Time Warner Cable Enterprises LLC

Patent Trials and Appeals Board

Mar 25, 2022

2020000947 (P.T.A.B. Mar. 25, 2022)

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. 15/417,783 01/27/2017 James S. Manchester TWC12-08(12-13C2)CON2 7953 156874 7590 03/25/2022 Armis Intellectual Property Law, LLC P.O. Box 1564 Westborough, MA 01581 EXAMINER ALATA, YASSIN ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): chris.lutz@armisiplaw.com docket@armisiplaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES S. MANCHESTER, MICHAEL ANGUS, and WILFRED JAIME MILES Appeal 2020-000947 Application 15/417,7831 Technology Center 2400 Before DEBRA K. STEPHENS, BARBARA A. BENOIT, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 (“Rehearing Request,” “Req. Reh’g”) for reconsideration of our Decision on Appeal, mailed January 6, 2022 (“Decision,” “Dec.”). In our Decision, we affirmed the Examiner’s rejections of claims 1-9 and 11-32 and reversed the Examiner’s rejection of claim 10. Dec. 12. Appellant requests that we reverse the rejections of all claims. Req. Reh’g 11. Upon consideration of Appellant’s Rehearing Request, we deny the Request. 1 This application was filed on January 27, 2017. Appeal 2020-000947 Application 15/417,783 2 ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 41.52(a)(1), which provides in relevant part, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Appellant’s Rehearing Request does not expressly identify any points believed to be misapprehended or overlooked by the Board. See generally Req. Reh’g. Instead, Appellant addresses Baldwin-Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008), which we cited, and presents an argument not presented in its Appeal Brief or Reply Brief as to why the Prosecution History and the Specification warrant a departure from a general rule set forth in that case. Id. In our Decision, we observed that the receiving limitation of claim 1 recites “receiving a request for content,” and held that the indefinite article “a” means “one or more” in open-ended claims containing the transitional phrase “comprising,” like claim 1. Dec. 4. We also noted that the transmitting limitation of claim 1 recites “to satisfy the request, transmitting multiple versions of the content.” Id. Citing Baldwin-Graphic, we further held that as a rule, the subsequent use of the term “the” reinvokes the non- singular meaning of “a.” Id. at 4-5. Further, citing Baldwin-Graphic, we held that, an exception to this rule only arises when the language of the claims, the specification, or the prosecution history necessitate a departure from the rule. Id. at 5. We observed that “[h]ere, Appellant has not cited anything from the language of the claims, the specification, or the prosecution history that would warrant a departure from the general rule, and we see none.” Id. Appeal 2020-000947 Application 15/417,783 3 In its Rehearing Request, Appellant addresses the exception to the rule set forth in Baldwin-Graphic and cites portions of the Prosecution History and Specification that Appellant claims warrant a departure from the rule that the subsequent use of the term “the” reinvokes the non-singular meaning of “a.” Req. Reh’g 5-11. For the Prosecution History, Appellant cites papers that it filed that argued that the request in claim 1 must be a single request. Req. Reh’g 5-8. Appellant, however, cites nowhere where the Examiner agreed with any of these arguments, and the record before us does not reflect such an agreement. Id. The Final Action responded to Appellant’s arguments in its August 10, 2018 submission and, referring to claim 1, stated: “[t]he claim doesn't require that the multiple versions are sent to the user in response to a single request.” Final Act. 2. Similarly, the Examiner’s Answer stated, referring to claim 1: “[t]he claim doesn’t require that the multiple versions are sent to the user in response to a single request.” Ans. 4. That Appellant argued unsuccessfully during prosecution that the request recited in claim 1 is a single request does not warrant a departure from the general rule set forth by Baldwin-Graphic that the subsequent use of the term “the” in claim 1 reinvokes the non-singular meaning of the term “a.” For the Specification, Appellant notes that our Decision cites to the following portion of the Specification as indicating that the transmission of content in multiple formats can be in response to one or more requests: Thus, embodiments herein can include receiving the request to stream specified content to the subscriber domain 160-1. In response to the request(s), the content delivery resource 140 initiates delivery of the requested content in multiple formats over multiple types of channels including a first channel Appeal 2020-000947 Application 15/417,783 4 supporting broadcast type communications and a channel and a second channel supporting IP type communications. Req. Reh’g 9 (quoting Dec. 5 (quoting Spec. 17:18-22)) (emphasis added in Decision). Appellant argues that we erroneously interpreted this passage as indicating that “the term ‘request’ means multiple requests elsewhere in the specification.” Id. Appellant asserts that instead the above passage from the Specification refers to a specific embodiment. Id. Further, Appellant argues that the use of the term “request(s)” indicates that the term “request” is singular. Id. at 10. Appellant additionally asserts that the Specification teaches the use of profile information to determine encoding formats and that such profile information would not be needed if the term “the request” could refer to multiple requests. Id. at 11. Appellant argues that thus the Specification teaches that the term “the request” in claim 1 must be singular. Id. at 5-11. We disagree. First, we did not interpret the term “request(s)” to mean multiple requests. Dec. 4-6. We interpreted the term “request(s)” to refer to one or more requests. Id. Second, even if the passage we cited from the Specification refers to a specific embodiment, the description of that embodiment can provide meaning for the term “request.” Third, nothing from the Specification that Appellant cites “necessitate[s] a departure from the rule” that the “subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.” Baldwin-Graphic, 512 F.3d at 1342-1343. For example, nothing from the Specification cited by Appellant requires that multiple versions of content encoded with multiple playback versions be transmitted only in response to a single request. Req. Reh’g 9-11. Further, as set forth above in Appeal 2020-000947 Application 15/417,783 5 the passage above, the Specification teaches that content can be delivered in multiple formats in response to multiple requests. Spec. 17:18-22. Accordingly, after considering our Decision in light of the statements made in the Rehearing Request, we deny the Rehearing Request. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Granted Denied 1, 2, 4-7, 13, 14, 16- 18, 21-23, 25, 26, 28- 32 102 Trimper 1, 2, 4-7, 13, 14, 16-18, 21-23, 25, 26, 28-32 3, 8, 9, 15, 19, 20, 24, 27 103(a) Trimper, Schlack 3, 8, 9, 15, 19, 20, 24, 27 11 103(a) Trimper, Friedman, Jana 11 12 103(a) Trimper, Friedman, Jana, Schlack 12 Overall Outcome 1-9, 11-32 Appeal 2020-000947 Application 15/417,783 6 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-7, 13, 14, 16- 18, 21-23, 25, 26, 28- 32 102 Trimper 1, 2, 4-7, 13, 14, 16- 18, 21-23, 25, 26, 28- 32 3, 8-10, 15, 19, 20, 24, 27 103(a) Trimper, Schlack 3, 8, 9, 15, 19, 20, 24, 27 10 11 103(a) Trimper, Friedman, Jana 11 12 103(a) Trimper, Friedman, Jana, Schlack 12 Overall Outcome 1-9, 11-32 10 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). DENIED