Ex Parte Naidoo et al

Patent Trial and Appeal Board

Jan 31, 2018

13618919 (P.T.A.B. Jan. 31, 2018)

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.
13/618,919 09/14/2012 Surendra N. Naidoo 102005.021581 5410
71581 7590 02/02/2018
Baker & Hostetler LLP (Comcast)
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURENDRA N. NAIDOO and
MICHAEL G. McCOWN
Appeal 2017-008114
Application 13/618,919
Technology Center 2400
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 9-17, 19-28, and 30-36. Claims 8, 18, and 29 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ application relates to a communication system that
integrates multiple services. Spec. ^ 4. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A communication system comprising:
1 According to Appellants, the real party in interest is Comcast Cable
Communications, LLC. See App. Br. 1.
Appeal 2017-008114
Application 13/618,919
a first interface configured to receive first content from a
first service provider via radio frequency;
a second interface configured to receive second content
from a second service provider via a broadband data network;
and
a third interface configured to transmit the first content to
a user device, to transmit the second content to the user device
based upon a determination to interrupt the first content, and to
transmit at least the second content to the user device
independent of a request from the user device,
wherein one or more of the first interface, the second
interface, and the third interface, facilitates two-way
communication between the user device and one or more of the
first service provider and the second service provider.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
David US 5,544,649 Aug. 13, 1996
Peifer US 5,987,519 Nov. 16, 1999
Fernandez US 6,339,842 B1 Jan. 15, 2002
Kondziela US 6,757,358 B1 June 29, 2004
Canova US 7,096,037 B2 Aug. 22, 2006
Allen US 2003/0041333 A1 Feb. 27, 2003
REJECTIONS
The Examiner made the following rejections:
Claims 1, 5, 7, 10, 11, 16, 20, 21, 26, 28, 31, and 33-36 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Peifer and Allen.
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Application 13/618,919
Claims 2, 4, 12, 13, 15, 22, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Peifer, Allen, and Fernandez.
Claims 3, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peifer, Allen, and Kondziela.
Claims 6, 9, 17, 19, 25, 27, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Peifer, Allen, and David.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peifer, Allen, and Canova.
ANALYSIS
The Examiner interprets the independent claim 1 limitation “a third
interface configured ... to transmit the second content to the user device
based upon a determination to interrupt the first content, and to transmit at
least the second content to the user device independent of a request from the
user device” as reciting two separate manners of transmitting the second
content, each with a different constraint. Ans. 6-7. Based on this
interpretation, the Examiner finds Peifer teaches transmitting second content
“independent of a request from the user device,” and that Allen teaches
transmitting second content “based upon a determination to interrupt the first
content,” and concludes it would have been obvious to modify Peifer based
on Allen’s teaching. Final Act. 9-11; Ans. 7-9.
Appellants contend the Examiner’s claim interpretation is
unreasonable, and that claim 1 requires a third interface configured to
transmit second content under two constraints, i.e., “based upon a
determination to interrupt the first content” and “independent of a request
from the user device.” See App. Br. 4-5; Reply Br. 3—4. Appellants further
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Appeal 2017-008114
Application 13/618,919
contend neither Peifer nor Allen teaches transmitting content in a way that
satisfies the two constraints recited in claim 1, and that the Examiner has not
shown why it would have been obvious to arrive at the claimed invention.
App. Br. 5-7. We are persuaded by Appellants’ arguments.
We agree with Appellants that the Examiner’s interpretation of claim
1 is unreasonably broad, and that claim 1 is due Appellants’ narrower
interpretation that requires a third interface configured to transmit second
content under two constraints: “based upon a determination to interrupt the
first content” and “independent of a request from the user device.” This
interpretation is consistent with the Specification. For example, the
Specification describes that television signals received by a patient station
12 may be interrupted from being passed to a TV 38 under such conditions
as
the initiation of a telemedicine session with a patient located at
the patient station 12 by a physician or other health care
professional located at the healthcare provider station 14, the
initiation of a caregiver session by a family member or other
interested person located at the caregiver provider station 16 or
the initiation of a telehealth session by the system management
station 20 ... .
Spec. ^ 44. In other words, the Specification describes an embodiment
where one of a variety of sessions, i.e., “second content,” is transmitted to a
TV 38 by interrupting television signals, i.e., “first content,” independent of
a request by the patient station 12.
Further, we agree with Appellants (App. Br. 5-6) that neither Peifer
nor Allen teaches an interface configured to transmit second content “based
upon a determination to interrupt the first content” and “independent of a
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Application 13/618,919
request from the user device”; the Examiner has conceded as much. See
Ans. 4-5. Moreover, the Examiner’s reason for combining the references
does not adequately show the claimed invention would have been obvious
because it is based on an overly broad interpretation of claim 1 that merely
requires two different manners of transmitting second content, as opposed to
the proper interpretation in which a configuration for transmitting second
content requires two constraints be satisfied. That is, in order to arrive at the
claimed invention, it is not sufficient to show it would have been obvious to
add Allen’s interruption feature to Peifer’s system for “improving system
flexibility and enhancing user convenience.” Ans. 8-9. The fact that
Allen’s interruption feature for accepting a phone call while watching a
television program “enhances] user convenience” (id.) fails to provide a
reason for transmitting second content “based upon a determination to
interrupt the first content” and “independent of a request from the user
device.” The Examiner has not shown that the references themselves or the
knowledge and ordinary creativity ascribed to one of skill in the art would
have led one to create a system with an interface configured to transmit
second content based on the two constraints mentioned above.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 10 and 20 which
recite commensurate limitations, and dependent claims 2-7, 9, 11-17, 19,
21-28, and 30-36.
CONCLUSION
The Examiner erred in rejecting claims 1-7, 9-17, 19-28, and 30-36
under 35 U.S.C. § 103(a).
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Application 13/618,919
DECISION
We reverse the Examiner’s decision to reject claims 1-7, 9-17, 19-
28, and 30-36.
REVERSED
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