Ex Parte Campagna et al

Patent Trial and Appeal Board

Nov 24, 2014

12050605 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THERESA CAMPAGNA, DAVID L. CHAVEZ and
GREGORY D. WEBER
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Appeal 2012-008617
Application 12/050,605
Technology Center 2400
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Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Avaya, Inc. (Br. 2.)
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STATEMENT OF THE CASE
Appellants’ invention relates to providing multimedia
communications in a set-top box (STB). (Spec. 1; Abstract.)2 Claims 1, 11,
and 20 are the independent claims on appeal. Claim 1 is illustrative of
Appellants’ invention and is reproduced below:
1. A set-top box with an operating system layer operable
to support cable network interconnectability and to provide an
application platform comprising:
one or more profiles, each profile including personal
information and personal preferences, one or more of the
personal information and personal preferences used in
association with a social networking application running on a
processor on the set-top box to facilitate one or more two-way
video multimedia communications sessions between the set-top
box and another entity on a network, wherein one or more of
the personal information and personal preferences contain
information used to route the communication session from the
set-top box to the other entity; and
a profile interface operable to allow management of the
one or more profiles, the management including one or more of
creation and editing of the one or more profiles.

(Br. 22.)
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis (US 2005/0283800 A1, December 22, 2005) and
Conness (US 2009/0133069 A1, May 21, 2009). (Ans. 4–8.)

2 Our decision refers to Appellants’ Appeal Brief filed November 18, 2011
(“Br.”); the Examiner’s Answer mailed February 16, 2012 (“Ans.”); Non-
Final Office Action mailed June 16, 2011 (“Non-Final Act.”); and the
original Specification filed March 18, 2008 (“Spec.”).
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ANALYSIS
Issue 1: Did the Examiner err in finding the combination of Ellis and
Conness teaches or suggests the limitations of claim 1, including “one or
more of the personal information and personal preferences contain
information used to route the communication session from the set-top box to
the other entity”?
In rejecting claims 1, 11, and 20,3 the Examiner relies on the
combination of Ellis and Conness. (Ans. 4–6.) In particular, the Examiner
finds Conness discloses “one or more of the personal information and
personal preferences contain information used to route the communication
session from the set-top box to the other entity,” as required by the claims.
(Id. at 6.)
Appellants dispute the Examiner’s finding. Appellants argue
“Conness is not directed toward a set-top box, let alone a set-top box with an
operating system layer operable to support cable network interconnectability
and to provide an application platform.” (Br. 11.)
We disagree with Appellants’ argument. As the Examiner finds,
Conness teaches a set-top box (STB) in an interactive television system.
(Ans. 9 (citing Conness ¶ 84).) For example, Conness discloses “[u]ser
television equipment 2102 may include a set-top box . . . .” (Conness ¶ 84
(emphasis added).) Moreover, as the cited paragraph indicates, the user
television equipment (e.g., a set-top box), may be “coupled to
communication network 2118,” which may “include. . . [a] cable network

3 Appellants argue independent claims 1, 11, and 20 as a group. (Br. 8.) We
generally agree the disputed limitations are similar for purposes of
Appellants’ arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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. . . .” (Conness ¶ 88.) Accordingly, we agree Conness teaches a set-top box
in a cable network. We note Appellants do not respond to these findings.
Appellants further argue neither Conness nor Ellis “teaches that one or
more of the personal information and personal preferences contain
information used to route the communication session from the set-top box to
the other entity as generally recited in each independent claim.” (Br. 12.)
We disagree with this argument as well. In responding to Appellants,
the Examiner finds:
Conness teaches that a user’s profile indicates that a user likes
watching football. The system recommends another user who
also likes football. This allows the user to be introduced to new
people, resulting in a communication session between users.
Further, referring to the bottom right of Fig. 10, the user
communicates with another user in a communication session.
Therefore, the system in Conness enables users to communicate
with one another based on usage data (genre of programming
watched by a user).

(Ans. 9 (citing Conness ¶ 45 & Fig. 10).) We agree with this finding and,
therefore, the conclusion that Conness teaches user preferences containing
“information used to route the communication session from the set-top box
to the other entity,” as required by the claim. Appellants do not respond to
these findings.
As a result, we are not persuaded the teachings of Ellis and Conness
fail to teach or suggest the disputed limitations of claim 1.

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Issue 2: Did the Examiner fail to show Ellis and Conness are
properly combined?
In finding claims 1, 11, and 20 unpatentable over Ellis and Conness,
the Examiner finds it would have been obvious to modify Ellis to include
Conness’s disclosure of personal information used to route a communication
session from a set-top box to another entity, “for the advantage of keeping a
user engaged in the applications provided by the set-top box.” (Ans. 6.)
Appellants dispute this conclusion. According to Appellants, “[t]he
Examiner must provide a motivation to combine all the references together.
. . . A motive is ‘something (as a need or desire) that causes a person to
act.’” (Br. 13 (dictionary citations omitted).) Appellants contend the
Examiner’s rationale for combining the references fails to provide such a
motivation, “impetus, need, or desire,” and, therefore, the stated rationale is
based on impermissible hindsight. Id.
We are not persuaded by this argument, which relies on an
unnecessarily “formalistic conception of the words teaching, suggestion and
motivation . . . .” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007).
Rather, rejections based on obviousness can be supported by “some
articulated reasoning with some rational underpinning” to combine the
elements in the manner claimed. Id. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
Here, the Examiner provided articulated reasoning for combining the
teachings of Ellis and Conness: for the advantage of keeping a user engaged
in the applications provided by the set-top box. (Ans. 6.) We agree this
rationale is reasonable and supported by the cited teachings of Ellis and
Conness discussed supra. Moreover, Appellants do not rebut the substance
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of the Examiner’s finding and conclusion, but attack only its sufficiency
under a legal standard that is inconsistent with precedent. Accordingly, we
find the Examiner has articulated reasoning with some rational underpinning
to support combining Ellis and Conness.
Because we are not persuaded Ellis and Conness are improperly
combined or fail to teach the disputed limitations, we sustain the Examiner’s
rejection of claims 1, 11, and 20. With respect to dependent claims 3 and
13, Appellants make no additional patentability arguments. Accordingly we
sustain the rejection of claims 3 and 13 as well.
With respect to dependent claims 2, 4–10, 12, and 14–19, Appellants
deny the Examiner’s findings that Ellis and/or Conness teach or suggest the
additional limitations. (Br. 14–21.) However, we agree with the Examiner’s
detailed findings, which are supported by specific cites to the evidence of
record. (See Ans. 6–8, 12–14.) Accordingly, we sustain the rejections of
claims 2, 4–10, 12, and 14–19 as well.

DECISION
We affirm the Examiner’s final rejection of claims 1–20.
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

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