Ex Parte DaCosta

Patent Trial and Appeal Board

Jun 21, 2016

11692063 (P.T.A.B. Jun. 21, 2016)

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.
11/692,063 03/27/2007 Behram DaCosta 7114-86808-US 6920
37123 7590 06/21/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
06/21/2016 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 BEHRAM DaCOSTA
____________

Appeal 2015-000730
Application 11/692,063
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
KRISTEN L. DROESCH, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2, 5–16, and 18–22.1 Claims 3, 4, and 17 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Invention
The invention on appeal relates to enhancing the experience
associated with broadcast content. (Spec. 1, ll. 8-9).

1 We note Appellant incorrectly lists cancelled claim 4 as being rejected.
(App. Br. 1).
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Illustrative Claim
1. A method of enhancing broadcast content, comprising:

receiving at a broadcast content receiving device broadcast
content from a broadcast content source over a closed network;

receiving a request to tune m a broadcast program;

tuning in the broadcast program from the broadcast content,
where the broadcast content receiving device is configured to
communicate the broadcast program to a playback device via an
HDMI communication interface, where the playback device is a
television;

extracting, through the television, broadcast program
information about the broadcast program;

generating, through the television, only a single program
identification of the broadcast program based on the broadcast
program information, wherein the generated single program
identification identifies the broadcast program to allow access over a
network to additional content from a plurality of different sources,
where the additional content is associated with the broadcast program
and the generated single program identification;

communicating, from the television, the generated single
program identification to a remote network access device to allow
access over the network to the additional content from the plurality of
different sources, wherein the communicating the generated single
program identification includes not communicating any portion of the
broadcast program to the remote network access device; and

[L] periodically recommunicating the generated single
program identification.

(Emphasis added regarding the contested limitation, labeled as “L”).
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Rejections
A. Claims 1, 2, 5–10, 12, 13, 16, and 18–21 are rejected under 35
U.S.C. § 103(a) over the combined teachings and suggestions of
Waki et al. (US 7,194,758 B1; issued Mar. 20, 2007), in view of
Yuen (US 5,898,919, issued Apr. 27, 1999), and Braun et al. (US
2005/0246747 A1; published Nov. 3, 2005).
B. Claims 11, 15, and 22 are rejected under 35 U.S.C. § 103(a) over
the combined teachings and suggestions of Waki, Yuen, Braun,
and DeWeese et al. (US 2005/0262542 A1; published Nov. 24,
2005).
C. Claim 14 is rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Waki, Yuen, Braun, and Official
Notice.
ANALYSIS
Issue: Under § 103(a), did the Examiner err by finding the cited
combination of Waki, Yuen, and Braun would have taught or suggested
contested limitation L, “periodically recommunicating the generated single
program identification,” within the meaning of representative claim 1? 2
(emphasis added).

2 During prosecution, “the PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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The PTO bears the initial burden of showing a prima facie case. In re
Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). It is only “when a rejection
is so uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection” that the prima facie burden has
not been met and the rejection violates the minimal requirements of 35
U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Here, we observe the Examiner maps contested limitation L to
multiple sections of Waki: “see at least Fig. 1, col. 10, line 35-col. 11, 35,
col. 15, line 14-col. 16, line 34, col. 19, lines 1-50, col. 32, lines 9-27 and
col. 33, lines 32-47” (Final Act. 5). Regarding the multiple mappings, we
note the Board is a reviewing body and not a place of initial examination.
Such multiple mappings paint with a broad brush and generally tend to
obfuscate, rather than clarify the basis for the rejection.
To the extent the Examiner has met the minimal requirements of 35
U.S.C. § 132 to establish a prima facie case, we find column 11, lines 17–32
of Waki provides the most relevant description of program ID information.
After being received by set top box 202,3 the program ID information is sent
to other systems to provide additional “predetermined services to the
viewers”:
The receiving device 202 receives a program in
accordance with an instruction given by the viewer via the
operating device 203/204, and obtains program identification
(ID) information that specifies the program being 20
watched by the viewer, by referring to the broadcasted
program-related information. The receiving device 202 then
sends the obtained program ID information to the operating

3 See Waki, col. 11, ll. 3–6: “The receiving device 202 can be achieved by a
set top box, or the like, which receives a digital broadcast. This device 202 is
connected to a receiving antenna and a TV monitor.” (emphasis added).
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device 203/204 via an infrared (IR) signal . . .
On receiving the information sent by the operating
devices 203-204, the host stations 206-207 analyze the 30
information and provide predetermined services to the viewers.
(Waki, col.11, ll. 17–32).
Appellant contends each of the Examiner’s citations (Final Act. 5)
fails to teach or suggest contested limitation L. (App. Br. 7–9). In
particular, Appellant contends: “[t]he office action “attempts to rely on the
separate communication of completely different identifiers and tries to
equate these different and separate identifiers to the periodically
recommunicating the generated single program identification.” (App. Br.
10). Appellant avers this rationale ignores the antecedent basis set forth in
the claims, because claim 1 “specifically recites that the same ‘generated
single program identification’ be periodically recommunicated” (Id.).
In the “Response to Arguments” (Ans. 5), the Examiner further
explains the basis for the rejection, referring to Waki:
every time the user tunes or selects a channel or a
program, a single program identification is generated an
communicated to the remote device. The recommunicating is
done periodically every time a new single channel or program
is selected.
The claims recite periodically recommunicating the
generated single program identification.” They do not require
that the recommunicating is done for a single program.
(Ans. 5, emphasis added).
However, we agree with Appellant (Reply Br. 2–6) the Examiner’s
claim interpretation ignores the antecedent basis for “the generated single
program identification,” as recited in claim 1. The use of “the” prior to
“generated single program identification” indicates a specific reference to
the previously generated “only a single program identification.” (Claim 1).
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Moreover, we conclude the claim language “generating, through the
television, only a single program identification” evinces a clear intent to
limit “the generated single program identification” to only a single program
identification for each corresponding broadcast program, under a broad but
reasonable interpretation. (Claim 1). 4
Because Waki describes “obtain[ing] program identification (ID)
information that specifies the program being watched by the viewer” (col.
11, ll. 18–20), we find every time a new broadcast program is selected by the
viewer, there is a different corresponding program ID for the newly selected
broadcast program (id.), which does not teach or suggest “periodically
recommunicating the generated single program identification” which must
be the same previously generated “only a single program identification” as
required by antecedent basis in Appellant’s claim 1.
On this record, the Examiner has not shown the additionally cited
Yuen and Braun references overcome the aforementioned deficiency in
Waki, under rejection A. We therefore find a preponderance of the
evidence supports Appellant’s arguments there is no teaching in the cited
references of “periodically recommunicating the generated single program
identification,” as recited in claim 1 (App. Br. 7–10).

4 Cf. with SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348,
1360 (Fed. Cir. 2012) (citation omitted): “[T]his court has repeatedly
emphasized that an indefinite article “a” or “an” in patent parlance carries
the meaning of “one or more” in open-ended claims containing the
transitional phrase “comprising.” That “a” or “an” can mean “one or more”
is best described as a rule, rather than merely as a presumption or even a
convention. The exceptions to this rule are extremely limited: a patentee
must “evince[ ] a clear intent” to limit “a” or “an” to “one.” (emphasis
added).

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Remaining independent claims 9 and 19 each recite contested
limitation L in similar commensurate form. Therefore, for the
aforementioned reasons, we reverse the Examiner’s rejection A of
independent claims 1, 9, and 19 over the combination of Waki, Yuen, and
Braun. Because we have reversed rejection A of each independent claim on
appeal, we also reverse rejection A of each associated dependent claim.

Rejections B and C under § 103(a)
Regarding the remaining dependent claims rejected under § 103(a),
the Examiner has not shown how the additionally cited secondary references
overcome the aforementioned deficiencies regarding the base combination
of Waki, Yuen, and Braun, as relied upon in rejection A.
Conclusion
For essentially the same reasons argued by Appellant in the Briefs,
and based on a preponderance of the evidence, we are persuaded the
Examiner erred.

DECISION
We reverse the Examiner’s rejections of claims 1, 2, 5–16, and 18–22
under § 103.
REVERSED