14618771 - (D) (P.T.A.B. Mar. 15, 2019)

Ex Parte Blake

Patent Trials and Appeals BoardMar 15, 2019

14618771 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/618,771 75563 7590 Haley Guiliano LLP 75 Broad Street Suite 1000 FILING DATE 02/10/2015 03/19/2019 NEW YORK, NY 10004 FIRST NAMED INVENTOR Todd Blake 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 004031-0039-106 2446 EXAMINER TOPGY AL, GELEK W ART UNIT PAPER NUMBER 2481 NOTIFICATION DATE DELIVERY MODE 03/19/2019 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): haleyguiliano_P AIR@firsttofile.com HGPatentDocket@hglaw.com DocketRequests@hglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TODD BLAKE Appeal2017-003489 Application 14/618,771 1 Technology Center 2400 Before JENNIFER S. BISK, SCOTT E. BAIN, and STEVEN M. AMUNDSON, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 5-33, which constitute all claims pending in the application. Claims 1--4 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellant identifies Rovi Guides, Inc. as the real party in interest. App. Br. 1. Appeal2017-003489 Application 14/618,771 STATEMENT OF THE CASE Appellant's invention relates to "enhanced recording capability" in home recording devices such as digital video recorders ("DVRs"), and specifically, scheduling the recording of a television program from a remote location. Abstract; Spec. 1-2. Claims 5, 12, 19, and 27 are independent. Claim 5 is representative of the invention and subject matter of the appeal, and reads as follows: 5. A system comprising: a server on the Internet accessible to a user via a website; wherein: a device, located at a user premises, is accessible by the server; and the server is configured to receive input from the user via the website, the input is supplied by the user using user equipment that is in a location different from the user premises, the input including a selection of a content from a plurality of contents that will be broadcasted to the device and a request to record the content and in response to the input, the server is configured to set up the device to record a future broadcast of the content by transmitting a communication to the device, the communication being received by the device independently of the user equipment. App. Br. 16 (Claims App 'x) ( emphases added). THE REJECTIONS ON APPEAL Claims 5-10, 12-17, 19-23, 25-30, 32, and 33 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Lawler et al. (US 5,805,763; Sept. 8, 1998) ("Lawler"), Student.Net TV Search & Remind, http://webarchive.org/web/19970124213237/http://www.student.net/tv/ (visited May 12, 2005) ("Student"), and Perry et al. (US 6,195,501 Bl; Feb. 27, 2001) ("Perry"). Final Act. 8-17. 2 Appeal2017-003489 Application 14/618,771 Claims 11, 18, 24, and 31 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lawler, Student, Perry, and Carmello et al. (US 6,425,000) ("Carmello"). Final Act. 17-18. 2 ANALYSIS We have reviewed the Examiner's rejections in light of the arguments raised in the Briefs, on the record before us. For the reasons set forth below, we do not sustain the Examiner's rejections. In rejecting independent claim 5, the Examiner relies on a combination of Lawler, Student, and Perry. Final Act. 9-11; Ans. 2--4. The Examiner finds Lawler teaches or suggests a "device, located at a user premises" communicating with a "server," in Lawler' s description of a digital video recorder receiving program guides from a head-end server. Final Act. 9; Lawler Abs., Fig. 1, col. 2:23-27, 12:58-13:25. The Examiner further finds Student teaches or suggests a "server configured to receive input from [a] user via [a] website" at a "location different from the user premises," in Student's description of a web site listing of television programs which allows a user to select certain programs for future email reminders. Final Act. 9-10; Student 1-5. Finally, the Examiner finds Perry teaches or suggests a "communication being received by the [ recording] device independently of the user equipment," in Perry's description of 2 The Final Action also included provisional double-patenting rejections, Final Act. 2-8, but Appellant asserts those rejections are moot because the relevant applications are no longer pending, App. Br. 14. The Examiner's restatement of rejections in the Answer does not include the double- patenting rejections. Ans. 2-11. Accordingly, in this appeal we will treat the double-patenting rejections as withdrawn. The Examiner may reinstitute those rejections on remand, if applicable. 3 Appeal2017-003489 Application 14/618,771 controlling a VCR via a personal computer (in combination with RF) in another room. Final Act. 10-11; Perry 1:22-34, 2:18-54, 3:58--4:24, 5:1- 25. Appellant argues the Examiner erred in finding a rationale to combine the foregoing prior-art references, and that even if the references are combined, they do not teach or suggest all of the elements in claim 5. Specifically, Appellant argues nothing in Lawler, Student, or Perry, or their combination, teaches or suggests "a server configured to set up a recording device by transmitting a communication for receipt by the recording device independently of the user equipment used to access the server," as required by claim 5. App. Br. 10. On this record, we are constrained to find the Examiner erred. As Appellant argues, Student simply discloses online program listings which generate "email reminders to a user." App. Br. 10; Student 1-5. There is no teaching or suggestion in Student of integrating the program listing ( or user queries related thereto) with a home recording device or head-end server, in any fashion. Student has nothing to do with recording. Perry does not solve this deficiency of Student, because Perry only discloses using a home PC to control a user's VCR via RF signals in the home, not "user equipment that is in a location different from the user premises," as recited in claim 5. Neither Perry nor Lawler contemplates interaction with off-site user equipment (i.e., interaction over a network), because they are directed to controlling a recording device within a user's home. On this record, the Examiner has not explained how one of ordinary skill rationally would combine Student with the Lawler/Perry combination, to arrive at the claimed invention. In other words, we do not find "articulated reasoning 4 Appeal2017-003489 Application 14/618,771 with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The missing link in determining the obviousness of claim 5 appears to be the Derwent reference, which the Examiner describes in the Answer as "teach[ing] features that allow[] for remotely providing program guide via a website as a platform for programming broadcast video recording." Ans. 22. Derwent, however, was not positively stated as part of the Examiner's obviousness rejection in the Final Action. Final Act. 8. Accordingly, we do not consider Derwent part of the rejection in this appeal, and it does not form any part of the basis of our decision. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCP A 1970) ("Where a reference is relied on to support a rejection, whether or not in a 'minor capacity,' there would appear to be no excuse for not positively including the reference in the statement of the rejection."). 3 For the foregoing reasons, we do not sustain the Examiner's obviousness rejection of independent claim 5. For the same reasons, we also do not sustain the Examiner's rejection of independent claims 12, 19, and 27, which relies on the same combination of references as claim 5. We further do not sustain the rejection of the remaining claims, all of which are dependent and therefore include the limitations of their respective independent claims. DECISION The Examiner's decision rejecting claims 5-33 is reversed. 3 As indicated above, Derwent appears to be more than a "minor" reference in determining the obviousness of the claims in this case. The Examiner may cite Derwent as part of a new obviousness rejection in the event of further prosecution. 5 Appeal2017-003489 Application 14/618,771 REVERSED 6