Ex Parte Stewart

Board of Patent Appeals and Interferences

Sep 23, 2010

10055758 (B.P.A.I. Sep. 23, 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.
10/055,758 01/23/2002 John Sidney Stewart PU020021 7320
7590 09/24/2010
JOSEPH S. TRIPOLI
THOMSON MULTIMEDIA LICENSING INC.
2 INDEPENDENCE WAY
P.O. BOX 5312
PRINCETON, NJ 08543-5312
EXAMINER
SHANG, ANNAN Q
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/24/2010 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 JOHN SIDNEY STEWART
_____________

Appeal 2009-006552
Application 10/055,758
Technology Center 2400
____________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN,
and MARC S. HOFF, Administrative Patent Judges.

HAIRSTON, 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.

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 5, 6, 8 to 12, 15, 16, and 18. Claims 3, 4, 7, 13, 14,
and 17 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellant’s invention is concerned with a method and system for
providing multimedia presentations on demand in a near on demand
environment (Spec. 1:30-4:3; Fig. 1; Abs.). Appellant discloses and claims a
multimedia presentation method and system that (i) authorizes a subscriber
request for performance of a selected multimedia presentation, and (ii)
prevents playback of authorized recordings of selected multimedia
presentations based on the detection of the “completion” of the selected
presentation (claims 1 and 11; Spec. 14:10-15; Fig. 4; Abs.).
Claim 1, reproduced below with emphasis in italics, is representative
of the subject matter on appeal:
1. A method for providing multimedia presentations on demand in a
near on demand environment, comprising:
a) providing beginning segments for pre-recording by subscribers
where each beginning segment corresponds to ones of a plurality of
multimedia presentations, each beginning segment having a duration at least
as long as a predetermined time interval;
b) transmitting each one of said plurality of multimedia presentations
concurrently on a plurality of channels with identical presentations
transmitted on a different channel of said plurality of channels, and with a
start time of each transmission having a periodic interval not exceeding said
predetermined time interval,

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c) responding to a subscriber request for performance of a selected
one of said plurality of multimedia presentations by providing said
subscriber an authorization to commence playback of one of said beginning
segments corresponding to said selected one of said plurality of multimedia
presentations,
said authorization comprises at least one of an authorization to
commence recording said selected one of said plurality of multimedia
presentations for which broadcast has already begun, and to commence
playback of said corresponding one of said beginning segments, and
preventing playback of said recording of said selected one of said
plurality of multimedia presentations upon completion of said presentation.
(Claim 1 (emphasis added)).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoshizawa US 6,002,694 Dec. 14, 1999
Arsenault US 6,701,528 B1 Mar. 2, 2004
(filed Jan. 26, 2000)

The following obviousness rejections are before us for review:
Claims 1, 2, 5, 6, 8 to 12, 15, 16, and 18 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Arsenault and Yoshizawa.
In the rejection, the Examiner relies upon Arsenault as describing all
of the features recited in independent claims 1 and 11 of a method and
system for providing multimedia presentations on demand in a near on
demand environment, except for preventing playback of a recording of a
selected presentation when that presentation is completed (Ans. 3-4). The
Examiner relies upon Yoshizawa as describing the feature common to each
of independent claims 1 and 11 of preventing playback of the recording of a

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selected presentation upon completion of the presentation (Ans. 4, citing
column 5, lines 46 to 53 of Yoshizawa)). The Examiner interprets
“completion of said presentation” (claim 1) and “presentation completion”
(claim 11) as meaning the “‘end’ of viewing/re-viewing within a specific
time” (Ans. 4). Therefore, the Examiner reasons, the viewer is not able to
view or re-review the presentation outside of the specific time period unless
the viewer has paid for the request again (Ans. 4). The Examiner concludes
for the first time in the Response to Argument section of the Answer, that “it
would have been obvious to one of ordinary skill in the art to modify the
Arsenault system, to set up other time periods (duration of completion, e.g.,
an hour, two hours, etc.,) and prevent playback outside [these] time periods”
(Ans. 7).
Appellant discloses the following regarding the prevention of
playback of a presentation upon completion of playback:
Playback of the multimedia presentation can
then terminate upon reaching the end of the record
320 at time Tstop, and shown in step 510. After
the playback of the presentation is complete, the
record of the selected programming or multimedia
presentation can be inhibited, removed or erased
from the multimedia recorder 210, thereby
preventing the user from re-performing that
particular recording of the presentation.

(Spec. 14:10-15 (emphasis added)).
Thus, Appellant describes preventing re-performance (i.e., re-
viewing) of the presentation after a playback of the presentation has
been completed.

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In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
On the record before us, we find no supportive evidence for the
Examiner’s assertion (Ans. 4 and 6-7) that Yoshizawa discloses or
suggests preventing playback of a presentation upon completion of the
presentation. Specifically, we find that column 5, lines 46 to 53 of
Yoshizawa discloses providing for “re-viewing” of the presentation
upon completion of the presentation within a specified time period,
and not prevention of playback as set forth in claims 1 and 11.
Yoshizawa only prevents playback of a presentation in response to the
detection of the expiration of a specific time period, and after that
time period expires a user must pay to view (see col. 5, ll. 46-53). In
other words, Yoshizawa prevents playback upon completion of a time
period, not upon completion of the presentation itself. Thus, when
presentation is completed, Yoshizawa allows for re-viewing instead of
preventing a re-viewing (as long as the time period has not expired).
Id.
Appellant argues inter alia (App. Br. 5-8; Reply Br. 3-4) that (i)
completion of a presentation as set forth in claims 1 and 11 means the end of
a viewing of a presentation, and does not mean the reviewing of a

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presentation; and (ii) Yoshizawa prevents a program from being re-viewed
upon the expiration of a period of time and not in response to a completion
of viewing; and (iii) Arsenault and Yoshizawa, alone or in combination, do
not disclose or suggest preventing playback of a selected presentation after
such a presentation is completed. In light of our findings with respect to
Yoshizawa, we find all of Appellant’s arguments to be persuasive.
Turning to the Examiner’s rationale for making the suggested
modification to the on demand method and system teachings of Arsenault,
we find that the Examiner’s rationale (Ans. 6-7) is nothing more than
unsubstantiated conclusions. In the absence of evidence to support the
conclusions reached by the Examiner, and in view of our findings with
respect to Yoshizawa, we will not sustain the obviousness rejection of
claims 1, 2, 5, 6, 8 to 12, 15, 16, and 18. In summary, (i) the Examiner has
not established a factual basis to support the legal conclusion of obviousness
(see Fine, 837 F.2d at 1073), and (ii) the Examiner’s articulated reasoning in
the rejection does not possess a rational underpinning to support the legal
conclusion of obviousness. KSR, 550 U.S. at 418.
The decision of the Examiner to reject claims 1, 2, 5, 6, 8 to 12, 15,
16, and 18 is reversed.

REVERSED

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KIS

JOSEPH S. TRIPOLI
THOMSON MULTIMEDIA LICENSING INC.
2 INDEPENDENCE WAY
P.O. BOX 5312
PRINCETON, NJ 08543-5312