Ex Parte WatanabeDownload PDFBoard of Patent Appeals and InterferencesFeb 23, 201210398907 (B.P.A.I. Feb. 23, 2012) 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. 10/398,907 08/19/2003 Koichiro Watanabe SON-2479 1086 23353 7590 02/23/2012 RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON, DC 20036 EXAMINER LIN, WEN TAI ART UNIT PAPER NUMBER 2454 MAIL DATE DELIVERY MODE 02/23/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KOICHIRO WATANABE ____________ Appeal 2009-012185 Application 10/398,907 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, KARL D. EASTHOM, and DENISE M. POTHIER, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 3, and 6-18. Claims 2, 4, and 5 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the Appeal Brief (corrected, filed Mar. 16, 2009), the Appeal 2009-012185 Application 10/398,907 2 Answer (mailed Mar. 18, 2008), and the Reply Brief (filed May 15, 2008). Only those arguments actually made by Appellant have been considered in this decision. Arguments which Appellant 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)). Appellant’s Invention Appellant’s invention relates to the control of the playback functionality of stream program contents transmitted from a server. Control data, which includes a time table containing time information referencing locations in the stream content, is received from the server and is used to control playback functionality. See generally Spec. 3:13-4:7. Claim 1 is illustrative of the invention and reads as follows: 1. In a contents providing apparatus for transmitting stream contents and control data for setting a playback function for the stream contents to a client terminal in response to a request for contents distribution from the client terminal, said contents providing apparatus comprising: transmitting control data in accordance with a time table which is based on a time information of said stream contents as a reference. The Examiner’s Rejections Claims 1 and 7-11 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Harrington (US 2002/0156909 A1, pub. Oct. 24, 2002). Appeal 2009-012185 Application 10/398,907 3 Claims 3, 6, and 12-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Harrington in view of Eyer (US 6,588,015 B1, issued July 1, 2003). ANALYSIS 35 U.S.C. § 102(e) REJECTION Appellant argues, with respect to independent claims 1 and 7-11, that Harrington does not disclose the transmitting of control data for setting a playback function for the transmitted program stream contents as claimed. According to Appellant, Harrington merely discloses a playlist which identifies locations and components for obtaining data to play a flash movie, but there is no indication that Harrington’s playlist will affect the playback functionality of the flash movie (App. Br. 8-11; Reply Br. 2-5). In Appellant’s view, while Harrington discloses instructions from a server to play a given media at a given time, there is no disclosure of the enabling or disabling of a playback function, such as fast-forwarding capability. We find Appellant’s arguments unpersuasive as they are not commensurate with the scope of independent claims 1 and 7-11. Contrary to Appellant’s contentions, there is no requirement of any enabling or disabling of stream contents playback functions in any of the independent claims 1 and 7-11. Accordingly, we find no error in the Examiner’s finding (Ans. 7) that Harrington’s disclosure of initiating the playback of certain data according to a time table (illustrated in Table 1) corresponds to the playback function setting feature broadly set forth in each of the appealed independent claims 1 and 7-11 (¶¶ [0053]-[0055]). Appeal 2009-012185 Application 10/398,907 4 In view of the above discussion, we find that the Examiner did not err in concluding that all of the limitations of independent claims 1 and 7-11 are present in the disclosure of Harrington. Accordingly, the Examiner’s 35 U.S.C. § 102(e) rejection of independent claims 1 and 7-11 is sustained. 35 U.S.C. § 103(a) REJECTION Claims 3, 6, 12-16, and 18 We also sustain the Examiner’s obviousness rejection, based on the combination of Harrington and Eyer, of dependent claim 12, as well as dependent claims 3, 6, 13-16, and 18 not separately argued with any particularity by Appellant. Appellant contends that Eyer does not overcome what the Examiner has identified as the deficiency in Harrington, i.e., control data that includes a plurality of “flags” associated with time information (App. Br. 11-12; Reply Br. 6-7). We do not agree with Appellant. We find no error in the Examiner’s determination (Ans. 6 and 8) that the presence of “access points” in Eyer, which permit a user to skip forward or backward in a program, and the absence of “access points,” which prevent a user from fast-forwarding or skipping program segments, correspond to the claimed “flags.” (Eyer, Fig. 10; col. 2, ll. 24-31 and col. 16, ll. 37-59). Further, as pointed out by the Examiner (Ans. 7-8), there is no claimed requirement that flags be included in a time table as argued by Appellant, but, rather, only that flags be “associated” with time information. We also find that, contrary to Appellant’s contentions (App. Br. 13; Reply Br. 8-10), the Examiner has provided an articulated line of reasoning with a rational underpinning to support the conclusion of obviousness. We Appeal 2009-012185 Application 10/398,907 5 agree with the Examiner’s determination that an ordinarily skilled artisan would have found that the dynamic selection of program contents enabling favored subscribers to skip unwanted commercials, as taught by Eyer, would have served as an obvious enhancement to the targeted user profiling system of Harrington (Ans. 8-9). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Claim 17 The Examiner’s obviousness rejection of dependent claim 17, which includes the limitation that the plurality of flags indicates whether playback functionality is disabled or enabled, is also sustained. According to Appellant, the “access points” of Eyer are not comparable to “flags” since the presence or absence of flag values imparts information while the absence of an “access point” in Eyer provides no information at all. In Appellant’s view, therefore, the access points in Eyer provide no indication of the enabling or disabling of playback functionality (App. Br. 14; Reply Br. 10- 11). We agree with the Examiner, however, that Eyer’s access points provide the enabling/disabling indication by testing the existence of the access points. As explained by the Examiner (Ans. 10-11), the existence of an access point in Eyer indicates playback functionality enabling since a user is permitted to skip or fast-forward through unwanted material, such as commercials. Similarly, the absence of an access point in Eyer provides an indication of playback functionality disabling since a user will not be permitted to skip unwanted (e.g., commercials) material. Appeal 2009-012185 Application 10/398,907 6 CONCLUSION Based on the analysis above, we conclude that the Examiner did not err in rejecting claims 1 and 7-11 under 35 U.S.C. § 102(e), and rejecting claims 3, 6, and 12-18 under 35 U.S.C. § 103(a). DECISION The Examiner’s decision rejecting claims 1, 3, and 6-18 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). AFFIRMED kis Copy with citationCopy as parenthetical citation