Gravino, Douglas David. et al.

Patent Trials and Appeals Board

Mar 25, 2021

2019003648 (P.T.A.B. Mar. 25, 2021)

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.
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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;
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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.
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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
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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
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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
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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
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(“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.
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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.
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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