Ex Parte Ng et al

Patent Trial and Appeal Board

Oct 24, 2016

12635229 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/635,229
7590
Patrick S, Yoder
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269
12/10/2009
10/25/2016
FIRST NAMED INVENTOR
Sheau Ng
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
ATTORNEY DOCKET NO.
242336-1/YOD
NBCU:0018
CONFIRMATION NO.
8954
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
MAILDATE DELIVERY MODE
10/25/2016 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
Exparte SHEAUNG and
NAGARAJAN GOP ALAKRISHNAN
Appeal2015-005266
Application 12/635,229
Technology Center 2400
Before JOSEPH L. DIXON, MATTHEW J. McNEILL, and
SCOTT E. BAIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-10 and 12-21 are pending. Claim 11 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to a viewer-personalized broadcast and data
channel content delivery system and method. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1 Appellants indicate that NBCUniversal Media, LLC is the real party in
interest. (App. Br. 2).
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Application 12/635,229
1. A method for controlling distribution of media content, via
an analysis system, comprising:
receiving data from a particular receiver of a plurality of
receivers, the data being indicative of at least one of:
at least one selection by a user of the particular
receiver of at least one of a plurality of content streams
broadcast to the plurality of receivers without regard to
selection of any particular content stream by any particular
receiver;
a state of the particular receiver, a user of the
particular receiver, or both;
historical program selections of the particular
receiver, the user of the particular receiver, or both;
program selection listing preferences of the
particular receiver, the user of the particular receiver, or
both;
settings for current or future recording of program
selections of the particular receiver, the user of the
particular receiver, or both; and
special orders of present program offerings, future
program offerings, or both, placed by the particular
receiver, the user of the particular receiver, or both;
analyzing the received data to identify a time-dependent
preference from the particular receiver, the time-dependent
preference indicative of a preference that is valid at a particular
time or time period as opposed to other times or time periods;
transmitting system configuration data configured to alter
or enhance performance of the particular receiver to the
particular receiver based upon the identified time-dependent
preference; and
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altering a system configuration of the particular receiver
based upon the transmitted system configuration data and the
particular time or time period.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cristofalo et al.
Wiser et al.
US 2002/0194589 Al
US 2013/0014159 Al
REJECTION
The Examiner made the following rejection:
Dec. 19, 2002
Jan. 10, 2013
Claims 1-10 and 12-21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Cristofalo further in view of Wiser.
ANALYSIS
With respect to independent claims 1, 9, 19, and 21, Appellants set
forth separate arguments for patentability. Therefore, we will address each
of Appellants' groups separately.
Independent claim 1
With respect to independent claim 1, Appellants contend:
As discussed in paragraph 40 of the specification, system
configuration information may be time-dependent. In one
example, viewing patterns may be established in context to time,
which may result in the system configuration being altered based
upon time in coordination with viewing patterns. Specification,
paragraph 40. Thus, claim 1 recites, inter alia, 1) identifying a
time-dependent preference (e.g., a time-based viewing pattern)
by analyzing data received from a particular receiver, 2)
transmitting system configuration data configured to alter or
enhance performance of the particular receiver, and 3) altering a
system configuration of the particular receiver based upon the
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transmitted system configuration data and the particular time or
time period.
(App. Br. 9) (emphasis added). Appellants further contend that the prior art
references relied upon by the Examiner:
do not appear to transmit system configuration data configured
to alter or enhance performance of the particular receiver to the
particular receiver based upon the identified time-dependent
preference analysis,[]as recited by claim 1. (Emphasis added.)
Further, because they do not transmit time-dependent system
configuration data, the references certainly do not "alter[] the
system configuration of the particular receiver based upon the
transmitted system configuration data and the particular time or
time period."
(App. Br. 9) (emphasis added). Appellants proffer that the content of the
information is different without setting forth any substantive difference in
the prior art. Appellants contend that the prior art references do not
"transmit system configuration data configured to alter or enhance
performance of the particular receiver to the particular receiver based upon
the identified time-dependent preference analysis." (ii .. pp. Br. 9).
Appellants further contend that the time-specific transmission of data from
the Wiser reference does not teach the claimed invention. (App. Br. 9-12)
The Examiner finds that the Wiser reference discloses the use of time
based preferences and routines of the end-user. (Ans. 16-17 (citing Wiser
iTiT 188, 259, 346, 204, and 109)).
We note that the Appellants' Reply Brief responds to the Examiner's
response to arguments section (Ans. 11-16) which appears to be a carryover
from the Examiner's prior office action. The Examiner's response to
arguments section responding to Appellants' Appeal Brief is set forth at
pages 16-21 of the Examiner's Answer.
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We find a single reply by Appellants to the Examiner's responses to
Appellants' arguments and to the further citations proffered by the Examiner
to support the Examiner's findings. (Reply Br. 3). We disagree with
Appellants and agree with the Examiner's findings that the Wiser reference
is concerned with determining routines and preferences of the end-user of
the set top box.
Appellants generally contend advertisement playback time and
content push "are simply not analogous to 'transmitting system
configuration data configured to alter or enhance performance of the
particular receiver to the particular receiver based upon the identified time-
dependent preference analysis,' as recited by claim 1." (Reply Br. 3).
Appellants further argue:
the examiner failed to address the argument that her analysis of
advertisements being analogous to configuration data is
erroneous. The appellants maintain that content is entirely
different that configuration data and thus the examiner's
rejection is erroneous. Even if the advertisement campaign could
somehow be interpreted as configuration data, which the
appellants refute, there does not appear to be any disclosure that
the advertisement campaign is transmitted based upon a time-
dependent preference obtained through analysis of the recited
received data.
(Reply Br. 4).
Appellants proffer a distinction between the configuration data and
targeted content data (Reply Br. 4), yet Appellants do not provide any
limiting context for the configuration data. From our review of Appellants'
Specification, we find that the Specification mentions the "time-dependent
preference" in only paragraph 40 of the Specification. Consequently,
Appellants have not identified any limiting context to distinguish the
claimed configuration data or time-dependent preference.
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We further find that the Wiser reference discloses the use of "PDP
Module (Predictive Delivery and Personalization) (107)" and set top box
PDP 118a---c in Figure 1. While the Examiner cites to a number of
paragraphs to support the Examiner's findings and conclusion of
obviousness (Ans. 5---6), we further find the Wiser reference is replete with
various embodiments which predict and personalize the delivery of content
and the set top box. While the Wiser reference discloses the use of the
personalization and prediction generally at the set top box, the Wiser
reference additionally teaches and suggests the personalization and
prediction throughout the system (see elements 107 versus 118 a---c ). (See
Wiser i1i175, 81 ).
Specifically, paragraph 81 of the Wiser reference discloses:
the broadband distribution system 110 may be used to send other
types of control information, content schedules, and software
updates to individual receiver controllers/STEs. In still some
embodiments, the receiver controllers/STEs 117 is configured to
communicate with each other so that if one receiver
controller/STE (e.g. 117 A) received a corrupted version of a
program file, the one receiver controller/STE (e.g. 117 A) can
obtain an uncorrupted version or a portion of the uncorrupted
program to replace or repair the corrupted version by
communicating with another receiver controller/STE (e.g.
117E).
(Emphasis omitted). We find the "software updates" would be a type of
configuration data. Further, in paragraph 108 (see between cited i-fi-f l 02,
105, 109 (Ans. 6, 17)), the Wiser reference discusses the PDP which is
discussed throughout the Wiser reference regarding the personalization and
changes to configuration. Additionally, paragraphs 128-130 disclose the
PDP module, which learns and determines preferences (some time-
dependent) based upon the user viewing behavior.
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We further find Figures 5 (cited Ans. 6) and 6 of the Wiser reference
disclose the interaction of the content server and the set top box with the
PDP module 610. We agree with the Examiner that the Wiser reference
discloses many varied and interrelated embodiments with communication
and preferences along with modifications of the set top box configuration
with regards to the PDP module for improved or enhanced performance as it
relates to the user or users. (See Wiser i1i174, 75, 78, 81-88, 108, 109, 119-
134 (Fig. 6), 268, 269).
The Examiner cites to paragraph 269 in the Examiner's Answer (Ans.
6) which discloses:
"Top Picks for John" list includes shows that the intelligence
components of the receiver controller and/or other parts of the
content delivery system has selected to present to John based on
John's preferences, habits, and routines, as well as those of other
viewers. Similarly, the "John's Channels" list includes linear and
nonlinear programs categorized by channel and captured by the
receiver controller for John, again based on John's preferences,
habits, and routines as well as those of other viewers.
(Wiser i1269).
We find Appellants' Specification states "[f]or example, unlike
conventional broadcast paradigms, the system allows for customization of
control parameters, system settings, and configurations of particular
systems" but Appellants' Specification does not define any configuration
data to limit the context thereof. (Spec. 46). Consequently, we find
Appellants' generalized argument regarding the claimed steps of:
transmitting system configuration data configured to alter
or enhance performance of the particular receiver to the
particular receiver based upon the identified time-dependent
preference; and
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altering a system configuration of the particular receiver
based upon the transmitted system configuration data and the
particular time or time period
does not show error in the Examiner's underlying factual findings and the
Examiner's reasoned conclusion of obviousness of independent claim 1 and
dependent claims 2-7, not separately argued.
Independent claim 9
With respect to independent claim 9, we note that the claim appears to
have a number of antecedent bases issues which should be remedied in any
further prosecution on the merits.2
Appellants contend that the cited prior art does not relate to
determining a preference for a target-audience based upon data received
from a particular subset of target-audience receivers. (App. Br. 13-14).
However, the language of independent claim 9 does not perform any
alteration or configuration, and the proffered distinction is in an intended use
of the information which does not distinguish the claimed invention. 3
2 Claim 9 recites "a particular subset of target-audience receivers" and
subsequently refers to "the particular receiver." It is unclear if the method is
performed with respect to each of the particular receivers and if the analysis
is performed on the subset of receivers or on each of the individual particular
receivers. As a result, it is unclear whether the transmitting is to the
individual particular receiver or to the subset of target-audience receivers?
Because Appellants merely argue the "subset" limitation (App. Br. 13-14),
we limit our review to this limitation. Only those arguments actually made
by the Appellants have been considered in this decision. Arguments which
the Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
3 "An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
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Additionally, the "configuration data" in claim 9 may be deemed to be
non-functional descriptive material because the information is not used to
perform any function in the claimed invention. 4
The Examiner relies upon paragraphs 4, 12, 17, and 40 of the
Cristofalo reference to teach and suggest the claimed limitation. (Ans. 13,
18). We agree with the Examiner that the Cristofalo reference explicitly
recites that "the user profile system 306 collects information about each of
the users or groups of users receiving programming from the transmission
system 302." (Cristofalo i-f 40) (emphasis omitted). Appellants have not
identified how a "particular subset of target-audience receivers" is different
than a "group" or an individual receiver as taught by the Cristofalo
reference. The language of independent claim 9 is broad enough to be a
single receiver and the recited data is directed to "the data being indicative
of at least one of at least one of .... " Furthermore, the recited
"configuration data" is directed to a single particular receiver.
Consequently, Appellants' argument does not show error in the Examiner's
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[s]uch
statements often ... appear in the claim's preamble" (In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987)), a statement of intended use or purpose can
appear elsewhere in a claim. Id.
4 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) ("Lowry does not claim merely the information
content of a memory .... Nor does he seek to patent the content of
information resident in a database"). See also Ex parte Nehls, 88 USPQ2d
1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (ajf'd, No. 06-1003 (Fed. Cir. June
12, 2006) (Rule 36)); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI
2005) (informative), ajf'd, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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factual findings or the Examiner's ultimate conclusion of obviousness of
independent claim 9 and its respective dependent claims 10, 12-17, and 20
not separately argued.
Independent claim 19
With respect to independent claim 19, Appellants contend that the
Examiner has not shown the prior art teaches or suggests the "opt-in"
limitation, which is not recited in the language of claims 1-3. (App. Br. 14--
15). The Examiner summarily refers to the rejection of claims 1-3 in the
statement of the rejection (Final Act. 11 ), and we agree with the Appellants
that claims 1-3 do not include an "opt-in" limitation. In the Response to
Arguments section of the Examiner's Answer, the Examiner attempts to
buttress the lack of a substantive statement of rejection by referring to
paragraph 44 of the Cristofalo reference. (Ans. 18-19; see also Final Act.
14). We note that the Examiner did not mention paragraph 44 in the
rejection of claims 1-3, but does mention paragraph 44 in the Response to
Arguments section of the Final Office Action. (Final Act. 14).
Consequently, the Examiner has not addressed the language of independent
claim 19, but merely attempts to patch the clear failure in the prosecution.
In the response to arguments section of the Examiner's Answer, the
Examiner additionally identifies the Wiser reference regarding a viewer
selection screen. We find the Examiner had not previously addressed this
portion of the Wiser reference with regards to claim 19 nor claims 1-3 the
Final Office Action.
Appellants argue that paragraph 44 of the Cristofalo reference and
Figure 29 of the Wiser reference do not disclose or suggest an "opt-in"
functionality where the transmission only occurs "when the setting of the
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particular receiver is set to opt-in." (Reply Br. 4--5). We agree with
Appellants and find the Examiner's treatment of claim 19 falls short of
setting forth factual findings directed to the express language recited in
independent claim 19 because the Examiner has not set forth an express
rejection addressing all the limitations of the claim. As a result of the
Examiner's piecemeal analysis of the proffered distinction, the Examiner has
not addressed the "opt-in" limitation as it relates to the claimed transmission.
As a result, we cannot sustain the rejection of claim 19 and its respective
dependent claims.
Independent claim 21
Appellants contend that the Examiner has not shown the prior art to
teach or suggest the claimed step of:
transmit[ ting] system configuration data configured to
alter operation of a second particular receiver to the second
particular receiver based upon the identified preference from the
first particular receiver, such that the operation of the second
particular receiver is altered to behave similarly to an operation
of the first particular receiver.
(App. Br. 16; Reply Br. 5). The Examiner relies upon paragraph 41 of the
Cristofalo reference and the Examiner generally speculates that the data
storage unit:
may be remotely accessed, may be provided with the
transmission system 302, with the user profile system 306, with
the media object creators 308, or at any other location in the
programming system 300, [0041], Fig. 3. It means that the stored
data in the storage within the user profile can provide the
setting/configuration data to a receiver to a different location
such that the receiver in the second location behaves similarly to
the receiver in the original location.
(Ans. 20) (emphasis omitted).
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Appellants contend that "Cristofalo' s disclosure of various locations
for a data storage device does not teach or even suggest such a receiver-
mimicking feature." (Reply Br. 5). We agree with Appellants that the
Examiner has not shown that either the Cristofalo or Wiser reference teaches
or suggests the claimed invention. As a result, we cannot sustain the
rejection of independent claim 21.
Dependent Claims 8 and 18
Appellants elect to argue claims 8 and 18 together, and Appellants
present similar arguments advanced with respect to independent claim 21.
(App. Br. 17-19).
The Examiner further finds paragraphs 96 and 97 of the Cristofalo
reference and paragraph 230 of the Wiser reference teach the limitations of
claims 8 and 18. (Ans. 20-21 ). We note that the language of dependent
claims 8 and 18 are of differing scope (claim 8 recites "configuration data"
and claim 18 recites "data"). We select dependent claim 18 as the
representative claim for the group and address Appellants' arguments
thereto. 37 C.F.R. § 41.37(c)(l)(iv). We agree with the Examiner that
paragraph 230 of the Wiser reference discloses making suggestions to a
second user from the first particular user.
As a result, Appellants' argument does not show error in the
Examiner's rejection of representative dependent claim 18 and dependent
claim 8 not separately argued.
CONCLUSIONS
The Examiner did not err in rejecting independent claims 1 and 9 and
their respective dependent claims 2-8, 10, 12-18, and 20 under 35 U.S.C.
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§ 103(a), but the Examiner erred in rejecting independent claims 19 and 21
under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we sustain the Examiner's rejection of claims
1-10, 12-18, and 20 under 35 U.S.C. § 103(a), but we reverse the
Examiner's rejection of claims 19 and 21under35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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