Ex Parte McKenna et al

Board of Patent Appeals and Interferences

Sep 24, 2010

09896921 (B.P.A.I. Sep. 24, 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.
09/896,921 06/29/2001 Lee R. McKenna L294.12-0012 7681
164 7590 09/27/2010
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
CHOWDHURY, SUMAIYA A
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
09/27/2010 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 LEE R. MCKENNA, CLAY B. MEYER,
and JAMES L. FENNO
_____________

Appeal 2009-012448
Application 09/896,921
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR.,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 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 2009-012448
Application 09/896,921

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-11 and 13-27. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellants’ claimed invention is directed to delivering entertainment
content to individual sites. A sites file identifies the digital file to be
transmitted and indentifies the intended recipient of that file. Based upon
the information contained in the sites file, a digital content receiver checks
whether the digital files are intended for its site and checks a directory of
digital content already stored by a digital content server at the site. See
Spec. 3:12-28.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of delivering digital entertainment content to a site
having an in-room entertainment system including a digital content receiver,
a digital content server, a distribution network and a plurality of guest
terminals for selecting and receiving entertainment content transmitted from
the digital content server over the distribution network, the method
comprising:
opening a first reception channel on the digital content receiver at the
sites;
transmitting via satellite, to the first reception channel at the site, a
sites file containing an identification of a digital file to be transmitted
containing the digital entertainment content and an identification of sites to
receive the digital file;
Appeal 2009-012448
Application 09/896,921

3
opening a second reception channel on the digital content receiver at
the site if it is identified in the sites file and if the digital file has not
previously been received;
transmitting via satellite, to the open second reception channel at the
site, the digital file;
receiving the digital file with the digital content receiver; and
transferring the digital entertainment content contained in the digital
file from the digital content receiver to the digital content server.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kauffman US 5,260,778 Nov. 9, 1993
Hendricks US 5,600,573 Feb. 4, 1997
Muckle US 5,603,077 Feb. 11, 1997
Budow US 5,625,864 Apr. 29, 1997
Nemirofsky US 5,761,601 Jun. 2, 1998
Philips US 2002/0069418 A1 Jun. 6, 2002
Eldering US 2002/0083443 A1 Jun. 27, 2002
Goodman US 6,427,238 B1 Jul. 30, 2002
Legate US 6,735,776 B1 May 11, 2004
Rowe US 6,792,615 B1 Sep. 14, 2004
The following rejections are before us for review:
1. The Examiner rejected claims 1, 5, 6, 8, 15, 16, 18, 19, 22, 23, 25,
and 27 under 35 U.S.C. § 103(a) as unpatentable over Budow in view of
Kaufman, Hendricks, and Philips.
Appeal 2009-012448
Application 09/896,921

4
2. The Examiner rejected claims 2, 9, 10, and 24 under 35 U.S.C. §
103(a) as unpatentable over Budow in view of Kaufman, Hendricks, and
Philips and further in view of Legate.
3. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Budow in view of Kaufman, Hendricks, and Philips and
further in view of Nemirofsky.
4. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Budow in view of Kaufman, Hendricks, Philips, and
Legate and further in view of Nemirofsky.
5. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Budow in view of Kaufman, Hendricks, Philips, and
Legate and further in view of Rowe.
6. The Examiner rejected claims 7 and 26 under 35 U.S.C. § 103(a)
as unpatentable over Budow in view of Kaufman, Hendricks, and Philips
and further in view of Muckle.
7. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Budow in view of Kaufman, Hendricks, Philips, and
Legate and further in view of Muckle.
8. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Budow in view of Kaufman, Hendricks, and Philips and
further in view of Official Notice.
9. The Examiner rejected claims 20 and 21 under 35 U.S.C. § 103(a)
as unpatentable over Budow in view of Kaufman, Hendricks, and Philips
and further in view of Eldering.
Appeal 2009-012448
Application 09/896,921

5
ISSUE
The pivotal issue is whether the combination of Budow in view of
Kaufman, Hendricks, and Philips teaches the limitation of: “opening a
second reception channel on the digital content receiver at the site . . . if the
digital file has not previously been received” as recited in claim 1.

ANALYSIS
Appellants argue, inter alia, that Philips’s does not teach receiving a
transmitted digital file because the site does not open a second channel to
receive digital entertainment content (App. Br. 20). We are persuaded by
Appellants’ argument.
The Examiner relies on Philips for the teaching of a system in which a
list of tracks (i.e., digital entertainment content) available for download is
compared to a list of tracks stored in the system, and then the stored tracks
are eliminated from the displayed list (Ans. 6 (citing Philips, ¶ [0096])).
However, even if we were to agree with the Examiner that Philips teaches
the comparison of a list of tracks with the tracks stored in the system, we fail
to see how that relates to “opening a second reception channel on the digital
content receiver at the site . . . if the digital file has not previously been
received,” as recited in claim 1. Philips is completely silent as to opening a
reception channel, let alone doing so if the digital file has not previously
been received.
For the reasons articulated supra, we will reverse the Examiner’s
rejection of claim 1 and, for similar reasons, the rejections of claims 2-11
Appeal 2009-012448
Application 09/896,921

6
and 13-27 because the additional references of Eldering, Rowe, Legate,
Goodman, Nemirofsky, Budow, Muckle, Hendricks, and Kauffman, either
alone or in combination, do not cure the cited deficiency.

CONCLUSION
The combination of Budow in view of Kaufman, Hendricks, and
Philips does not teach the limitation of: “opening a second reception channel
on the digital content receiver at the site . . . if the digital file has not
previously been received.” The additional references of Eldering, Rowe,
Legate, Goodman, Nemirofsky, and Muckle, either alone or in combination,
do not cure the cited deficiency.

ORDER
The decision of the Examiner to reject claims 1-11 and 13-27 is
reversed.

REVERSED

babc

KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002