McCarthy, Bernard Anthony.

Patent Trials and Appeals Board

Mar 12, 2021

2019003916 (P.T.A.B. Mar. 12, 2021)

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.
12/857,727 08/17/2010 Bernard Anthony McCarthy III P2010-04-01 (290110.473 ) 4535
70336 7590 03/12/2021
Seed IP Law Group/DISH Technologies (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
SHANG, ANNAN Q
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD ANTHONY McCARTHY III
Appeal 2019-003916
Application 12/857,727
Technology Center 2400
Before JON M. JURGOVAN, ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, 13, 14 and 16–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as DISH
Technologies LLC. Appeal Br. 1.
Appeal 2019-003916
Application 12/857,727

2
CLAIMED SUBJECT MATTER
According to the Specification, some television receivers allow users
to access content stored on other devices, such as other television receivers,
cameras, computers, or websites. Spec. ¶ 1. However, such access is
typically provided through various menus of the television receiver that are
separate from menus utilized to access broadcast television programs. Id.
Such menus are often too difficult to use. Id. Appellant’s invention
attempts to address this problem by allowing users to remotely access
content from other devices utilizing similar techniques as used for selecting
locally receivable television programming. Spec. ¶ 10. This is done by use
of selection menus that facilitate the selection of broadcast channels, as well
as content from external devices. Id. For example, a group of broadcast
channels may be assigned channel numbers 1–20 on the menu, while
external devices, such as a security camera or personal computer may be
assigned channel 21. Similarly, a personal computer may be accessed by
using channel number 22 and content on a remote television receiver (such
as a remote DVR) may be accessed by using channel number 23. Spec.
¶ 11. Thus, a user may access the content stored on external devices from
within the electronic programming guide by entering a channel number just
as the user would to access a broadcast channel. Id.
Claim 1, reproduced below, is illustrative of the claimed subject
matter (emphases added):
1. A method for presenting available content to a
user, the method comprising:
outputting for display from a television receiver a first
content selection menu, the first content selection menu
including at least a first content selection item of locally
accessible content, wherein the locally accessible content is
Appeal 2019-003916
Application 12/857,727

3
content of a linear television channel being currently broadcast
to and received by the television receiver through a
communicatively coupled television distribution network and a
second content selection item associated with an external
device, the second content selection item including a specific
identifier that identifies a particular external device on which
the entire content of at least one content item including an
audio/video program is stored and accessible by the television
receiver entirely from the external device;
receiving a request, at the television receiver, associated
with the second content selection item;
outputting for display from the television receiver a
content selection sub-menu, the content selection sub-menu
specifying the at least one content item remotely available
through the external device, the content selection sub-menu
including the specific identifier that identifies the particular
external device on which the entire content of the at least one
content item including an audio/video program is stored and
accessible by the television receiver entirely from the external
device;
receiving, at the television receiver, from the content
selection sub-menu, a selection of the at least one content item
of which the entire content is stored and accessible by the
television receiver entirely from the particular external device
whose specific identifier that identifies the particular external
device is included on the content selection sub-menu;
in response to the selection, receiving at the television
receiver from the external device the at least one content item
of which the entire content is stored and accessible by the
television receiver entirely from the particular external device
whose specific identifier that identifies the particular external
device is included on the content selection sub-menu,; and
outputting from the television receiver for presentation
by a presentation device the at least one content item of which
the entire content is stored and accessible by the television
receiver entirely from the particular external device whose
Appeal 2019-003916
Application 12/857,727

4
specific identifier that identifies the particular external device is
included on the content selection sub-menu.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hoshen US 2002/0154892 A1 Oct. 24, 2002
Park US 2006/0137005 A1 June 22, 2006
Reneris US 2010/0272414 A1 Oct. 28, 2010
Thomas US 7,917,933 B2 Mar. 29, 2011
REJECTIONS
1. Claims 1–5, 8–11, 13, 14, and 16–192 stand rejected under 35
U.S.C. § 103 as unpatentable over Hoshen, Thomas, and Reneris. Final
Act. 8–16.
2. Claims 6, 7, and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hosen, Thomas, Reneris, and Park. Final Act. 16.
OPINION
Claim 1
The Examiner finds Hoshen teaches “outputting for display from a
television receiver a first content selection menu, the first content selection
menu including at least a first content selection item of locally accessible
content . . . and a second content selection item associated with an external
device.” Final Act. 8 (citing Hoshen ¶¶ 12–26, 55–58, 63–72, 82–89, 96–
104, 159–172, 186–187, 195–197, Fig. 12); Ans. 4–5 (citing Hoshen ¶¶ 2–5,
62–64).

2 Although the Examiner includes claims 12 and 15 in the list of claims
rejected under this rejection (see Final Act. 8), these claims have been
canceled by Appellant. Appeal Br. 23–24.
Appeal 2019-003916
Application 12/857,727

5
Appellant argues, that “Hoshen mentions an ‘EPG’ that is distributed
‘utilizing conventional methods commonly used in digital TV Networks’
and from which a user can select titles . . . , but does not mention anything
about a specific ‘first content selection menu’ and ‘second content selection
item associated with an external device.’” Appeal Br. 13; see also Reply Br.
4–5.
We are unpersuaded by Appellant’s argument. Hoshen discloses
storing titles and content in a distributed manner within a cluster of set top
boxes. Hoshen ¶ 12. Thus, some subscribers will have particular titles
stored on their set top boxes, while others will not. Id. Hoshen also
discloses that each subscriber is provided with a viewable list of titles stored
anywhere within the cluster of set top boxes. Id. This viewable list will,
therefore, have menu selections that refer to locally stored content (where
the title is stored on the subscriber’s set top box) and content stored remotely
on external devices (where the title is stored on another set top box in the
cluster). Furthermore, Hoshen teaches that the set top boxes also allow users
to view broadcast television channels (Hoshen ¶ 3) and that the Electronic
Programming Guide (“EPG”) is prepared using conventional methods but
includes the list of titles. Hoshen ¶¶ 87–88 (explaining that a subscriber
browses the EPG and selects and orders a title from the EPG). Thus, one of
ordinary skill would have understood Hoshen to teach or suggest a “first
content selection menu” (the EPG) with a “first content menu item” (a
broadcast channel or a title stored locally) and a “second content menu item”
(a title stored remotely on another set top box).
The Examiner finds that the combination of Hoshen, Thomas, and
Reneris teaches the following limitation:
Appeal 2019-003916
Application 12/857,727

6
a content selection sub-menu, the content selection sub-menu
specifying the at least one content item remotely available
through the external device, the content selection sub-menu
including the specific identifier that identifies the particular
external device on which the entire content of the at least one
content item including an audio/video program is stored and
accessible by the television receiver entirely from the external
device.
Final Act. 9 (citing Hoshen ¶¶ 55–58, 63–72, 82–89, 159–172); 12–13
(citing Thomas, Figs. 1–5b, 1:63–2:33, 3:55–6:1, 7:16–10:1, 11:7–14:27);
14 (citing Reneris, Figs. 1, 8c–10, ¶¶ 35, 60, 70–74).
With regard to this limitation, Appellant first argues that Hoshen does
not teach a particular external device which stores the entire content of at
least one content item. For example, Appellant contends that Hoshen
discloses that “a full title is never saved within the same SSTB, but is
divided, and stored within a plurality of SSTBS.” Appeal Br. 14 (quoting
Hoshen ¶ 64 and referring to Storage Set Top Boxes). We agree that
Hoshen, in certain embodiments, discloses that a full title is not saved within
the same SSTB. See Hosen ¶ 58 (“Preferably, each video program is
divided between plurality of set-top boxes 20, and moreover, each video
portion is stored within at least two boxes”), ¶ 83 (“In a preferred
embodiment . . . . Any stored title is split to several SSTB’s 20 so that a
whole title never resides in one house or SSTB”).
In other embodiments, however, Hoshen describes the entire content
of a title being saved in the same set top box. For example, Hoshen explains
that “[u]pon receiving a request to view a title . . . the Management System
57 locates two SSTBs . . . containing the requested title in their storage. One
of these SSTBs . . . is assigned a streaming role . . . while the other . . . is
Appeal 2019-003916
Application 12/857,727

7
assigned a monitoring and backup role.” Hoshen ¶ 67. Hoshen goes on to
explain that when a streaming command is received the streaming SSTB
starts streaming the title. Hoshen ¶ 68.
Additionally, Hoshen describes that when a subscriber selects a title,
the Management System “instructs one selected SSTB to stream the
requested title . . . and another SSTB to serve the role of a hot backup.”
Hoshen ¶ 164; Ans. 6. The Management System then “locates within its
database two SSTBs that store the required title (or title slice) . . . . One of
these SSTBs 64 is assigned a streaming role while the other 160 is assigned
a monitoring and backup role.” Hoshen ¶ 165.
Thus, although Hoshen describes that it would be preferable for the
titles to be split amongst multiple set top boxes (i.e. for set top boxes to store
title slices rather than the whole title), Hoshen also describes embodiments
where the whole title (rather than a title slice) is stored on a SSTB with
another SSTB serving as backup. Accordingly, we are not persuaded of
Examiner error.
Appellant next argues the prior art references do not teach a sub-menu
that includes a specific identifier that identifies the particular external
device. Appeal Br. 13–14. We disagree. The Examiner relies on Thomas
and Reneris for teaching a sub-menu that identifies the particular external
device, and Appellant does not explain how these two references are
deficient. Final Act. 12–13 (citing Thomas, Figs. 1–5b, 1:63–2:33, 3:55–
6:1, 7:16–10:1, 11:7–14:27); 14 (citing Reneris, Figs. 1, 8c–10, ¶¶ 35, 60,
70–74). For example, Figure 4A of Thomas shows a menu with “VOD” as
one option and “PVR” as another. The Examiner finds, and we agree, these
options teach an identification of a particular external device. Final Act. 12–
Appeal 2019-003916
Application 12/857,727

8
13. When a user selects an option from this menu, the user is shown a sub-
menu related to the option. For example, choosing the VOD option leads to
a sub-menu as depicted in Figure 4B, that identifies itself as the “Video on
Demand” sub-menu with several other options, one of which is “Movies A–
Z,” which, when selected, leads to another submenu depicted in Figure 5A
showing movie titles available to the user. One of ordinary skill would have
understood the same to occur if the “PVR” option was selected, with a sub-
menu being depicted that identified itself as the “PVR” sub-menu and listing
relevant content stored on the PVR. Thus, Thomas teaches a menu with a
specific identifier of an external device, that, when selected, leads to a sub-
menu that identifies that external device and the relevant content.
Reneris is also relied upon as disclosing menus that list specific
identifiers of external devices, such as “Dad’s PC,” “PVR in family room,”
and “PVR in child’s room.” Reneris Fig. 8d; Ans. 7–8. The Examiner finds
the combination of the disclosure of menus and sub-menus identifying
external devices and relevant content on those external devices, as taught by
Thomas and Reneris, along with the disclosure of Hoshen teaches “the
content selection sub-menu specifying the at least one content item remotely
available through the external device.” Appellant does not sufficiently
challenge the Examiner’s reliance on Thomas and Reneris to persuade us the
Examiner errs.
Accordingly, we sustain the Examiner’s rejection of claims 1–4, 6–11,
13 for which no other arguments for separate patentability were presented by
Appellant.
Appeal 2019-003916
Application 12/857,727

9
Claims 14 and 16–20
Independent claim 14 recites a “first content selection menu” that
specifies “the content identifier and an identifier associated with a device
selection menu.” The “device selection menu includ[es] a selectable list of
the plurality of external devices.” The Examiner largely relies on the same
findings from independent claims 1 and 8 for claim 14.
Appellant argues that although “the Examiner refers to claim 8 as the
reason for rejection of claim 14, claim 8 mentions nothing about a ‘device
selection menu’, much less ‘output the device selection menu for
presentation by the presentation device responsive to the first request’ and
the other limitations regarding the device selection menu of claim 14.”
Appeal Br. 16. Thus, according to Appellant, the Examiner has failed to
present a prima facie case of obviousness. Appeal Br. 16.
We disagree. An obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Appellant seeks to distinguish prior art by arguing
that the art does not teach the precise ordering and structure of menu and
sub-menu selections claimed. Claim 14, for example, recites a menu with a
selection for a device selection menu, which then leads to a sub-menu of a
list of external devices.
As explained above in our analysis of claim 13, Hoshen discloses a
menu (the EPG) listing content stored on local and remote devices. Hoshen

3 In the rejection of claim 14, the Examiner relies on findings from the
rejection of claim 8, which, in turn, relies on findings from the rejection of
Appeal 2019-003916
Application 12/857,727

10
¶¶ 3, 12, 87–88. Thomas discloses a menu identifying external devices, such
as “PVR” and sub-menus of content on those respective external devices.
Thomas Figs. 4A–4B. Reneris discloses a menu that lists several external
devices such as “Dad’s PC,” “PVR in family room,” “PVR in child’s room”
and the content stored on those devices. Reneris Fig. 8d; Ans. 7–8. We
agree with the Examiner that Reneris’ list of external devices teaches the
claimed “device selection menu.”
In light of these teachings, one of ordinary skill in the art would
understand that menus could be structured to show a list of external devices
on which that content resides, as taught by Thomas and Reneris, and that a
selection of a device from that list, leads to a sub-menu of content on the
selected device, as taught by Thomas. Thus, we agree with the Examiner
that the combination of these disclosures would teach one of ordinary skill in
the art a “first content selection menu” that specifies “the content identifier
and an identifier associated with a device selection menu” where the “device
selection menu includ[es] a selectable list of the plurality of external
devices.”
Accordingly, we sustain the Examiner’s rejection of claim 14 and of
claims 16–20, which were argued together with claim 14. See Appeal Br.
15–16.

Claim 5
Claim 5 recites “wherein the content selection sub-menu further
includes explicit identification of another external device through which

claim 1. See Final Act. 14, 15; Ans. 9. Thus, the Examiner’s findings for
claim 1 are relevant to the discussion of claim 14.
Appeal 2019-003916
Application 12/857,727

11
content including live programming is accessible to be streamed live to the
television receiver from the other external device.”
Appellant argues that claim 5 includes limitations in addition to those
in claim 1, “but the Examiner merely refers to the rejection of claim 1 to
reject this claim, which does not even mention these additional features.”
Appeal Br. 16.
The Examiner responds that Hoshen discloses digital SSTBs and a
Management System that generates or displays “Real-time streaming or Live
streaming of multimedia-on-demand (audio, video, slices or clips, music,
etc.).” Ans. 11. The Examiner further finds Hoshen discloses SSTBs as
Internet Servers that maintain an Internet session during streaming to various
STBs. Id.
Appellant replies that “[t]he Examiner does not indicate in these new
allegations regarding claim 5 where in Hoshen such features [of Real-time
streaming or Live streaming] are allegedly disclosed.” Reply Br. 10.
According to Appellant “Hoshen in fact does not even mention ‘live’. Even
if Hoshen did recite ‘live multimedia-on-demand’, it would not make sense
since ‘on-demand’ refers to pre-recorded programming, not live
programming.” Reply Br. 10.
We agree with Appellant that the Examiner does not identify where
Hoshen discloses Real-time streaming or Live-streaming of content.
Although the Examiner also finds that Hoshen discloses that the SSTBs
maintain Internet sessions, the Examiner does not explain how the disclosure
of Internet sessions and Internet services in Hoshen may teach or suggest
Live-streaming of content.
Accordingly, we do not sustain the Examiner’s rejection of claim 5.
Appeal 2019-003916
Application 12/857,727

12

Claim 19
Claim 19 recites “the content identifier associated with the
audio/video program and the identifier associated with the device selection
menu comprise channel identifiers and the first request comprises user input
specifying the a [sic] channel identifier associated with the device selection
menu.”
The Examiner relies on findings made with respect to claims 12 and
13 to reject claim 19. Final Act. 16. Appellant argues “Claim 12 has been
canceled and neither canceled claim 12 nor claim 13 even mention a channel
identifier associated with the device selection menu, but instead refers to an
identifier associated with the external device. Therefore, the Examiner has
failed to address the specific different limitations of claim 19 and thus has
failed to present a prima facie case of obviousness for claim 19.” Appeal
Br. 17.
The Examiner, in response, points out that claim 13 does, in fact,
mention a channel identifier. Ans. 13. Specifically, claim 13 recites
“wherein the content identifier and identifier associated with the external
device comprise channel identifiers and the first request comprises user
input specifying a channel identifier identifying the external device.” Thus,
the Examiner finds the limitations of claim 13 are similar to those of claim
19 and relies on findings for claim 13, as well as claim 1. See Ans. 14.
Further, the Examiner clarifies that Hoshen displays a menu with an
interactive channel and with viewable titles and that a user interaction with
these menu items communicates a message including the Title ID, broadcast
channel ID and SSTB ID to the requested SSTB. Ans. 13–14 (citing Hoshen
Appeal 2019-003916
Application 12/857,727

13
¶¶ 23–24, 71–72, 85–86, 165–179). Thus, the Examiner finds that user input
includes various parameters including a channel ID. Ans. 14. Combined
with findings from claim 1, the Examiner finds this teaches the limitations of
claim 19. Ans. 14.
Appellant replies that, even if the Examiner were correct that the title
selection includes a channel ID, this input does not mention any “device
selection menu” associated with the channel identifier. Reply Br. 11–12.
We are unpersuaded by Appellant’s argument, largely for the same
reasons explained above in our analysis of claims 1 and 14. The Examiner
relies not only on Hoshen, but also on findings made for claims 1 and 8 in
rejecting claim 13, and therefore claim 19. See Final Act. 15. As we
explained above, we find the disclosures of Hoshen, combined with Thomas
and Reneris teach a “device selection menu.” Specifically, Reneris discloses
a menu that lists several external devices such as “Dad’s PC,” “PVR in
family room,” “PVR in child’s room” and the content stored on those
devices. Reneris Fig. 8d. Thomas discloses menus with options which,
when selected, lead to a sub-menu of content relevant to the selection.
Thomas Figs. 4A–4B. Thus, the combination of Hoshen’s disclosure of a
channel ID combined with Thomas’ disclosure of menus and sub-menus,
combined with Reneris’ disclosure of a menu with a list of external devices
teaches the claimed “identifier associated with the device selection menu
comprise channel identifiers.”
Accordingly, we sustain the Examiner’s rejection of claim 19.

Appeal 2019-003916
Application 12/857,727

14
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–11,
13, 14, 16–
19
103 Hoshen, Thomas,
Reneris
1–4, 8–11,
13, 14, 16–
19
5
6, 7, 20 Hoshen, Thomas,
Reneris, Park
6, 7, 20
Overall
Outcome
1–4, 6–11,
13, 14, 16–
20
5

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART