Ex Parte Kalidindi et al

Patent Trial and Appeal Board

Aug 10, 2016

13196803 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/196,803 08/02/2011
25537 7590 08/12/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Srirama KALIDINDI
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.
20110322 4513
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIRAMA KALIDINDI, SANJA Y AHUJA,
JOHN TRIMPER, and LAXMI A. ARTE
Appeal2014-005947
Application 13/196,803 1
Technology Center 3600
Before MICHAEL C. ASTORINO, BRADLEY B. BAY AT, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's
decision to reject claims 1-3, 10, 13-15, 18, 19, and 24. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to the Appellants, Verizon Communications Inc. is the real party in
interest. Appeal Brief filed January 8, 2014, hereafter "App. Br.," 3.
Appeal2014-005947
Application 13/196,803
BACKGROUND
The invention relates to a virtual video assets ("virtual assets") that can be
created, managed, stored, and/or provisioned by a video provisioning system
("VPS"). Specification, hereafter "Spec.," i-f 11. The invention enables different
types of user devices to access and/or select virtual assets. Id. i-f 12.
Representative independent claims 1, 10, and 18 are reproduced from pages
28, 31-32, and 35 of the Claims Appendix of the Appeal Brief (Claims App'x) as
follows, with emphasis added to relevant claim limitations.
1. A method performed by a server device and associated with a video
provisioning system (VPS) comprising:
receiving, by the server device, an indication that a video asset will
become available for distribution, to a set top box and another user device,
at a future time, wherein the other user device is a different type of user
device than the set top box;
retrieving, from a content provider, metadata associated with the
video asset, wherein the metadata includes at least an identifier associated
with the video asset; and
publishing, by the server device as a virtual asset, a portion of the
metadata that includes the identifier, associated with the video asset, to a
first store front associated with the VPS and a second store front associated
with the VPS,
wherein the first store front is an interactive media guide via
which the set top box can access or obtain the virtual asset, and
wherein the second store front is a website or a user interface
via which the other user device can access or obtain the virtual asset.
10. A server device comprising:
a memory to store one or more virtual assets, the one or more virtual
assets corresponding to one or more video assets that are not available for
distribution, where each of the one or more virtual assets includes metadata
associated with a respective different video asset of the one or more video
assets; and
one or more processors to:
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Application 13/196,803
receive, from a user device among a plurality of different types
of user devices associated with a user, a request for a virtual asset,
wherein the request includes an identifier associated with one of the
one or more video assets,
identify a video asset, of the one or more video assets, that
corresponds to the identifier associated with the one of the one or
more video assets,
retrieve, from the memory, metadata associated with the
identified video asset, process the retrieved metadata and provide the
metadata as a virtual asset, transmit the virtual asset to the user device
in response to the request, and provide access to the virtual asset to
the plurality of different types of user devices associated with the user.
18. A system comprising:
one or more communication devices; and
one or more devices comprising one or more processors to:
receive, from a content provider, metadata associated with a video
asset, where the metadata includes information associated with the video
asset and identifies a future time when the video asset will be available for
distribution to a user device and at least another user device of a plurality of
different types of user devices,
process the metadata to create a virtual asset, associated with the
video asset, where the processed metadata includes at least an identifier
associated with the video asset,
publish the virtual asset to a store front that allows the user device and
the at least another device to select the virtual asset to obtain the video asset,
transmit a notification oUJ the video asset, to the user device and at
the future time, based on the selection of the virtual asset by the user device,
where the notification indicates that the video asset is available to be
downloaded, and
provide access to the virtual asset to the at least another user device
of one of the plurality of different types of user devices associated with a
user.
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Application 13/196,803
The Examiner rejects claims 1-3, 10, 13-15, 18, 19, and 24 under 35 U.S.C.
§ 102(b) as anticipated by Krieger. 2,3 Answer, hereafter "Ans." 4--24, mailed
February 19, 2014.
DISCUSSION
The Appellants argue independent claims 1, 10, and 18 on similar issues.
App. Br. 10-15, 19-22. Because claim 1 is a method claim and claims 10 and 18
are system claims, we will address these claim types separately.
Claim 1
For independent claim 1, the Appellants argue that Krieger fails to disclose
that a video asset will become available for distribution to a set top box and
another user device at a future time, where the "user device" is a different type of
user device other than a set top box. App. Br. 11-12. The Appellants also contend
that Krieger fails to describe "publishing" to a "second storefront" that "is a
website or a user interface via which the other user device can access." Id. at 13.
The Examiner rejects claims 1, 10, and 18 on similar grounds, finding that
the recitation of claim 1 "to a set top box and another user device . . . [where] the
other user device is a different type of user device than the set top box" is an
intended use and is not entitled to patentable weight. Ans. 7, 18, 23-24; see also
Final Act. 7, 11. The Examiner additionally finds that Krieger demonstrates that it
is capable of performing the intended use. Id. at 18-19 (citing Krieger i-fi-1 77, 78).
The Examiner finds that the internet terminal (i-f 78), as well as any of the devices
2 US Publication 2008/0276278 Al, published November 6, 2008.
3 The Examiner withdrew the rejections of claims 1-9 and 18-24 under 35 U.S.C.
§ 101; claims 10-24 under 35 U.S.C. § 112, second paragraph; claims 5-7, 11, 12,
20, and 21under35 U.S.C. § 102(b); and claims 4, 8, 9, 16, 17, 22, and 23 under
35 U.S.C. § 103(a) made in the Final Rejection (hereafter "Final Act.," 7-16,
mailed August 8, 2013). See Ans. 4.
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listed (if 77), of Krieger would constitute "another device" of the claims. Id. at 20.
The Examiner finds that a display device disclosed by Krieger can meet the claim.
Id. at 21-22 (citing Krieger iii! 30, 70, 78). The Examiner also finds that "[t]he
claim moreover does not require that a user be accessing the content from multiple
devices simultaneously ... only that the device 'can access or obtain the virtual
asset."' Id. at 21.
After considering each of the Appellants' contentions and the evidence
presented in this Appeal, we are persuaded that the Appellants identify reversible
error in the rejection of claim 1, and we therefore reverse the anticipation rejection
of this claim and its dependent claims.
A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference. Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F .2d 628, 631
(Fed. Cir. 1987). Additionally, in an anticipation rejection, "it is not enough that
the prior art reference ... includes multiple, distinct teachings that [an ordinary]
artisan might somehow combine to achieve the claimed invention." Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citation omitted).
First, as to the issue of whether "to a set top box and another user device ...
where the other user device is a different type of user device than the set top box"
is merely intended use language lacking in patentable weight for claim 1, we
appreciate the point that actual future distribution is not per se claimed in this step.
However, our reading of the method claim is that it requires the capability of
providing an "indication that a video asset will become available for distribution,"
and that indication of future distribution is for both "a set top box and another user
device," and the limitation, therefore, has to be afforded patentable weight.
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Turning to the issue of anticipation of claim 1 by Krieger, we review the use
of the term "user device." This term is described several times in the
Specification, for example, such as:
[C]omputer devices (e.g., desktop computers, laptop computers, and
tablet computers), wireless handheld devices (e.g., mobile phones,
smart phones, personal digital assistants (PD As), and tablet
computers), gaming devices, and/or set top boxes.
Spec. ,-r 12.
User device 110 may include a computation or communication device
that is capable of communicating with service provider network 140.
For example, user device 110 may include a radiotelephone, a
personal communications system (PCS) terminal (e.g., that may
combine a cellular radiotelephone with data processing and data
communications capabilities), a personal digital assistant (PDA) (e.g.,
that can include a radiotelephone, a pager, Internet/intranet access,
etc.), a laptop computer, a tablet computer, a set top box, a digital
video recorder (DVR), a personal gaming system, a smart phone, or
another type of computation or communication device.
Id. i-f 16, see also id. i-f 41.
Consistent with the Specification's disclosures, a set-top box is one type of
"user device." In light of the Specification, we are persuaded that the Examiner's
findings that Krieger's "internet terminal" of Krieger can be a "user device" is
reasonable, however, the finding that a "display device" can be a "user device" is
not. This is because a "user device" would have to possess the capability of
communicating with a service provider network, and a display device would not
necessarily have that capability.4
4 We note that Krieger describes a "display unit, such as a television screen,"
which would have limited capabilities and, in contrast, Krieger also describes a
"television or monitor with data processing capabilities" that would conform with
the Specification's disclosures of a "user device." See Krieger i-f 77 (emphasis
added).
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Claim 1 requires a step where an indication is received of the availability of
future distribution to a "set top box and another user device." In a review of the
embodiments of Krieger that the Examiner relies upon, we fail to find an
embodiment that describes a use with receipt of an indication for future
distribution to a set top box and another "user device," as the claimed step
requires. As such, we do not agree with the Examiner's finding that Krieger
discloses the "receiving" step of claim 1, and we cannot sustain its rejection as well
the claims that depend from it, claims 2 and 3.
Claims 10 and 18
Independent claims 10 and 18 are device and system (apparatus) claims,
respectively. "[A]pparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir.
1990). Functional recitations in an apparatus claim are given weight in that the
corresponding prior art structures must possess the capability of performing the
recited function. See Intel Corp. v. U.S. Int'! Trade Comm 'n, 946 F.2d 821, 832
(Fed. Cir. 1991), see also In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
The Appellants argue that independent claim 10 requires a processor to
receive a request from a user device among a plurality of different types of user
devices associated with a user, and provide access of the virtual asset to the
plurality of different types of user devices-and Krieger does not disclose this
limitation. App. Br. 19-20. The Appellants contend that independent claim 18
recites limitations directed to at least two types of user devices, and allege that
Krieger is deficient for same reasons argued for claim 1. Id. at 21.
As to claim 10, the limitation in dispute requires the capability to "transmit
the virtual asset to the user device in response to the request, and provide access to
the virtual asset to the plurality of different types of user devices associated with
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the user." Here, similar to claim 1, we fail to find in Krieger descriptions of
structures capable of performing this limitation because the claim requires that
access has to be provided to more than one device at a time. Therefore, we do not
sustain the rejection of claim 10, as well as the claims that depend from it, claims
13-15.
Claim 18 requires "identify[ing] a future time when the video asset will be
available for distribution to a user device and at least another user device of a
plurality of different types of user devices," "transmit[ ting] a notification o[f] the
video asset, to the user device," and at a future time "provid[ing] access to the
virtual asset to the at least another user device of one of the plurality of different
types of user devices." Krieger describes structures capable of performing the
claimed functions in light of how we view the term "user device" above, and the
described systems of Krieger. Claim 18 does not require simultaneous access of
content by different user devices, or more than one user device in use at any one
time to provide the claimed functionality. Krieger's system is capable of
identifying and transmitting times when video assets would be available for user
devices, a user terminal as described in Krieger is capable of receiving a
notification of the video asset, and another device, such as Krieger's set-top box
has the ability to be provided access to the virtual asset.
With this, we sustain the rejection of claim 18, and claims 19 and 24, which
depend from it.
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Application 13/196,803
SUMMARY
The rejection of claims 1-3, 10, and 13-15 under 35 U.S.C. § 102(b) is
reversed.
The rejection of claims 18, 19, and 24 under 35 U.S.C. § 102(b) 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)(l )(iv).
AFFIRMED-IN-PART
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