Ex Parte Matz

Board of Patent Appeals and Interferences

Nov 29, 2010

10176908 (B.P.A.I. Nov. 29, 2010)

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.
10/176,908 06/20/2002 William R. Matz 02037 3758
38516 7590 11/30/2010
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
11/30/2010 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 WILLIAM R. MATZ
____________
Appeal 2009-007328
Application 10/176,9081
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on June 20, 2002. The real party in interest is BellSouth Intellectual
Property Corp. (App. Br. 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007328
Application 10/176,908

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 21. (App. Br. 3; Reply Br. 3.)
We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method, system, and apparatus for blocking the
presentation of selected content, such as advertisements to a user because the
user deems such content to be less preferred or unwanted. (Spec. 1, ll. 9-11;
id. at 4, ll. 7-9.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method of blocking media content in a distributed network, the
distributed network having a client device and a server device, the method
comprising:

receiving a user profile having user profile tag data corresponding to
content categories;

receiving a tagged content item comprising media content and at least
one content tag, the at least one content tag comprising at least one data field
comprising a value that indicates an importance of the data field;

comparing data in the content tag with data in the user profile; and

blocking the tagged content item based on the comparison.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Huber 2002/0059588 A1 May 16, 2002
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Application 10/176,908

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Suchter 6,675,161 B1 Jan. 6, 2004
(filed May 4, 1999)

Rejection on Appeal
The Examiner rejects claims 1 through 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Huber and Suchter.
Appellant’s Contentions
Appellant contends that the Office has not provided Appellant with
Due Process because the Examiner failed to respond to Appellant’s
“teaching away” argument on three separate occasions. (App Br. 7.) In
particular, Appellant argues that the Examiner has failed to carry the burden
of responding to and rebutting Appellant’s “teaching away” argument. (Id.
at 7-8.) Therefore, Appellant requests that the Board remove the final
rejection of the pending claims and remand the present application back to
the Examiner for an adequate response to the Appellant’s “teaching away”
argument. (Id. at 8.) Further, Appellant alleges that the Examiner’s prima
case of obviousness requires impermissible changes to Huber’s principle of
operation. (Id.) In particular, Appellant contends that modifying Huber’s
video blanking decoder by incorporating Suchter’s search engine directory
from a directory server, which strips the priority values from the judgment
information, would effectively change Huber’s principle of operation. (Id. at
8-9.) Additionally, Appellant argues that the Examiner’s Answer fails to
respond to Appellant’s “impermissible changes” argument and, therefore, is
nonresponsive. (Reply Br. 5-6.)

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Application 10/176,908

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Examiner’s Findings and Conclusions
The Examiner finds that there is sufficient rationale for the proffered
combination. (Ans. 8.) 3 In particular, the Examiner finds that combining
Huber’s teachings with Suchter’s disclosure addresses the need to integrate
the updates into a customized dictionary in a way that does not override or
disrupt the custom judgments that are reflected in the customized directory.
(Id.) The Examiner also finds that both Huber and Suchter disclose
categorizing content. (Id. at 9.) The Examiner finds that Hubert lacks the
ability to prioritize data based on importance, however Suchter’s disclosure
remedies such deficiency. (Id.) Further, the Examiner finds that Suchter’s
disclosure of each user record comprising a priority value, which may be an
integer value, teaches the claimed priority function. (Id.)

II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of Huber and Suchter renders independent claim 1
unpatentable? In particular, the issue turns on whether modifying Huber’s
video blanking interval decoder would effectively change Huber’s principle
of operation or otherwise render Huber inoperable for its intended purpose.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.

3 All references to the Examiner’s Answer are to the Answer filed on May 1,
2008, which replaced the prior Answer filed on April 17, 2008.
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Application 10/176,908

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Huber
1. Huber discloses a remote control device that interacts with a
set-top box in order to provide selective programming to a user of the remote
control device. (Abst.) Huber discloses selecting or excluding video or
enhanced content based upon tags that describe such content. (Id.)
2. Huber’s figure 7 depicts providing video data to the customer
hardware (200) by passing the video data to a video blanking interval
decoder (206), which strips off both the tags (208) and markers (210) from
the video stream. (4: ¶ 40.) Huber discloses utilizing a filter comparator
(218) to compare the tag information (208) with user preference/profiles
(220) generated by an input device (222). (Id.)
Suchter
3. Suchter generally relates to data processing and, in particular, to
managing directories of electronic documents utilized in a hypertext
document system, such as the World Wide Web (“WWW”). (Col. 1, ll. 7-
16.)
4. Suchter’s figure 4B depicts that user data (402) comprises a
username, password, and priority value. (Col. 18, ll. 9-10.) Suchter
discloses that the priority value may be an integer value. (Id. at ll. 11-13.)

IV. ANALYSIS
Due Process
At the outset, we note that any allegation that the Office has not
provided Appellant with administrative Due Process and a request to
withdraw the finality of the office action are petitionable matters under 37
C.F.R. § 1.181—not appealable matters. Therefore, we will not address
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these issues. See Manual of Patent Examining Procedure (“MPEP”), 8th ed.,
Rev. 7, §§ 1002 and 1201.
Claim 1
As detailed in the Findings of Fact section above, Huber discloses
utilizing a remote control device to interact with a set-top box in order to
selectively program content for presentation to a user. (FF 1.) In particular,
Huber discloses a video blanking interval decoder that parses both tags and
markers from a video stream. (FF 2.) Huber discloses that a filter
comparator compares the parsed tag information with a user’s preferences or
profile. (Id.) We therefore find that Huber’s disclosure teaches a video
blanking interval decoder that is capable of both receiving tagged video data
and parsing tags from such data.
Next, Suchter discloses managing directories of electronic documents
utilized in the WWW. (FF 3.) In particular, Suchter discloses user data that
includes a priority value, which may be an integer value. (FF 4.) We agree
with the Examiner that Suchter’s disclosure teaches utilizing a priority value
to prioritize the importance of data. (Ans. 9.) In summary, we find that an
ordinarily skilled artisan would have appreciated that Huber’s video
blanking interval decoder is capable of receiving tagged video data, whereby
each tag comprises a priority value that indicates the importance of such
data, as disclosed in Suchter.
We are not persuaded by Appellant's argument that modifying
Huber’s video blanking interval decoder would effectively change Huber’s
principle of operation or otherwise render Huber inoperable for its intended
purpose. (App. Br. 8-10.) We find no evidence in the record before us that
Huber’s video blanking interval decoder would no longer operate if
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Application 10/176,908

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modified to receive video data tagged with Suchter’s priority values. In
particular, it is not apparent to us how incorporating Suchter’s priority value
into Huber’s tag would prohibit Huber’s video blanking interval decoder
from receiving tagged video data from a cable head end. That is, Appellant
has not demonstrated how the Examiner’s proffered combination would
change Huber’s alleged principle of operation (i.e., receiving tagged video
from a cable head end). (Id. at 8.) Therefore, we conclude that Suchter’s
disclosure of utilizing a priority value to prioritize the importance of data
does not undesirably encumber the functionality of Huber’s video blanking
interval decoder nor does it fundamentally change Huber’s disclosure that
the video blanking interval decoder is capable of both receiving tagged video
data and parsing tags from such data. Accordingly, we find that the
Examiner's proposed modification would not change Huber's principle of
operation or otherwise render Huber inoperable for its intended purpose. It
follows that Appellant has not shown that the Examiner erred in concluding
that the combination of Huber and Suchter renders independent claim 1
unpatentable.
Claims 2 through 21
Appellant does not provide separate arguments for patentability with
respect to independent claims 15 and 19, and dependent claims 2 through 14,
16 through 18, 20, and 21. Therefore, we select independent claim 1 as
representative of the cited claims. Consequently, Appellant has not
shown error in the Examiner’s rejection of independent claims 15 and 19,
and dependent claims 2 through 14, 16 through 18, 20, and 21, for the
reasons set forth in our discussion of independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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V. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 1
through 21 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 1 through 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Vsh

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