Ex Parte Lee et al

Patent Trial and Appeal Board

Jul 11, 2014

12060944 (P.T.A.B. Jul. 11, 2014)

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.
12/060,944 04/02/2008 Sean S. Lee PD-208020 7627
20991 7590 07/11/2014
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
07/11/2014 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 SEAN S. LEE and SCOTT D. CASAVANT
____________________

Appeal 2012-008200
Application 12/060,944
1

Technology Center 2400
____________________

Before MARC S. HOFF, DENISE M. POTHIER, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention is a method and system for arbitrating and
assigning program recording requests among a plurality of receiving units,
and streaming recorded programming from one receiving unit to one or more
other receiving units.

1
The real party in interest is The DIRECTV Group, Inc.
Appeal 2012-008200
Application 12/060,944

2
Claim 1 is exemplary of the claims on appeal:
1. A method comprising:
forming a network having a plurality of receiving units including a
first receiving unit and a second receiving unit;
generating a plurality of recording requests from a first group of the
plurality of receiving units;
communicating the recording requests through the network;
determining whether the recording requests are redundant;
when recording requests are redundant, selecting a first receiving unit
of the first group to record content corresponding to the request;
storing the content in a first memory of the first receiving unit;
communicating a do-not-record signal to the first group except the
first receiving unit;
forming a selection for the content at the second receiving unit;
communicating the selection from the second receiving unit to the
first receiving unit;
streaming the content to the second receiving unit through the
network; and
displaying the content on a display associated with the second
receiving unit.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Arnold US 2005/0108769 A1 May 19, 2003
Verhaegh US 2009/0210533 A1 Aug. 20, 2009

Claims 1-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arnold in view of Verhaegh.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed June 1, 2011), the Reply Brief (“Reply Br.,” filed Jan. 4,
2012), and the Examiner’s Answer (“Ans.,” mailed Sept. 2, 2011) for their
respective details.
Appeal 2012-008200
Application 12/060,944

3
ISSUE
Appellants argue, inter alia, that neither Arnold nor Verhaegh disclose
or suggest communicating a do-not-record signal to the first group except
the first receiving unit (App. Br. 7-8). The Examiner finds that the
assignment list of Verhaegh, which contains information about which
receiver is to record which program, constitutes a “do-not-record signal” to
the receivers not selected to record a particular program (Ans. 16-17).
Appellants’ contentions present us with the following issue:
Does Verhaegh disclose or suggest communicating a do-not-record
signal to the first group except the first receiving unit as recited in claims
1and 16?
PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
Appeal 2012-008200
Application 12/060,944

4
The claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
The claims, of course, do not stand alone. Rather, they are part
of a “fully integrated written instrument” . . . consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part” . . . . [T]he specification
‘is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.’

Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).

ANALYSIS
Each of independent claims 1 and 16 recites “communicating a do-
not-record signal to the first group except the first receiving unit.” The
Examiner finds that Verhaegh discloses this limitation (Ans. 5). The
Examiner reasons that when Verhaegh’s assignment list assigns peer 1 to
record a program, even though peer 2 submitted a request to record that
program, Verhaegh’s coordinator “signaled” peer 2 not to record the
program by communicating via the assignment list that another element on
the network (e.g., peer 1) would be recording the program (Ans. 16-17).
The Examiner contends that because one definition for a “signal,” in a
general-purpose dictionary, is an “indication,” Verhaegh may be read such
that the assignment list includes an indication not to record because someone
else (e.g., a peer) is doing the recording (Ans. 17).
Appeal 2012-008200
Application 12/060,944

5
We find error in the Examiner’s finding. Appellants disclose that “a
‘do-not-record’ signal may be generated and communicated to the other
devices. In this manner, the other devices may become unselected devices”
(Spec. ¶ 72). Consistent with the disclosure, we do not agree that the
Examiner’s broad construction of “signal,” as described in the Answer, is
reasonable. We agree with Appellants that Verhaegh discloses
communicating assignment lists to the one or more recording units,
commanding the recording units affirmatively to record program content,
rather than commanding negatively as the claims require (App. Br. 7-8;
Verhaegh ¶ 84). We further agree with Appellants that “[c]ommanding peer
1 to record each of the four programs, however, does not teach commanding
peer 2 not to record two of the four programs” (Reply Br. 5).
Because we do not sustain the rejection of independent claims 1 and
16 as proposed by the Examiner, we find that the combination of Arnold and
Verhaegh fails to disclose or suggest all the elements recited in the rejected
claims. We do not sustain the Examiner’s § 103 rejection of claims 1-27.

CONCLUSION
Verhaegh does not disclose or suggest communicating a do-not-record
signal to the first group except the first receiving unit.

ORDER
The Examiner’s rejection of claims 1-27 is reversed.

REVERSED
kis