Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Sep 6, 2012

10675358 (B.P.A.I. Sep. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT
____________

Appeal 2010-004501
Application 10/675,358
Technology Center 2400
____________

Before JOSEPH L. DIXON, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-38 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claimed invention allows a “group of users to be made aware of
and engage in an interactive group media experience in a media exchange
network” (Spec. ¶ 31]). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of communicating activity information
to support user interaction in a communication network, the
method comprising:

accepting from a first user information identifying a
second user;

receiving from the first user at least one user-selected
characteristic associated with media;

receiving a media request from the first user via a
communication network, wherein the media request relates to
media to be sent directly via the communication network from
the second user to the first user;

processing the media request from the first user via the
communication network, the requested media having a pre-
defined set of characteristics;

notifying the second user, via the communication
network, of the consumption of the requested media by the first
user, if the pre-defined set of characteristics for the requested
media matches the at least one user-selected characteristic; and

refraining from notifying the second user, via the
communication network, of the consumption of the requested
media by the first user, if the pre-defined set of characteristics
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for the requested media does not match the at least one user-
selected characteristic.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ellis

Finseth

Lu
US 6,774,926 B1

US 6,813,775 B1

US 7,065,778 B1
Aug. 10, 2004
(filed Mar. 3, 2000)

Nov. 2, 2004
(filed Mar. 24, 2000)

June 20, 2006
(filed May 25, 2001)

REJECTIONS
Claims 1, 3-15, 24, and 26-32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Finseth and Ellis.
Claims 2 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Finseth, Ellis, and Lu.
Claims 16-23 and 33-38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lu, Finseth, and Ellis.

ANALYSIS
Claims 1-15 and 24-32
Regarding independent claim 1, Appellants contend that Finseth does
not disclose “notifying the second user, via the communication network, of
the consumption of the requested media by the first user, if the pre-defined
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set of characteristics for the requested media matches the at least one user-
selected characteristic,” as recited in claim 1 (App. Br. 10-17). We agree.
Finseth discloses a receiver that “tracks a user’s viewing history and
stores viewing preference information” (Finseth, col. 10, ll. 14-15), and
allows a user to share this viewing preference information with other users
(Finseth, col. 12, ll. 18-45). The Examiner finds that Finseth’s sharing of
viewing preferences meets the limitation of “notifying the second user . . . if
the pre-defined set of characteristics for the requested media matches the at
least one user-selected characteristic,” as recited in claim 1 (see Ans. 4).
The Examiner clarifies in the response to Appellants’ arguments that
Finseth teaches a first user is able to select, i.e., request, media
from a programming guide. Attributes from each requested
media item are then stored on the first user’s receiver. A user is
then able to select the types of viewer preference information to
share with other users. . . . The users can also select the types of
information they want to receive from other users . . . .

(Ans. 14-15) (citations omitted). However, even if we deem Finseth’s
sharing of viewing preferences between users to be a match between a pre-
defined set of characteristics of requested media and a user-selected
characteristic, Finseth’s alleged requested media is not “media to be sent
directly via the communication network from the second user to the first
user,” as recited in claim 1(emphasis added). Rather, Finseth’s shared
viewing preferences relate to media previously viewed through the user’s
receiver (see Finseth, col. 10, ll. 14-25), and the Examiner acknowledges
that this media is not sent from another user (see Ans. 5). Accordingly,
Finseth falls short of disclosing the claim limitation “notifying the second
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user . . . if the pre-defined set of characteristics for the requested media
matches the at least one user-selected characteristic” (emphasis added).
The Examiner’s explanation of how Ellis would have been combined
with Finseth does not cure Finseth’s shortcoming. The Examiner explains:
The combination of Finseth and Ellis enables one of
ordinary skill in the art to realize a system that allows a first
user to request media from a second user by selecting the media
from a program guide and the subsequent viewing of the media
by the first user. The specific characteristics of the requested
media are stored at the first user’s receiver. The first user is
then able to select particular program characteristics that he/she
wishes to share with another user. All stored program
characteristics that “match” these user-selected characteristics
are transmitted to the second user, thus “notifying” the second
user of the consumption of media. The second user is further
able to elect to receive only summary information or only
specific characteristics related to the television programs,
therefore, any characteristics that “match” the selected
characteristics of the second user and the information shared by
the first user enable the second user to be notified of the
consumption of the media.

(Ans. 15-16). In the combination described above, the alleged notifying step
would be conditioned on a match of characteristics for media previously sent
from another user. In contrast, claim 1conditions the notifying step on a
match of a “pre-defined set of characteristics for the requested media,”
where the requested media is “media to be sent directly via the
communication network from the second user to the first user” (emphasis
added). Accordingly, the Examiner has not shown that the combination of
Finseth and Ellis meets all the limitations of claim 1.
We are therefore constrained by the record to find that the Examiner
erred in rejecting claim 1, and dependent claims 2-10 for similar reasons.
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Claims 11 and 24 recite commensurate limitations, respectively,
“sending a notification . . . if the pre-defined set of characteristics for the
requested media matches the at least one media characteristic,” and
“notifying a first user . . . if a pre-defined set of characteristics for the
requested media matches at least one user-selected media characteristic.”
We therefore do not sustain the rejections of claims 11 and 24, and
dependent claims 12-15 and 25-32, for the reasons discussed above
regarding claim 1.

Claims 16-23
Appellants contend that neither Finseth nor Ellis discloses the claim
16 limitations “server software that receives a direct request, from the first
user for media from the second user, that identifies at least the associated
first network address and media having at least one pre-defined
characteristic, and that notifies, via a communication network, the associated
second network address if the at least one media characteristic matches the
at least one pre-defined characteristic,” for the reasons argued with respect
to claim 1 (App. Br. 21-22). Further, Appellants contend that Lu fails to
cure the deficiency of Finseth and Ellis regarding these features (App. Br.
22-24). We disagree.
Lu discloses:
The present embodiment enables personalized video
recorder 200 to order and receive specific television shows that
may be unavailable from its television content provider (e.g.,
television head-end 306). Specifically, personalized video
recorder 200 transmits a request for delivery of a specific
television show to a server computer (e.g., 304) that is
communicatively coupled to it. Upon reception of the request
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from personalized video recorder 200, the server computer
determines whether a personalized video recorder (e.g., 200A
or 200B) coupled to it is located within a transmission region of
the requested television show. If there is, the server computer
transmits programming instructions to that personalized video
recorder (e.g., 200A or 200B) to record the requested television
show when it is transmitted by a television content provider
(e.g., television head-end 308). Once the personalized video
recorder (e.g., 200A or 200B) records the television show, it
transmits the television show to personalized video recorder
200 which is coupled to it. In this manner, the present
embodiment enables personalized video recorder 200 to order
and receive specific television shows that are unavailable from
its television content provider (e.g., 306).

(Lu, col. 9, ll. 5-26). We find that transmitting instructions from a server to
a personalized video recorder 200A or 200B to record a show meets the
limitation “notifies, via a communication network, the associated second
network address if the at least one media characteristic matches the at least
one pre-defined characteristic” (claim 16). That is, Lu’s transmitting of
instructions is predicated on whether the personalized video recorder 200A
or 200B is in the transmission region of the show, which requires the server
to determine whether there is a match between some characteristic of a show
identified by the requesting user through personal video recorder 200 and
some characteristic of a show available to the user of personalized video
recorder 200A or 200B.
Further, Appellants’ argument that the combination of Lu, Finseth,
and Ellis fails to disclose a “direct request,” specifically because Lu sends a
request to a server (App. Br. 23-24), is not commensurate with the scope of
representative claim 16. Claims 16 recites “server software that receives a
direct request.” Claim 16 does not require the “server software” to be
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located on the “second set top box circuitry at the second location.”
Therefore, Lu’s request from a personalized video recorder to the server
meets the limitation of a “direct request,” as recited in representative claim
16.
We are therefore not persuaded that the Examiner erred in rejecting
claim 16, and claims 17-23 not separately argued.

Claims 33-38
Appellants argue claims 33-38 together with claims 16-23, and thus
for claims 33-38 Appellants rely on the same arguments discussed above
with respect to claim 16 (see App. Br. 21-24). Although we sustained the
rejection of claim 16 over these arguments, we find that they are persuasive
when considered vis-à-vis claim 33, which recites limitations not
commensurate in scope with claim 16. Specifically, claim 33 recites
“software that notifies a second user at a second location, via a
communication network, of the consumption of media of the second user
directly requested and consumed by the first user if a pre-defined set of
media characteristics for requested media match at least one user-selected
media characteristic associated with the first user” (emphasis added). While
Lu discloses a notification of a match of media characteristics, as discussed
above, the Examiner has not shown that Lu provides a notification to the
user of the personalized video recorder 200A or 200B of the actual
consumption of the media by the requesting user through personalized video
recorder 200 (see Ans. 9-12). Although the Examiner’s response to
Appellants’ arguments explains that the proposed combination discloses
“‘notifying’ the second user of the consumption of media” (Ans. 20), the
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Examiner does not cite any specific disclosure in the references to support
this conclusion.
We are therefore constrained by the record to find that the Examiner
erred in rejecting claim 33, and claims 34-38 for similar reasons.

CONCLUSIONS OF LAW
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1-15
and 24-38, but did not err in rejecting claims 16-23.

DECISION
For the above reasons, we reverse the rejection of claims 1-15 and 24-
38 and affirm the rejections of claims 16-23.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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