Ex Parte Hartselle et al

Board of Patent Appeals and Interferences

Jul 27, 2012

11022740 (B.P.A.I. Jul. 27, 2012)

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.
11/022,740 12/27/2004 William Hartselle BS040222 6966
38516 7590 07/30/2012
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
07/30/2012 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 WILLIAM HARTSELLE, DENNIS MEEK,
GREGORY S. SMITH, and ROBERT J. FROHWEIN

___________

Appeal 2010-000772
Application 11/022,740
Technology Center 2400
____________

Before JOHN A. JEFFERY, ERIC B. CHEN, and ANDREW CALDWELL,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000772
Application 11/022,740

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22, 25, 28, and 29. Claims 23, 24, 26, and 27 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to an Interactive Media Control Module
that provides flexible subscriber VCR controls for an interactive media
system. (Abstract.) Media delivery control services establish a viewing
time window in which a subscriber can watch an ordered program and
enable the subscriber to pause, rewind, and fast-forward the program if the
end of the program does not exceed the end of the viewing time window.
Media delivery control services de-activate the pause and rewind features if
the remaining program running time equals the time remaining in the
window. (Spec. ¶ [0015].)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for providing media delivery control of an
interactive media system comprising:
establishing a viewing time window during which a program
must be viewed;
bookmarking the program with a bookmark at a point in the
program when a remaining viewing time in the viewing time window
equals or is less than a remaining program time of the program;
calculating a bookmarked program time of the program as a
time from the point in the program at which the bookmark was added
to an ending time of the program;
establishing a bookmarked viewing time window during which
the program must be watched, the bookmarked viewing time window
equal to or greater than the bookmarked program time;
playing the program from approximately the bookmark and
providing at least one of a pause function and a rewind function;
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as the program plays, calculating a remaining bookmarked
viewing time until an end of the bookmarked viewing time window;
as the program plays, also calculating a remaining bookmarked
program time until an end of the program; and
activating at least one of the pause function and the rewind
function if the remaining bookmarked program time is less than the
remaining bookmarked viewing time.

Claims 1-12 and 14-16 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-14 of commonly owned U.S. Patent No. 6,609,253 B1.
Claim 1 stands provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-4 of co-pending U.S. Application No. 11/023,268.
Claim 29 stands provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claim 1 of co-pending U.S. Application No. 11/023,268 and Jerding (U.S.
Patent Application Publication No. 2006/0206913 A1).
Claims 1-22, 25, and 28 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Swix (U.S. Patent 6,609,253) and Tecot (U.S. Patent
Application Publication No. 2005/0094031 A1).
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Swix, Tecot, and Jerding.

ANALYSIS
§103 Rejection – Swix and Tecot
We are unpersuaded by Appellants’ arguments (Br. 13-14) that the
combination of Swix and Tecot would not have rendered obvious
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independent claim 1, which includes the disputed limitations “calculating a
bookmarked program time”, “establishing a bookmarked viewing time
window”, “calculating a remaining bookmarked viewing time” and
“calculating a remaining bookmarked program time.”
The Examiner found that the remaining program time (PTR) of Swix
corresponds to the limitation “calculating a . . . program time of the
program.” (Ans. 7-8; Swix, col. 10, ll. 61-67.) The Examiner also found
that the “Viewing Time Window” of 180 minutes from Figure 2 of Swix
corresponds to the limitation “establishing a . . . viewing time window
during which the program must be watched.” (Ans. 8; Swix, Fig. 2.) The
Examiner further found that the continual tracking of the remaining viewing
time (VTR) of Swix corresponds to the limitation “calculating a remaining
. . . viewing time until an end of the . . . viewing time window.” (Ans. 8;
Swix, col. 10, ll. 61-67.) Additionally, the Examiner found that the
continual tracking of remaining program time (PTR) of Swix corresponds to
the limitation “calculating a remaining . . . program time until an end of the
program.” (Id.)
The Examiner acknowledged that Swix does not disclose
“bookmarking” and therefore, relied on Tecot for teaching adding a mark to
media content. (Ans. 9, 34; Tecot, ¶ [0038].) The Examiner concluded that
it would have been obvious . . . to modify Swix to use
bookmarking, as taught by Tecot, in order to be able to employ
the use of bookmarks in Swix’s method for the purpose of
being able to add a mark to a presentation of a media content
and resume the presentation of the media content at another
location based on the mark.
(Ans. 10.) We agree with the Examiner.
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Swix relates to a “video cassette recorder (VCR) control of an
interactive media system” (col. 1, ll. 9-11) for viewing of video streams
(e.g., video-on-demand, pay-per-view) (Abstract). Figure 2 of Swix
illustrates a “Viewing Time Window” of 180 minutes (i.e., the claimed
“establishing a . . . viewing time window during which the program must be
watched”) and a series of bars representing applied VCR commands.
(Col. 11, ll. 25-28; Fig. 2.) A numbered black triangle above each bar
indicates a viewing time elapsed (VTE) and a numbered white triangle below
each bar indicates a time stamp (TS). (Col. 11, ll. 28-31.) During viewing
of a program, a set-top box 100 continuously executes an algorithm to
determine a remaining viewing time (VTR) (i.e., the claimed “calculating a
remaining . . . viewing time until an end of the . . . viewing time window”).
(Col. 10, ll. 61-67.) In addition, the set-top box 100 continuously executes
an algorithm to determine a remaining program time (PTR) (i.e., the claimed
“calculating a . . . program time of the program” and “calculating a
remaining . . . program time until an end of the program”). (Id.)
Tecot relates to adding a mark to media content (i.e., the claimed
“bookmarking the program”) at a source location followed by resuming the
presentation of the media content at a second location based on the mark
(e.g., “the user can pause a live broadcast of a media content program that is
being presented . . . in the living room of the home” and “then move to her
bedroom where she is allowed to resume the media content program on the
second presentation device” (¶ [0004]).) (Abstract.) This marking allows
the user to watch media content “without missing any media content and
without having to perform burdensome re-queuing of the media content.”
(¶ [0004].)
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A person of ordinary skill in the art at the time of the invention would
have recognized that incorporating the marking mechanism of Tecot for
media content with the interactive media system of Swix would improve
Swix by providing the user with the ability to pause and resume media
content programming without re-queuing. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). Thus, we agree with the Examiner (Ans. 10)
that modifying Swix to include the marking mechanism of Tecot would have
been obvious.
Appellants argue that “[m]erely combining Tecott’s [sic] marks with
Swix still fails to teach or suggest the complex details recited by the
independent claims.” (Br. 13.) However, as discussed previously, the
combination of Tecot and Swix teaches all the features of claim 1 and this
combination is based on the improvement of a similar device in the same
way as in the prior art. Appellants have not provided any persuasive
arguments or evidence to rebut the Examiner’s findings and conclusions.
Thus, we agree with the Examiner that the combination of Swix and
Tecot would have rendered obvious independent claim 1, which includes the
limitations “calculating a bookmarked program time”, “establishing a
bookmarked viewing time window”, “calculating a remaining bookmarked
viewing time” and “calculating a remaining bookmarked program time.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-18 depend from claim 1, and Appellants have not
presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2-18 under 35 U.S.C. § 103(a)
for the same reasons discussed with respect to independent claim 1.
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Independent claims 19, 20, 25, and 28 recite limitations similar to
those discussed with respect to independent claim 1, and Appellants have
not presented any substantive arguments with respect to these claims. We
sustain the rejection of claims 20, 25, and 28, as well as claims 21 and 22,
which depend from claim 20, for the same reasons discussed with respect to
claim 1.

§103 Rejection – Swix, Tecot, and Jerding
Although Appellants nominally argue the rejection of independent
claim 29 separately (Br. 14-15), the arguments presented do not point out
with particularity or explain why the Examiner erred. Instead, Appellants
summarily allege that “Swix and Tecott [sic] still fails to teach or suggest
these complex features [as claimed], and Jerding does not cure these
deficiencies.” (Id.) Because claim 29 recites limitations similar to those
discussed with respect to claim 1, we are not persuaded by these arguments
for the reasons discussed with respect to claim 1. Accordingly, we sustain
this rejection.

Obviousness-Type Double Patenting Rejections
Although Appellants nominally argue rejections of claim 1-12 and 14-
16 separately (Br. 14-15), the arguments presented do not point out with
particularity or explain why the Examiner erred. Instead, Appellants
summarily allege that “[b]ecause the proposed combination of Swix and
Tecott [sic] fails to teach or suggest all the complex features recited by, or
incorporated by, claims 1-12 and 14-16, these claims cannot be rejected for
obvious type double patenting.” (Id.) We are not persuaded by these
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arguments for the reasons discussed with respect to claim 1. Accordingly,
we sustain these rejections.

DECISION
The Examiner’s decision to reject claims 1-22, 25, 28, and 29 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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