Ex Parte Swix et al

Patent Trial and Appeal Board

May 21, 2014

12692040 (P.T.A.B. May. 21, 2014)

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).
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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
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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.”
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Application 12/692,040

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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

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