Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Mar 21, 2012

10672864 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT
____________________

Appeal 2009-010896
Application 10/672,8641
Technology Center 2400
____________________

Before THU A. DANG, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under authority of 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-68. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Application filed September 26, 2003 claiming benefit of U.S. Provisional
App. No. 60/432,472 filed December 11, 2002. The real party in interest is
Broadcom Corp. (App. Br. 2.)
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Appellants’ Invention
The invention at issue on appeal concerns a system that provides
remote management of options related to media consumption. (Spec. ¶¶
[01]-[13], 94] (Abstract).)2
Representative Claims
Independent claims 1 and 27, reproduced below with the key disputed
limitations emphasized, further illustrate the invention:
1. A system supporting the remote management of
options related to media consumption, the system comprising:
a first television display in a first home;
the first television display having an associated first set
of options governing the consumption of media;
a first storage, in the first home, that stores the media;
the first storage supporting consumption of the media by
the first television display, and having a first network address
with respect to a first user at the first home;
a second television display in a second home;
the second television display having an associated second
set of options governing the consumption of media;
a second storage, in the second home, that stores the
media;
the second storage supporting consumption of the media
by the second television display, and having a second network

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed November 21, 2008; and Reply Brief (“Reply Br.”) filed March 11,
2009. We also refer to the Examiner’s Answer (“Ans.”) mailed February 11,
2009.
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address with respect to a second user at the second home,
wherein the second user is known to the first user; and
server software that maintains a user defined association
of the first and second network addresses, receives, via a
communication network, a request that identifies one or more
of the associated first or second network addresses, a user
identifier, and authorization information, and responds by
identifying the other of the associated first or second network
addresses, to support management of one of the associated first
or second sets of options governing the consumption of media.

27. A system supporting the remote management of
options related to media consumption, the system comprising:
set top box circuitry supporting consumption of media
via a communication network, the set top box circuitry having
an associated set of options governing the consumption of
media; and
server software that receives from a telephone voice
response system a request, and responds by enabling
management of the associated set of options governing the
consumption of media.
Rejections on Appeal
1. The Examiner rejects claims 1-7, 9, 12-19, 21, 24, 37-42, 44-
51, 53, 56-63, 65, and 68 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of U.S. Patent No. 7,065,778 B1 issued June 20, 2006
(filed May 25, 2001) (“Lu”) in view of U.S. Patent No. 7,055,104 B1 issued
May 30, 2006 (filed Mar. 29, 2002) (“Billmaier”).
2. The Examiner rejects claims 8, 20, 43, 52, and 64 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Lu,
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Billmaier, and U.S. Patent No. 7,084,994 B1 issued Aug. 1, 2006 (filed July
20, 1999) (“Koppich”).
3. The Examiner rejects claims 10, 11, 22, 23, 25-32, 34-36, 54,
55, 66, and 67 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Lu, Billmaier, and U.S. Patent No. 7,170,546 B1 issued Jan.
30, 2007 (filed Sep. 13, 1999) (“Pocock”).
4. The Examiner rejects claim 33 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Lu, Billmaier, Pocock, and
Koppich.3

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in concluding that Lu in combination
with Billmaier would have collectively taught or fairly suggested
“maintain[ing] a user defined association of the first and second network
addresses . . . and respond[ing] by identifying the other of the associated first
or second network addresses” as recited in claim 1?
2. Does the Examiner err in concluding that the combination of
Lu, Billmaier, and Pocock would have collectively taught or fairly suggested

3 The Examiner mistakenly omitted Billmaier from the rejection; however,
claim 33 depends from claim 32, which is rejected over Lu, Billmaier, and
Pocock. Appellants do not object to the rejection. We therefore deem the
error to be harmless and amend the statement of rejection to include
Billmaier.
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“receiv[ing] from a telephone voice response system a request, and
respond[ing] by enabling management of the associated set of options
governing the consumption of media” as recited in claim 27?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Appellants argue independent claims 1, 13, 37, 45, and 57 together
with dependent claims 2-7, 9, 12, 14-19, 21, 24, 38-42, 44, 46-51, 53, 56,
58-63, 65, and 68 as a group based on claim 1. (App. Br. 11-17.)
Appellants also argue independent claims 25 and 27 together with dependent
claims 10 and 22 as a group. (Id. at 17-19.) Appellants do not separately
argue dependent claims 8, 20, 43, 52, and 64. (Id. at 17.) Nor do Appellants
provide separate arguments with respect to dependent claims 11, 23, 26, 28-
36, 54, 55, 66, and 67. (Id. at 17-20.) Therefore, we select claims 1 and 27
as representative of Appellants’ arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
We consider only those arguments that Appellants have actually raised in
their Briefs. Arguments that Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants have the opportunity on appeal to the BPAI to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of the obviousness rejections
in the Examiner’s Answer with respect to each of the claims (Ans. 3-20, 22-
25) and, in particular, claim 1 (Ans. 4-7, 35-36) and claim 27 (Ans. 32, 36-
37; see also 28-31 (claims 10 and 25)). Therefore, we look to the
Appellants’ Briefs to show error in the proffered findings and conclusions.
See Kahn, 441 F.3d at 985-86.
Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
obvious over the combination of Lu and Billmaier. (Ans. 4-7, 35-36.)
Specifically, the Examiner submits that the combination teaches or suggests
each of the recited claim limitations (Ans. 4-7), and that Lu teaches creating
and maintaining an association between two PVRs each having a network
address in response to a user request (Ans. 5-6, 35 (citing Lu, col. 6, ll. 54-
58; col. 9, ll. 8-10, 29-44; col. 10, ll. 10-15; Fig. 3)) – i.e., maintaining a user
defined association of the first and second network addresses. The
Examiner also submits that Lu teaches or suggests a first PVR sending a
request to a server (EPG server) to locate a second PVR, or vice versa,
where each PVR has an associated IP address. (Ans. 6, 36 (citing Lu, col. 6,
ll. 39-58; col. 9, ll. 8-10, 29-44; col. 10, ll. 10-15).)
Appellants contend that Lu does not teach maintaining a user defined
association of network addresses because “Lu merely discloses that a user of
a PVR requests delivery of a specific television show, at which point a
server computer arbitrarily locates another PVR” (App. Br. 13). (App. Br.
13-16; Reply Br. 2-3.) Appellants also contend that Lu does not teach
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responding to a request by identifying the other network address for these
same reasons. (App. Br. 13-16.)
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claim 1 is unpatentable over the combination of Lu and
Billmaier. Accordingly, we sustain the Examiner’s rejection of claim 1 for
the reasons set forth in the Answer, which we incorporate herein by
reference. (Ans. 3-7, 35-36.)
As explained by the Examiner, Lu describes: sending a user initiated
request by a first PVR (personalized video recorder) to a EPG (electronic
programming guide) server to record a locally unavailable program; the EPG
locates a second PVR that can record the program and sets (programs) the
second PVR to record the program; and the second PVR sends the recorded
program to the first PVR. (Ans. 5-6, 35; see Lu, col. 2, ll. 3-28; col. 6, ll.
30-61; col. 9, ll. 8-44; Abstract; Figs. 3, 4, & 5.) Therefore, Lu describes
creating (and maintaining) a user defined association among the PVRs
(through the EPG) – “[t]he user of personalized video recorder 200 utilizes
the EPG to request delivery of a specific television show” (Lu, col. 6, ll. 43-
45). Further, Lu describes programming the second PVR with the network
(IP) address of the first PVR (Ans. 4-6, 36; see Lu, col. 10, ll. 10-15) and
that the EPG and PVRs are connected via the Internet (see Lu, col. 6, l. 30 to
col. 7, l. 8; col. 9, ll. 8-44), which would at least suggest that each of the
PVRs has an associated network (IP) address. Thus, we conclude that Lu
would have taught or suggested maintaining a user defined association
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between two network addresses (two network devices (PVRs) each having a
network address).
We find Appellants’ contrary arguments unpersuasive of error in the
Examiner’s rejection for the reasons explained above. It follows that
Appellants do not persuade us of error in the Examiner’s obviousness
rejection of representative claim 1. Appellants also do not persuade us of
error in the Examiner’s obviousness rejection of independent claims 13, 37,
45, and 57 or dependent claims 2-9, 12, 14-21, 24, 38-44, 46-53, 56, 58-65,
and 68 not separately argued with particularity (supra). Accordingly, we
affirm the Examiner’s obviousness rejection of claims 1-9, 12-21, 24, 37-53,
56-65, and 68.
Claim 27
The Examiner rejects Appellants’ dependent claim 27 as being
obvious over the combination of Lu, Billmaier, and Pocock. (Ans. 30-32,
36-37.) Specifically, the Examiner submits that Lu teaches the features of
claim 1 (supra) and Pocock describes a telephone voice response system.
(Ans. 28-29, 36-37 (citing Pocock, col. 6, ll. 19-37 (touch tones); col. 12, ll.
26-31 (voice prompts)).)
Appellants contend that “Pocock does not describe, teach, or suggest
‘server software that receives from a] telephone voice response system a
request, and responds by enabling the management of the associated set
of options governing the consumption of media’” (claim 27) because
“Pocock merely describes that instructions may be transmitted over a
telephone network.” (App. Br. 18; see App. Br. 17, 19; Reply Br. 3-4.)
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
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record supports the Examiner’s conclusion that the subject matter of
Appellants’ claim 27 is unpatentable over the combination of Lu, Billmaier,
and Pocock. Accordingly, we sustain the Examiner’s rejection of claim 27
for the reasons set forth in the Answer, which we incorporate herein by
reference. (Ans. 30-32, 36-37.)
We note that Pocock explicitly describes sending instructions over a
telephone system – “the instructions are generated within a user terminal 14
located at the viewer’s home, and transmitted over the telephone network as
DTMF or modem tones” (Pocock, col. 6, ll. 31-34) – and that the system is
capable of responding to voice commands (prompts) – “users could utilize a
telephone to access the DAS system or control computer and through the
input of DTMF tones or voice prompts, recognizable to the system, create or
make changes to a[n] interactive image carousel” (Pocock, col. 12, ll. 27-31
(emphasis added)).
We also note that Appellants improperly attempt to attack the
references individually, instead of addressing the combination of references.
(See App. Br. 17-19.) See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (noting that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). For this
reason and all the reasons explained above, we find Appellants’ contrary
arguments unpersuasive of error in the Examiner’s rejection. It follows that
Appellants do not persuade us of error in the Examiner’s obviousness
rejection of representative claim 27. Appellants also do not persuade us of
error in the Examiner’s obviousness rejection of independent claim 25 and
dependent claims 10, 11, 22, 23, 26-36, 54, 55, 66, and 67 not separately
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argued with particularity (supra). Accordingly, we affirm the Examiner’s
obviousness rejection of claims 10, 11, 22, 23, 25-36, 54, 55, 66, and 67.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-68 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-68 under 35 U.S.C.
§ 103(a).

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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