Alistair E. Jeffs

Patent Trials and Appeals Board

Jul 1, 2020

2018006677 (P.T.A.B. Jul. 1, 2020)

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.
12/200,905 08/28/2008 Alistair E. Jeffs DTV208041 8471
141451 7590 07/01/2020
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
eOfficeActionDocs@att.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALISTAIR E. JEFFS
____________

Appeal 2018-006677
Application 12/200,905
Technology Center 2600
____________

Before JON M. JURGOVAN, AARON W. MOORE, and
SCOTT E. BAIN, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-006677
Application 12/200,905

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4–11, 16, 18–23, 29, and 30, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
The application is directed to “a content processing and delivery
system and, more specifically, to a system for ordering content using a voice
menu system.” (Spec. ¶ 1.) Claim 1, reproduced below, exemplifies the
subject matter on appeal:
1. A method of initiating a recording at a user device comprising:
communicating between a voice device and a voice menu
system using a phone signal through a voice network, wherein
said voice menu system is separate from the user device;
determining a phone number associated with the voice device
from the phone signal;
when the phone number is not recognized, generating
prompts for inputting an identifying number associated with an
account;
in response to recognizing the phone number or the
identifying number at the voice menu system, generating a first
audible voice menu prompt for recording a content selection
from the voice menu system;

1 We caption the case by inventor name according to our convention.
“Appellant” refers to the “applicant” defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as The DIRECTV Group, Inc. (See
Appeal Br. 2.)
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selecting a recording content option using a voice command
or button push input communicated from the voice device;
generating audible voice menu prompts from the voice menu
system for initiating searching content titles by genre from
channels that the user device is subscribed to and hiding content
titles from channels that the user device is not subscribed to by
using a billing system so that a plurality of searchable content
titles are obtained;
initiating searching of the searchable content titles by genre
by providing an audible voice search command corresponding to
a first genre from the voice device to the voice menu system;
audibly presenting a plurality of content titles within the first
genre that the user device is subscribed to with a voice signal to
the voice device from the voice menu system;
selecting a content title of the plurality of searched content
titles by communicating a voice selection signal from the voice
device to the voice menu system;
communicating, from a content processing system, a control
word having a content location for obtaining the content to the
user device for initiating recording content corresponding to the
content title;
tuning the user device in response to the control word using
the content location from the control word;
receiving the content at the user device from the content
location;
storing the content corresponding to the content title in the
user device;
after storing, selecting the content to display at the user
device; displaying the content at the user device; and
in response to selecting the content to be displayed, billing the
user for the content.

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THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Levin US 2003/0061039 A1 Mar. 27, 2003
Fraser US 2004/0047453 A1 Mar. 11, 2004
Cao US 6,782,550 B1 Aug. 24, 2004
Kummer et al. US 2005/0097607 A1 May 5, 2005
Hendricks et al. US 7,134,131 B1 Nov. 7, 2006
Chang US 2007/0061149 A1 Mar. 15, 2007
Chen et al. US 2007/0118857 A1 May 24, 2007

THE REJECTIONS
1. Claims 29 and 30 stand rejected “under 35 U.S.C. [§] 112(a) or
35 U.S.C. [§] 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.” (Final Act. 9–10.)
2. Claims 1, 5–8, 16, 19, 20, 22, 23, 29, and 30 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Chen, Hendricks, Cao,
Fraser, and Chang. (See Final Act. 11–31.)
3. Claims 4, 9, 10, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Chen, Hendricks, Cao, Fraser, Chang, and Kummer.
(See Final Act. 31–34.)
4. Claims 2, 11, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen, Hendricks, Cao, Fraser, Chang, and Levin. (See
Final Act. 34–36.)

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ANALYSIS
Section 112
The Examiner finds that claims 29 and 30 “recite ‘audibly
present[ing] a predetermined number of content titles and, and upon
receiving a voice prompt for more content titles, presenting a second
plurality of content titles having an amount corresponding to the
predetermined number,’” but that “[t]here is no disclosure of this language
in applicant’s original disclosure.” (Final Act. 10.) Specifically, the
Examiner finds that “[t]here is no disclosure of providing a second plurality
of content titles having an amount corresponding to the predetermined
number’ i.e. same amount of content as the originally provided number of
content.” Id. (emphasis omitted).
Appellant argues “it is clear that ‘X’ refers to an amount in the context
set forth in claim 29” and that “[c]laim 30 performs a second request for a
second amount of content,” which “corresponds to the ‘more titles’ portion
of paragraph [0247] of the present disclosure.” (Appeal Br. 8.)
The Examiner responds that “[t]here is no disclosure of the more titles
provided (as a result of the selection) being the same number of titles as the
originally provided X titles” because “[a]lthough the initial request gives ‘X’
titles like applicant argues, it is not clear that the second/another request for
‘more titles’ gives the same amount of ‘X’ titles as the specification
describes providing more titles than the original ‘X’ titles upon request for
‘more titles.’” (Ans. 30–31.) The Examiner finds “no support that all the
requests for titles would provide the same amount of ‘X’ titles.” (Id. at 31.)
Appellant replies that “the second request is also a voice prompt and
therefore may correspond to the statement ‘a number of titles “X” by way of
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voice,’ as stated in the first sentence of paragraph [0247]” and that “it is
extremely reasonable to consider the ‘second plurality of content titles’ to
have an amount corresponding to the predetermined number, e.g., ‘X,’ as set
forth in line 1 of paragraph [0247].” (Reply Br. 2.)
We agree with the Examiner, as Appellant does not identify support in
the disclosure for the second plurality to have the same amount of titles, and
we find it insufficient that it might be “extremely reasonable” for the
amounts to be the same. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (explaining that “the specification must . . .
show that the inventor actually invented the invention claimed”). The
rejection of claims 29 and 30 under Section 112 is, accordingly, sustained.
Section 103
Claim 1
Claim 1 requires, among other things, “audibly presenting a plurality
of content titles within the first genre that the user device is subscribed to
with a voice signal to the voice device from the voice menu system.” For
this feature, the Final Office Action relied on Chang, citing paragraphs 32,
33, 35, 46, 51, 56–58. (See Final Act. 7 (“Chang’s system utilizes a voice
menu system (para. [0018]) that provides results, and wherein the results are
provided at the same time with audio/audible prompts (para. [0033]; para.
[0035]) i.e. audio output upon receiving a user voice command.”), 17–19
(“[I]t would have been obvious . . . to incorporate the teachings of Chang . . .
in arriving at . . . audibly presenting a plurality of content titles within the
first genre.”)).

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Appellant argues that Chang “describe[s] a screen display that is
generated and thus there is no audible presentation of the plurality of content
titles.” (Appeal Br. 13.)
The Examiner responds that “Chang’s system utilizes a voice menu
system (para. [0018]) that provides results, and wherein the results are
provided at the same time with audio/audible prompts (para. [0033]; para.
[0035]).” Ans. 41.
We agree with Appellant. Chang describes a system in which a user
may browse a multi-media library. (See Chang ¶ 5.) In some embodiments,
the user may use voice commands to control the browsing (see, e.g., id.
¶¶ 18–23), but Chang does not describe any embodiments in which the
results of the browsing are presented by a voice signal. Instead, the system
operates by updating a list of categories or movies on a screen. In
paragraphs 33 and 35 cited by the Examiner, Chang describes how the
system may “display[] a search screen and at the same time play[] an audio
prompt” and that the “multimedia page can . . . optionally . . . trigger an
audio event such as playing an audible system prompt,” but this does not
teach or suggest “audibly presenting a plurality of content titles within the
first genre that the user device is subscribed to with a voice signal to the
voice device from the voice menu system.” The Examiner does not
adequately explain how Chang’s “audible prompt” might correspond to “a
plurality of content titles” or a “voice signal.”
For this reason, we do not sustain the Section 103 rejection of claim 1
or the same rejection of independent claim 16, which analogously recites
that the “voice menu system communicat[es] . . . a plurality of content titles
within the first genre the user is subscribed to with a voice signal.” Because
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the combination does not render the independent claims obvious, it cannot
render their dependent claims obvious either, and the Section 103 rejections
of claims 2, 4–11, 18–23, 29, and 30 are also not sustained. We need not,
and therefore do not, reach Appellant’s other arguments.
CONCLUSION
The Section 112 rejection of claims 29 and 30 is affirmed. The
Section 103 rejection of claims 1, 2, 4–11, 16, 18–23, 29, and 30 is reversed.
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-IN-PART
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29, 30 112 Written
Description
29, 30
1, 5–8, 16, 19,
20, 22, 23, 29,
30
103 Chen, Hendricks,
Cao, Fraser, Chang
1, 5–8, 16,
19, 20, 22,
23, 29, 30
4, 9, 10, 18 103 Chen Hendricks,
Cao, Fraser,
Chang, Kummer
4, 9, 10,
18
2, 11, 21 103 Chen Hendricks
Cao, Fraser,
Chang, Levin
2, 11, 21
Overall
Outcome

29, 30 1, 2, 4–11,
16, 18–23,
29, 30