Gravino, Douglas David. et al.Download PDFPatent Trials and Appeals BoardMar 25, 20212019003648 (P.T.A.B. Mar. 25, 2021) 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. 12/941,385 11/08/2010 Douglas David Gravino 33020-RA51 9621 124538 7590 03/25/2021 Cox Communications, Inc. c/o Next IP Law Group LLP 131 S Cortez St New Orleans, LA 70119 EXAMINER SYED, NABIL H ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 03/25/2021 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): bbalser@nextiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DOUGLAS DAVID GRAVINO, GOPINATH RADHAKRISHNAN, and MICHAEL L. POFFENBERGER ____________________ Appeal 2019-003648 Application 12/941,3851 Technology Center 2600 ____________________ Before JOHN A. JEFFERY, THU A. DANG, and STEPHEN E. BELISLE, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL 1 In a prior Decision (Appeal Number 2016-005170, decided February 28, 2017, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of claims 1–8, 11, 12, 15, and 18–20 under 35 U.S.C. § 103(a) over Takahashi, Colsey, Chai, and Belz; and of claims 13, 14, 16, and 17 over Takahashi, Colsey, Chai, Belz, and Bae; but reversed the Examiner’s rejection of claims 9 and 10 over Takahashi, Colsey, Chai, Belz and Jameson. Prior Dec. 2–3, 9. Appeal 2019-003648 Application 12/941,385 2 I. STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–8, and 10–21, which constitute all the claims pending in this application. Claim 9 was previously canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. A. INVENTION According to Appellant, in the claimed invention, when a specific user of one or more electronic devices or systems moved into the physical presence of the one or more devices or systems, automatic detection or determination of the user’s presence may be used to apply setup or settings changes to the one or more devices or systems. Spec. ¶ 5. B. EXEMPLARY CLAIM Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method of automating setup changes to a set-top box based on user presence information, comprising: receiving presence information by a presence device, for a specific user, the presence information indicating the user is in a physical proximity of the facility; storing the presence information in the presence device; passing the presence information for the user of the set-top box from the presence device to a cable television services provider to indicate the user is in the physical proximity of the facility; in response to receiving the presence information for the user of the set-top box at the cable television services provider, providing only television channels of interest from the cable television services provider through the set-top box to the user; Appeal 2019-003648 Application 12/941,385 3 communicating the presence information to a second device or system without passing the presence information through the presence server; and updating operational settings or setup data on the second device or system. C. PRIOR ART The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Name Reference Date Ullah US 2008/0220760 A1 Sept. 11, 2008 Belz US 2009/0125971 A1 May 14, 2009 Takahashi US 7,564,346 B2 July 21, 2009 Colsey US 2010/0103316 A1 Apr. 29, 2010 Bae US 2010/0156608 A1 June 24, 2010 Chai US 2012/0060176 A1 Mar. 08, 2012 D. REJECTIONS ON APPEAL Claims 1–8, 11–15, and 18–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Takahashi, Colsey, Chai, and Belz. Final Act. 3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Takahashi, Colsey, Chai, Belz and Ullah. Final Act. 11. 2 We use the word Appellant to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cox Communications, Inc. Appeal Br. 1. Appeal 2019-003648 Application 12/941,385 4 Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Takahashi, Colsey, Chai, Belz, and Bae. Final Act. 12. Claim 13 stands rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Final Act. 3. Because Appellant does not contest the merits of this rejection (see generally Appeal Br.), we summarily affirm the Examiner’s rejection of claim 13 under 35 U.S.C. § 112(b). Chai 1. Chai discloses smart media selection (Abstract), wherein Figure 2 is reproduced below: Figure 2 shows a headend system 202 which includes backend servers 208 coupled to application servers 206 and input/output device 210, wherein the backend servers 208 provide the data, received from the receiver Appeal 2019-003648 Application 12/941,385 5 system 108, to the application servers 206. ¶ 25. The headend system 202 is coupled to content sources 212 and application sources 214 via a network 216, wherein the content source may be a provider of entertainment content. ¶ 26. The user identity module 220 receives presence information (via communication module 218) from the receiver system 108, and then performs analysis on the presence information to identify the user triggering the presence change. ¶ 31. Belz 2. Belz discloses controlling access to media content (Abstract), wherein Figure 1 is reproduced below: Figure 1 shows a particular set-top box device 104 at the user premises 102 which can act as a master set-top box device, and can determine relative proximities of one or more wireless devices 112 to itself and to slave set-top box devices, such as the second set-top box device 108. ¶ 24. The master set-top box device can communicate instructions to fulfill or deny viewing Appeal 2019-003648 Application 12/941,385 6 requests to slave set-top box devices based on its determinations of presence and relative proximity of wireless devices. Id. II. ISSUES The principal issues before us are whether the Examiner erred in finding that the combination of Takahashi, Colsey, Chai and Belz teaches or suggests “passing the presence information for the user of the set-top box from the presence device to a cable television services provider to indicate the user is in the physical proximity of the facility;” and “communicating the presence information to a second device or system without passing the presence information through the presence device.” Claim 1. III. ANALYSIS Appellant contends that the cited combination of references “does not disclose, teach, or suggest at least communicating the presence information to a second device or system without passing the presence information through the presence device.” Appeal Br. 6. In particular, Appellant contends “the system of Belz does not pass the presence information to a second device in Belz without passing the presence information through the presence server (set-top box) of Belz.” Id. That is, “[i]n Belz, the set-top box is the presence server,” and thus, “the system of Belz sends info to a second device from the presence server.” Id. We have considered all of Appellant’s arguments and evidence presented. However, we disagree with Appellant’s contentions regarding the Examiner’s rejections of the claims. The test for obviousness is what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Although Appellant argues that Belz Appeal 2019-003648 Application 12/941,385 7 does not disclose the contested limitations (Appeal Br. 6), Appellant does not address the teachings and suggestions of Belz in combination with the other applied references. Based on the record before us, we are unpersuaded the Examiner erred in finding the combination of Takahashi, Colsey, Chai and Belz teaches or at least suggests the contested limitations. Here, as the Examiner finds, Chai discloses “a method of automating setup changes to a set-top box (via receiver system 108 . . .),” which comprises “receiving presence information by a presence device (backend server 208 . . .).” Answer 3 (citing Chai, Fig. 3, ¶ 25). Further, the Examiner further finds Chai discloses that “in response to receiving the presence information the source system 102 (cable services provider) checks the profile of the identified user and provides the channels based on user’s profile.” Id. at 3–4 (citing Chai ¶ 35). Thus, we find no error with the Examiner’s reliance on Chai for teaching and suggesting “passing the presence information for the user of the set-top box from the presence device to a cable television services provider to indicate the user is in the physical proximity of the facility,” as recited in claim 1. We also agree with the Examiner’s finding that, in view of Chai, Belz discloses “communicating presence information to a second device or system (slave set-top box devices) without passing the presence information through the presence device” because “the set-top box does not transmit signal to a source system through backend server as disclosed in Chai to provide only television channels of interest from the cable providers.” Answer 4. Accordingly, we agree with the Examiner, and find that combining Chai’s teaching of passing presence information from backend server 208 Appeal 2019-003648 Application 12/941,385 8 (“the presence device”) to source system 102 (“cable television service provider”) with Belz’s teaching of communicating presence information to a second device without passing the presence information through a backend server, to an ordinarily skilled artisan, is simply a combination of familiar prior art practices or acts (as taught or suggested by the cited combination of references) that would have realized a predictable result. The skilled artisan is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420–21 (2007). We are unpersuaded by Appellant’s argument in the Reply Brief that “the set-top box of Belz performs the claimed function of the presence device,” and thus, “Belz fails to disclose the step of communicating presence information to a second device or system without passing the presence information through the presence device.” Reply Br. 2. That is, although Appellant contends that “the system of Belz does not pass the presence information to a second device in Belz without passing the presence information through the presence server (set-top box) of Belz” because “[i]n Belz, the set-top box is the presence server” (Appeal Br. 6), Appellant does not address the Examiner’s combination of Belz’s communicating of presence information to a second device with Chai’s use of the backend server for passing of presence information to a services provider. As the Examiner points out, the set-top box of Belz does not function as a “backend server (presence device)” as in Chai because Belz’s “set-top box is not used as the presence device” wherein Chai’s “presence device is used to relay the presence information from set-top box to the cable television service provider.” Answer 4. Appeal 2019-003648 Application 12/941,385 9 On this record, we find no error with the Examiner’s finding that the combination of Chai and Belz teaches and suggests passing the presence information from a presence device (backend server) to a cable television services provider (Chai), and then communicating the presence information to a second device or system without passing the presence information through the presence device/backend server (Belz), as required by claim 1. Answer 4. Based on this record, we find no error in the Examiner’s rejection of independent claim 1, and claims 2–8, and 10–14, depending therefrom but not separately argued (Appeal Br. 6–7), over Takahashi, Colsey, Chai, and Belz. Appellant does not provide separate arguments for claim 10. Appeal Br. 6–7. For the reasons set forth above, we also affirm the rejection of claim 10 over Takahashi, Colsey, Chai, and Belz, in further view of Ullah. As for independent claims 15 and 19, Appellant merely repeats the argument that “Belz does not pass the presence information to a second device in Belz without passing the presence information through the presence device (set-top box) of Belz.” Appeal Br. 7–11. However, as discussed above, we find no error with the Examiner’s finding that the combined references teach and suggest the contested limitations. On this record, we also affirm the rejection of claims 15 and 19, and claims 18, 20, and 21 depending therefrom over Takahashi, Colsey, Chai, and Belz; and the rejection of depending claims 16 and 17 over Takahashi, Colsey, Chai, and Belz, in further view of Bae. Appeal 2019-003648 Application 12/941,385 10 IV. CONCLUSION We affirm the Examiner’s rejections of claims 1–8, and 10–21 under 35 U.S.C. § 103(a). 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). V. DECISION SUMMARY In Summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 11– 15, 18–21 103(a) Takahashi, Colsey, Chai, Belz 1–8, 11–15, 18–21 10 103(a) Takahashi, Colsey, Chai, Belz, Ullah 10 16, 17 103(a) Takahashi, Colsey, Chai, Belz, Bae 16, 17 13 112(b) Indefinite 13 Overall Outcome 1–8, 10–21 AFFIRMED Copy with citationCopy as parenthetical citation