Ex Parte Watanabe

Board of Patent Appeals and Interferences

Feb 23, 2012

10398907 (B.P.A.I. Feb. 23, 2012)

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
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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).
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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]).
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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
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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.

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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

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