Ex Parte McCarthy et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201311021096 (P.T.A.B. Feb. 26, 2013) Copy Citation 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. 11/021,096 12/22/2004 Tom McCarthy 03-646-A 3819 20306 7590 02/26/2013 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER ALCON, FERNANDO ART UNIT PAPER NUMBER 2425 MAIL DATE DELIVERY MODE 02/26/2013 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 TOM MCCARTHY, JATEEN PAREKH, and MARK GOODWIN ____________________ Appeal 2010-009127 Application 11/021,096 Technology Center 2400 ____________________ Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and JUSTIN BUSCH, Administrative Patent Judges. Per curiam. DECISION ON APPEAL Appeal 2010-009127 Application 11/021,096 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 59-76. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-58 and 77-78 have been cancelled. We AFFIRM. Introduction According to Appellants, the invention relates to a system and method for delivering media content on a pay-per-play basis (Spec. 1, § FIELD OF INVENTION). STATEMENT OF THE CASE Exemplary Claim Claim 59 is an exemplary claim and is reproduced below: 59. A method for recording renderable media content for time- shifting on a system of the invention comprising: allowing a user to specify criteria for recording renderable media content on a second platform and media client; recording the selected shows, and updating a content registry on the first platform and second platform to reflect the recorded media content. References Payton US 5,790,935 Aug. 4, 1998 Dureau US 2003/0135860 A1 Jul. 17, 2003 Appeal 2010-009127 Application 11/021,096 3 Rejections Claims 59-76 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Payton and Dureau. We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 35 U.S.C. § 103(a): claims 59-76 Appellants assert their invention is not obvious over Payton and Dureau because Payton does not teach a user-specified criteria for recording media content (App. Br. 7). Instead, according to Appellants, Payton teaches user ratings of programs watched by the user (App. Br. 7-9). Thus, Appellants contend, Payton’s rating system provides a feedback rating from the user on programs already requested and viewed by the user (App. Br. 9). Appellants argue a distinction exists between a “rating” and a “criteria” and thus, a program rating that does not establish a standard does not specify a criteria (App. Br. 9-10; Reply Br. 2-3). Appellants further argue Payton “does not disclose the user specifying the standard, i.e., the ‘criteria’ determining which programs the Appeal 2010-009127 Application 11/021,096 4 user wishes to watch” (App. Br. 8-10; Reply Br. 3). Instead, according to Appellants, Payton teaches using prediction algorithms (Reply Br. 3). Appellants additionally argue the Examiner’s use of embodiments in Appellants’ Specification is misplaced since these embodiments are not claimed (Reply Br. 4). Issue: Has the Examiner erred in finding the combination of Payton and Dureau teaches or suggests “allowing a user to specify criteria for recording renderable media content on a second platform and media client” as recited in claim 59? ANALYSIS We are not persuaded by Appellants’ arguments. We agree with and adopt the Examiner’s findings and reasoning (Ans. 10-21). We emphasize the following. We are not persuaded by Appellants’ claim interpretation. Firstly, Appellants have not provided a proper cite, including a copyright date, to provide evidence for determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art at the time of the invention. Thus, we consult a general dictionary definition of the word for guidance. We find that although “criteria” may be indeed interpreted as a standard on which a judgment or decision may be based, the term “criteria” is also broadly, but reasonably interpreted in light of the Specification as a characterizing mark or trait (see Merriam-Webster’s Collegiate Dictionary p. 274 (10th edition 2000). Using either interpretation, we find that Payton’s rating teaches or at least suggests criteria, i.e., the user rates the program based on their own judgment or decision according to their own standard and a rating is a characterizing trait. Appeal 2010-009127 Application 11/021,096 5 We also agree with the Examiner that the subscriber rating is the criteria the user selects for recording renderable media content (Ans. 13-14). Although the system may then use a procedure to determine the programs to record, the user has nevertheless specified the criteria to be used in making that determination and thus, the user specifies the criteria for recording renderable media content. Accordingly, Appellants have not persuaded us the Examiner erred in finding the combination of Payton and Dureau teaches or suggests “allowing a user to specify criteria for recording renderable media content on a second platform and media client” as recited in independent claim 59; commensurately recited independent claim 68; and dependent claims 60-67 and 69-76, not separately argued. Therefore, the Examiner did not err in rejecting claims 59-76 under 35 U.S.C. § 103(a) for obviousness over Payton and Dureau. DECISION The Examiner’s rejection of claims 59-76 under 35 U.S.C. § 103(a) as being unpatentable over Payton and Dureau 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) (2011). AFFIRMED tj Copy with citationCopy as parenthetical citation