Ex Parte Malik

Patent Trial and Appeal Board

Mar 12, 2015

12043521 (P.T.A.B. Mar. 12, 2015)

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.
12/043,521 03/06/2008 Dale Malik 070186 5456
36192 7590 03/12/2015
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
YEN, SYLING
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
03/12/2015 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 DALE MALIK
____________

Appeal 2013-000010
Application 12/043,521
Technology Center 2100
____________

Before JEFFREY S. SMITH, STANLEY M. WEINBERG, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 8–13, and 15–20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
In reaching the decision, we have considered only the arguments
Appellant actually raised. Arguments Appellant did not make are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2012).

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STATEMENT OF THE CASE
The present invention relates to electronic content distribution. See
generally Spec. 1. Claim 1 is exemplary:
1. A method for rule-based release of distributed electronic
content in accordance with a content release rule, the method
comprising:

receiving a first subcontent, a second subcontent, and the
content release rule, the content release rule specifying a first
condition for enabling access to the first subcontent and a second
condition for enabling access to the second subcontent;

storing the first subcontent, the second subcontent, and the
content release rule in a content storage device, wherein access to the
first subcontent is not enabled and access to the second subcontent is
not enabled;[]

enabling access to the first subcontent in accordance with the
content release rule;
and

enabling access to the second subcontent in accordance with the
content release rule;

wherein the first subcontent includes a marker in the form of an
expiration time stamp that specifies when deletion of the first
subcontent is to occur, the expiration time stamp varying in response
to the nature of the content, wherein content of a first type is stored
for a shorter time period than content of a second type;

wherein the first subcontent, the second subcontent, and the
content release rule are sent by a content distributor over a
communications network during off-peak hours when the
communications network is expected to be underutilized;

wherein the first subcontent and the second subcontent each
represent a broadcast program, and each broadcast program is
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received prior to the scheduled airing date and time for the broadcast
program.

THE REJECTIONS

Claims 1–5, 8–13, and 15–20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Whitfield (US 2007/0011747 A1; Jan. 11, 2007)
and Knudson (US 6,536,041 B1; Mar. 18, 2003).

ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding Whitfield
and Knudson collectively teach “wherein the first subcontent includes a
marker in the form of an expiration time stamp that specifies when deletion
of the first subcontent is to occur,” as recited in claim 1?
1

ANALYSIS

THE OBVIOUSNESS REJECTION

On this record, we find the Examiner did not err in rejecting claim 1.
We disagree with Appellant’s arguments (App. Br. 5–13), and agree with
and adopt the Examiner’s findings and conclusions on pages 4–9 and 14–18
of the Answer as our own. Therefore, we limit our discussion to the
following points for emphasis.
First, Appellant asserts Knudson does not teach the disputed claim
limitation. See App. Br. 6–7. Contrary to Appellant’s argument, the

1
Other issues are discussed in the Analysis section.
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Examiner relies on Whitfield—not Knudson—to teach the disputed claim
limitation. See Ans. 6–7.
Second, Appellant contends there is no predicable way to combine the
references because Whitfield is not applicable to real-time data, the
Examiner’s reasoning for combination (securing content before scheduled
date and time) is improper, and including real-time data transmission in
Whitfield would have eliminated the bandwidth reduction sought by
Whitfield and contradicts the intended purpose of Whitfield. See App. Br.
6–7.
Appellant fails to show reversible error, because other than citing
Whitfield’s paragraph 6, Appellant’s arguments consist of unsupported
attorney arguments, and thus are unpersuasive. Further, Appellant’s
assertion that Whitfield’s paragraph 6 shows Whitfield contradicts
Knudson’s real-time data is unsupported by the record. To the contrary,
consistent with the Examiner’s reasoning for combination (Ans. 17–18) and
Whitfield’s teachings, Knudson teaches “[t]he real-time data may be stored
in a database maintained by the program guide, so that the program guide
may access the stored real-time data at a later time.” Knudson, Abstract.
Further, under KSR, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citation omitted).
The Examiner finds Whitfield, Knudson, and this invention relate to
the same field. See Ans. 4–9, 17. Appellant does not dispute the
Examiner’s findings. See In re Baxter Travenol Labs., 952 F.2d 388, 391
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(Fed. Cir. 1991) (“It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.”).
The Examiner also finds the combination is proper
because that would have allowed the electronic content accessing
method to also storing real-time data such as sports scores in the
database maintained in the user’s set-top box, and at later time (e.g.[,]
after the conclusion of a sporting event), the scores can be retrieved
and displayed by the program guide as taught by Knudson (see
Knudson col. 1 lines 43-49).

Ans. 18.
2
Again, Appellant does not rebut such Examiner’s findings. See
Baxter Travenol Labs., 952 F.2d at 391.
Finally, Appellant does not present evidence that the resulting
combination were “uniquely challenging or difficult for one of ordinary skill
in the art” or “represented an unobvious step over the prior art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418–19). In addition, the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420–21.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–5, 8–13, and 15–20 for similar reasons.

DECISION
The Examiner’s decision rejecting claims 1–5, 8–13, and 15–20 is
affirmed.

2
The Examiner revised the previous reasoning for combination.
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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
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