Ex Parte Swix et alDownload PDFPatent Trial and Appeal BoardMay 21, 201412692040 (P.T.A.B. May. 21, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/692,040 01/22/2010 Scott R. Swix 01424 CON (New) 1001 38516 7590 05/21/2014 AT&T Legal Department - SZ Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER LANGHNOJA, KUNAL N ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 05/21/2014 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 SCOTT R. SWIX and WILLIAM R. MATZ ________________ Appeal 2012-000620 Application 12/692,040 Technology Center 2400 ________________ Before MARC S. HOFF, BRETT C. MARTIN, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 37-60. Claims 1-36 are canceled. App. Br. 1-2. We have jurisdiction under 35 U.S.C. § 6(b). Claims 37-43, 45-54, and 56-60 are rejected under 35 U.S.C. § 103(a) as obvious over Kurapati (US 7,441,260 B1; issued Oct. 21, 2008) and Knee (US 5,589,892; issued Dec. 31, 1996). Ans. 5-8. Claims 44 and 55 are rejected under 35 U.S.C. § 103(a) as obvious over Kurapati, Knee, and Kunkel (US 7,100,183 B2; issued Aug. 29, 2006). Ans. 8-9. Appeal 2012-000620 Application 12/692,040 2 We reverse. STATEMENT OF THE CASE Appellants’ invention relates to customizing the presentation of content-access lists. Abstract. Claim 37 is illustrative and reproduced below, with key disputed limitations emphasized: 37. A method, comprising: receiving at a processor a preference for a subscriber from a content-access-history database; searching a content database for content related to the preference; searching the content database for content unrelated to the preference; receiving at the processor an option list from the content database, wherein the option list comprises an option; receiving a non-preference-related option from the content database; adding the non-preference-related option to the option list; and sending the option list to the subscriber. ANALYSIS THE OBVIOUSNESS REJECTION OF CLAIMS 37-43, 45-54, AND 56-60 OVER KURAPATI AND KNEE The Examiner finds Kurapati teaches all limitations of claim 37, except for the recited “searching the content database for content unrelated to the preference”; “receiving a non-preference-related option from the content database”; and “adding the non-preference-related option to the option list,” for which the Examiner relies on Knee’s messages and customer service information. Ans. 5-6 (citing Knee, Figures 6, 16, 27; col. 6, l. 63 - col. 10, l. 4; col. 21, l. 62 - co1. 22, l. 15). Appeal 2012-000620 Application 12/692,040 3 Appellants argue that [e]ven though Knee describes an electronic programming guide (or “EPG”) menu that provides “messages” and “customer service information,” Knee does NOT search “the content database” for these messages and customer service information. [T]he proposed combination of Kurapati with Knee receives these “data feeds” during the vertical blanking interval or from the Internet. Independent claim 37, then, cannot be obvious over Kurapati with Knee. App. Br. 9; see also Reply Br. 4-9. In response, the Examiner explains that Knee teaches user is able to utilize remote control (Figures 3 and 4; Col. 12 lines 12-24) in order to query information from the memory with respect to message, and billing status information (claimed: searching the content database for content unrelated to the preference) (Col. 21 line 62 - Col. 22 line 15). Wherein, system of Knee is capable of providing information from the memory as user navigates thru EPG option(s) (claimed: receiving a non-preference option from the content database). Ans. 11-12. In the Reply Brief, Appellants reiterate that “[e]ven though Knee describes an electronic programming guide (or ‘EPG’) menu that provides ‘messages’ and ‘customer service information,’ Knee does NOT search ‘the content database’ for these messages and customer service information.” Reply Br. 4. We are persuaded by Appellants’ arguments that Kurapati and Knee do not teach the recited searching the content database for content unrelated to the preference, and receiving a non-preference-related option from the content database. To the extent Knee’s messages and customer service information are interpreted as the recited (claim 1) “content unrelated to the preference” and Appeal 2012-000620 Application 12/692,040 4 “non-preference related option,” Knee does not search in the content database and receive from the content database as recited. Further, with regard to the collective teachings of Kurapati and Knee, the Examiner explains “it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify [Kurapati] for the common knowledge purpose of allowing users to receive messages and customer service information from content provider via program guide.” Ans. 6. This explanation from the Examiner also does not explain how or why one of ordinary skill in the art would search for Knee’s messages and customer service items in the content database and receive Knee’s messages and customer service items from the content database as recited. We, therefore, do not sustain the Examiner’s rejection of claim 37, or of claims 38-43 and 45-47, which depend from claim 37. We also do not sustain the Examiner’s rejection of independent claim 48, which recites “search the content database for content unrelated to the preference” and “receive a non-preference-related option from the content database,” or of claims 48-54, 56, and 57, which depend from claim 48. We also do not sustain the Examiner’s rejection of independent claim 58, which recites “searching the content database for content unrelated to the preference” and “receiving a non-preference-related option from the content database.” We also do not sustain the Examiner’s rejection of independent claim 59, which recites “searching the content database for content unrelated to the preference.” Appeal 2012-000620 Application 12/692,040 5 We also do not sustain the Examiner’s rejection of independent claim 60, which recites “searching the content database for content unrelated to the genre preference.” THE OBVIOUSNESS REJECTION OF CLAIMS 44 AND 55 OVER KURAPATI, KNEE, AND KUNKEL Claim 44 depends from claim 37. Claim 55 depends from claim 48. The Examiner does not rely on Kunkel for teaching the recited searching the content database for content unrelated to the preference, and receiving a non-preference-related option from the content database. Thus, the Examiner has not established that Kunkel overcomes the deficiencies of Kurapati and Knee noted above when addressing claims 37 and 48. We, therefore, do not sustain the Examiner’s rejections of claim 44 and 55. ORDER The Examiner’s decision rejecting claims 37-60 is reversed. REVERSED ke Copy with citationCopy as parenthetical citation