Ex Parte PereiraDownload PDFPatent Trial and Appeal BoardMar 25, 201612553472 (P.T.A.B. Mar. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/553,472 0910312009 Roy Pereira 124538 7590 03/29/2016 Cox Communications, Inc. c/o Next IP Law Group LLP Two Ravinia Suite 500 Atlanta, GA 30346 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. 33020-RAl0/09029-USl 6631 EXAMINER SALTARELLI, DOMINIC D ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 03/29/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): bgunter@nextiplaw.com bbalser@nextiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROY PEREIRA Appeal2014-005177 Application 12/553,472 1 Technology Center 2400 Before ELENI MANTIS MERCADER, JEFFREY A. STEPHENS, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE CLAIMED INVENTION Appellant's claimed invention relates to "providing multimedia content via a cable television distribution network in response to input received from a personal communication device," including where the personal communication device provides the input without using a set top 1 According to Appellant, the real party in interest is Cox Communications, Inc. App. Br. 1. Appeal2014-005177 Application 12/553,472 box. Spec. iii! 5, 29, 31. Of the claims on appeal, claim 1 is illustrative of the subject matter of the appeal and is reproduced below, with emphasis added to highlight the dispositive, disputed issue. 1. A system for providing multimedia content to an end user cable television network interface device, the system compnsmg: a cable television distribution network for delivering multimedia content to an end user cable television network interface device; and a computer for interacting with a portable handheld communication device via a data communication network, said computer being adapted to receive data corresponding to a selection of multimedia content made at said portable handheld communication device and for causing the delivery of said multimedia content to said end user cable television network interface device by said cable television distribution network in response to said selection without using the cable television network interface device to make the request, said data communication network and said cable television distribution netv,rork comprising different networks, said portable handheld communication device being adapted to execute a computer software application comprising a plurality of computer software instructions. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1---6, 8, 10-19, 22-28, and 30 under 35 U.S.C. § 102(b) as being anticipated by Kikinis (US 2002/0010925 Al; Jan. 24, 2002). (2) The Examiner rejected claims 7, 9, 20, 21, 29, and 31-35 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kikinis and Official Notice. 2 Appeal2014-005177 Application 12/553,472 ISSUE ON APPEAL The dispositive issue for this appeal is whether the Examiner erred in finding claim 1 discloses "without using the cable television network interface device to make the request," as recited in claim 1 and similarly recited in claims 122 and 25. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's contentions that the Examiner erred. We find Appellant's arguments with respect to the above dispositive issue persuasive. In response to the Examiner's Section 102(b) rejection of independent claims 1, 12, and 25, Appellant argues Kikinis fails to disclose "a portable handheld communication device communicates with a computer for requesting the delivery of multimedia content to the set top box without using the set top box to make the request," in accordance with the claims. See App. Br. 6 (emphasis added); see also Reply Br. 3. Appellant contends Kikinis instead discloses the device uses the electronic programming guide resident on the set top box to make the request (i.e., send data for provisioning the selected multimedia content). See App. Br. 6, 8 (citing Kikinis i-fi-124--26, 30, 31, 38, 40). Furthermore, Appellant argues although Kikinis discloses that a user's selections can be downloaded from a broadcast server, Kikinis does not disclose making the request for the content from the cable television distribution network without using the set 2 Claim 12, rather than stating making a request, uses the language of "send[ing] the information," which identifies the selected content, to similarly claim this feature. See Claim Appendix A4. 3 Appeal2014-005177 Application 12/553,472 top box. See App. Br. 8; Reply Br. 3 (citing Kikinis if 40). In fact, according to Appellant, Kikinis does not disclose any function performed by the broadcast server relating to making requests. See App. Br. 7-8 (citing irir 30, 31 ). The Examiner finds Kikinis discloses this disputed limitation. See Ans. 2-3. Specifically, the Examiner finds Kikinis discloses using a handheld device that routes programming selections through a broadcast server to control the set top box. See Ans. 3 (citing Kikinis if 40). The Examiner also finds Kikinis discloses the broadcast server can control content delivery, including acting as a proxy when "no direct connection between the hand held device and the set top box is available." See Ans. 3--4 (citing Kikinis iii! 39, 40). We find Appellant's arguments persuasive. We agree that the cited portions of Kikinis fail to disclose this disputed limitation. See Kikinis iii! 39, 40. We also agree with Appellant that Kikinis discloses using a set top box to make the request for the selected content from a cable television distribution network, contrary to the claims. See id. (disclosing the hand held device can download the selections from the broadcast server, but then the hand held device connects to the set top box - not the broadcast server - to make the request of the selections from the cable television distribution network); see also id. (disclosing hand held devices connect to the set top box via local wireless or network 125 (e.g., the Internet) to control the functions of a set top box, including for locations other than home). 4 Appeal2014-005177 Application 12/553,472 CONCLUSION Our above findings and reasoning apply to each of the independent claims, as well as the remaining claims on appeal, claims 2-11, 13-24, and 26-35, because each of these groups of claims depend from claims 1, 12, or 25, respectively and incorporate the disputed limitation. DECISION We reverse the Examiner's rejections of claims 1-35. REVERSED 5 Copy with citationCopy as parenthetical citation