Ex Parte StevensDownload PDFPatent Trial and Appeal BoardMay 17, 201611846069 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111846,069 08/28/2007 110936 7590 05/19/2016 Great Lakes Intellectual Property, PLLC /CableLabs 44750 Yorkshire Novi, MI 48375 Clarke Stevens 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. CTL60150PUS I 60150 9779 EXAMINER MENDOZA, TIJNIOR 0 ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): j. buser@ greatlakesiplaw. com d.smith@cablelabs.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLARKE STEVENS 1 Appeal2014-008221 Application 11/846,069 Technology Center 2400 Before DEBRA K. STEPHENS, JASON V. MORGAN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 27-31 and 34--49, which are the only claims still pending. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Technology The application relates to automatically switching between different TV channels based upon an event occurring in the non-viewed channel, such as a goal being scored in a channel not currently being watched. Spec. 1; Abstract. The channel not currently being watched can be recorded so that if 1 According to Appellant, the real party in interest is Cable Television Laboratories, Inc. App. Br. 1. 1 Appeal2014-008221 Application 11/846,069 an event occurs, playback of that channel can begin a short time before the event occurred. Spec. i-f 16. Representative Claims Claim 27 is representative and reproduced below with key limitations emphasized: 27. A method for automatically switching between a plurality of television channels used to deliver television programs wherein the television channels are transmitted in real-time with (i) closed-captioning to textually describe events and (ii) event coding to identify particular events, the event coding providing a timing feature that identifies when each of the particular events occur relative to a beginning of the corresponding television program, the method comprising: tuning to a first television channel of the plurality of television channels for display to a viewer, including processing the closed-captioning associated with the first television channel for use in facilitating display to the viewer; monitoring event coding for a second television channel of the plurality of television channels while the first television channel is being tuned to for display to the vie\ver, including dynamically determining an elapse time since a most recently occurring one of the particular events identified with the event coding of the second television channel, the most recently occurring one of the particular events changing as the event coding changes; generating a first recording of the second television channel while the first television channel is being tuned to for display to the viewer, including dynamically adjusting a length of the first recording as the elapse time since the most recently occurring one of the particular events increases and decreases; and automatically instigating a first tuning operation after a first event occurs within the second television channel while the first television channel is being tuned to for display to the viewer, the first event corresponding with one of the particular events identified within the event coding of the second television channel, the first tuning operation resulting in playback of the 2 Appeal2014-008221 Application 11/846,069 first recording for display to the viewer, the playback beginning at a beginning of the first recording. Rejections Claims 27, 29, 31, 34--38, 40---44, 46, 48, and 49 stand rejected under the first paragraph of 35 U.S.C § 112 as failing to comply with the written description requirement. Final Act. 6. Claims 27-31, 34--36, and 38--49 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Ellis et al. (US 2008/0066111 Al; Mar. 13, 2008) ("Ellis '111") in view ofRashkovskiy (US 7,383,563 Bl; June 3, 2008). Final Act. 10. Claim 37 stands rejected under 35 U.S.C § 103(a) as being unpatentable over Ellis '111 in view of Rashkovskiy and in further view of Ellis et al. (US 2008/0066106 Al; Mar. 13, 2008) ("Ellis '106"). Final Act. 25. Claims 45 and 46 \Vere also rejected under the second paragraph of 35 U.S.C. § 112 as being indefinite. Final Act. 10. However, that rejection is not before us on appeal. ISSUES 1. Did the Examiner err in finding that "dynamically determining an elapse time since a most recently occurring one of the particular events identified with the event coding of the second television channel" and "dynamically adjusting a length of the first recording as the elapse time since the most recently occurring one of the particular events increases and decreases" as recited in independent claim 27 and similar limitations as recited in independent claims 38 and 44 lack written description? 3 Appeal2014-008221 Application 11/846,069 2. Did the Examiner err in finding that "events not matching with the plurality of events are prevented from increasing and decreasing the length of the first recording" as recited in claim 40 lack written description? 3. Did the Examiner err in finding that "adjusting the length of the first recording to approximate the elapse time since the most recently occurring one of the particular events identified within the event coding of the second television channel, thereby causing the length of the first recording to varying with each one of the particular events identified within the event coding of the second television channel" as recited in claim 48 and the similar limitation as recited in claim 49 lack written description? 4. Did the Examiner err in finding Ellis '111 teaches or suggests "dynamically determining an elapse time since a most recently occurring one of the particular events identified with the event coding of the second television channel" and "dynamically adjusting a length of the first recording as the elapse time since the most recently occurring one of the particular events increases and decreases," as recited in independent claim 27, and similar limitations as recited in independent claims 38 and 44? 5. Did the Examiner err in finding Ellis ' 111 teaches or suggests "adjusting the length of the first recording to approximate the elapse time since the most recently occurring one of the particular events identified within the event coding of the second television channel, thereby causing the length of the first recording to varying with each one of the particular events identified within the event coding of the second television channel," as recited in claim 48, and the similar limitation as recited in claim 49? 6. Did the Examiner err in finding Ellis '111 teaches or suggests "events not matching" or a first event that "matches," as recited in claim 40? 4 Appeal2014-008221 Application 11/846,069 ANALYSIS Written Description For claim 27, the Examiner finds the Specification fails to provide adequate written description for "dynamically determining an elapse time since a most recently occurring one of the particular events identified with the event coding of the second television channel" and "dynamically adjusting a length of the first recording as the elapse time since the most recently occurring one of the particular events increases and decreases." Final Act. 6-7. Appellant contends the Examiner erred because the Specification discloses a "timing feature" sufficient to support the claimed "dynamically determining the elapse time"; a "recording time" sufficient to support the claimed "dynamically adjusting a length of the first recording"; and ongoing events and event data sufficient to support the remainder of the disputed claim language. App. Br. 7-11. We have considered all of Appellant's arguments but do not find them persuasive of error. For "dynamically adjusting a length of the first recording as the elapse time since the most recently occurring one of the particular events increases and decreases," Appellant relies upon a series of non-consecutive paragraphs discussing recording a non-viewed channel using a buffer of "a limited period of time" so that if an event occurs in the non-viewed channel, the system could rewind the buff er to a time before the occurrence of the event. App. Br. 10-11 (citing Spec. i-fi-f 16, 18, 25; original claim 7). For example, if a goal was scored in a non-viewed channel, such a buffer would allow rewinding to watch the scoring of the goal rather than merely switching to 5 Appeal2014-008221 Application 11/846,069 the non-viewed channel after the goal had happened. We find that Appellant has failed to show how this sufficiently supports the claim language as written. First, such a recording happens before any event occurs. Appellant has not persuasively shown how the length of such a recording varies based upon the elapse time after an event when the determination of the recording's length happens before the event occurs. Appellant's reliance upon pre-event buffering is even less persuasive for independent claim 38, which requires the length of the recording be "approximately equal to the elapse time since" the event (i.e., because the pre-event buffer already was recording before the event occurred so its length would be longer than the elapse time since the event, not approximately equal to it). Second, we agree with the Examiner that Appellant has not persuasively shown the length of the recording is ever adjusted, let alone adjusted dynamically. Ans. 26. The Specification discloses the recording is for "a limited period of time" such as a length "sufficient to rewind the program to a period in time before the occurrence of the events prompting the channel change." Spec. i-f 18. Yet Appellant has not shown sufficient written description for this buffer length being adjustable, whether dynamically or otherwise, rather than being fixed to a "limited period of time." Third, Appellant has not persuasively shown written description for the "most recently occurring" event as recited in the claim. For example, in a hockey game, a first event might be a penalty sending a player to the penalty box for two minutes, and a second event might be a goal scored while that player is in the penalty box. Appellant merely points out different 6 Appeal2014-008221 Application 11/846,069 events can occur during a game, yet we determine that this observation fails to give sufficient guidance that the elapse time must be from the "most recently occurring" event (i.e., the goal) rather than a prior event (i.e., the penalty). Fourth, Appellant argues "the originally filed application clearly and reasonably conveys a 'timing feature' sufficient 'to limit recording time' to a 'portion' of the second channel." App. Br. 11. This is the same "timing feature" that Appellant relies upon as written description for the claimed "dynamically determining the elapse time." App. Br. 7. Yet the Specification discloses this timing feature is "for coordinating channel switch back" by determining when a given event has ended, not for determining the length of a recording. Spec. i-f 26. Put another way, the timing feature only activates after an event, whereas the recording buffer occurs before an event. Thus, Appellant is conflating unrelated disclosures. Appellant's arguments regarding "dynamically determining an elapse time since a most recently occurring one of the particular events identified with the event coding of the second television channel" fail for similar reasons to persuasively show, for example, written description regarding an elapse time since the "most recently occurring" event. See App. Br. 7-9; Ans. 27. Appellant also argues that independent claims 3 8 and 44 do not include the word "dynamically" like claim 27, and that claim 38 includes the limitation "approximately equal to the elapse time" not found in claim 2 7. App. Br. 5. However, having reviewed the claims, we agree with the Examiner's determination that claims 27, 38, and 44 also lack written 7 Appeal2014-008221 Application 11/846,069 description "even if worded a bit differently." Ans. 23-24. Our findings above apply equally to claims 38 and 44. We similarly agree with the Examiner's findings regarding the lack of written description for dependent claims 40, 48, and 49. For example, we agree with the Examiner that claims 48 and 49 lack written description based on reasoning discussed above for claim 27, including lack of written description for the "most recently occurring" event as well as adjusting or varying the length of the recording. We also are unpersuaded by Appellant's arguments for claim 40. For example, the Specification disclosing the user can set a preference to switch channels based on certain events fails to provide sufficient written description for events being "prevented from increasing and decreasing the length of the first recording." See App. Br. 12. Accordingly, we sustain the Examiner's§ 112 rejection of claims 27, 38, 40, 44, 48, and 49, as well as claims 29, 31, 34--37, 41--43, and 46, which fall with their respective independent claims. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). Obviousness The Examiner rejects all three independent claims (27, 38, and 44) as obvious over Ellis '111 in view of Rashkovskiy. Final Act. 10. The Examiner determines that Ellis '111 teaches a "sliding buffer window" for recording a game not currently being watched, and that the size of the sliding buffer window can change depending upon what sport is shown, such as recording the past 45 minutes for football but only the past 30 minutes for basketball. Ans. 29-30 (citing Ellis '111 i-fi-1 59-60). 8 Appeal2014-008221 Application 11/846,069 Appellant contends the Examiner erred because Ellis ' 111 "sets recording length according to a pre-set, fixed period specified in advance," rather than "as a function of events ongoing within the television program." App. Br. 18. The specific claim limitations Appellant believes are missing for claim 27 are "dynamically determining an elapse time since a most recently occurring one of the particular events identified with the event coding of the second television channel" and "dynamically adjusting a length of the first recording as the elapse time since the most recently occurring one of the particular events increases and decreases." App. Br. 15. We are not persuaded by Appellant's arguments with respect to independent claim 27. Appellant's argument that changes must occur "as a function of events ongoing within the television program" (App. Br. 18 (emphasis added)) contradicts the language of claim 27, which instead requires events "of the second television channel" (emphasis added). We agree with the Examiner that a TV "channel" is broader than a TV "program." Ans. 29. Accordingly, we find that a non-viewed channel transitioning from one sport program to another would constitute an event that could change the sliding buffer window. For example, the channel changing from a basketball game to a football game would change the size of the sliding buffer window from 3 0 minutes to 45 minutes. Ellis '111 i-f 60. Regardless of whether the new game caused the sliding buffer window to start over at 0 minutes or instead keep the last 30 minutes from the prior game, for at least the next 15 minutes the length of recording in the buffer would dynamically adjust based upon the elapse time since the start of the new game, assuming no other events occurred. We agree with the Examiner that Ellis '111 in view of Rashkovskiy renders this claim obvious. 9 Appeal2014-008221 Application 11/846,069 We also find Appellant's argument regarding "content" for claim 3 8 or "program" for claim 44 unpersuasive. For example, claim 44 requires "determining an elapse time since a most recently occurring one of the events identified with the event coding of the second television program." Yet similar to above, we find the start of a new game would be an event "of the second television program." Again, similar to above, a program with no other events other than the start of the game would meet these claims. While we do not believe the relevant portions of the preamble breathe life into claim 27 (e.g., because the "timing feature" in the preamble does not appear in the body of the claims), Appellant's argument that the preamble limits claim 27 to "programs" rather than "channels" (App. Br. 22) is moot given our findings for claims 38 and 44. Appellant separately argues the obviousness of dependent claims 39, 40, 48, and 49 based on contentions similar to claim 27, and we are not persuaded for similar reasons. See, e.g., App. Br. 21 ("Claim 39 is believed to be patentable for the same reasons that claim 38 is patentable"). For example, Appellant argues for claims 48 and 49 that Ellis '111 fails to teach the recording length changing for "each one of the particular events identified with an event coding." App. Br. 20, 22. But again we determine it would have been obvious to an ordinarily skilled artisan that the only event coding could be for the start of a new game involving a new sport. For example, a scoreless soccer game without any penalties may have no event coding other than the start of the game. Similarly, for claim 40, Appellant argues that Ellis '111 fails to teach events that adjust recording length if they "match" but not adjusting recording length if they do "not match." App. Br. 21-22. Yet Appellant 10 Appeal2014-008221 Application 11/846,069 concedes that the recording length is changed for the start of a new game in a new sport (which as discussed above we find to be an event) yet the recording length is not changed for any other events (such as a goal being scored). Id.; Ellis '111 i-f 60. Thus, Appellant has not persuasively shown error in the Examiner's finding that Ellis '111 teaches or suggests the additional limitation of claim 40. Appellant does not individually dispute the remaining dependent claims and thus, these claims fall with their respective independent claims. Accordingly, we sustain the Examiner's§ 103 rejection of independent claims 27, 38, and 44, and dependent claims 28-31, 34--37, 39- 43, and 45--49. DECISION For the reasons above, we affirm the Examiner's decision rejecting claims 2 7-31 and 34--49. 2 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 2 Should there be further prosecution, the Examiner should consider whether dependent claims 28, 30, 39, 45, and 47 should be rejected under 35 U.S.C. § 112, first paragraph for lack of written description because they contain the same limitations that lack written description in the independent claims. 11 Copy with citationCopy as parenthetical citation