Ex Parte MacDonald et al

Patent Trial and Appeal Board

Jul 16, 2014

12031438 (P.T.A.B. Jul. 16, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/031,438 02/14/2008 J. Andrew MacDonald LCNT/801213 2579
46363 7590 07/17/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
HOSSAIN, FARZANA E
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
07/17/2014 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 J. ANDREW MACDONALD, JARED D. MCNEILL, and
MARTIN C. BECKWITH
____________

Appeal 2012-003501
Application 12/031,438
Technology Center 2400
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1-12, 14, and 16-24. Claims 13 and 15 were
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention provides content to portable multimedia
devices. A centralized apparatus records content based on a recording
schedule, and provides the recorded content to subscribers. See generally,
Abstract; Spec. 1-2. Claim 1 is illustrative:

Appeal 2012-003501
Application 12/031,438

2
1. A method, comprising:
a) determining, for each of a plurality of subscribers having respective
first subscriber devices capable of recording multi-media content received
via a first network, statistics associated with subscriber multi-media content
recording;
b) defining a multi-media content recording schedule for a centralized
recoding apparatus based on the cumulative statistics of said subscribers;
c) recording at least a subset of multi-media content in the recording
schedule using the centralized recording apparatus; and
d) providing, via a second network, recorded multi-media content to
subscribers having respective second subscriber devices capable of receiving
multi-media content via said second network; and
e) periodically repeating steps a-c such that said centralized recording
apparatus includes up to date multi-media content to thereby remain
synchronized with the recording schedule of said subscribers.

THE REJECTIONS
The Examiner rejected claims 14 and 16-241 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Ans. 4-5.2
The Examiner rejected claims 1-12, 14, and 16-24 under 35 U.S.C.
§ 112, second paragraph as indefinite. Ans. 5-8.
The Examiner rejected claims 1-12, 14, and 16-24 under 35 U.S.C.
§ 103(a) as unpatentable over Ellis (US 2003/0149988 A1; Aug. 7, 2003)
and Ellis (US 2005/0028208 A1; Feb. 3, 2005) (“Ellis 2”). Ans. 8-20.

1 Although the Examiner includes cancelled claim 15 in this rejection and
cancelled claims 13 and 15 in the indefiniteness rejection (Ans. 4-5), we
nonetheless treat these errors as harmless and present the correct claim
listings here for clarity.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed August 19,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed November 22, 2011
(“Ans.”); and (3) the Reply Brief filed December 19, 2011 (“Reply Br.”).
Appeal 2012-003501
Application 12/031,438

3
THE EXAMINER’S OBJECTION
Although Appellants indicate that the Examiner’s objection to claim
24 for various informalities is a ground of rejection to be reviewed on appeal
(App. Br. 8-9), it is nonetheless a petitionable—not appealable—matter and
is, therefore, not before us. See MPEP § 706.01 (“[T]he Board will not hear
or decide issues pertaining to objections and formal matters which are not
properly before the Board.”); see also MPEP § 1201 (“The Board will not
ordinarily hear a question that should be decided by the Director on petition .
. . .”).

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellants’ Specification does not support
the recited means’ operation to continuously offer up-to-date media content,
but rather supports offering this content at regular intervals. Ans. 4-5.
Appellants argue that the Examiner was unable to articulate a
reasonable basis for the rejection because it is not based on the evidence as a
whole. App. Br. 9-10.

ISSUE
Has the Examiner erred in rejecting claims 14-24 under § 112, first
paragraph as failing to comply with the written description requirement by
finding that Appellants’ disclosure does not support the recited means’
operation to continuously offer up-to-date media content?

Appeal 2012-003501
Application 12/031,438

4
ANALYSIS
We sustain the Examiner’s written description rejection of claims 14-
24. Apart from summarily alleging that the Examiner was unable to
articulate a reasonable basis for the rejection because it is “not based on the
evidence as a whole,” Appellants do not squarely address—let alone
persuasively rebut—the Examiner’s particular findings regarding the lack of
written description support for continuous (i.e., uninterrupted) content
offerings as compared with periodic offerings (i.e., at regular intervals) that
are said to be supported by Appellants’ disclosure. Compare App. Br. 9-10
with Ans. 4-5, 20-21. Therefore, we are not persuaded that the Examiner’s
written description rejection is erroneous.

THE INDEFINITENESS REJECTION
We also sustain the Examiner’s indefiniteness rejection of claims 1-
12, 14, and 16-24 that identifies various deficiencies in the claims that are
said to render them indefinite including (1) no antecedent basis for “the
cumulative statistics”; (2) computer-readable medium claim 21’s including
structure recited by the means-plus-function limitations; and (3) no
corresponding structure for the “means for determining” in claim 14 and the
three “means” limitations in claim 24. Ans. 5-8, 21-22.
Apart from indicating that “this is a minor issue[] which can be
addressed subsequent to resolving the statutory rejections,” Appellants do
not squarely address—let alone persuasively rebut—the Examiner’s
particular findings in this regard. App. Br. 11. Therefore, we are not
persuaded that the Examiner’s indefiniteness rejection is erroneous.

Appeal 2012-003501
Application 12/031,438

5
THE OBVIOUSNESS REJECTION
The Examiner finds that Ellis discloses steps (a)-(c) (i.e., the recited
statistics determination, schedule definition, and recording steps) and
periodically repeats these steps in step (e) of claim 1, but does not disclose
step (d) for which Ellis 2 is cited. Ans. 8-10, 23-27. According to the
Examiner, Ellis periodically repeats steps (a)-(c) by, among other things, (1)
determining recording requests for user directories; (2) updating the user
directories; and (3) determining the number of viewers requesting to record
certain programs at a predefined time before the program. Id.
Appellants argue that not only did the Examiner improperly fail to
give the recited cumulative statistics and various limitations in step (e)
patentable weight, Ellis does not teach that periodic repeating step in any
event. App. Br. 12-18; Reply Br. 2-5. According to Appellants, Ellis does
not periodically repeat steps (a)-(c) to keep the centralized recording
apparatus synchronized with the subscribers’ recording schedule as claimed.
Id. Appellants add that the Examiner’s motivation to combine the
references, namely to allow users to have access to programming regardless
of their location, is deficient because it is conclusory and has nothing to do
with periodically repeating steps (a)-(c) for synchronization. App. Br. 18-
19.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Ellis and Ellis 2 collectively would have taught or suggested
periodically repeating steps (a)-(c) such that the centralized recording
Appeal 2012-003501
Application 12/031,438

6
apparatus includes up-to-date multimedia content to remain synchronized
with the subscribers’ recording schedule?
(2) Is the Examiner’s combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
We sustain the Examiner’s obviousness rejection of claim 1. As
shown in Ellis’ Figures 5 and 27, after receiving requests to record
programs, an associated job queue 120 is checked at a predefined time
before the program is aired to determine whether a sufficient number of
users requested the program. Ellis ¶¶ 0086, 0191; Figs. 5, 27 (step 2880). If
so, the system tunes to the appropriate program channel, records the
program, and updates associated user directories. Id. (steps 2910-2940).
Based on this functionality, we see no error in the Examiner’s position
that Ellis’ determining whether enough users requested a program before
recording it effectively determines statistics for each subscriber by counting
the number of subscriber program requests. See Ans. 25 (citing Ellis ¶¶
0081, 0085-86). Ellis also defines a recording schedule based on cumulative
statistics (i.e., the total number of requests) by determining whether or not to
record the program when it is aired. Ellis ¶¶ 0086, 0191; Figs. 5, 27.
Because this determination is made at a predefined time before a
program airs (e.g., 15 minutes before airing), and there are multiple
programs for which this determination is made as shown in Ellis’ Figure 5,
the associated statistics determination, recording schedule definition, and
recording steps are effectively repeated periodically on a program-by-
Appeal 2012-003501
Application 12/031,438

7
program basis. That is, the claim does not preclude this periodic repetition
under the plain meaning of the term “periodic” that is defined, in pertinent
part, as “[r]ecurring or reappearing from time to time; intermittent.” THE
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1307 (4th ed.
2006). Accord Ans. 24 (construing “periodically” as “intermittently or at
certain intervals”). In short, Ellis’ periodic repetition occurs a predefined
time (e.g., 15 minutes) before each program airs, and would ensure that
Ellis’ centralized recording apparatus and associated content remains
synchronized with the subscribers’ recording schedule, at least with respect
to their particular program requests.
We reach the same conclusion even if we were to construe
“periodically” more narrowly as occurring at regular intervals, for skilled
artisans would understand that Ellis’ repetition also occurs for programs
with recurring air times as well, such as a series or mini-series in Ellis’
paragraph 60. For these recurring programs, the associated statistics
determination, recording schedule definition, and recording steps would be
repeated periodically at a predefined time before airing each episode of the
series (e.g., 15 minutes before each weekly episode). That Ellis also updates
associated user directories identifying programs after recording them in step
2940 of Figure 27 as the Examiner indicates (Ans. 9, 24) only bolsters the
Examiner’s position at least to the extent that it reflects up-to-date recorded
content requested by the subscribers according to their schedule.
Appellants’ arguments regarding Ellis’ shortcomings in this regard (App. Br.
13-17; Reply Br. 2-5) are unavailing and not commensurate with the scope
of the claim.
Appeal 2012-003501
Application 12/031,438

8
Lastly, despite Appellants’ arguments to the contrary (App. Br. 18-
19), we are unpersuaded of error in the Examiner’s combining Ellis 2 with
Ellis in concluding that claim 1 would have been obvious. Not only are the
Examiner’s particular findings from Ellis 2 on pages 9, 26, and 27 of the
Answer undisputed, Appellants’ combinability arguments are not germane to
the limited purpose for which Ellis 2 was cited, namely that it would have
been obvious to provide recorded content to subscribers via a second
network recited in claim 1’s limitation (d) to allow access to programming
regardless of the subscribers’ location. Ans. 9, 26-27. The Examiner’s
proposed combination of references is therefore supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion.
Accordingly, we are not persuaded that the Examiner erred in
rejecting representative claim 1, and claims 2-12 not argued separately with
particularity.

Claims 14 and 16-24
We also sustain the Examiner’s obviousness rejection of claims 14
and 16-24. Ans. 12-20. Despite nominally arguing these claims separately,
Appellants reiterate similar arguments made in connection with claim 1 that
we find unpersuasive for the reasons previously discussed. To the extent
that Appellants contend that the Examiner failed to properly consider the
means-plus-function limitations of independent claims 14, 21, and 24 (see
App. Br. 20), such arguments are merely conclusory and, therefore, have
little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997). In any event, Appellants’ arguments do not persuasively rebut the
Appeal 2012-003501
Application 12/031,438

9
Examiner’s findings in this regard. See Ans. 12-20. We further note that
Appellants’ quoted “means for remaining synchronized” limitation on page
20 of the Appeal Brief appears only in claim 21 and not claims 14 and 24 as
Appellants allege, and Appellants on page 20 of the Appeal Brief refer to a
prior art reference to Comstock that was not cited in the rejection.
Nevertheless, even treating these errors as harmless, Appellants still do not
persuasively rebut the Examiner’s obviousness rejection of claims 14 and
16-24 for the foregoing reasons.

CONCLUSION
The Examiner did not err in rejecting (1) claims 14 and 16-24 under
§ 112, first paragraph; (2) claims 1-12, 14, and 16-24 under § 112, second
paragraph; and (3) claims 1-12, 14, and 16-24 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-12, 14, and 16-24 is
affirmed.
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

cam