Ex Parte Kummer

Patent Trial and Appeal Board

Mar 27, 2017

11933265 (P.T.A.B. Mar. 27, 2017)

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.
11/933,265 10/31/2007 David A. Kummer ES-1077 (290110.480) 3447
70336 7590 03/27/2017
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
LIN, JASON K
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
03/27/2017 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 DAVID A. KUMMER
Appeal 2016-004063
Application 11/933,2651
Technology Center 2400
Before THU A. DANG, CARL L. SILVERMAN, and JOHN D. HAMANN,
Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1,3,4, and 7—31. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellant’s claimed invention relates to “pre-downloading video
event data to a client device, such as a set top box (STB), digital video
recorder (DVR) or similar device, and more particularly to pre-downloading
pay-per-view (PPV) and/or video-on-demand (VOD) content to a hard drive
1 According to Appellant, the real party in interest is EchoStar
Technologies L.L.C. App. Br. 1.
Appeal 2016-004063
Application 11/933,265
of such devices.” Spec. 11. Claim 1 is illustrative of the subject matter of
the appeal and is reproduced below.
1. A process of pre-downloading video event data to a client
device, comprising:
receiving from a client device a selection of video event
data prior to a specified time at which the selected video event
data is available for viewing, the specified time based on a
future release date of the video event data;
downloading from a content provider the selected video
event data to the client device during a downloading time
interval selected by the client device, the downloading time
interval being prior to the specified time; and
rendering the downloaded video event data viewable
starting at the specified time in response to at least one signal
received from the content provider, that is guaranteed to incur a
time delay between the downloading of the video event data
and the rendering of the video event data.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1, 3, 4, 16—20, 30, and 31 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Benson et
al. (60/877,411; filed Dec. 26, 2006)2 (hereinafter “Benson”), Hoang (US
2003/0084461 Al; published May 1, 2003), and Weinberg et al. (US
2004/0103444 Al; published May 27, 2004) (hereinafter “Weinberg”).
(2) The Examiner rejected claims 7, 8, 21, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Benson, Hoang,
Weinberg, and Watson et al. (US 2004/0133923 Al; published July 8, 2004)
(hereinafter “Watson”).
2 We cite the Benson provisional application as relied upon by the Examiner
in the Mar. 23, 2015 Supplement to the Jan. 21, 2015 Final Office Action
(hereinafter “Suppl. Final Act.”), as well as in the Examiner’s Answer.
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(3) The Examiner rejected claims 9 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Benson, Hoang,
Weinberg, Watson, Kitsukawa et al. (US 6,282,713 Bl; issued Aug. 28,
2001) (hereinafter “Kitsukawa”), and Dimitri et al. (US 6,574,424 Bl;
issued June 3, 2003) (hereinafter “Dimitri”).
(4) The Examiner rejected claims 10 and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Benson, Hoang,
Weinberg, Watson, and Kitsukawa.
(5) The Examiner rejected claims 11 and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Benson, Hoang,
Weinberg, Watson, and Dimitri.
(6) The Examiner rejected claims 12—15 and 26—29 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Benson,
Hoang, Weinberg, Watson, and Barton et al. (US 2004/0268410 Al;
published Dec. 30, 2004) (hereinafter “Barton”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellant.
We disagree with Appellant’s arguments and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in (1) the Jan. 21, 2015 Final Office Action (“Final Act.” 2—26);
(2) the Mar. 23, 2015 Suppl. Final Act. (2—28); and (3) the Jan. 6, 2016
Examiner’s Answer (“Ans.” 2-41). We highlight and address, however,
specific findings and arguments below for emphasis.
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Application 11/933,265
(1) Reliance on the Benson published application as prior art
Appellant argues the Examiner improperly relies on Benson et al. (US
2008/0168515 Al; July 10, 2008) (hereinafter “Benson ’515”), which is a
non-provisional application filed on Dec. 24, 2007 (the present application
was filed on Oct. 31, 2007), claiming the benefit of the Benson provisional
application’s Dec. 26, 2006 filing date. App. Br. 12—13; Reply Br. 2—3. The
Examiner finds that upon a “[tjhrough review of the provisional and the non­
provisional applications of Benson, the cited portions used appear to be
adequately supported by the provisional.” Ans. 36.
We note that a published patent application can have a patent
defeating effect as of the filing date of a corresponding provisional
application, if certain conditions are met. See, e.g., In re Giacomini, 612
F.3d 1380, 1384—85 (Fed. Cir. 2010). However, because the Examiner also
relies separately on the Benson provisional application as prior art (and not
just the published patent application), and Appellant admits that such
provisional application is prior art (App. Br. 13), whether those conditions
have been shown to have been met is moot. See generally Suppl. Final Act.;
Ans.
(2) Rendering in response to signal from content provider
Appellant argues the combination of Benson, Hoang, and Weinberg,
and Benson in particular, teaches away from “rendering the downloaded
video event data viewable starting at the specified time in response to at least
one signal received from the content provider,” as recited in claim 1 and
similarly provided for in claims 16 and 30. App. Br. 14—15; Reply Br. 4.
More specifically, Appellant argues Benson instead teaches a system
“specifically designed not to have a connection between the client device
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Application 11/933,265
and the content provider at the time of rendering.” App. Br. 14 (quoting
Benson 2,11. 16—18, 23—25 {“The advantage our method has ... is that our
customers are not required to have an Internet connection . . . the advantage
of our method is that the customer is not required to have cable or satellite
TV); 3,11. 1—3 (“Customer does not have to be connected to the internet,
cable, satellite, or any other electronic connection at the time of use.”)).
Appellant argues “Benson’s system is configured to serve for example,
travelers, and dwellings located in rural areas without access to TV or
Internet signals,” who can receive content through the mail or pre-download
a movie while having network access. App. Br. 14 (citing Benson 2).
Appellant also argues Benson treats (i) rental/downloading and (ii) rendering
separately, and “[ajt the time of viewing” Benson’s system “does not access
the Internet.” Reply Br. 5—6.
The Examiner finds, and we agree, the combination, and Benson in
particular, teaches or suggests the disputed limitation. See Ans. 37; Suppl.
Final Act. 5—6. Specifically, the Examiner finds, and we agree, rather than
teaching away, Benson teaches, or at least suggests, an embodiment where
the customer chooses to connect their media player to the Internet while
rendering the downloaded video viewable (e.g., renting and viewing the
movie). See Ans. 37 (citing Benson 15,11. 12—15 (“If the media player is
connected to the provider over the Internet or over a phone line, then as
movies are rented, the provider is notified (almost in real time if the
connection is over the Internet or daily or longer if over a phone line).”); see
also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
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away from any of the[] [disclosed] alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed . . .
Furthermore, Appellant incorrectly conflates renting the movie with
downloading the movie — rather in Benson movies are downloaded
beforehand, but are not rented/viewed (i.e., rendered viewable) until later.
See, e.g., Benson 15,11. 28—34 (“As in the case of delivery of the media disk
to the customer, the delivery of individual movies over the Internet does
NOT constitute rental of that movie.”); 4,11. 4—7 (“In this method of rental,
choice of items and delivery of items are separate from actual rental of
items. Items are rented at a time convenient to the customer and when items
are actually used.”).
(3) In response
Appellant argues “Benson’s system would not be programmed to
unlock a movie in response to a signal received from the content provider,
because Benson’s system is specifically designed for a stand-alone media
player that is inaccessible to a remote signal at the time of viewing.” App.
Br. 15. Appellant also argues Benson “teaches away from the claims
because Benson’s system enforces release dates locally, by the media player,
not by the content provider.” Id. (citing Benson 3,11. 23—25; 7,11. 4—5).
As above, the Examiner finds, and we agree, Benson teaches an
embodiment where the customer chooses to connect their media player to
the Internet while rendering the downloaded video viewable (e.g., renting
and viewing the movie). See Ans. 37 (citing Benson 15,11. 12—15; 4,11.
4—7). Thus, the appropriate, rendering signal could be received from the
content provider at the time of viewing. See, e.g., Benson 15,11. 12—15.
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As to Appellant’s argument that release dates are enforced locally by
the media player, the Examiner finds, and we agree, the claims are directed
to the source of the signal (i.e., “in response to at least one signal received
from the content provider”), and do not preclude a media player locally
enforcing policies (e.g., rendering video viewable in response to the content
provider’s signal) obtained from the Internet, as taught by Benson. See Ans.
39 (citing Benson 6,1. 41 to 7,1. 3 (teaching for “Viewing Policy” that a
media player enforces the rules, but the policies can be ‘“obtained from the
Internet’”); col. 12,11. 34-40 (teaching “[a]nother Viewing Policy” includes
a future date of release for movies and customers are not allowed “to watch
the movie until that date is reached”). Additionally, we note the claim
language does not require the “at least one signal received from the content
provider” to be received contemporaneously with rendering the movie
viewable. The claimed rendering is in response to a “received” signal, rather
than a signal “being received,” and thus, the signal could be received (e.g.,
downloaded) and kept for later use (e.g., when traveling).
(4) Inoperable for its intended purpose
In light of our above findings, we are not persuaded by Appellant’s
arguments (App. Br. 16; Reply Br. 5—6) that making the combination would
render Benson inoperable for its intended purpose (i.e., “to free the viewer
from dependence on a content provider at the time of rendering video data”).
For example, Benson teaches an embodiment where the customer chooses to
connect their media player to the Internet while rendering the downloaded
video viewable (e.g., renting and viewing the movie). Benson 15,11. 12—15;
4,11. 4—7. Hence, Benson’s intended purpose is not as limited as Appellant
suggests.
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CONCLUSION
Based on our findings above, we sustain the Examiner’s rejection of
claims 1, 16, and 30, as well as claims 3, 4, 17—20, and 31, as Appellant does
not provide separate arguments for their patentability. We also sustain the
Examiner’s rejections of claims 7—15 and 21—29, based on our above
findings, as Appellant does not provide separate arguments for their
patentability.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, 4, and 7—31.
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
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