Kevin Yao

Patent Trials and Appeals Board

Feb 4, 2020

14285885 - (D) (P.T.A.B. Feb. 4, 2020)

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.
14/285,885 05/23/2014 Kevin Yao P2010-03-22.1 1349
132861 7590 02/04/2020
Perkins Coie LLP - DISH Network
P.O. Box 1247
Seattle, WA 98111-1247
EXAMINER
RYAN, PATRICK A
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN YAO
____________

Appeal 2018-004466
Application 14/285,885
Technology Center 2400
____________

Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 8–10, and 13–24. Claims 2, 7,
11, and 12 are canceled. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as EchoStar
Broadcasting Holding Parent L.L.C. Appeal Br. 1.
Appeal 2018-004466
Application 14/285,885

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The present invention relates generally to pre-tuning a second tuner in
anticipation of a channel surfing activity. See Spec., Abstract.
Claim 1 is illustrative:
1. A channel surfing method implemented in a media
device having at least a first tuner and a second tuner, wherein the first
tuner is tuned to a first program channel that is associated with a first
program channel identifier, the method comprising:
receiving a user specification from a user,
wherein the user specification predefines a second
program channel identifier that is specified by the user to
control tuning of the second tuner when the first tuner is tuned
to the first program channel, and
wherein the user specification of the predefined
second program channel identifier is received before detecting
an initiation of a channel surfing activity during presentation of
the first content stream to the user;
storing the predefined second program channel identifier
of the user specification in a memory of the media device;
operating, after receiving and storing the predefined
second program channel identifier, the first tuner to become tuned to
the first content stream associated with the first program channel
identifier being broadcast to the media device via a broadcast system;
presenting the first content stream on a display;
retrieving the predefined second program channel
identifier from the memory of the media device in response to
operating the first tuner to become tuned to the first content stream;
operating the second tuner to become tuned to a second
content stream being broadcast to the media device via the broadcast
system in response to retrieving the predefined second program
channel identifier from the memory of the media device, wherein the
second content stream is associated with a second program channel
identified by the predefined second program channel identifier;
receiving the second content stream associated with the
second program channel identified by the user specification at the
second tuner;
detecting, after the second tuner has become tuned to the
second content stream, the initiation of the channel surfing activity;
and
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Application 14/285,885

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presenting at least a video portion of the second content
stream associated with the second channel that is received at the
second tuner in response to detecting the initiation of the channel
surfing activity, wherein the video portion of the second content
stream and a video portion of the first content stream are concurrently
presented on the display.

Appellant appeals the following rejections:2
R1. Claims 1, 4, 8, 9, 14, 15, 18, 20, and 22–243 are rejected under
35 U.S.C. § 103(a) as being unpatentable over MacInnis (US 2005/0216951
A1, Sept. 29, 2005) and Greenberg (US 7,532,253 B1, May 12, 2009);
R2. Claims 3, 10, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over MacInnis, Greenberg, and Liebhold (WO
2005/081660 A2, Sept. 9, 2005); and
R3. Claims 5, 6, 13, 19, and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over MacInnis, Greenberg, and Potrebic (US
6,804,824 B1, Oct. 12, 2004).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

2 The Examiner withdrew the rejection under § 112, first paragraph (see
Final Act. 2–3), in light of Appellant’s Amendment after Final. See
Advisory Action, July 12, 2017.
3 Although the statement of the rejection lists claims 1, 4–6, 8, 9, 13–15, and
18–22 (see Final Act. 4), the body of the rejection omits some claims and
only discusses claims 1, 4, 8, 9, 14, 15, 18, 20, 22, 23, and 24. Id. at 4–16.
As such, we shall treat this rejection as including claims 1, 4, 8, 9, 14, 15,
18, 20, 22, 23, and 24.
Appeal 2018-004466
Application 14/285,885

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ANALYSIS
Issue: Did the Examiner err in finding that MacInnis teaches
retrieving the predefined second program channel identifier . . . in response
to operating the first tuner to become tuned to the first content stream, as set
forth in representative claim 1?
Appellant contends:
Nowhere in MacInnis Paragraphs 0005, 0019, 0043, 0055, 0067,
0080, or 0106 is there any disclosure of a user specification that is
used to pre-tune a second tuner to an anticipated channel associated
with a content stream identified by the user specified predefined
program channel identifier (where the first tuner is tuned to receive
the currently presenting content stream).

Further, Appellant proffers that MacInnis paragraphs 005, 0019, 0043,
0055, 0067, 0080, and 0106 do not inherently disclose the above-
recited features of Claims 1, 8, and 14.
Appeal Br. 15; see also Substitute Appeal Br. 15.
Appellant further contends that
[w]ith respect to the MacInnis favorites list, it does not
necessarily follow that the user specification of a channel that is
stored in the MacInnis favorite list is the same as a user
specification of a channel that controls tuning of a second tuner
while the first tuner is receiving the first content stream that is
presented on a display.

Appeal Br. 16; see also Substitute Appeal Br. 16.
Appellant’s contention emphasizes that the claimed “second program
channel identifier,” predefined by the “user specification,” is received in
response to the first tuner receiving the first content stream, and MacInnis
fails to teach or suggest such an arrangement. We agree with Appellant.
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Application 14/285,885

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Although the Examiner finds, and we agree, that “the claimed ‘user
specification’ is not described in sufficient detail as to preclude a list of
favorite content items or a selection of content items based on monitored
historic user behavior” (see Ans. 3), and “Appellant’s Specification
demonstrates embodiments of the invention similar to the disclosure of
MacInnis [including embodiments that] select the anticipated channel from a
favorite list of program channel identifiers” (Id. at 4 (citing Appellant’s
Specification ¶ 28)), the Examiner ignores the “in response to” language in
the claims.
As a matter of claim construction, we note that the claims require that
the “user specification,” which predefines a second program channel
identifier, be retrieved in response to operating the first tuner to become
tuned to the first content stream or during presentation of the first content
stream to the user. See Claims 1, 8, 14.
As such, we find that although MacInnis teaches receiving a user
specified predefined program channel identifier associated with a second
channel (see MacInnis ¶ 55 – “favorite list”), the Examiner has not shown
that MacInnis’ predefined program channel identifier is retrieved in response
to operating the first tuner to become tuned to the first content stream, as
required by the claims. Instead, MacInnis retrieves a first video stream and a
second video stream simultaneously, as opposed to one after the other (i.e.,
in response to). See MacInnis Abstract; Figure 1, element 120.
In view of the above discussion, we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection, given that the Examiner is specifically
relying on MacInnis for this teaching. We, accordingly, do not sustain the
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rejection of independent claims 1, 8, and 14, or the rejection of claims 3–6,
9, 10, 13, and 15–24 which are dependent thereon.

CONCLUSION
Appellant demonstrates that the Examiner erred in rejecting claims 1,
3–6, 8–10, and 13–24 as being unpatentable under 35 U.S.C. § 103 over
MacInnis in combination with various other references.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–10,
13–24
103 (at least) MacInnis 1, 3–6, 8–10,
13–24

REVERSED