Ex Parte Derrenberger

Patent Trial and Appeal Board

Jun 17, 2013

10171198 (P.T.A.B. Jun. 17, 2013)

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.
10/171,198 06/13/2002 Mike Arthur Derrenberger PU020263 9057
7590 06/18/2013
JOSEPH S. TRIPOLI
THOMSON MULTIMEDIA LICENSING INC.
2 INDEPENDENCE WAY
P.O. BOX 5312
PRINCETON, NJ 08543-5312
EXAMINER
CHOWDHURY, NIGAR
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
06/18/2013 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 MIKE ARTHUR DERRENBERGER
____________________

Appeal 2011-003040
Application 10/171,198
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, LYNNE E. PETTIGREW, and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003040
Application 10/171,198

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-10, and 12-16. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method for controlling a digital record/playback apparatus,
comprising the steps of:
receiving a user request to record a selected program signal or
to playback a program signal stored on a data storage device;
providing the user with an opportunity to enter a user selection
indicative of a quantity of advertisements to be observed in exchange
for a given recording quality level or playback quality level;
receiving the user selection indicating the quantity of
advertisements to be observed; and
adjusting operation of the digital record/playback apparatus to
set the recording quality level or the playback quality level of the
digital record/playback apparatus in response to the user selection.

Rejections on Appeal
1. The Examiner rejected claims 1, 3, 6-8, 10, 13, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Blahut (US
5,532,735), Zigmond (US 6,698,020 B1), and Jahanghir (US 5,940,072).
2. The Examiner rejected claims 4-5, 12, and 14 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Blahut,
Zigmond, Jahanghir, and Aotake (US 6,411,771 B1).
3. The Examiner rejected claims 9 and 16 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Blahut, Zigmond,
Jahanghir, and Kuroda (US 6,311,011 B1).
Appeal 2011-003040
Application 10/171,198

3
Examiner’s Articulated Reasoning
The Examiner states that Jahanghir discloses:
• a quantity of advertisements to be observed in exchange for
a given recoding [sic] quality level or playback quality level
(col. 1 lines 10-16, quantity of data recording in a storage
medium, change the quality of the data).
(Ans. 9).1
Appellant’s Contention
Appellant contends that the Examiner erred in rejecting claims 1,
3-10, and 12-16 under 35 U.S.C. § 103(a) because:
[Examiner’s] cited passage of Jahanghir describes certain
aspects of data compression, but mentions nothing about
enabling a user to select a quantity of advertisements to be
observed in exchange for a given recording quality level or
playback quality level, or adjusting operation of a digital
record/playback apparatus to set the recording quality level or
the playback quality level of the digital record/playback
apparatus in response to the user selection, as claimed.
Jahanghir is not concerned at all with enabling a viewer to
select a particular amount of advertising and controlling the
recording quality in response.
(App. Br. 6)(emphasis omitted).

1 Jahanghir, column 1, lines 10-16:
Data compression may be provided in data processing
systems to reduce the time of data transmission in
communication links, or to transmit broad-bandwidth signals
via narrow-bandwidth communication channels. Also, data
compression may be used to increase the quantity of data that
can be stored in a given space, or to decrease the space needed
to store a given quantity of data.
Appeal 2011-003040
Application 10/171,198

4
Issue on Appeal
Did the Examiner err in rejecting claims 1, 3-10, and 12-16 as being
obvious?
ANALYSIS
As to the Appellant’s above contention that we have reproduced
herein, we agree with the Appellant.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1, 3-10, and 12-16 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, claims 1, 3-10, and 12-16 have not been shown to
be unpatentable.

DECISION
The Examiner’s rejections of claims 1, 3-10, and 12-16 are reversed.

REVERSED

msc