Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 28, 2016

13340033 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/340,033 12/29/2011
20991 7590 03/28/2016
THE DIRECTV GROUP, INC.
PA TENT DOCKET ADMINISTRATION
CA I LAI I Al09
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
FIRST NAMED INVENTOR
Sean S. Lee
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-211030 9212
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
MAILDATE DELIVERY MODE
03/28/2016 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 SEAN S. LEE, KURIACOSE JOSEPH,
and SCOTT D. CASAVANT
Appeal2014-006195
Application 13/340,033
Technology Center 2400
Before JOHN A. EV ANS, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006195
Application 13/340,033
Appellant1 seeks our review2 under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1-14 and 16-19. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The claims relate to techniques for determining unauthorized use of a
set top box. The techniques involve receiving and comparing weather
conditions in a geographic area. See Abstract.
Claims 1, 10, and 13 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with disputed limitations italicized and some formatting
added:
1. A method comprising:
receiving a profile of weather conditions in a geographic
area at a set top box based on weather conditions in the
geographic area compiled from a plurality of set top boxes in
the geographical area;
1 The Appeal Brief identifies DirecTV Group, Inc., as the Real Party in
Interest. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed December 16, 2013, "App. Br."), the Reply
Brief (filed April 28, 2014, Reply Br."), the Examiner's Answer (mailed
February 26, 2014, "Ans."), the Final Action (mailed July 15, 2013, "Final
Act."), and the Specification (filed December 29, 2011, "Spec.") for their
respective details.
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Appeal2014-006195
Application 13/340,033
generating a weather log at the set top box; comparing
the profile to the weather log; and
disabling the set top box from receiving signals in
response to comparing.
References and Re} ections
The Examiner relies upon the prior art as follows:
Borislow
Whitley
US 2011/0004893 Al
US 2012/0110614 Al
Jan. 6, 2011
May 3, 2012
Claims 1-14 and 16-19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Whitley and Borislow.3 App. Br. 2-9.
ANALYSIS
We have reviewed the rejection of Claims 1-14 and 16-19 in light of
Appellants' arguments that the Examiner has erred. We agree with
Appellants' conclusions. We discuss the claims seriatim, according to
Appellants principle Brief.
INDEPENDENT CLAIM 1
Profile of weather conditions ... based on weather conditions ...
compiled from a plurality of set top boxes.
Appellants contend the cited art fails to teach "receiving a profile of
weather conditions in a geographic area at a set top box based on weather
3 Claim 15 is allowable, but is objected to as dependent upon a rejected base
claim. Final Act. 9.
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Appeal2014-006195
Application 13/340,033
conditions in the geographic area compiled from a plurality of set top boxes
in the geographical area," as recited in Claim 1. App. Br. 5.
The Examiner finds Whitley teaches receiving a weather profile at a
set-top box, but Whitley fails to teach the weather profile is compiled from a
plurality of set-top boxes, as claimed. Final Act. 3. The Examiner finds
Borislow teaches receiving a profile of weather conditions (signal strengths)
at a set-top box compiled from a plurality of set-top boxes in a geographical
region. Id (citing Borislow, Fig. 3b ).
Appellants contend that Borislow also fails to teach the disputed
limitation. App. Br. 6. According to Appellants, Borislow determines
distances between set-top boxes in a geographical area and compares these
distances to predetermined, authorized distances. Moreover, Appellants
argue, Borislow does not relate to weather conditions or profiles. Id.
The Examiner does not sufficiently defend the finding of the Final
Action. Rather, the Answer finds Borislow teaches that each set-top box
receives signal strengths and cites Appellants' Specification to find signal
strengths correspond to weather information. Ans. 4 (citing Spec., i-f 31 ).
The set-top boxes compile the signal strengths into distance measurements.
Thus, the Examiner finds, distances are based on signal strengths (i.e.,
weather information). Id.
We agree with Appellants that the Final Action fails to make a prima
facie case of obviousness. Contrary to the Examiner's finding, Borislow,
Fig. 3b provides no teaching related to weather. Rather, Borislow relates
signal strengths to locations ("monitoring the corresponding signal
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Appeal2014-006195
Application 13/340,033
strength(s) of those first signal(s), and identifying a location of the device").
Borislow, Fig. 3a; see Borislow, i-f 67. The Examiner explicitly cites
Appellants' Specification for the suggestion that signal strengths are related
to weather. See Ans. 4 (citing Spec., i-f 31 ). It is important not to "fall victim
to the insidious effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher." In re Dembiczak 175 F.3d 994,
999 (Fed. Cir. 1999) (citation and quotations omitted). Moreover, the
Examiner's relating signal strengths to weather is merely conclusory.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Therefore, we
decline to sustain the rejection of claim 1, and claims 2-9 for similar reasons.
CLAIMS 10-12
Generating a profile of the signal strengths in a geographic area;
communicating the profile to a first set top box.
The Examiner finds Whitley discloses "generating a profile of signal
strengths in a geographic area" and "communicating the profile to a first set
top box, as recited in independent Claim 10. Final Act. 6 (citing Whitley, i-fi-1
19, 41 ). Appellants disagree and argue Whitley discloses weather condition
thresholds in paragraph 19 and argue Whitley, paragraph 41 compares a
signal strength to signal quality threshold. Appellants contend there is no
disclosure of a signal strength profile or of its communication to a set-top
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Appeal2014-006195
Application 13/340,033
box. App. Br. 11.
Whitley discloses:
For example, but not limited to, a known weather threshold 156
may correlate to anticipated degraded reception of the OT A
media content signal 110. Accordingly, automatic presentation
of one or more of the reports 150, 152 and/or 154 will notify
the customer of a potential problem in receiving the OT A media
content signal 110.
Whitley, i-f 19. Whitley further discloses:
In some embodiments, the weather condition thresholds 156
may be defined by the customer. The customer may appreciate
that a coming storm may degrade signal reception in the near
future. Accordingly, the customer may plan on implementing a
remedial action, such as by knocking snow off of the receiving
antenna 142, if one or more of the reports 150, 152 and/or 154
are presented. Alternatively, or additionally, the customer may
choose to watch media content from an alternative source, such
as the digital video recorder DVR 140 or another media device;
such a digital video recorder (DVR) device (not shown).
Whitley, i-f 20.
Absent further explanation from the Examiner, we fail to see how the
anticipated weather, or a customer's plans to knock snow off of an antenna,
relate to a signal strength profile. Therefore, we decline to sustain the
rejection of independent Claim 10 or of dependent Claims 11 and 12.
CLAIMS 13, 14, 16-19
Independent Claim 13 recites limitations commensurate in scope with
Claim 1. In view of our foregoing discussion, we decline to sustain the
rejection of Claim 13 or of dependent Claims 14 and 16-19.
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Appeal2014-006195
Application 13/340,033
DECISION
The rejection of Claims 1-14 and 16-19 under 35 U.S.C. § 103 is
REVERSED.
REVERSED
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