Ex Parte Kahn et al

Patent Trial and Appeal Board

Mar 1, 2016

13179433 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/179,433 07/08/2011
20991 7590 03/02/2016
THE DIRECTV GROUP, INC.
PA TENT DOCKET ADMINISTRATION
CA I LAI I Al09
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
FIRST NAMED INVENTOR
Raynold M. Kahn
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PD-205043A 1407
EXAMINER
MALANGONE, CARMINE
ART UNIT PAPER NUMBER
2423
MAILDATE DELIVERY MODE
03/02/2016 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 RA YNOLD M. KAHN, PETER M. KLAUSS, and
STEPHEN P. DULAC
Appeal2014-003042
Application 13/179,433
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN F. HORVATH, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003042
Application 13/179,433
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-28, which constitute all the claims pending in
this application. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 20 under appeal read as follows (emphasis
added):
1. A method for playing a media program at a user
device, the method comprising the steps of:
accepting a command to view the media program in the
user device;
receiving a beginning portion of the media program
from a first source;
playing back the received beginning portion of the media
program while receiving and recording an end portion of the
media program in the user device from a second source;
splicing the received end portion of the media program to
the beginning portion of the media program in the user device;
and
playing back the spliced received end portion of the
media program after playing back the received beginning
portion of the media program;
wherein only one of the beginning portion and end
portion is received from a broadcast headend via a broadcast
signal and the other of the beginning portion and the end
portion is received from a content delivery server via an
Internet Protocol (IP) based communication signal.
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20. An apparatus comprising:
a first interface to receive a broadcast signal from a
broadcast headend and to detect a non-user initiated interruption
of the broadcast signal, the broadcast signal presenting a first
portion of a media program;
a second interface distinct from the first interface to send
a request to a terrestrial content delivery server for a second
portion of the media program when the interruption is detected
and to receive a terrestrial Internet protocol (IP) based
communication signal from a content delivery server in
response to the request, the terrestrial IP-based signal
comprising the second portion of the media program and
containing an address uniquely assigned to the second interface;
and
a storage device for storing the first portion and the
second portion.
Rejections
The Examiner rejected claims 1, 4---6, 8, 11-13, 15, 17, and 18 under
35 U.S.C. § 103(a) as being unpatentable over the combination ofNadarajah
et al. (US 2006/0218620 Al; Sept. 28, 2006) and Wood et al. (US
2002/0054752 Al; May 9, 2002). 1
The Examiner rejected claims 20, 22-24, 27, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofNadarajah and
Hunter et al. (US 2002/0056118 Al; May 9, 2002).2
1 Separate patentability is not argued for claims 5, 6, 8, 11-13, 15, 17, and
18. Except for our ultimate decision, these claims are not discussed further
herein.
2 Separate patentability is not argued for claims 22-24, 27, and 28. Except
for our ultimate decision, these claims are not discussed further herein.
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Appeal2014-003042
Application 13/179,433
The Examiner rejected claims 2, 3, 9, 10, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofNadarajah, Wood,
and Segev et al. (US 2006/0195881 Al; Aug. 31, 2006). The Examiner
rejected claims 7, 14, and 19 under 35 U.S.C. § 103(a) as being unpatentable
over the combination ofNadarajah, Wood, and Hunter. The Examiner
rejected claims 21 and 26 under 35 U.S.C. § 103(a) as being unpatentable
over the combination ofNadarajah, Hunter, and Segev. The Examiner
rejected claim 25 under 35 U.S.C. § 103(a) as being unpatentable over the
combination ofNadarajah, Hunter, and Wood. 3
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
N adaraj ah discloses an embodiment that allows a user to
record a program that has already begun. When a user attempts
to record (not play) a program that has already begun, the
broadcasted program is recorded. After that portion of the
program is recorded, a query is transmitted to determine if the
program was recorded from the beginning by another node. If
so, the first part of the program is then downloaded to the user's
STB and merged with the locally recorded portion of the
program ....
Importantly, the end portion of the program is recorded
first, then after that portion has been recorded, the peer-to-peer
client transmits a query to recover the beginning portion of the
3 Separate patentability is not argued for claims 2, 3, 7, 9, 10, 14, 16, 19, 21,
25, and 26. Rather, Appellants address these claims only by referencing the
arguments directed to claims 1, 4, and 20. App. Br. 19, 20, 23, and 24.
Thus, the rejections of these claims tum on our decision as to the rejections
of claims 1, 4, and 20. Except for our ultimate decision, claims 2, 3, 7, 9,
10, 14, 16, 19, 21, 25, and 26 are not discussed further herein.
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Appeal2014-003042
Application 13/179,433
program, and merges the two portions together. It does not
recite that the query to find the program on another node is
made while the program is locally recorded. It also does not
recite that the program resident at the other node is received and
recorded while broadcast program is locally recorded.
App. Br. 11-12.
Nadarajah is not merely silent on whether the recording of the
broadcast content can be performed while playing back the
beginning portion. Nadarajah specifically teaches (1) recording
the end portion of the program, then (2) searching for the
beginning portion of the program (3) from a peer (not a content
delivery server, as recited in claim 1), (4) downloading the
beginning portion, then (5) merging[Footnote: Merging the
beginning portion to the end portion cannot take place until the
end of the beginning portion has been recorded. At least,
Nadarajah does not indicate how this would be possible.] the
beginning portion to the end portion .... presumably for
playback at a later time.
At best, Nadarajah discloses the notion of receiving two
portions of a media program at different times, then merging
them together for later playback.
App. Br. 12-13.
2. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because Nadarajah teaches away from
playing back the received beginning portion of the program while receiving
and recording from a broadcast headend an end portion of the program:
Nadarajah teaches receiving and completing the recording of
the end portion of the program before receiving and recording
the first portion. Given this disclosure, there is no reason why
one would modify Nadarajah as suggested. Respectfully, a
viewer would not likely prefer to begin watching a movie 15
minutes after it has begun, view it all the way to the end, then
resume viewing the program from the beginning.
App. Br. 16.
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Application 13/179,433
3. Appellants further contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 103(a) because:
Wood discloses the notion of playing back a previously
recorded beginning portion of a program while recording a
currently broadcast end portion. But there is no suggestion at
all that the two portions would come from different sources, or
of splicing the two portions together.
App. Br. 17.
4. Appellants further contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 103(a) because:
Nadarajah teaches receiving the second portion from a peer set
top box (STB), not a content delivery server as recited in claim
1. Nadarajah teaches the non-real time delivery of media
content from one S TB to another for recording and later
presentation time, but such a system would be inadequate to
the task of streaming the data or delivering it a rate that
would support real time viewing by another viewer. Nadarajah
makes no suggestion that the peered STBs possess any such
streaming or high transmission bandwidth capacity.
App. Br. 17 (emphases added).
5. Appellants contend that the Examiner erred in rejecting claim 4
under 35 U.S.C. § 103(a) because:
According to the Advisory Action, the DSLAM service and the
CATV service are necessarily operated by different service
providers (using the broadest reasonable interpretation of the
claims because they provide services via two different
transmission paths. However, the same service provider, by
any definition, could use two different transmission paths.
Hence, the fact that there are two different transmission paths
does not permit the conclusion that there are two different
service providers.
App. Br. 19.
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Application 13/179,433
6. Appellants contend that the Examiner erred in rejecting claim 20
under 35 U.S.C. § 103(a) because:
Hunter teaches the use of an Internet or phone connection to
replace only a few bits, not the loss of many bits during a
rainstorm. Hunter expressly teaches away from the notion of
downloading any substantial amount of the media program via
the Internet.
App. Br. 21.
By teaching away from the notion of downloading
significant portions of the program via the Internet, Hunter also
teaches away from any combination with Nadarajah, Wood, or
Watson, which all teach downloading significant portions of the
media program via the Internet.
App. Br. 22.
Further, Hunter teaches downloading the entire media
program, then checking it for errors, then, returning to retrieve
any portions.
App. Br. 23.
Issues on Appeal
Did the Examiner err in rejecting claims 1 and 4 as being obvious
over the combination ofNadarajah and Wood?
Did the Examiner err in rejecting claim 20 as being obvious over the
combination ofNadarajah and Hunter?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants' conclusions. Except as noted below,
we adopt as our own ( 1) the findings and reasons set forth by the Examiner
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Application 13/179,433
in the action from which this appeal is taken and (2) the reasons set forth by
the Examiner in the Examiner's Answer (Ans. 4--14, 16, and 17) in response
to Appellants' Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following.
As to Appellants' above contention 1 and 2, the essence of
Appellants' arguments is that an artisan reading Nadarajah's paragraph 204
would find only one reasonable interpretation of the "then" clause stated in
the second sentence. That sole reasonable interpretation being that the
"then" clause is subsequent in time to a required preceding action of
"receiving and completing the recording of the end portion of the program
before receiving and recording the first portion." App. Br. 16. We disagree.
An artisan would recognize that no technological issue requires such an
interpretation. That is, nothing precludes downloading and watching the
beginning portion and merging with the end portion while locally recording
the end portion. Further, an artisan would recognize that there are
alternative reasonable interpretations for what must precede the "then"
clause, i.e., the "then" clause is subsequent in time to "that point." We
decline to adopt Appellants' artificially restrictive interpretation ofi-f20 of
4 Nadarajah paragraph 20 (emphasis added):
In one embodiment, a user who hits record for a program that is
already broadcasting will record locally the program from that
point forward. The peer-to-peer client on their STB then
transmits a query for the program to determine if the program
was recorded from the beginning by another node. If the
program was recorded by another node, the first part of the
program is downloaded to the users' STB and merged with the
locally recorded portion of the program.
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Application 13/179,433
Nadarajah. We conclude that the Examiner interpretation of this paragraph
is reasonable.
As to Appellants' above contention 3, we disagree for the reason set
forth by the Examiner. Ans. 12.
As to Appellants' above contention 4, we disagree for the reason set
forth by the Examiner. Ans. 13. Further, Appellants cite no teaching in
Nadarajah to support their contention that Nadarajah is limited to non-real
time delivery of media content.
As to Appellants' above contention 5, we disagree. Except for the use
of the term "inherently," we otherwise agree with the Examiner that
Nadarajah teaches different service providers in the form of different
transmission media. Ans. 14. Further, Appellants attempt to distinguish
over the prior art based on defining "service providers" as also requiring
different "operators." Spec. i-f 37. We decline to give any patentable weight
to this intangible property of the different transmission media. A medium
with a first operator does not differ either structurally or functionally from
the same medium with a second operator. Patentability cannot be based on
an intangible property such as the particular entity that serves as the operator
of the transmission medium.
As to Appellants' above contention 6, we disagree for the reason set
forth by the Examiner. Ans. 16. Further, Appellants' arguments fail
because they are internally inconsistent. First Appellants argue that Hunter
fails because it teaches replacing only a few bits (App. Br. 21) and therefore
teaches away from the notion of downloading significant portions of the
program (App. Br. 22), but then Appellants argue Hunter fails because it
teaches downloading the entire media program (App. Br. 23).
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Application 13/179,433
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-28 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-28 are not patentable.
DECISION
The Examiner's rejections of claims 1-28 are 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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