Donoghue, Patrick J. et al.

Patent Trials and Appeals Board

Nov 30, 2020

2019001976 (P.T.A.B. Nov. 30, 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.
12/414,554 03/30/2009 Patrick J. Donoghue TWAR.080RC3/
TWC 08-04
1141
27299 7590 11/30/2020
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
RYAN, PATRICK A
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
11/30/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. DONOGHUE and JAY THOMAS

Appeal 2019-001976
Application 12/414,554
Technology Center 2400

Before JASON V. MORGAN, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 80, 82, 84–87, and 89–100, which
constitute all the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Time Warner Cable Enterprises
LLC, as the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant describes the claimed subject matter as follows:
Network content delivery apparatus and methods based on
content compiled from various sources and particularly selected
for a given user. In one embodiment, the network comprises a
cable television network, and the content sources include DVR,
broadcast, nPVR, and VOD. The user-targeted content is
assembled into a playlist, and displayed as a continuous stream
on a virtual channel particular to that user. User interfaces
accessible through the virtual channel present various functional
options, including the selection or exploration of content having
similarity or prescribed relationships to other content, and the
ability to order purchasable content. An improved electronic
program guide is also disclosed which allows a user to start over,
record, view, receive information on, “catch up”, and rate
content. Apparatus for remote access and configuration of the
playlist and virtual channel functions, as well as a business rules
“engine” implementing operational or business goals, are also
disclosed.
Spec., Abstr.
Claim 80 is reproduced below:
80. An apparatus for delivery of targeted content in a
content delivery network, said apparatus comprising:
a network interface;
a storage device configured to store at least a user-based
profile associated with a first user device and an Internet Protocol
(IP)-enabled user device at a different location from said first
user device, said first user device in data communication with
said IP-enabled device via one or more of said content delivery
network and an Internet; and
a processor configured to run at least one computer
program thereon, said computer program comprising a plurality
of instructions which when executed by said processor are
configured to cause said apparatus to:
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receive information related to a plurality of
available content;
compare said information to user criteria data
associated with said stored user-based profile;
select individual ones of said plurality of available
content for delivery to said first user device based at least
in part on said comparison;
receive a request from said first user device to tune
to a virtual channel comprising said selected individual
ones of said plurality of available content;
based at least in part on said request, cause a tuner
associated with said first user device to automatically tune
to one or more Quadrature Amplitude Modulated (QAM)
channels dedicated to delivery of said selected individual
ones of said plurality of available content;
receive user action data from said IP-enabled user
device at said remote location from said first user device,
said user action data indicative of one or more user actions
with respect to one or more of said selected individual
ones of said plurality of available content; and
dynamically modify said user criteria data
associated with said user-based profile based at least in
part on said user action data received from said IP-enabled
client device at said different location from said first user
device;
wherein each of said user action data indicative of said one
or more user actions each comprise a classification, said
classification comprising at least one of: (i) a view of said
selected content to completion, (ii) navigation away from said
selected content, or (iii) recordation of said selected content by
said user;
wherein said dynamic modification of said user-based
profile comprises application of a weighing factor to each of said
data indicative of said one or more user actions based on a
predicted effect thereof and said classification.

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Begeja US 8,561,103 B2 Oct. 15, 2013
Busse US 2009/0133090 A1 May 21, 2009
Aaby US 2007/0261089 A1 Nov. 8, 2007
Bradley US 2006/0061682 A1 Mar. 23, 2006
Montie US 8,813,122 B1 Aug. 19, 2014
Dudkiewicz US 2002/0152474 A1 Oct. 17, 2002
REJECTIONS
1. Claims 80, 82, 84–87, 89–100 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 3–9.
2. Claims 89, 91, 96, 97, 99, and 100 stand rejected under
35 U.S.C. § 102(e) as anticipated by Begeja. Final Act. 10–15.
3. Claims 80, 82, and 84–87 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Begeja, Busse, and Aaby. Final Act. 15–21.
4. Claim 90 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Begeja and Bradley. Final Act. 21–22.
5. Claims 92 and 93 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Begeja and Montie. Final Act. 22–24.
6. Claim 94 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Begeja and Aaby. Final Act. 24–25.
7. Claim 95 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Begeja, Aaby, and Montie. Final Act. 25–26.
8. Claim 98 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Begeja and Dudkiewicz. Final Act. 26–27.
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OPINION
Written Description Rejection
Claim 80
Claim 80 recites “a user-based profile associated with a first user
device and an Internet Protocol (IP)-enabled user device at a different
location from said first user device.” The Examiner interprets the claim as
requiring a single user-based profile to be associated with a first user device
and an IP-enabled user device. Final Act. 4. The Examiner, however, finds
that the Specification only provides support for storing multiple profiles
each associated with a device. Final Act. 4. In other words, the Examiner
finds that the Specification does not disclose that a single user profile is
associated with both a first user device and the IP-enabled device.
Appellant relies on various portions of the Specification as supporting
the claim. For example, Appellant relies on the Specification’s disclosure
that a user’s profile may be stored locally on the Consumer Premises
Equipment (“CPE”), or alternatively at a network location such as a personal
server, and that a user can access the user’s profile and associated playlists
directly or over the network. Appeal Br. 6 (citing Spec. 64:18–22).
Appellant also relies on the Specification’s disclosure that the CPE and its
associated user profiles are accessible via a remote device (such as a laptop
or cellular phone) over the Internet and that a user may access the user
profile through a website that links the user to the CPE. Appeal Br. 6 (citing
Spec. 65:19–66:10). Because the Specification discloses that the user profile
is stored locally on a CPE or personal server, but is accessible by a user’s
laptop or cellular phone, Appellant argues that it describes associating a user
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profile with a first user device (i.e., the CPE) and a plurality of IP-enabled
devices (the user’s laptop and mobile devices). Appeal Br. 6–7.
We are persuaded by Appellant’s arguments. The written description
requirement is satisfied where the disclosure “reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). Here, the Specification discloses that
the user’s profile may be stored on the CPE, which indicates that the user’s
profile is “associated” with the CPE. Spec. 64:18–22. The Specification
also discloses that the user can assess the user’s profile via remote devices
such as laptops and cellular phones, which indicates that the user’s profile is
associated with these various IP-enabled devices. Spec. 65:19–66:10. We
are, therefore, persuaded that the Specification provides sufficient written
description support for claiming “a user-based profile associated with a first
user device and an Internet Protocol (IP)-enabled user device at a different
location from said first user device,” as recited in claim 80.
Claim 80 further recites “receive a request from said first user device
to tune to a virtual channel comprising said selected individual ones of said
plurality of available content” and “receive user action data from said IP-
enabled user device . . . indicative of one or more user actions with respect
to one or more of said selected individual ones of said plurality of available
content,” and further “dynamically modify said user criteria data associated
with said user-based profile based at least in part on said user action data
received from said IP-enabled client device.” The Examiner finds that the
Specification does not disclose receiving a request from one device and
action data from another device. Final Act. 4.
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Appellant relies on related Patent Application No. 12/414,576 (“the
ʼ576 Application”), which Appellant argues was incorporated by reference
in the present application, and which describes that once recommendations
are displayed to a user on the user’s laptop or mobile device, “[a]ny action
taken by the user with respect to the displayed recommendations will be
reported as user action data.” Appeal Br. 8 (quoting ʼ576 Application,
33:46–67). Appellant also relies on disclosures from the instant
application’s Specification describing that the recommendation engine can
learn from user actions with respect to the recommendations list and update
the content of the recommendation list. Appeal Br. 9 (citing Spec. 57:12–
59:10).
We are persuaded by Appellant’s arguments. Initially, we find that
the ʼ576 Application has been properly incorporated by reference.
See Spec. 1 (“This application is related to co-owned and co-pending U.S.
Patent Application Serial No. 12/414,576, filed contemporaneously herewith
on March 30, 2009 and entitled ‘Recommendation Engine Apparatus and
Methods’ and which is incorporated herein by reference in its entirety.”).
We find persuasive Appellant’s argument that the ʼ576 Application discloses
that actions taken by the user on the user’s IP-enabled device will be
considered as user action data responsive to the targeted recommendations
of content provided by to the user. See ʼ576 Application, 33:21–57. This
disclosure, combined with the disclosure in the Specification that the
recommendation engine learns from user actions to update its
recommendation list, provides sufficient description of receiving a request
from one device (the CPE) and user action data from another device (the
user’s IP-enabled devices).
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Claim 89
Claim 89 recites “identifying a user profile associated with a plurality
of Internet Protocol (IP) enabled client devices . . . storing said play list at a
storage device accessible by each of said plurality of IP-enabled client
devices” and “responsive to a user action associated with said play list from
a second device of said plurality of IP-enabled client devices, (i) updating
user criteria data associated with said user profile, and (ii) rearranging said
playlist based at least in part on said updated user criteria data.” Similar to
the findings for claim 80, the Examiner finds here that claim 89 requires a
single user-based profile to be associated with a plurality of IP-enabled
client devices, but that the Specification discloses a user profile being
associated with a single device rather than with two or more devices.
Final Act. 5. The Examiner also finds that claim 89 requires receiving input
from both a first device and a second device of the plurality of IP-enabled
devices, but finds that although the Specification describes being able to
perform the claimed process generally, it does not specifically describe
being able to receive input from at least two different devices as claimed.
Final Act. 5–6.
Appellant relies largely on the same portions of the Specification as it
did in response to the Examiner’s rejection of claim 80, and argues again
that the Specification describes a user being able to access their profile on a
variety of IP-enabled user devices, such as laptops and mobile devices.
Appeal Br. 10 (citing Spec. 64:18–22, 65:18–67:12, Figs 8a–8c). In
addition, Appellant again relies on the ʼ576 Application to argue that user
actions with respect to a recommendations list are received from a plurality
of IP-enabled user devices and used by the recommendation engine to learn
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and update the content of the recommendation list. Appeal Br. 11–12 (citing
ʼ576 Application, 33:46–67).
We are persuaded by Appellant’s arguments for largely the same
reasons as stated above with respect to claim 80. We are persuaded by
Appellant’s argument that the Specification’s disclosure of a user being able
to access their user profile using various IP-enabled devices supports the
limitation of “a user profile associated with a plurality of Internet Protocol
(IP) enabled client devices.” We are also persuaded that the ʼ576
Application’s disclosure that user actions on IP-enabled devices are used to
by the recommendation engine to learn and update content of a
recommendations list, combined with the Specification’s disclosure of the
user being able to access the user profile using a plurality of IP-enabled
devices, provides adequate support for the limitation of “responsive to a user
action associated with said play list from a second device of said plurality of
IP-enabled client devices, (i) updating user criteria data associated with said
user profile, and (ii) rearranging said playlist based at least in part on said
updated user criteria data,” as recited in claim 89.
Claim 90
Claim 90 depends from claim 89 and further recites “wherein said
automatic playing of said first individual one of said content elements
comprises receiving a simulcast that is received by at least one other device
of said plurality of IP-enabled client devices.” The Examiner finds the
Specification “only provides support for generally transmitting content
simultaneously to a single device.” Final Act. 8 (citing Spec. 31:15–29).
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Appellant does not present arguments addressing the Examiner’s
findings. Accordingly, we summarily sustain the Examiner’s rejection of
claim 90 under § 112(a).
Claim 97
Claim 97 recites a “user profile commonly associated with a plurality
of Internet Protocol (IP)-enabled client devices” and “responsive to
receiving user action data from a second of said IP-enabled client devices:
updating said user criteria data associated with said user profile.” These
limitations are similar to those discussed above with respect to claims 80 and
89, and the Examiner rejects them on the same basis. See Final Act. 8–9.
Appellant again relies on the Specification and on the ʼ576 Application in
the same manner relied on for claims 80 and 89. Compare Appeal Br. 13–
14 with id. at 8–10, 11–12.
Having reviewed the Examiner’s findings and Appellant’s arguments,
we are persuaded by Appellant’s arguments for the same reasons stated
above with respect to claims 80 and 89.
Anticipation Rejection
The Examiner rejects claims 89, 91, 96, 97, 99, and 100 as anticipated
by Begeja. Final Act. 10–15. In the anticipation analysis, the Examiner
maps Begeja to an altered version of the claims. Final Act. 10–15. These
alterations, according to the Examiner, “are in accordance with the
Examiner’s analysis of the claims in view of the 112(a) rejection.”
Final Act. 10. As just one example, claim 89 recites “identifying a user
profile associated with a plurality of Internet Protocol (IP) enabled client
devices.” The Examiner, however, alters this limitation as follows:
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“identifying a user profile associated with a plurality of an Internet Protocol
(IP) enabled client device[[s]],” and then finds that Begeja discloses the
altered form of the limitation. Final Act. 10 (citing Begeja, 8:12–21, 10:7–
13) (annotations in the original showing modifications to the claim).
Appellant argues that the alterations made by the Examiner result in a
claim containing limitations that are not the same as the claimed features,
and that the Examiner has failed to examine the features of claim 89 as they
are recited in the claim. Appeal Br. 15. Appellant argues, for example, that
the user profile in Begeja is “accessible by and associated with only the
Multi-Service Endpoint Device,” and therefore, not associated with a
plurality of IP-enabled devices as the non-altered version of the claim
recites. Appeal Br. 17.
We are persuaded by Appellant’s argument. “To anticipate a claim, a
prior art reference must disclose every limitation of the claimed invention,
either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). “The identical invention must be shown in as complete detail as
is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d
1226, 1236 (Fed. Cir. 1989). Here, by explicitly altering the claims, the
Examiner has acknowledged that Begeja does not disclose the claim
limitations as they are recited in the claims. Moreover, the Examiner has not
provided sufficient analysis to support an interpretation of the claims that is
consistent with the Examiner’s alterations of the claim. Thus, we find the
Examiner erred in the anticipation analysis, even if we were to take the
alterations as merely an indication of the Examiner’s interpretation of the
claim, rather than a re-write of the claim.
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Appellant argues that Begeja discloses that only the Multi-Service
Endpoint Device is associated with the user’s profile, rather than a plurality
of IP-enabled devices. Appeal Br. 16–17. The Examiner’s findings show
that the Examiner does not disagree with this contention. See Ans. 7
(finding that Begeja discloses a Profile Database that is associated with Set-
top Box 332). Because the Examiner does not find Begeja discloses
“identifying a user profile associated with a plurality of Internet Protocol
(IP) enabled client devices,” we do not sustain the Examiner’s rejection of
independent claim 89, or independent claim 97, which contains limitations
of similar scope and was rejected on the same basis. See Final Act. 12–14.
We also do not sustain the Examiner’s rejection of claims 91, 96 99, and
100, which depend from one of claims 89 or 97.
Obviousness Rejections
The situation with the obviousness rejections is similar to that of the
anticipation rejection in that the Examiner finds the cited references teach or
suggest an altered version of the claims. Final Act. 15–27. In one example,
the Examiner makes the following alteration in claim 80: “a storage device
configured to store at least a first user-based profile associated with a first
user device and a second user-based profile associated with an Internet
Protocol (IP)-enabled user device at a different location from said first user
device, said first user device in data communication with said IP-enabled
device via one or more of said content delivery network and an Internet.”
Final Act. 4–5 (annotations in the original showing additions to the claim).
The Examiner finds that Begeja teaches a storage device that stores a first
user-based profile associated with a first user device (Final Act. 16), and that
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Busse teaches “storing multiple profiles associated with each of a plurality
of end user devices” (Final Act. 18).
Appellant argues the Examiner’s rejection is improper because the
Examiner has not considered all of the limitations of claim 80 in the
evaluation of obviousness. Appeal Br. 19. For example, Appellant argues
that Begeja “merely describes collecting viewing habit data from the user’s
set top box (i.e. a first user device)” (Appeal Br. 21), and that “Busse merely
discloses that multiple user profiles . . . are associated with a single user
device or STB” (Appeal Br. 22), but that the combination does not teach a
user-based profile associated with both a first user device and an IP-enabled
device. The Examiner does not disagree with Appellant’s contention but
finds that the claims require something different, as indicated by the
alterations made by Examiner. Ans. 8.
Because the Examiner has analyzed the claims with altered
limitations, and has not provided sufficient reasoning to show why an
interpretation consistent with the alterations is appropriate, we do not sustain
the Examiner’s obviousness rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
80, 82, 84–
87, 89–100
112(a) Written Description 90 80, 82,
84–87, 89,
91–100
89, 91, 96,
97, 99, 100
102 Begeja 89, 91, 96,
97, 99,
100
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
80, 82, 84–
87
103 Begeja, Busse, Aaby 80, 82,
84–87
90 103 Begeja, Bradley 90
92, 93 103 Begeja, Montie 92, 93
94 103 Begeja, Aaby 94
95 103 Begeja, Aaby,
Montie
95
98 103 Begeja, Dudkiewicz 98
Overall
Outcome
90 80, 82,
84–87,
and 89,
91–100

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART