Ex Parte Videtich

Patent Trial and Appeal Board

Mar 14, 2013

10135300 (P.T.A.B. Mar. 14, 2013)

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.
10/135,300 04/30/2002 Matt C. Videtich GP-302285 8577
7590 03/14/2013
ANTHONY LUKE SIMON
General Motors Corporation
300 Renaissance Center
P.O. Box 300, Mail Code 482-C23-B21
Detroit, MI 48265-3000
EXAMINER
NGUYEN, THUONG
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
03/14/2013 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
____________

Ex parte MATT C. VIDETICH
____________

Appeal 2010-010844
Application 10/135,300
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-17 and 19-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The claims are directed to modifying a satellite radio subscription.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method for modifying a satellite radio
subscription in a mobile vehicle, the method comprising:

receiving at least one satellite radio subscription
modification request at a service provider;

retrieving current satellite radio program subscription
status at the service provider;

determining at least one adjustment required to
implement the at least one modification; and

sending the determined adjustments required to
implement the at least one modification.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hoguta US 6,725,303 B1 Apr. 20, 2004
(filed Aug. 31, 2000)

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REJECTIONS
Claims 10-13 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.1
Claims 1-17 and 19-24 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Hoguta.

ANALYSIS
The Indefiniteness Rejection
The Examiner entered a new ground of rejection under § 112, second
paragraph (Ans. 3-6)2 after the Board issued an order remanding the appeal
(Order mailed April 12, 2010). In the subsequent Reply Brief, Appellant
stated that “[r]esponsive to the Examiner’s new grounds of rejection, claims
10 and 13 are not appealed” (Reply Br. 2).3 Appellant further states that “in
order to expedite this matter without further delay, Appellants [sic] are no
longer appealing the effected claims” (Reply Br. 4).
“If appellant fails to respond to a new ground of rejection made in an
examiner’s answer by either filing a reply brief or a reply under 37 CFR
1.111 within 2 months from the mailing of the examiner’s answer, the

1 Although the Examiner’s statement of the rejection only includes claims 10
and 13 (Ans. 3), the limitation “means for determining . . .” which forms the
basis for rejection of claim 10 is also present in claims 11 and 12 by virtue
of their dependence on claim 10. We thus find that the rejection under
§ 112, second paragraph, applies to claims 10-13.
2 We reference the Examiner’s Answer mailed May 12, 2010, throughout the
opinion.
3 We reference the Reply Brief filed July 19, 2010, throughout the opinion.
Further, we note that the Reply Brief does not contain page numbers, but
that we refer to the number of the page starting with the page titled
“Appellant’s Reply Brief.”
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appeal is sua sponte dismissed as to the claims subject to the new ground of
rejection.” MPEP § 1215.03. Although Appellant has filed a Reply Brief in
this case, the Reply Brief does not substantively respond to the new ground
of rejection. Rather, it is clear that Appellant is “no longer appealing the
effected claims” (Reply Br. 4). Accordingly, the appeal is dismissed with
respect to claims 10-13 (see footnote 1).
The proper course of action upon dismissal following a new ground of
rejection is for the Examiner to “use form paragraph 12.179.02 to notify the
appellant of the dismissal and cancel those claims” (MPEP § 1215.03).
However, rather than remand to the Examiner for this sole purpose, we
proceed to address the remaining claims on appeal and leave it to the
Examiner to cancel dismissed claims 10-13 following this decision.

The Anticipation Rejection
Appellant contends:
Every pending claim requires “modifying” a subscription
(claims 1, 10, and 14 are independent, and each of these
embodies the noted limitation). And in order for a subscription
(or anything else) to be considered “modified,” it has to change.
A subscription that is not changed is not “modified.”

In Hoguta, the user’s subscription does not change.
Hoguta describes a system for customizing a user interface of a
terminal to match a subscriber’s preferences. The user’s
subscription is not changed—rather, the terminal interface is
changed, or “customized,” to match the subscription. Every
section cited by the examiner confirms that this is the case. As
such, Hoguta obviously does not teach “modifying” a
subscription.

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(App. Br. 4).4 We disagree.
We begin by construing the claim 1 term “satellite radio subscription”
according to the broadest reasonable interpretation in light of the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellant has not pointed to any definition of “satellite radio subscription,”
and we find no express definition in the Specification. Although the
Specification provides that “[i]n one embodiment, the user requested
programs may be provided in the form of packages and referred to as a
satellite radio program subscription (SRPS)” (Spec. 6:10-12), this definition
is merely exemplary, and in any case it relates to a “satellite radio program
subscription,” in contrast to claim 1 which recites modifying the broader
“satellite radio subscription.”
However, we can infer the meaning of “satellite radio subscription”
from the system required to implement such subscription. The Specification
describes, as shown in Figure 1, “a system for operating a satellite radio
subscription service in a mobile vehicle, in accordance with the present
invention, and may be referred to as a mobile vehicle communication system
(MVCS) 100” (Spec. 5:6-7). The MVCS includes “one or more mobile
vehicle communication units (MVCU) 110, one or more audio devices 115, .
. . one or more radio carrier systems 130, one or more satellite broadcast
systems 140, one or more communication networks 150, . . . and one or
more service providers 170” (Spec. 5:8-14; see Figure 1).
In operation, a service provider 170 may utilize one or more
portions of the aforementioned communications network to
communicate subscriber requested programming to audio
device 115. The subscriber requested programming may then

4 We reference the Appeal Brief filed June 16, 2009, throughout the opinion.
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be accessed to by audio device 115 utilizing one or more radio
broadcast system 130 and satellite broadcast system 140
segments.

(Spec. 9:16-20). Thus, a “satellite radio subscription” is a service including
the delivery of subscriber requested programming to a subscriber via
satellite and other communications networks. Accordingly, the “satellite
radio subscription modification request,” as recited in claim 1, encompasses
a request to change not only what programming can be delivered to a
subscriber’s audio device, but how it is delivered. While the Specification
provides that “a user may request a [satellite radio subscription modification
(SRSM)] to add or remove programming individually or as part of a
package” and that “a user may request a SRSM to remove a specific
program from a package due to objectionable content, such as, a mature
rating” (Spec. 11:13-17), these are merely exemplary modifications. As
discussed above, “satellite radio subscription” is reasonably interpreted to
broadly encompass the service of program delivery, not simply the package
of programs a subscriber can access. Therefore, the claimed “satellite radio
subscription modification request” is not limited simply to changing what
programs can be delivered, but rather it includes changing how programs are
delivered.
With the above construction, we agree with the Examiner (Ans. 7, 11)
and find that Hoguta describes the disputed feature, namely, “receiving at
least one satellite radio subscription modification request at a service
provider,” as recited in claim 1. Specifically, Hoguta describes a process
that monitors a network for a “request from a terminal 106-120 to customize
the terminal or set of terminals 106-120” (Hoguta, col. 14, ll. 56-57), where
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the terminals can be “mobile satellite receivers” (Hoguta, col. 5, ll. 18-33).
After receiving the customization request and retrieving information relating
to the requesting subscriber,
the process communicates (i.e., performs the necessary send
and receive dialog) the information retrieved . . . to the network
101, the communication links 124, the back office systems 214,
the server/storage devices 126, and the terminal or set of
terminals 106-120 which the subscriber has requested to be
personalized, as necessary to establish the customized type and
quality of service, network connection, user interface, terminal
functionality attributes, or content access and copying rights,
commensurate with the subscriber’s profile.

(Hoguta, col. 15, ll. 20-29). As shown here, Hoguta’s subscriber can
customize, among other things, the quality of service at a particular mobile
satellite receiver terminal. That is, Hoguta’s subscriber can request
customization of how content is delivered. Although Appellant emphasizes
that Hoguta’s subscriber customization is “commensurate with the
subscriber’s profile” (App. Br. 5), there is no requirement in claim 1 that the
modification change the subscriber’s profile. In other words, claim 1 does
not specify whether the modification is required to change the pre-existing
contractual bounds defined in a subscriber’s profile, and thus it encompasses
changes to a satellite radio subscription—i.e., changes to what is delivered
or how it is delivered—within any such bounds of a subscriber’s profile.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-9, 14-17, and 19-24 not separately argued.

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CONCLUSION
The Examiner did not err in rejecting claims 1-9, 14-17 and 19-24
under 35 U.S.C. § 102(e).

DECISION
For the above reasons:
We dismiss the appeal with respect to claims 10-13.
We affirm the rejections of claims 1-9, 14-17, and 19-24.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED

Vsh