Ex Parte Kuether et al

Board of Patent Appeals and Interferences

Jan 27, 2012

10813948 (B.P.A.I. Jan. 27, 2012)

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.
10/813,948 03/31/2004 David J. Kuether PD-201105 7705
20991 7590 01/27/2012
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
PARRY, CHRISTOPHER L
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
01/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID J. KUETHER, PHILIP R. HILMES, and HEANG K. LIM
____________

Appeal 2009-011917
Application 10/813,948
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-23, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Oct. 22, 2008) and the Answer (mailed
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2
Jan. 21, 2009) for the respective details. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to the downloading and verifying of a
subscriber’s remote record request to control a digital video recorder (DVR)
using an existing satellite network. The insertion of the programming
request into the continuous broadcast stream enables near real time
processing of the request by a subscriber integrated receiver decoder (IRD).
A back channel that is used to verify the request provides assurance to the
subscriber that a record request has been processed successfully. See
generally Spec. 4:24-28 and 5:27-33.

Representative claim 1 is illustrative of the invention and reads as
follows:
1. A method of downloading a remote record request to
control a recording device, comprising:
a subscriber using a subscriber input device to access a programming
guide, select a program and submit a remote record request including a
program code and a subscriber ID,
sending the remote record request to a broadcast center,
inserting the remote record request into a broadcast stream,
transmitting the broadcast stream,
downloading the remote record request at a subscriber site,
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determining whether the remote record request is directed to the
subscriber site by comparing the subscriber ID to a subscriber site ID, and, if
confirmed,
validating the request to determine whether the selected program can
be recorded,
sending a verification response from the subscriber site to the
subscriber's input device, said verification response comprising either a
positive verification response if validated to affirm receipt and execution of
the remote record request or a negative verification response if not validated
to reject the remote record request and display a conflict message to prompt
the subscriber to override any conflicts that gave rise to the rejection,
if rejected, the subscriber using the subscriber input device to view the
conflict message and submit an override message to the broadcast center for
transmission to the subscriber site, and
if confirmed, and validated or overridden, tagging the program code
for recording on the recording device.

The Examiner’s Rejections
1

The Examiner’s Answer cites the following prior art references:
Hirata US 6,374,406 B2 Apr. 16, 2002
Marolda US 2003/0009766 A1 Jan. 9, 2003
Goode US 2004/0083492 Apr. 29, 2004
(filed Oct. 20, 2003)

1
The Examiner has repeated the 35 U.S.C. § 112, second paragraph,
rejection of dependent claim 4 (Ans. 2). This rejection, however, has been
obviated by Appellants’ Amendment filed July 21, 2008 which has been
entered by the Examiner as indicated in the communication to Appellants
mailed Mar. 4, 2009.
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Ellis US 2004/0103434 A1 May 27, 2004
(filed Nov. 25, 2002)
Westbrook US 2005/0050577 A1 Mar.3, 2005
(filed Jan. 8, 2003)
Wagner US 7,207,056 B2 Apr. 17, 2007
(eff. filed Oct. 1, 2001)

Claims 1-4, 9-11, 18, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wagner in view of Hirata and Ellis.
Claims 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner in view of Hirata, Ellis, and Marolda.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner in view of Hirata, Ellis, Marolda, and Goode.
Claims 12 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner in view of Hirata, Ellis, and Westbrook.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner in view of Hirata, Ellis, Westbrook, and Marolda.
Claims 14-16, 19, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wagner in view of Hirata, Ellis, and Goode.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner in view of Hirata, Ellis, Goode, and Westbrook.

ANALYSIS
Claims 1-4 and 9-23
Appellants argue, with respect to the obviousness rejection of
representative independent claim 1, that the Examiner has not provided a
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proper basis for the proposed combination of Wagner with Hirata.
2

According to Appellants, the remote record request scheduling system of
Wagner, which the Examiner recognizes as not disclosing the displaying of a
scheduling conflict to a subscriber to prompt a scheduling override, is a
unidirectional broadcast system. In Appellants’ view, therefore, Wagner
teaches away from any combination with Hirata’s two-way remote recording
request system because user notification of scheduling conflicts in Wagner’s
unidirectional system would be irrelevant because a user could not override
any such scheduling conflicts (App. Br. 12-13).
We do not find Appellants’ arguments convincing of any error in the
Examiner’s stated position. Initially, we agree with the Examiner that, while
Wagner does not disclose a return channel back to the subscriber from the
set-top box, we do not find that the lack of such a disclosure amounts to a
“teaching away” from the use of a two-way communication such as taught
by Hirata. As explained in Depuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009):
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer
Inc., 550 F.3d 1325, 1332 (Fed.Cir.2008) (quoting In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006)). A reference does not
teach away, however, if it merely expresses a general
preference for an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the

2
Appellants argue rejected claims 1-4 and 9-23 together as a group, making
particular reference only to the limitations of claim 1. See App. Br. 11-16.
Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Appellants’ “teaching away” argument is unpersuasive because modifying
Wagner with the teachings of Hirata in the manner proposed by the
Examiner is consistent with, rather than contrary to, Wagner’s disclosure for
the reasons stated by the Examiner (Ans. 38-39).
Further, contrary to Appellants’ contentions (App. Br. 14), we find
that the Examiner has provided an articulated line of reasoning with a
rational underpinning to support the conclusion of obviousness. We agree
with the Examiner’s determination that an ordinarily skilled artisan would
have found that the use of a return channel to send recording request
verification messages back to a subscriber’s input device, as taught by
Hirata, would have served as an obvious enhancement to the remote
recording request system of Wagner (Ans. 38-41). KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
We also find no error in the Examiner’s application of the conflict
message display teachings of Ellis to the combination of Wagner and Hirata
(Ans. 8-9). Appellants’ conclusory statement does not provide an argument
with any particularity challenging the Examiner’s position with respect to
Ellis (App. Br. 13).
Lastly, we find unpersuasive Appellants’ contention that the system of
Hirata is not compatible with Wagner (App. Br. 13). We agree with the
Examiner that each time a subscriber schedules a remote recording
scheduling request in Wagner, the system would continue to send requests
through the broadcast stream as the data is forwarded to the notification
service and then the broadcast service. With the modification of the system
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of Wagner by Hirata, the subscriber’s IRD would be able to communicate
the status of the remote recording request as taught by Hirata (Ans. 40).
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
representative independent claim 1, as well as the rejections of claims 2-4
and 9-23 not separately argued by Appellants, are sustained.

Claims 5-8
Appellants’ separate argument contesting the Examiner’s obviousness
rejection, based on the combination of Wagner, Hirata, Ellis, and Moralda,
of dependent claim 5 is not persuasive. Appellants argue that, in contrast to
the claimed requirement that validation occurs at both the broadcast center
and the subscriber site, Hirata discloses validation at only a single location
(Ans. 14-15).
It is apparent from the Examiner’s stated position, however, that
Marolda is cited for the teaching of providing remote recording request
validation at the broadcast center and the subscriber site (Ans. 14, 15, and
42). Appellants have not challenged the Examiner’s interpretation of
Marolda, nor its application to the combination of Wagner, Hirata, and Ellis.
Accordingly, the Examiner’s obviousness rejection of dependent claim 5,
and its dependent claims 6-8 not separately argued by Appellants is
sustained.

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-23 for obviousness under 35 U.S.C. § 103(a).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-23 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)(2010).

AFFIRMED

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