Ex Parte Chaudhry

Patent Trial and Appeal Board

Mar 10, 2015

12430761 (P.T.A.B. Mar. 10, 2015)

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.
12/430,761 04/27/2009 KAPIL CHAUDHRY PD-208023 3835
20991 7590 03/10/2015
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
PARK, GRACE A
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
03/10/2015 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 KAPIL CHAUDHRY
____________

Appeal 2012-010692
Application 12/430,761
1

Technology Center 2100
____________

Before DENISE M. POTHIER, BRETT C. MARTIN, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–41. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1
The real party in interest is The DIRECTV Group, Inc.
Appeal 2012-010692
Application 12/430,761

2
STATEMENT OF THE CASE
Appellant’s invention is directed to communication systems having a
primary service provider and a partner service provider, and more
particularly, to a method and system for securely communicating searching
content at a primary service provider through a partner service. See Spec.
¶ 2.
Claim 1 is illustrative and is reproduced below:
1. A method comprising:
generating a search request for search data at a user
device having at least one search field;
communicating the search request to a partner service
provider;
communicating the search request from the partner
service provider to a primary service provider;
generating search results data at the primary service
provider limited by the at least one search field;
communicating search results data to the user device; and
displaying the search results on a display device
associated with the user device.

THE REJECTION
The Examiner rejected claims 1–41 under 35 U.S.C. § 103(a) as
unpatentable over Romano (US 2007/0107019 A1; May 10, 2007) and
Beetcher (US 2008/0307463 A1; Dec. 11, 2008). Ans. 5–14.

CLAIM CONSTRUCTION - 35 U.S.C. § 112, ¶ 6
The Examiner here finds that the limitations “a partner service
provider in communication with the user device” and “a primary service
provider in communication with the partner service provider” in claim 26
should be interpreted under 35 U.S.C. § 112, ¶ 6. According to the
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Examiner, both “a partner service provider” and “a primary service
provider” are non-structural terms, each coupled with the functional
language “in communication with.” Ans. 4–5.
As Appellant points out though, there is a rebuttable presumption that
35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph does not
apply when a claim limitation does not use the term “‘means’ or ‘step.’”
See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1310 (Fed. Cir. 2005) (en
banc); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir.
2002); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703–04
(Fed. Cir. 1998). This presumption may be overcome if the claim limitation
is shown to use a non-structural term that is “a nonce word or a verbal
construct that is not recognized as the name of structure” but is merely a
substitute for the term “means” associated with functional language.
Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed.
Cir. 2004).
We agree with the Appellant that the presumption is not overcome
here. Namely, we are not persuaded that “a partner service provider” and “a
primary service provider” are nonce words merely acting as placeholders for
the terms “means.” Moreover, we agree with Appellant that the
specification provides a description sufficient to inform one of ordinary skill
in the art that the disputed terms denote structure. See App. Br. 8–11. For
example, Appellant reproduces Figure 2 and discuss paragraph 52 of the
disclosure, demonstrating the partner service provider and the primary
service provider include structural components. App. Br. 9. Therefore, we
agree with the Appellant that the Examiner erred in construing the disputed
limitations of claim 26 under 35 U.S.C. § 112, ¶ 6.
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THE OBVIOUSNESS REJECTION OVER ROMANO AND BEETCHER
The Examiner here finds that Romano teaches each limitation of
claim 1, except for communicating the search request from the partner
service provider to a primary service provider and generating the search
results data at the primary service provider. Ans. 6–7. The Examiner,
however, relies on Beetcher for these features. Ans. 7. Additionally, the
Examiner alternatively finds that Romano “implicitly discloses
communicating the search request from the partner service provider to a
primary service provider” and that “Beetcher is merely used to provide
explicit disclosure of communicating the search request from the partner
service provider to a primary service provider.” Ans. 17 (underlining in
original).
Appellant, on the other hand, contends that Romano alone or in
combination with Beetcher fails to teach the claimed three-way
communication, from user device to a partner service provider and from the
partner service provider to a primary service provider. App. Br. 4–6.
According to Appellant, Romano only teaches communicating a user request
to the central management system and that Beetcher has the same
shortcomings. App. Br. 5–6. With respect to the Examiner’s finding that
Romano implicitly teaches the communicating the search request from the
partner service provider to a primary service provider, Appellant maintains
that Romano does not communicate search requests to the remote content
server but instead performs catalogue aggregation that obviates the need to
send the search request from the set top box to a remote content provider.
Reply Br. 3.

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ISSUE
Did the Examiner err in finding that Romano and Beetcher together
teach generating a search request for search data at a user device;
communicating the search request to a partner service provider; and
communicating the search request from the partner service provider to a
primary service provider, as recited in claim 1?

ANALYSIS
Claims 1–41
Based on the record before us, we find that the Examiner did not err in
rejecting claim 1 as obvious in view of Romano and Beetcher.
Appellant contends that the cited combination fails to teach generating
a search request for search data at a user device; communicating the search
request to a partner service provider; and communicating the search request
from the partner service provider to a primary service provider. App. Br. 5–
6. Namely, Romano fails to teach the claimed three-way communication
because Romano fails to communicate the search request from the partner
service provider to the primary service provider. See App. Br. 5. Further,
Appellant asserts that Beetcher fails to cure the deficiency of Romano
because Beetcher’s processing system (that is located in a set top box or user
device) communicates directly with an external entity. App. Br. 5–6. As
such, Beetcher also lacks the claimed three-way communication and
particularly lacks communicating the search request from the partner service
provider to the primary service provider. Id.
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The Examiner finds that Romano discloses three-way communication
between a set top box, a central management system and a remote content
provider. Ans. 15–16. Specifically,
A user specifies a catalog for viewing and/or selects desired
content via a user interface of set top box 124; set top box 124
sends a corresponding request to central management system
102; and central management system 102 communicates with a
remote content provider (e.g., performs various checks,
transmits a secure voucher, etc.) in order to provide the user
with the catalog and/or selected content.

Ans. 15–16 (citing Romano ¶¶ 30 and 31).
Moreover, according to the Examiner, Romano’s teaching that the
central management system communicates with the remote content provider
in order to provide the user with the catalog and/or selected content implies
that the request for the catalog and/or selected content is communicated from
central management system to the remote content provider. Ans. 15–16.
Together with the search features taught in Romano’s paragraph 124,
Romano then at least implicitly teaches communication of the search request
from the partner service provider to the primary service provider. See id.
In response, Appellant argues that the Examiner’s finding of implicit
teaching is incorrect because Romano teaches that the central management
system performs catalog aggregation. This “[c]atalog aggregation[,
according to Appellant,] obviates the need to send the request received from
the set top box 124 to a remote content provider.” Reply Br. 3.
We disagree. Romano teaches that the central management system’s
catalogue aggregation is merely to present the received information in the
same format, regardless of source. See Romano ¶ 30 (“[T]he software of the
central management system 102 performs catalog aggregation to present a
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common catalog presentation on the user interface of available content based
on a type of content independent of the source of that type of content.”).
Further, paragraph 30 of Romano explains that the central management
system receives a request from the set top box to view a catalog of available
service and available content and that the content provider sends the
requested catalog. As such, we are not persuaded that the Examiner erred by
finding that Romano implicitly teaches or suggests the claimed three-way
communication of the search request. See Ans. 15–16; see also Romano ¶
125 (discussing Romano’s search function).
We find Appellant’s remaining arguments unconvincing. For
example, Appellant provides conclusory statements that Romano’s principle
operation of catalog aggregation would be modified by the cited
combination. Reply Br. 4. As the Examiner identifies, the rejection relies
on Beetcher merely for providing a search request to a content provider and
not for any other modification to Romano. Ans. 16–17.
For independent claim 26, Appellant refers to the arguments presented
for claim 1. App. Br. 8. Additionally, Appellant does not argue claims 2-25
and 27-41 separately. App. Br. 7-8. We thus are not persuaded of error for
claims 2-41 for the reasons discussed previously.
Therefore, we agree with the Examiner that the Romano and Beetcher
together render obvious claims 1–41. Accordingly, we sustain the rejection.

CONCLUSION
The Examiner did not err in rejecting claims 1–41.

ORDER
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The Examiner’s decision rejecting claims 1–41 is affirmed.

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
kis