeau, Lawler, and Mickle.
OBVIOUSNESS OVER NEEDHAM, LIN, AND NADEAU
Issues
Appellants’ arguments present the following issues:
1. Has the Examiner erred by finding the combination of
Needham, Lin, and Nadeau teaches or suggests “generating a
popularity measurement of the program in an audience
measurement module of the service provider by determining
how often the program is being requested by various users;
selecting one of the first network and the second network to
form a selected network at a service provider in response to the
popularity measurement,” (hereinafter the “disputed
limitations”) as recited in independent claim 1 and as similarly
recited in independent claims 32 and 65?
2. Has the Examiner failed to properly identity a motivation for
combining Needham, Lin, and Nadeau?
Analysis
Only those arguments actually made by Appellants are considered in
this Decision. Arguments that Appellants did not make in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 11/731,977
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. App. Br. 10—22; Reply Br. 2—5. We are not
persuaded by Appellants’ contentions. We agree with, and adopt as our
own, the findings and reasons set forth by the Examiner in the action from
which this appeal is taken. We highlight specific arguments and findings for
emphasis as follows.
Issue 1
The Examiner finds Needham discloses all but the disputed
limitations. Final Act. 5—6. The Examiner further finds Lin, in the proposed
combination, discloses the disputed limitations including determining a
popularity measurement and selecting a network in response to that
popularity measurement except that Lin discloses a different measure of
popularity. Final Act. 6—7 (citing Lin 3:61—65, 4:33—53, 4:65—5:30). Lastly,
the Examiner finds Nadeau, in the proposed combination, discloses the
claimed type of popularity measure—namely by determining how often a
program is requested by various users. Final Act. 7 (citing Nadeau 1 33).
Appellants argue Nadeau fails to cure the alleged deficiency of the
combination of Needham and Lin. App. Br. 13. Specifically, Appellants
argue that “Lin is silent as to generating a popularity measurement of the
program by determining how often the program is being requested by
various users” {id. at 12) and that “Nadeau ... is silent as to selecting one
of the first network and the second network to form a selected network at a
service provider in response to the popularity measurement (generated by
determining how often the program is being requested by various
users)” {id. at 16).
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We are not persuaded by Appellants’ argument. Initially, we observe
Appellants improperly attack the references individually despite the
rejection being based on what the combined references teach or suggest to
the ordinarily skilled artisan. See, e.g., In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck, 800 F.2d 1091 (Fed. Cir. 1986). Specifically, the
Examiner relies on Lin in the proposed combination, not Nadeau, for
disclosing the step of “selecting one of the first network and the second
network ... in response to the popularity measurement.” Final Act. 5. The
Examiner identifies Lin’s disclosure of determining the number of peer
nodes that can serve requested content as a “popularity measurement” (i.e.,
as some form of popularity measure). Ans. 4. However, the Examiner relies
on Nadeau, in the proposed combination, for disclosing the particular
popularity measurement as claimed—namely, “how often the program is
being requested by various users.” Final Act. 7; see also Ans. 7—8 (citing
Nadeau 133 (“Based on anticipated or actual demand, the service provider
determines that the particular content is popular and is requested by many
customers.”)).
Accordingly, we are not persuaded by Appellants’ argument that Lin
fails to teach the particular recited popularity measurement and Nadeau fails
to teach selecting a first or second network based on the popularity
measurement. We agree with and adopt the Examiner’s finding that, in the
proposed combination, Lin teaches selecting a first or second network based
on some popularity measurement and Nadeau teaches the specific popularity
measurement recited in claim 1 (“how often the program is being requested
by various users”).
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Issue 2
The Examiner articulates a reason for combining Lin with Needham
“for the advantage of dedicating a network for transmitting demanded
content.” Final Act. 6. The Examiner further articulates a reason for
combining Nadeau with Needham and Lin “for the advantage of yielding
more efficient network utilization and faster interaction with the user.” Id. at
7.
Appellants do not specifically rebut the Examiner’s reason for
combining Nadeau with Needham and Lin. See App. Br. 10—17; see also
Reply Br. 2—5.4 Instead, Appellants characterize the teachings of paragraph
33 of Nadeau. App. Br. 13—17. In that characterization, Appellants note
Nadeau’s disclosure that “the provider content distribution hub server 112
then uses fewer network communication resources to distribute that content
to access modules 152a, 152b for customer premises nodes served by those
access modules.” App. Br. 15 (quoting Needham 133). This portion of
paragraph 33 of Needham supports the Examiner’s reason for combining
Nadeau with Needham and Lin—namely, “for the advantage of yielding
more efficient network utilization and faster interaction with the user” by
4 We note the Examiner presented an additional reason for the proposed
combination (“encouraging viewers to watch some program, track viewer(s)
history and recommend programs to viewer(s)”). Ans. 5. Appellants
responded to this additional reason for the proposed combination arguing
that substituting Nadeau’s popularity measurement for Lin’s in the proposed
combination would “in no way” encourage viewers to watch a program,
track viewer history, or recommend programs for viewers. Reply Br. 4. We
agree with and adopt the Examiner’s original, unrebutted, reason for the
combination as articulated in the Final Office Action (Final Act. 7) and,
thus, need not address the parties’ arguments relating to this additional
reason for the proposed combination.
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disclosing reducing the utilization of network communication resources. In
other words, Nadeau determines a popularity measurement based on the
number of requests for a particular item of content and selects a delivery
path that reduces communication resource utilization, thereby achieving the
benefit proposed by the Examiner’s reason for combining Nadeau with
Needham and Lin (“yielding more efficient network utilization and faster
interaction with the user”).
Accordingly, we determine the Examiner’s articulated reason for the
combining Nadeau with Needham and Lin is based on the rational
underpinning of combining known methods to yield a predictable result. See
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Conclusion Regarding Obviousness Over Needham, Lin, and Nadeau
In view of the above discussion, we are not persuaded the Examiner
erred by finding the proposed combination teaches or suggests the disputed
limitations of independent claim 1. Appellants provide similar arguments
regarding the rejection of independent claim 65. App. Br. 18—19. Thus, for
the same reasons articulated with respect to claim 1, we are not persuaded
the Examiner erred in rejecting claim 65. Dependent claims 2, 4, 5, 12—15,
17, 19, 29, 31, 66—69, 76, and 79 depend variously from independent claims
1 or 65 and Appellants do not separately argue with particularity error in the
rejection of these dependent claims. App. Br. 17, 19. Thus, for the same
reasons as claims 1 and 65, we are not persuaded the Examiner erred in
rejecting dependent claims 2, 4, 5, 12—15, 17, 19, 29, 31, 66—69, 76, and 79.
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OTHER REJECTIONS
Independent claim 32, which includes limitations similar to those of
claim 1, is rejected for similar reasons adding Lawler to the proposed
combination (Final Act. 13—15), and Appellants argue only that Lawler fails
to remedy the deficiencies of Needham, Lin, and Nadeau (App. Br. 19-20).
Dependent claims 33, 34, 36, 38, 39, 46-49, 51—53, 58, 63, and 64 depend
from claim 32. Appellants do not separately argue error in the rejection of
these claims (App. Br. 20) and thus, for the same reasons articulated with
respect to claim 1, we are not persuaded of Examiner error.
Appellants do not separately argue, with particularity, the rejections
of: (1) dependent claims 3, 6—10, and 24 (App. Br. 20); (2) dependent claims
70—74 (id.); (3) dependent claims 37 and 40-44 (id. at 21); (4) dependent
claim 18 (id.); (5) dependent claim 16 (id.); (6) dependent claim 50 (id. at
22); (7) dependent claims 11, 20-23, 25—28, and 75 (id.); and (8) dependent
claims 44, 54—57, and 59-62 (id.). Thus, for the same reasons articulated
with respect to independent claims 1, 32, and 65, from which these claims
variously depend, we are not persuaded of Examiner error.
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DECISION
For the above reasons, the Examiner’s decision rejecting claims 1—29,
31—34, 36—76, and 79 is affirmed.
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).
AFFIRMED
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