Ex Parte Wasilewski et al

Patent Trial and Appeal Board

Jul 22, 2013

11385184 (P.T.A.B. Jul. 22, 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.
11/385,184 03/20/2006 Anthony J. Wasilewski 60374.0032USC1/966176 1288
62658 7590 07/22/2013
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
TILAHUN, ALAZAR
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
07/22/2013 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 ANTHONY J WASILEWSKI and
ARTURO A. RODRIGUEZ

________________

Appeal 2010-011211
Application 11/385,184
Technology Center 2400
________________

Before JEAN R. HOMERE, JASON V. MORGAN, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011211
Application 11/385,184

2
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-7 and 9-24 as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Ellis et al. (WO
00/04707 A1, January 27, 2000) (“Ellis”) and Lawler et al. (US 5,699,107,
December 16, 1997) (“Lawler”).
1

We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a method for transferring digital
home communication terminal (DHCT) settings, including receiving by a
first DHCT a request for transmitting a DHCT setting from the first DHCT
to a second DHCT and transmitting the DHCT setting from the first DHCT
to the second DHCT. Abstract.

GROUPING OF CLAIMS

Because Appellants argue that the Examiner erred for substantially
the same reasons with respect to claims 1-7 and 9-10, we select independent
claim 1 as representative. App. Br. 15. Claim 1 recites:
1. A method for managing a television functionality setting
in a subscriber television system, the method comprising:

providing an option to a user via a first digital home
communication terminal (DHCT), the option enabling the user

1
Claim 8 is canceled.
Appeal 2010-011211
Application 11/385,184

3
to select a television functionality setting corresponding to a
television program;

receiving an input from the user requesting transmission
of a selected television functionality setting from the first
DHCT to a second DHCT located within a different premises
from the first DHCT, the second DHCT being identified by the
user as a destination for receiving the television functionality
setting;

storing the television functionality setting in a memory
device;

transmitting the television functionality setting from the
memory device to the second DHCT, wherein transmitting the
television functionality setting to the second DHCT further
comprises determining that the second DHCT is authorized by a
television system operator to receive the DHCT setting; and

implementing a television functionality associated with
the television functionality setting on a television coupled to the
second DHCT;

wherein the television functionality setting is a reminder
notice regarding a broadcast of a television program for which a
reminder is desired.

App. App’x A-1.

Appellants argue that dependent claims 9, 15, and 21 are
independently patentable and that the Examiner erred for substantially the
same reasons with respect to these claims. App. Br. 15-16, 23, 21. We
therefore select claim 9 as representative of this group:

Appeal 2010-011211
Application 11/385,184

4

9. The method of claim 1, wherein transmitting the
television functionality setting to the second DHCT further
comprises determining that the first DHCT and the second
DHCT are under the same user account.

App. App’x A-2.
Appellants argue that the Examiner erred for substantially the same
reasons with respect to claims 11-16. App. Br. 23. We therefore select
independent claim 11 as representative of this group. Claim 11 recites:
11. A digital home communication terminal (DHCT)
comprising:

a memory device for storing television related data; and

a processor configured to:

enable a user to select a television functionality setting
corresponding to a television program,

receive an input from the user requesting transmission of
a selected television functionality setting to another DHCT
located at a different premises,

store the television functionality setting in the memory
device,

authenticate that the DHCT settings of the other DHCT
are accessible to the user, and

Appeal 2010-011211
Application 11/385,184

5
transmit the television functionality setting from the
memory device to the other DHCT, the television functionality
setting allowing a DHCT to implement a television
functionality associated with the television functionality setting
on a television coupled thereto.

App. App’x A-3.
Because Appellants argue that the Examiner erred for substantially
the same reason with respect to claims 17-24, we select independent claim
17 as representative of this group. App. Br. 30. Claim 17 recites:

17. A server of a television system, the server comprising:

a storage device for storing television related data; and

a processor configured to:

receive a request to transmit a television functionality
setting from a first digital home communication terminal
(DHCT) to a second DHCT located within a different premises
from the first DHCT, the second DHCT identified as a
destination for receiving the television functionality setting,

store the television functionality setting in the storage
device, and

transmit the television functionality setting from the
storage device to the second DHCT responsive to user
authentication by the second DHCT, the television functionality
setting allowing the second DHCT to implement a television
functionality associated with the television functionality setting
on a television coupled to the second DHCT;

Appeal 2010-011211
Application 11/385,184

6
wherein the television functionality setting is a reminder
of an upcoming television program broadcast.

App. App’x A-4.

ISSUES AND ANALYSES
Claim 1
Issue 1
Appellants argue that the combination of Lawler and Ellis fails to
teach or suggest the limitation of claim 1 reciting “wherein transmitting the
television functionality setting to the second DHCT further comprises
determining that the second DHCT is authorized by a television system
operator to receive the DHCT setting.” App. Br. 7. We therefore address
the issue of whether the Examiner so erred.

Analysis
Appellants initially argue that neither Lawler nor Ellis teaches or
suggests a “system operator authorization” and that Lawler’s teaching of a
“head end [that] can monitor all of the reminder tags set by the various
system users” can refer equally to an automated function. App. Br. 8.
The Examiner responds that claim language is construed in the
broadest reasonable interpretation in light of the specification and that,
under such an interpretation, a server or a processor in the head end could
perform the requisite function of “system operator authorization.” Ans. 14.
Moreover, the Examiner further finds that Lawler teaches that
“wherein transmitting the television functionality setting to the second
DHCT” further comprises an interactive viewing system including a
Appeal 2010-011211
Application 11/385,184

7
program guide that allows user selection of a program for which a reminder
is to be set. Ans. 14. The Examiner also finds that such a reminder may be
associated with a particular user or, if there is more than one user, the
reminder is provided to those users. Id. (citing Lawler, co1.3, ll. 57-67; col.
2, ll. 16-21). The Examiner finds that if the associated viewer station is not
in use, or the associated users are not logged in, no reminder is sent. Ans. 9
(citing Lawler, col. 12, ll. 34-43). The Examiner finds that these teachings
demonstrate that a user must be authorized on any DHCT in order to
receive transmitted data and that such a teaching reads directly on claim 1’s
recitation that “the second DHCT is authorized by a television system
operator to receive the DHCT setting.” Ans. 9.
Appellants reply to the Examiner’s latter findings that the language
of claim 1 does not require user authorization, but rather requires that the
second DHCT is authorized. Reply Br. 3. Appellants contend that the
claim language pertains exclusively to device, and not user authorization.
Id. Appellants contend that there is no explicit teaching that there is a
device-authorization determination performed in Lawler when transmitting
the reminder. Id.
We are not persuaded by Appellants’ reasoning. With respect to
Appellants’ initial argument, we agree with the Examiner that the claim
term “system operator,” when read in light of Appellants’ Specification,
does not require that the “system operator” authorizing a functionality to be
sent to the second DHCT need necessarily be a human operator, but that a
broad, reasonable interpretation of the claims could also encompass a server
or processor within the head end performing the requisite authorization.
See, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
Appeal 2010-011211
Application 11/385,184

8
2004); In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997) (“During
examination, claims are to be given their broadest reasonable interpretation
consistent with the specification.”)
With respect to Appellants’ argument in their Reply Brief, viz., that
the claim language pertains exclusively to device, and not to user,
authorization, we are similarly not persuaded. Lawler teaches explicitly
that “in those cases where a viewer station has more than one user it may be
desirable that the reminder be identified with a particular user. To facilitate
this, each user can be allowed to login to a particular viewer station when
that user is using the station.” Lawler, col. 12, ll. 25-28. Furthermore, Ellis
teaches that:
The program guide may allow a unique number to be assigned
to a user so that he or she is able to access his or her program
guide settings at a location outside the home. For example, a
user may visit a neighbor[’]s home to housesit while the
neighbor is out of town. This user has the ability to log on to the
program guide at the neighbor[’]s home and access his or her
personal program guide settings.

Ellis, p. 26, ll. 25-32. Thus, both Lawler and Ellis teach an authorized user
logging into their unique account, and thereby authorizing the device to
receive the functionality from the system operator. We therefore find that
the Examiner did not commit error in finding that the combination of
Lawler and Ellis teaches the limitation reciting “wherein transmitting the
television functionality setting to the second DHCT further comprises
determining that the second DHCT is authorized by a television system
operator to receive the DHCT setting.”

Appeal 2010-011211
Application 11/385,184

9
Issue 2
Appellants argue that it would not have been obvious to a person of
ordinary skill in the contemporaneous art to combine Lawler and Ellis.
App. Br. 9. We therefore address the issue of whether the Examiner so
erred.

Analysis
According to Appellants, there is no evidence in the record that the
head end in Ellis would make anything available to the user’s sites without
the authorization of the user controlling the settings (of the master), and in
fact, the ability to offer a number of programs at different times and on
different channels appears to be available with Ellis without the addition of
Lawler. App. Br. 9-10. Appellants contend that whereas Ellis teaches
multiple devices within a household, and the communication of settings
amongst those devices, Lawler teaches that each set-top box communicates
to a head end, with the head end handling reminders for each respective set-
top box. App. Br. 10 (citing Ellis page 1, ll. 7-8; Lawler, col. 2, ll. 33-43,
col. 3, ll. 44-50). Appellants argue that Lawler and Ellis are fundamentally
different in their manner or principle of operation and were consequently
improperly combined by the Examiner. App. Br. 10. Appellants argue
further that, because the principle of operations of Lawler and Ellis are
allegedly fundamentally different, the Examiner also erred because an
artisan of ordinary skill would not be motivated to combine the teachings of
Lawler and Ellis. App. Br. 11.
Appellants also argue that because Lawler and Ellis are
fundamentally different their manner or principle of operation,
Appeal 2010-011211
Application 11/385,184

10
predictability cannot be established, and the combination of the two
references could not yield predictable results. App. Br. 14-15 (citing KSR
Intern’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976).
The Examiner responds that, since all claimed elements are known in
the art, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made, to modify the system of Ellis with Lawler’s
teaching that a second DHCT is authorized by a television system operator
to receive the DHCT setting, in order to yield predictable results, such as
having the head end make available to the viewer sites a number of
programs at different times and on different channels. Ans. 16.
We are persuaded by the Examiner’s reasoning and adopt it as our
own. We agree with the Examiner that Lawler and Ellis are analogous art,
a finding which is not explicitly disputed by Appellants. Final Rej. 4; see
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (References are
analogous art because they are both in the same field of endeavor).
Moreover, we are persuaded that the Examiner has established a prima
facie case that an artisan of ordinary skill would have been motivated to
combine the analogous art teachings of Lawler and Ellis to achieve
predictable results, viz., having the head end make available to the viewer
sites a number of programs at different times and on different channels. We
therefore conclude that the Examiner did not err in finding that it would
have been obvious to a person of ordinary skill in the contemporaneous art
to combine the teachings of Lawler and Ellis to arrive at the invention of
claim 1. See KSR, 550 U.S. at 417-418.

Appeal 2010-011211
Application 11/385,184

11
Claim 9
Issue
Appellants argue that the Examiner erred in finding that the cited
prior art references fail to address the determination of whether first and
second units are under the same account. App. Br. 15. We therefore
address the issue of whether the Examiner so erred.

Analysis
Appellants argue that the originally-filed application discloses how
merely entering the terminal identification may be one mechanism for
allowing authorization. App. Br. 16. According to Appellants, such a
mechanism does not require the same user account; e.g., a user of a
receiving terminal may enter allowed identifiers for potential submitting
terminals without actually sharing the same user account. Id.
The Examiner responds that Ellis discloses using multiple devices
based upon the same shared account number. Ans. 16. The Examiner
points to, inter alia, Ellis’ teaching that: “the program guide may allow a
unique number to be assigned to a user so that he or she is able to access his
or her program guide settings at a location outside the home.” Id. (citing
Ellis, p. 26, ll. 25-28). The Examiner finds that Ellis also discloses that the
user can assign devices as master device that can coordinate program
settings with other secondary devices, such as secondary user television
equipment. Ans. 16 (citing Ellis, p. 24, ll. 19-25). The Examiner therefore
finds that, because Ellis teaches that the user can designate which
equipment can receive functionalities, and whether such equipment is a
master or secondary device, Ellis teaches or suggests the limitation of
Appeal 2010-011211
Application 11/385,184

12
determining whether the first and second units are under the same account.
Ans. 16.
We agree with the Examiner’s reasoning, as discussed above, and
adopt it as our own. We therefore conclude that the Examiner did not err in
finding that the cited prior art references teach or suggest the limitation of
claim 9 requiring the determination that the first and second units are under
the same account.

Claim 11
Issue 1
Appellants argue that the Examiner erred in finding that the
combination of Ellis and Lawler teaches or suggests the limitations of claim
11 reciting “receiv[ing] an input from the user requesting transmission of a
selected television functionality setting to another DHCT located at a
different premises” and “authenticat[ing] that the DHCT settings of the
other DHCT are accessible to the user.” App. Br. 16. We therefore address
the issue of whether the Examiner so erred.

Appeal 2010-011211
Application 11/385,184

13
Analysis
Appellants argue that claim 11 is directed to a DHCT comprising a
processor that performs the authentication, whereas Lawler teaches that a
head end provides the authentication. App. Br. 17. Appellants contend that
a head end is not the same as, or equivalent to, a DHCT, and that the
Examiner’s apparent equation of the two constitutes an error of fact. Id.
The Examiner responds that Lawler teaches that each user can be
allowed to login to a particular viewer station when that user is using the
station and that it is possible that more than one user could be logged in to a
viewer station at the same time. Ans. 17 (citing Lawler, col. 12, ll. 27-30).
The Examiner finds that Lawler teaches that if the reminder is associated
with a particular user or users, the reminder is provided to those users and
that if the associated viewer station is not in use or the associated users are
not logged in, no reminder is sent. Ans. 17 (citing Lawler, col. 12, ll. 34-
43).
We are not persuaded by the Examiner’s reasoning. Claim 11
explicitly requires that the first DHCT has a memory and a processor
enabled to receive an input requesting transmission of a functionality from
the user and to transmit the requested functionality to a second DHCT after
authenticating that the second DHCT is accessible to the user. App. Br. 16.
Claim 11 thus requires direct transmission of an instruction from the first
DHCT to the second, upon request by the user. Lawler teaches the
transmission of functionalities between multiple DHCTs through the head
end of the network, within which the memory and processors are located.
See Lawler, Fig. 1, col. 3, ll. 65-67 (“The viewer stations 16 accept user
input and can, in addition to receiving programming from the head end 12,
Appeal 2010-011211
Application 11/385,184

14
transmit information back to the head end”). The Examiner adduces no
evidence from either Lawler or Ellis that teaches or suggests the direct
transmission of a functionality from a first DHCT to a second, as required
by claim 11. We therefore conclude that the Examiner erred in finding that
the combination of the cited prior art references teaches the disputed
limitations of claim 11.
Because we find this issue to be dispositive with respect to claim 11,
as well as claims 12-16 depending therefrom, we do not reach Appellants’
additional arguments.

Claim 17
Issue 1
Appellants argue that the Examiner erred in finding that the
combination of Lawler and Ellis teaches or suggests the limitation of claim
17 reciting “transmit the television functionality setting from the storage
device to the second DHCT responsive to user authentication by the second
DHCT.” App. Br. 24. We therefore address the issue of whether the
Examiner so erred.

Analysis
Appellants argue that claim 17 is directed to user authentication,
whereas Lawler teaches that a head end provides the authentication (as
explained above). App. Br. 24. Appellants contend that a head end is not
the same as, or equivalent to, a DHCT, and argue that the Examiner’s
rejection consequently represents an error in fact. Id.
Appeal 2010-011211
Application 11/385,184

15
The Examiner responds that Lawler teaches that each user can be
allowed to login to a particular viewer station when that user is using the
station and that more than one user could be logged in to a viewer station at
the same time. Ans. 19 (citing Lawler, col. 2, ll. 27-30). The Examiner
finds that if the reminder is associated with a particular user or users, the
reminder is provided to those users, and that if the associated viewer station
is not in use or the associated users are not logged in, no reminder is sent
Ans. 19 (citing Lawler, col. 12, ll. 34-43).
We are not persuaded by Appellants’ reasoning. In contrast to claim
11, claim 17 is directed to a server of a television system, i.e., a head end,
which, in response to a user request from the first DHCT, “transmit[s] the
television functionality setting from the storage device to the second DHCT
responsive to user authentication by the second DHCT.” App. Br. 24, claim
17. This corresponds to the combined teachings of Lawler and Ellis, which
teach a head end receiving a request from a first user and transmitting it,
upon authentication (i.e., that the user’s second device is logged into the
proper account) to a second DHCT. See Lawler, Fig. 1, col. 3, ll. 65-67
(“The viewer stations 16 accept user input and can, in addition to receiving
programming from the head end 12, transmit information back to the head
end”); Ellis, p. 26, ll., 25-32 (“The program guide may allow a unique
number to be assigned to a user so that he or she is able to access his or her
program guide settings at a location outside the home”).
Nothing in the scope of the language of claim 17 requires direct
communication between the first and second DHCTs; rather it is the
processor in the head end that is responsible for the authentication and
transmission of the functionality requested by the user at the first DHCT.
Appeal 2010-011211
Application 11/385,184

16
We therefore conclude that the Examiner did not err in finding that the
combination of Lawler and Ellis teaches or suggests the limitation of claim
17 reciting “transmit the television functionality setting from the storage
device to the second DHCT responsive to user authentication by the second
DHCT.”

Issue 2
Appellants argue that it would not have been obvious to a person of
ordinary skill in the contemporaneous art to combine Lawler and Ellis.
App. Br. 25. We therefore address the issue of whether the Examiner so
erred.

Analysis
Appellants make the same arguments with respect to claim 17 as they
have with respect to claim 1 as to whether the Examiner improperly found
that it would be obvious to combine the prior cited art references. App. Br.
25-30. For the reasons explained supra relating to the identical issue in
claim 1, we are not persuaded by Appellants’ arguments with respect to
claim 17. We therefore conclude that the Examiner did not err in finding
that it would have been obvious for an artisan of ordinary skill to combine
Lawler and Ellis to arrive at the claimed invention.

DECISION

The Examiner’s rejection of claim 1-7, 9-10, and 17-24 under 35
U.S.C. § 103(a) is affirmed.
Appeal 2010-011211
Application 11/385,184

17
The Examiner’s rejection of claims 11-16 as unpatentable under 35
U.S.C. § 103(a) is reversed.

TIME PERIOD FOR RESPONSE
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).

AFFIRMED-IN PART

ELD