Ex Parte 5,828,420 et al

Patent Trial and Appeal Board

Feb 27, 2013

90011231 (P.T.A.B. Feb. 27, 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.
90/011,231 09/14/2010 5,828,420 003597-0003-501 1972
75563 7590 02/27/2013
ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8704
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/27/2013 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 UNITED VIDEO PROPERTIES, INC.
____________

Appeal 2012-010796
Reexamination Control 90/011231
Patent 5,828,420
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
1

This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s final
rejection of claims 15 and 16. Claims 2-5, 7, 9-12, and 14 are not subject to

1
This appeal is related to Appeal No. 2012-101801, Control No. 90/011237
and Appeal No. 2012-010809, Control. Nos. 90/011236 and 90/011548.
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reexamination. Although claims 1, 6, 8, 13, 15, and 16 are under final
rejection, Appellant appeals the rejection of only dependent claims 15 and
16, which are proposed new claims.
We have jurisdiction under 35 U.S.C. § 306. Oral hearing was on
November 28, 2012.
We affirm.

Invention
The '420 patent is directed to a video mix program guide whereby a
base programming signal has superimposed thereon a scroll information
picture image signal which may be displayed on a viewer’s television. Col.
2, ll. 35-56.
Figure 9 of the '420 patent is reproduced below.
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Figure 9 is said to illustrate a sixty percent video mix, the percentage
indicating the weight of the programming guide signal superimposed on the
base programming signal. Col. 3, ll. 40-45.

Representative Claims
1. A system interactively controlled by a remote control
for displaying a program guide on a display screen, comprising:

a tuner for receiving television signals corresponding to
a plurality of television channels and providing an output
television signal corresponding to a selected television channel
of the plurality of television channels;
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computer circuitry for receiving control signals from
the remote control and for receiving program guide data for the
program guide, the computer circuitry generating a program
guide output signal corresponding to at least a portion of the
program guide data; and

superimposing circuitry for displaying the program
guide with a perceived transparency on the selected television
channel on the display screen by combining the program guide
output signal and the output television signal.

15. The system of claim 1, wherein a portion of the
program guide is displayed without transparency such that the
portion is opaque with respect to a portion of the selected
television channel.

Prior Art
Reiter US.4,751,578 June 14, 1988
Okura
2
JP 04291582 October 15, 1992
Yoshio EP 0 342 803 B1 November 23, 1989

Examiner’s Rejections
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reiter and Okura or Yoshio.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of representative claim 15. See 37 C.F.R.
§ 41.37(c)(1)(iv).

2
With English translation provided by USPTO, September 2011.
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FINDINGS OF FACT
1. Okura discloses that prior art television or other video signal
display devices included the channel number of the program image
superimposed on the program image. Okura ¶ [0003].

2. Figure 6 of Okura is reproduced below.

Figure 6 is said to show the image of the sun displayed as program
image BG on a display screen in a conventional channel display. ¶ [0007].
Some of program image BG is displayed as replaced by channel number
character CH (e.g., channel “1”). Id.

3. Okura notes that a problem with the prior art display was that
the program image BG in the background of the channel number character
CH will not be visible. ¶ [0008].

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4. Figure 1 of Okura is reproduced below.

Figure 1 is said to be an improved circuit such that character CH and
display image BG may be displayed simultaneously. ¶¶ [0011] - [0013].

5. Character output control circuit 12 (Fig. 1) outputs red (R),
green (G), and blue (B) signals as primary color signals for the character
image signal (channel number). ¶ [0013].

6. Character output control circuit 12 also raises background
removal signal SYS1 to “H” level so as not to display the program image in
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the synthesized portion where the channel number will be displayed.
¶ [0017].

7. Background removal signal SYS1 output by character output
control circuit 12 is amplified to a prescribed signal level, yielding signal
SYS2. ¶ [0018].

8. Character output control circuit 12 also raises background color
halftone signal SYM1 to “H” level so as to lower the brightness of program
image BG in the synthesized portion where the channel number will be
displayed, while also making the hue lighter, in a process that Okura calls
“halftone processing.” ¶ [0019].

9. Background color halftone signal SYM1 output by character
output control circuit 12 is amplified to a prescribed signal level, yielding
signal SYM2. ¶ [0020].

10. Background processing circuit 13B (Fig. 1) accepts the video
signal SV1 and applies background processing to attenuate the video signal
corresponding to the synthesized portion within the video signal where the
channel number will be displayed, during the period that the background
removal amplified signal SYS2 is at “H” level. ¶ [0021]. In an obvious
informality, Okura refers to the background removal amplified signal as
“SYM2” in paragraph [0021].

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11. RGB switching circuit 13A (Fig. 1) removes the video signal
corresponding to the synthesized portion, where the channel number will be
displayed, from video signal SV1. The switching circuit obtains synthesized
video signal SCOM2 by superimposing character video signals (SR2, SG2,
and SB2) onto the primary color signals for red, green, and blue in video
signal SV1, which is output to the display. ¶ [0022].

12. Okura further discloses that brightness and hue of the respective
character and video signals in the synthesized portion of the display may be
reduced 50 per cent to enhance viewing of both images. ¶¶ [0031]-[0037].

13. In particular, background removal signal SYS1 may be held at
“L” level while background color halftone signal SYM1 is raised to “H”
level synchronized to character video signals SR2, SG2, and SB2. Thus, in
the portion where channel number character CH is displayed, the brightness
of program image BG based on video signal SV1 drops while the hue
becomes lighter. ¶ [0033].

14. Figure 3 of Okura is reproduced below.
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Figure 3 is said to illustrate the display image during halftone
processing. ¶ [0049]. As shown in Figure 3(A), the channel number
character may be selected by the viewer to have maximum brightness such
that it has priority over program image BG. ¶ [0030]. When program image
BG and channel number character CH are each halftoned and synthesized,
program image BG can be displayed through channel character number CH
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such that program image BG can be seen in its entirety. ¶ [0034]-[0037];
Fig. 3(B).

ANALYSIS
In related appeal 2012-010809, the Board found that Okura teaches
combining a character image and a program image such that the character
image is superimposed on the program image, the program image being
perceived through the character image. See FF 12-13; Okura Fig. 3(B). In
the instant appeal Appellant seems to present arguments commensurate with
base claim 1, contending that Okura fails to teach combining the relevant
signals. However, claim 1 sets forth, inter alia, “superimposing circuitry for
displaying the program guide with a perceived transparency on the selected
television channel on the display screen by combining the program guide
output signal and the output television signal.” Our analysis begins with the
premise that the applied prior art renders obvious the subject matter of claim
1, because Appellant has chosen not to appeal the rejection of that claim.
Appellant states, in a footnote at page 8 of the Appeal Brief, that “for
the sake of expediency on this appeal, and without waiver of or admitting
anything to the contrary, Patent Owner for purposes of this appeal only does
not press this issue with respect to independent claims 1and 8.” Although
the waiver of arguments will not be extended to the related appeals, in this
appeal we will not review the rejection of non-appealed claim 1.
The issue in this appeal thus reduces to the question as to whether the
ordinarily skilled artisan would have found it obvious to have a portion of
the program guide displayed without transparency such that the portion is
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opaque with respect to a portion of the television channel, in combination
with the subject matter of claim 1, which subject matter has been effectively
admitted to be obvious. Yet, Appellant admits that Okura discloses, during
what Appellant calls “Phase I,” that when background removal signal SYS1
is at the “H” level, channel number CH is displayed opaque relative to the
underlying video. See App. Br. 8-9; FF 6-7, 10-11; Okura Fig. 3(A).
Appellant alleges that Okura does not teach, and even teaches away
from, “producing a display that is both opaque and partially transparent at
the same time.” Reply Br. 4. Appellant’s allegation presupposes some kind
of temporal restriction in claim 15, which we do not find to be a requirement
of the claim. Base claim 1 calls for “superimposing circuitry” for displaying
the program guide with a perceived transparency and dependent claim 15
calls for a portion of the program guide being displayed without
transparency (i.e., opaque). Okura teaches “superimposing circuitry” (FF 4)
that first displays a character image that is opaque (“Phase I”), and later a
character image that is displayed with a perceived transparency (“Phase II”).
See App. Br. 8-11. We therefore are not persuaded that claim 15 has been
rejected in error.
Even if the claims were to require simultaneous display of a perceived
transparency and an opaque portion, Appellant acknowledges that Okura
teaches each type of display, although not at the same time. Further, it is
undisputed that Reiter teaches an opaque program guide. See App. Br. 7.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
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application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007). The operative question is “whether the improvement
is more than the predictable use of prior art elements according to their
established functions.” Id. An improvement such that a perceived
transparency and an opaque portion are simultaneously present on a program
guide represents no more than the predictable use of prior art elements
according to their established functions, rendering the predictable result of a
displayed program guide that simultaneously contains a perceived
transparency and an opaque portion.
As the subject matter as a whole of claim 15 has not been shown to be
patentable over the combination of Reiter and Okura, we consider Yoshio to
be merely cumulative in the rejection of claim 15.

DECISION
The Examiner’s decision to reject claims 15 and 16 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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ack

PATENT OWNER:

ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
New York, NY 10036-8704

THIRD PARTY REQUESTER

TONY D. CHEN
CHEN YOSHIMURA LLP
255 S. GRAND AVE., #215
LOS ANGELES, CA 90012