Ex Parte Brooks

Board of Patent Appeals and Interferences

Jul 31, 2012

09956688 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/956,688 09/20/2001 Paul D. Brooks 61575-1004 2665
27299 7590 08/01/2012
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
08/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL D. BROOKS
____________

Appeal 2010-009026
Application 09/956,688
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ANDREW
CALDWELL, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 22, 23, 25, 26, 40-65, 67-71, and 84-90. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention provides cable television system program
material through a network with limited bandwidth. The system
dynamically assigns program material carriers of only those channels that
subscribers select. But once a carrier is no longer selected, it is retired and
reserved for reassignment. See generally Spec. 1-2. Claim 1 is illustrative:
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1. Apparatus for use in a cable television network for controllably
providing a collection of program materials to a group of terminals, at least
one terminal in the group being capable of issuing a request for selected
program material, the apparatus comprising:

an interface for receiving the request from said at least one terminal;

a processing element responsive to the received request for
determining whether the selected program material is included in the
collection of program materials currently being provided;

if it is determined that the selected program material is not included in
the collection of program materials currently being provided, a control
element for:

causing the selected program material to be added to the collection of
program materials currently provided to at least one of the group of
terminals;

sending a control message to the at least one terminal in the group,
said control message comprising an identification field that identifies the at
least one terminal in the group; and

after a pre-set length of time, causing the selected program material
to be removed from the collection of program materials currently provided
to at least one of the group of terminals.

THE REJECTIONS
1. The Examiner rejected claims 1-5, 22, 23, 25, 26, 40, 45, 46, 51-
57, 59-64, 67-71, and 84-86 under 35 U.S.C. § 103(a) as unpatentable over
Ota (US 6,198,478 B1; Mar. 6, 2001) and Haddad (US 6,072,982; June 6,
2000). Ans. 3-13.1

1 Throughout this opinion, we refer to the Appeal Brief filed December 15,
2009 and the Examiner’s Answer mailed March 15, 2010.
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2. The Examiner rejected claims 41, 42, 47, and 48 under 35 U.S.C.
§ 103(a) as unpatentable over Ota, Haddad, and Lemmons (US
2002/0059626 A1; May 16, 2002 (filed Aug. 23, 2001)). Ans. 13-14.
3. The Examiner rejected claims 43, 44, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Ota, Haddad, Lemmons, and Aras (US
5,872,588; Feb. 16, 1999). Ans. 14-15.
4. The Examiner rejected claims 58 and 65 under 35 U.S.C. § 103(a)
as unpatentable over Ota, Haddad, and Rovira (US 2002/0166121 A1; Nov.
7, 2002 (filed May 2, 2001)). Ans. 16.
5. The Examiner rejected claims 87, 88, and 90 under 35 U.S.C.
§ 103(a) as unpatentable over Ota, Haddad, and Anderson (US 6,889,382
B1; May 3, 2005 (filed July 27, 1999)). Ans. 16-17.
6. The Examiner rejected claim 89 under 35 U.S.C. § 103(a) as
unpatentable over Ota, Haddad, and Inoue (US 7,003,790 B1; Feb. 21, 2006
(filed Jan. 27, 1999)). Ans. 17-18.

THE OBVIOUSNESS REJECTION OVER OTA AND HADDAD
The Examiner finds that Ota discloses an apparatus for controllably
providing a collection of program materials to a terminal group with every
recited feature of representative claim 1 except for (1) sending a control
message with a terminal identification field to a terminal, and (2) causing
selected program material to be removed from the collection, but cites
Haddad as teaching these features in concluding that the claim would have
been obvious. Ans. 3-5.
Appellant argues that Haddad does not teach a collection of program
materials, let alone removing selected program material from that collection,
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but deletes entries in schedule databases after delivering content. Br. 5-7.
Appellant adds that the cited references (1) do not teach or suggest various
features of other claims noted below, and (2) teach away from their proposed
combination including rendering Ota unsatisfactory for its intended purpose.
Br. 7-12.

ISSUES
1. Under § 103, has the Examiner erred by finding that Ota and
Haddad collectively would have taught or suggested:
(1) after a preset length of time, causing a selected program material
to be removed from a collection of program materials currently provided to
at least one of a group of terminals as recited in claim 1?
(2) automatically causing, at a program boundary, the selected
program material to be removed from the collection of program materials
currently broadcast as recited in claim 22?
(3) a control apparatus operative to cause a selected broadcast
program channel to be dynamically assigned for delivery at a prescribed start
time when the selected channel is not included in plural broadcast channels
provided to a group of terminals, where each transmission channel is
dynamically assignable as recited in claim 51?
(4) detecting absence of a viewer at a requesting terminal as recited in
claim 67?
(5) one or more terminals adapted to, without substantial user
intervention, deselect a program channel at or proximate to a program or
event boundary as recited in claim 84?
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2. Is the Examiner’s reason to combine the teachings of Ota and
Haddad supported by articulated reasoning with some rational underpinning
to justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 1-5, 40, 45, 60-64, and 85
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1. According to the Examiner, when a
program segment completes in Haddad—a process that is said to involve a
preset length of time—transmission of that segment stops. Ans. 18 (citing
Haddad, col. 12, ll. 4-17). This transmission termination is said to remove
that segment “from the collection of transmitted program segments.” Id.
(emphasis added). We emphasize this phrase, for it highlights the
Examiner’s mapping the recited “collection of program materials” to
Haddad’s program segments sent to plural subscribers. Accord id. (citing
Haddad, col. 5, ll. 14-64 and Fig. 1 in connection with a program materials
collection).
Although Haddad deletes schedule entries and updates customer
records upon fulfilling requests as Appellant indicates (Br. 6 (citing Haddad,
col. 12, ll. 10-14)), Appellant does not squarely address—let alone
persuasively rebut—the Examiner’s position (Ans. 18) that after completing
transmission of a selected program segment (“program material”), Haddad’s
system effectively removes that selected program material from the
“collection” of segments that are transmitted to subscribers. That Haddad
replaces segments according to a schedule (Haddad, Fig. 10 (step 1025))
only bolsters the Examiner’s position in this regard. In any event,
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Appellant’s arguments to the contrary (Br. 6) are not commensurate with the
scope of the claim.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-5, 40, 45, 60-64, 85, and 86 not
separately argued with particularity.

Claims 22, 23, 25, 26, 46, and 86
We also sustain the Examiner’s rejection of representative claim 22
reciting, in pertinent part, automatically causing, at a program boundary, the
selected program material to be removed from the collection of program
materials currently broadcast. We emphasize the term “automatically” here,
for Appellant contends that the Examiner’s reliance on Ota’s program
cancellation feature (Ans. 6 (citing Ota, col. 7, l. 59 – col. 8, l. 22)) is
misplaced since cancellation is responsive to manual activity, namely the
subscriber’s cancelling the program. Br. 7-8.
But the claim does not preclude at least some manual activity in
connection with the recited automatic program-material removal, so long as
at least some of the removal process is automatic, particularly in view of the
open-ended transitional term “comprising” in the preamble.2,3 To be sure,

2 “‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citation omitted).
3 Cf. Ex parte Friedman, No. 2009-009963, 2011 WL 1197547, at *3 (BPAI
2011) (non-precedential) (finding that claim reciting automatically
displaying a second desired portion of a multimedia presentation after a first
desired portion without user interaction did not preclude the user's initially
triggering this functionality by selecting a key); see also Ex parte Zheng,
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the subscriber in Ota initially triggers cancellation of a currently-watched
program (and therefore removal from the collection of currently-broadcast
program materials) by operating terminating device control terminal 21—a
manual activity that the Examiner acknowledges. Ans. 19 (noting that a user
in Ota signals cancellation of a currently-watched program); see also Ota,
col. 8, ll. 3-11; Figs. 2, 8. But nothing in the claim precludes this manual
cancellation trigger, for Ota’s system would then automatically cause the
selected program material to be removed from the collection of program
materials currently broadcast. Accord Ans. 19 (noting that after the user
signals cancellation of a currently-watched program, Ota’s system then
automatically checks for other program viewers and removes the program
from the transmission stream) (emphasis added). Appellant’s arguments
regarding Ota’s failure to teach the recited automatic functionality (Br. 7-8)
are unavailing, for they are not commensurate with the scope of the claim.
Nor are we persuaded of error in the Examiner’s finding that this
automatic functionality is triggered at a “program boundary” which the
Examiner apparently equates to the point in a currently-watched program at
which the user signals cancellation. See Ans. 19 (noting that a user in Ota
signals cancellation of a currently-watched program, a program boundary).
Appellant does not squarely address—let alone persuasively rebut—this
finding. See Br. 7-8.
In any event, even if we were to assume that the recited automatic
functionality somehow precludes any manual activity whatsoever (which it

No. 2010-000071, 2011 WL 4872012, at *3 (BPAI 2011) (finding that claim
reciting automatically (1) executing an application, and (2) completing a set
of test features did not preclude the user initially triggering a test sequence
by plugging in and using a keyboard).
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does not for the reasons noted above), it is well settled that where, as here,
merely providing an automatic means to replace manual activity to
accomplish the same result (i.e., causing, at a program boundary, selected
program material to be removed from the collection of program materials
currently broadcast) is an obvious improvement. See In re Venner, 262 F.2d
91, 95 (CCPA 1958). Nor has Appellant shown that automatically
performing these functions in lieu of at least some manual interaction would
have been uniquely challenging or otherwise beyond the level of ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 22, and claims 23, 25, 26, 46, and 86 not separately
argued with particularity.

Claims 51-57, 59, 70, and 71
We also sustain the Examiner’s rejection of representative claim 51
reciting, in pertinent part, a control apparatus operative to cause a selected
broadcast program channel to be dynamically assigned for delivery at a
prescribed start time when the selected channel is not included in plural
broadcast channels provided to a group of terminals, where each
transmission channel is dynamically assignable. We see no error in the
Examiner’s reliance on Haddad for at least suggesting dynamically assigning
a selected program channel for delivery at a prescribed start time. Ans. 20
(citing Haddad, col. 8, l. 65 – col. 9, l. 20).4

4 Although the rejection includes this citation in connection with the
Examiner’s findings regarding Ota (Ans. 8), we nonetheless presume that
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Appellant’s contention that Haddad’s start times are deliberately
varied based on an optimization scheme and are therefore not at a
“prescribed” start time (Br. 8-9) is unavailing. Since the term “prescribed”
is not defined in the Specification, we construe it with its plain meaning.
The term “prescribe” is defined, in pertinent part, as “1 a: to lay down as a
guide, direction, or rule of action; ORDAIN b: to specify with authority.”5
Based on this definition, nothing in the claim precludes “prescribed” start
times based on Haddad’s approach as the Examiner indicates (Ans. 20),
since Haddad’s rule-based scheme dynamically assigns channels when they
become free and delivers program segments at the “appropriate delivery
time.” See Haddad, col. 4-16; Figs. 9-10. Nothing requires a “prescribed”
start time to be fixed as Appellant asserts (Br. 9)—even under Appellant’s
own definition which indicates such fixation as an alternative. See Br. 8
(citing Dictionary.com to show that a “prescribed start time” connotes a
“single start time . . . which is fixed or established by order or command”)
(emphasis added). Appellant’s argument that Haddad teaches away from
dynamically assigning channels (Br. 9) is likewise unavailing, since as the
Examiner indicates, Haddad dynamically assigns channels for delivery as
they become available (i.e., free). Ans. 20 (citing Haddad, col. 9, ll. 4-20).
Nor are we persuaded that combining Haddad with Ota as proposed
renders Ota unsatisfactory for its intended purpose as Appellant contends.
Br. 9-10. Although Ota allots popular programs certain fixed channels at all

the Examiner intended to rely on Haddad in connection with this citation.
Accord Br. 8 (referring to the Examiner’s findings regarding Haddad in
connection with this citation). Accordingly, we treat the Examiner’s error in
the rejection as harmless.
5 MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 921 (10th ed. 1993).
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times as Appellant indicates (Br. 10), other unpopular programs are allotted
empty channels selected from “floating” channels according to program
viewing requests. Ota, col. 5, l. 67 – col. 6, l. 10. It is these “empty
channels” that the Examiner refers to in connection with Ota’s (1)
dynamically assigning “open” channels, and (2) transmitting programs to
subscribers via those channels upon request. See Ans. 20-21 (citing Ota, col.
3, ll. 39-50; col. 8, ll. 12-22). Therefore, Appellant’s combinability
argument regarding Ota’s popular programs transmitted via fixed channels
(Br. 10) does not persuasively rebut the Examiner’s position based on Ota’s
unpopular programs transmitted via empty channels. And to the extent that
Appellant’s arguments pertain to Ota’s transmitting unpopular programs via
empty channels (see id.), we find such arguments unpersuasive for the
reasons indicated by the Examiner. Ans. 20-21.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 51, and claims 52-57, 59, 70, and 71 not separately
argued with particularity.

Claims 67-69
We also sustain the Examiner’s rejection of representative claim 67
reciting, in pertinent part, detecting absence of a viewer at a requesting
terminal. The Examiner reasons that since Ota stops distributing a program
when no subscriber views the program, Ota detects viewer absence as
claimed. Ans. 21 (citing Ota, col. 8, ll. 12-22). We emphasize the terms
“subscriber” and “viewer” here, for a subscriber in Ota may or may not be a
viewer of a particular program. To be sure, to select a new program, a
subscriber in Ota cancels a program that has been viewed so far (i.e., an
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“old” program in Ota’s parlance), therefore must have viewed that program.
See Ota, col. 8, ll. 3-11; Fig. 8 (step S11). But after cancellation, the
subscriber is no longer a viewer of that program. Ota therefore detects the
absence of the viewer of that program at the requesting terminal, namely the
subscriber’s cancelling the previously-viewed program. Appellant’s
arguments (Br. 11) are unavailing and not commensurate with the scope of
the claim.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 67, and claims 68 and 69 not separately argued with
particularity.

Claim 84
We also sustain the Examiner’ rejection of claim 84 (Ans. 11-13)
reciting, in pertinent part, one or more terminals adapted to, without
substantial user intervention, deselect a program channel at or proximate to
a program or event boundary. We emphasize the term “substantial” here, for
while some user intervention is required to cancel a program in Ota as
Appellant indicates (Br. 12), the Examiner finds—and we agree—that this
user intervention is not substantial. Ans. 21 (noting that pressing a “STOP”
button on a remote control or similar action is not “substantial” intervention
since the system must still receive, interpret, encode, and transmit this
signal). Appellant’s arguments (Br. 12) are not commensurate with the
scope of the claim.
We are therefore not persuaded that the Examiner erred in rejecting
claim 84.

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THE OBVIOUSNESS REJECTIONS OF CLAIMS 41-44, 47-50, 58, AND 65
We also sustain the Examiner’s obviousness rejections of claims 41-
44, 47-50, 58, and 65. Ans. 13-16. Appellant reiterates similar arguments
made previously (Br. 12-13) which we find unpersuasive for the reasons
previously discussed.

THE OBVIOUSNESS REJECTION OVER OTA, HADDAD, AND ANDERSON
We also sustain the Examiner’s rejection (Ans. 16-17) of
representative claim 87 reciting, in pertinent part, an indication that no
viewer is present at a requesting terminal. Although the user in Ota triggers
program cancellation as noted above, we see no reason why an automatic
capability that detects whether a viewer is physically present at the terminal,
such as that disclosed in Anderson, could not used in lieu of, or in addition
to, Ota’s user-initiated cancellation as the Examiner indicates. Ans. 22. See
Anderson, col. 4, ll. 21-36; Fig. 3 (steps 42, 44, 48). Such an enhancement
does not teach away from its combination with Ota as Appellant contends
(Br. 13-14), but rather merely predictably uses prior art elements according
to their established functions—an obvious improvement. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 87, and claims 88 and 90 not separately argued with
particularity.

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THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejections of claim 89.
Ans. 17-18. Appellant reiterates similar arguments made previously (Br. 14)
which we find unpersuasive for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-5, 22, 23, 25, 26, 40-
65, 67-71, and 84-90 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-5, 22, 23, 25, 26, 40-65,
67-71, and 84-90 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)(1)(iv).

AFFIRMED

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