Ex Parte Swan et al

Patent Trial and Appeal Board

Dec 29, 2016

13542187 (P.T.A.B. Dec. 29, 2016)

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.
13/542,187 07/05/2012 Mark SWAN 007412.01515 1053
71867 7590 01/03/2017
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
PIERORAZIO, MICHAEL
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
PTO-71867 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK SWAN, WEIDONG MAO, SREE KOTAY,
MARK VICKERS, MOHSIN ROOWALLA, and
CHRIS KENNEDY
Appeal 2016-001183
Application 13/542,187
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 5—9, 24, 26, and 27.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection.
1 Claims 17, 18, 20, 25, and 28—32 were canceled by an amendment filed
with this Appeal. App. Br. 2.
Appeal 2016-001183
Application 13/542,187
THE INVENTION
Appellants’ claimed invention is directed a “content delivery server”
that “allow[s] users to redirect browsed content from one system to another”
(Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method, comprising:
receiving, from a first computing device on a first
network, a user request to tag a video for playback on a
second device associated with a second network;
redirecting, by a centralized content server disposed
between the first network and the second network,
playback of the video to the second device, wherein the
redirecting comprises receiving at least portions of the
video and transcoding the portions of video into a different
format; and
causing the second device to list the video along
with user selected content recorded by the second device.
THE REJECTIONS
Claims 1, 6, 7, 24, and 26 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bennett (US 2006/0031889 Al; Feb. 9, 2006). Final
Act. 3.
Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bennett, in view of Zhang (US 2009/0254672 Al; Oct. 8,
2009). Final Act. 22.
2
Appeal 2016-001183
Application 13/542,187
Claims 8, 9, and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bennett, in view of Agnihotri (US 2012/0117590 Al;
May 10, 2012). Final Act. 26.
ISSUE
The pivotal issue is whether the Examiner erred in finding that
Bennett discloses “causing the second device to list the video along with
user selected content recorded by the second device,” as recited in claim 1.
ANALYSIS
Appellants argue the Examiner erred because Bennett “does not
describe how the reformatted television program would be listed on the
user’s cell phone 119, and does not have any figures showing how the cell
phone 119 (or any other device) might list the reformatted content made
available by the VPS” (App. Br. 5). The Examiner finds “Bennett teaches a
system wherein the STB [set-top box] is bi-directionally linked with each
recipient device like cell phone 119” (Ans. 4, citing Bennett 116), which
“allows a family member ‘to watch programs of one’s own interest, at one’s
own convenience, anywhere in the house’” (Ans. 4., quoting Bennett 145).
The Examiner additionally finds Bennett teaches the display of a list of
videos, because:
the user requests for a pre-recorded video program. For this, the
user logs on to a website of choice in the Internet using a web
browser and selects the desired programs from a list provided by
the pre-recorded audio/video program provider
3
Appeal 2016-001183
Application 13/542,187
(Ans. 5, quoting Bennett | 76). However, the quoted portion refers to a list
available for download, not a list of “user selected content recorded by the
second device” as required by the claim.
Accordingly, we reverse the Examiner’s anticipation rejection2 of
claim 1, and for the same reasons the anticipation and obviousness rejections
of claims 3, 5—9, 24, 26, and 27.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection and separately reject independent claim 1 under pre-
AIA 35 U.S.C. § 103(a) as obvious over Bennett. We incorporate the
Examiner’s rejection of claim 1 for Bennett’s disclosure of all elements of
the claim except as to the limitation “causing the second device to list the
video along with user selected content recorded by the second device.”
Regarding this limitation, we find one of ordinary skill in the art at the time
of the invention would modify Bennett and include the display of a list on
the user device of both (1) “pre-recorded audio/video programs” available
for download (see Bennett || 75—79 and Fig. 8) and (2) “user selected
content recorded” by the user device, in order to reduce the likelihood that a
user would inadvertently re-purchase content already present on the user
device. An artisan is presumed to possess both skill and common sense.
2 ‘“For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every
element of the claimed invention must be identically shown in a single
reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir.
1988)).
4
Appeal 2016-001183
Application 13/542,187
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
We note the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination. We have rejected independent claim 1
based on our authority under 37 C.F.R. § 41.50(b). We have not, however,
reviewed the remaining claims to the extent necessary to determine whether
those claims are unpatentable under 35 U.S.C. §§ 102(b) or 103(a). We
leave it to the Examiner to ascertain whether claims dependent from claim 1
should be rejected on similar grounds to those set forth herein or in
combination with additional prior art.
CONCLUSION
The Examiner erred in finding that Bennett discloses “causing the
second device to list the video along with user selected content recorded by
the second device,” as recited in claim 1.
DECISION
We reverse the Examiner’s anticipation and obviousness rejections of
claims 1, 3, 5—9, 24, 26, and 27.
We newly reject claim 1.
37 C.F.R. § 41.50(b) provides a “new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
5
Appeal 2016-001183
Application 13/542,187
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
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). See
37 C.F.R. § 41.50(f).
REVERSED;
37 C.F.R, $ 41.50(b)
6