Ex Parte 6076094 et alDownload PDFBoard of Patent Appeals and InterferencesSep 14, 201090008058 (B.P.A.I. Sep. 14, 2010) Copy Citation 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. 90/008,058 06/08/2006 6076094 X30116 6714 7055 7590 09/14/2010 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER CHOI, WOO H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/14/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte IO RESEARCH PTY. LIMITED 1, Appellant and Patent Owner ____________ Appeal 2010-002221 Reexamination Control 90/008,058 Patent US 6,076,0942 Technology Center 3900 ____________ Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and KEVIN F. TURNER, Administrative Patent Judges. TURNER, Administrative Patent Judge DECISION ON APPEAL3 IO RESEARCH PTY. LIMITED appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-35. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. 1 IO RESEARCH PTY. LIMITED is the Patent Owner and the real party in interest (App. Br. 2). 2 Issued June 13, 2000 to Cohen et al. 3 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 2 STATEMENT OF THE CASE4 This proceeding arose from a request for ex parte reexamination filed on behalf of Charter Communications, Inc. on June 8, 2006 of United States Patent 6,076,094 (the '094 Patent) issued to Thomas Andrew Cohen and Robert Jeffries Chatfield on June 13, 2000, based on U.S. Patent Application 09/316,164 filed May 21, 1999. The application for the '094 Patent was a division of U.S. Patent Application 09/054,896 (filed April 3, 1998, now U.S. Patent No. 5,999,934), which was a continuation of U.S. Patent Application 08/436,336 (filed July 18, 1995, now U.S. Patent No. 5,737,595). Patentee’s invention relates distributed database system applicable to data broadcasting (Spec. Col. 1, ll. 11-14). The system includes a central station (11) which can distribute data to receiver stations (13) and subsequently to a user (id. at col. 4, ll. 3-25; Fig. 1). Claim 1, which we deem to be representative, reads as follows: 1. In a method for broadcasting data to a television set using a carrier signal such as a television or commercial radio carrier signal, the improvement comprising: 4 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed May 19, 2009) and Reply Brief (“Reply Br.,” filed November 23, 2009), and the Examiner’s Answer (“Ans.,” mailed September 25, 2009). Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 3 constructing a data stream from individual first record of a transmission database, each first record comprising one of a selection of formats, at least one of the first records comprising executable program code or an object; broadcasting the data stream within the carrier signal; providing a user with a user's device for receiving and decoding the data stream, the user's device receiving and decoding the data stream to a user's database, the user's database having second records comprising at least some of the first records, the second records comprising one of a selection of formats and at least one record comprising executable program code or an object broadcast from the first records; determining the format a second record using a control program; running, when required, the executable program code; and generating a display on the television consistent with the format determined by the control program. The prior art references relied upon by the Examiner in rejecting the claims are: Jacobson 5,442,652 Aug. 15, 1995 Wendorf 5,469,431 Nov. 21, 1995 John Lilley, Can Data Broadcasting Actually Sell Itself?, Insight, 23-26, 30-31 (December 1988/ January 1989) (“Lilley”). World System Teletext and Data Broadcasting System, Technical Specification, Dept. of Trade and Industry UK (January 1989) (“WST”). The Examiner rejected claims on the following bases: Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 4 i) claims 1, 2, 6-9, 13-15, 20-23, 27-30, 34, and 35 under 35 U.S.C. § 102(b) as being anticipated by WST (Ans. 4-7); ii) claims 1, 8, 15, 22, and 29 under 35 U.S.C. § 102(b) as being anticipated by Lilley (Ans. 7-10); iii) claims 1-3, 6-10, 13-17, 20-24, 27-31, 34, and 35 under 35 U.S.C. § 102(e) as being anticipated by Wendorf (Ans. 10-13); and iv) claims 4, 5, 11, 12, 18, 19, 25, 26, 32, and 33 under 35 U.S.C. § 103(a) as unpatentable over WST or Lilley in view of Jacobson (Ans. 13- 14). ISSUES Appellant argues that the Examiner is reading the claimed subject matter in a vacuum and is not reading the claimed terms in the context of the entire patent (App. Br. 18; Reply Br. 5-7). Based on Appellant’s interpretation of the claim terms “record,” “format,” “record in a database,” and “one of a selection of formats,” (Reply Br. 5), Appellant argues that WST, Lilley, and Wendorf cannot anticipate or render obvious the instant claims (App. Br. 27-89; Reply Br. 11-12). The Examiner finds that the contested claim terms have been properly interpreted and that WST, Lilley, Wendorf, and Jacobson teach or suggest all of the elements of the rejected claims (Ans. 15-32). We have considered in this decision only those arguments that Appellant actually raised in the Briefs. Arguments which Appellant could Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 5 have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Thus, the issues arising from the respective positions of Appellant and the Examiner are: (i) Can a teletext page, as disclosed in WST and Lilley, be considered a “data record,” in keeping with the scope of that term in the claims, consistent with the instant Specification? (ii) What is the proper definition and scope of the claim term “format,” consistent with the instant Specification? (iii) Did the Examiner err in determining that WST and Lilley each independently disclose all of the elements of independent claims 1, 8, 15, 22, and 29 under 35 U.S.C. § 102? (iv) Did the Examiner err in determining that Wendorf discloses all of the elements of independent claims 1, 8, 15, 22, and 29 under 35 U.S.C. § 102? (v) Did the Examiner err in determining that WST or Lilley, taken with Jacobson, teach or suggest all of the elements of claims 4, 5, 11, 12, 18, 19, 25, 26, 32, and 33 under 35 U.S.C. § 103? FINDINGS OF FACT 1. The Specification of the '094 Patent is directed to distributed database system applicable to data broadcasting (Spec. Col. 1, ll. 11-14). Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 6 2. The Specification of the '094 Patent details that the system includes a central station (11) which can distribute data to receiver stations (13) and subsequently to a user (id. at col. 4, ll. 3-25; Fig. 1). 3. The Specification of the '094 Patent provides: the term "data" is to be interpreted broadly to include all forms of information, whether it is to be output to the user as text, graphics, video, audio and whether the data is for the purposes of presentation to the user or whether the data has a functional purpose or computational purpose[.] The Specification of the '094 Patent also provides that “the term ‘database’ is to be interpreted broadly as a general source and/or repository, however accessible, of data as defined in its broadest form” (id. at col. 1, ll. 39-49). 4. The Specification of the '094 Patent uses the term “record” in several places and Appellant relies (App. Br. 19) on one portion to understand the term: It should be appreciated that the present invention described with respect to the first embodiment has many advantages over previous distributed database systems such as Videotex and Teletext. Moreover, the particular concept of using a data record as the basic logic unit rather than a fully formatted page, as is the case with Teletext provides for more records to be transmitted more quickly. (id. at col. 9, ll. 41-50). 5. The Specification of the '094 Patent uses the term “format” in a myriad of contexts: “page format,” “text format,” “database Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 7 format,” “communication or display format,” “packet format,” and “format and structure of the data broadcast signal” (id. at col. 1, ll. 17-29, col. 4, l. 10, col. 9, l. 9, col. 17, ll. 28-34, col. 15, ll. 11-16). 6. WST discloses a system where data are organized such that is multiplexed with a video waveform to be received by decoders in the receivers (pp. 9-10). The data can be specified as being for processing (Telesoftware) and can be specified as being of an open format, to be reformatted after reception (id.). In addition, WST discloses that it is essential to separate machine operating data from display data so that the program items can be placed into the recorder memory (WST p. 115, 3rd ¶). 7. Lilley discloses the distribution of data through a carrier signal by multiplexing the data using dedicated lines of the signal’s vertical blanking interval (Lilley p. 25). The use of the teletext system and also the transmission of text, software, or data in an encrypted or clear format is disclosed (id.). Lilley also discusses the concept of distributed databases where user terminals are “drip fed” from a database (id.). 8. Wendorf discloses methods for channel mapping using a transmitted Global Channel Map, where channels can include multiplexed information streams corresponding to data or radio or television signals (Wendorf abs., col. 2, ll. 13-19). Each band can have a bandwidth sufficient to carry one or more compressed Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 8 digital TV programs and a number of lower data rate files (id. at col. 4, ll. 50-59). 9. Wendorf discloses that the Global Channel Map is transmitted periodically over the system band (id. at col. 5, ll. 10-12), and includes multiple tables having different formats, with the number of tables at least equal to the number of combinations of identical service types transmitted of different channels (id. at col. 5, ll. 12- 16). 10. Wendorf also discloses that a receiver receives the signals, demultiplexes them, via a controller, and uses information from the Global Channel Map stored in local memory to provide channel information and descriptions of entertainment programs received or scheduled to be received (id. at col. 4, ll. 17-40). PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. The properly interpreted claim must then be compared with the prior art. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 9 1364 (Fed. Cir. 2004). When the specification states the meaning that a term in the claim is intended to have, the claim is examined using that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). Claims in a reexamination proceeding should be given their broadest reasonable interpretation, consistent with the specification, because applicants had the right to amend, whereas in a district court, "claims should be so construed, if possible, as to sustain their validity." In re Yamamoto, 740 F.2d 1569, 1571 n.*, 1571-72 (Fed. Cir. 1984) (citing ACH Hosp. Systems, Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). ANALYSIS Appellant argues that the Examiner is reading the claimed subject matter in a vacuum and is not reading the claimed terms in the context of the entire patent (App. Br. 18; Reply Br. 5-7). The Examiner finds that the disputed claim terms have been interpreted in the context of the Specification, as would have been understood by persons of ordinary skill in Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 10 the art (Ans. 15). We analyze the disputed claim terms in the following two sections. (i) Comparison of a teletext page with a “data record” Appellant alleges that the term “data record” or “record” is understood to be the basic logic unit in the '094 Patent, and argues that this term is specifically contrasted with a fully formatted page, as in teletext, in the Specification (App. Br. 19; Reply Br. 5, 8). The Examiner finds that ordinarily a record is a data structure that has a collection of data elements or fields, but no such structure or data fields are disclosed in the Specification (Ans. 16). Because of this, the Examiner finds “record” to be “a ‘data’ item or some unit of information access” (Ans. 17). As such, Appellant’s position appears to be that a teletext page cannot be a data record in the context of the '094 Patent, and we disagree. The terms “data” and “database” are defined broadly in the Specification of the '094 Patent (FF 3). Given this breadth, we do not find the Examiner’s interpretation of “record” (Ans. 17) to be inconsistent with the claims and/or Specification. While the Specification contrasts the “records” of the disclosed invention with the use of pages in teletext systems (FF 4), that does not mean that the claim term “record” does not read upon teletext pages. Simply because the Specification contrasts the use of data records with the use of teletext pages is not sufficient to redefine the terms “record” Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 11 and “data record” to preclude their being read upon such teletext pages. While the Specification makes clear that records can be smaller than a fully formatted page (FF 4) and provide greater utility, that does not imply that a record cannot be as large as or the same as a teletext page. The broad recitations of “data” and “database” suggest that a record of that database or a basis logic unit thereof would also have to be interpreted broadly. We find the terms “record” and “data record” to be broad enough to read upon teletext pages. Additionally, as the Examiner points out (Ans. 17), the context of the section of the Specification cited by Appellant (FF 4) applies specifically to the first embodiment, and we assume that the claims are intended to cover all of the embodiments disclosed. In addition, as the Examiner points out, “it is improper to ‘confin[e] the claims to th[e] embodiments’ found in the specification” (Ans. 17) (citing In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.Cir.2005) (en banc))). As such, in the context of the instant Specification, we find that claim terms “record” and “data record” have sufficient scope to read upon teletext pages. In addition, given the breadth of the term “database” discussed above, we also agree with the Examiner’s determination of the meaning of “record in a database” as applied in the prior art rejections (Ans. 17). (ii) Proper definition and scope of the claim term “format” Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 12 Appellant argues that the proper definition of “format” is “a pre- defined arrangement of the data in a record” (App. Br. 19; Reply Br. 5). Appellant also argues that prior art teletext systems used a single page format described in the Background Art section of the Specification and that any teletext system would not utilize a “selection of formats” (App. Br. 19- 20). Appellant also states that “formats may vary for records of different displayable data, and differences in formats for displayable data may require different executable code” (App. Br. 20). The Examiner finds that Appellant’s definition of “format” improperly restricts the scope of the claim term, where the term “format” is used in many ways and in different contexts in the Specification (Ans. 18). The Examiner also finds that Specification does not confine the term “format” to any particular meaning as commonly understood in the art (Ans. 19). We generally agree with the Examiner. Commensurate with the findings of the Examiner, we find that “format” is used in different contexts in the Specification (FF 5), such that we do not find Appellant’s definition, i.e., “a pre-defined arrangement of the data in a record,” to be the broadest reasonable definition in the context of the Specification. In part, the Examiner finds that a record containing a displayable page and a record containing a piece of executable code are in different formats (Ans. 21). We do not find such a definition to be unreasonable. Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 13 In the context of the Specification, data sent in a teletext page can have different formats in that the data contained therein have a different arrangement depending on how those data will be used. In other words, data provided as a piece of executable code would be inscrutable if displayed on a screen because of the format. Appellant acknowledges that “the type of character data presented via Teletext pages can vary,” (App. Br. 28), but argues that those teletext pages are not in different formats. While this would presumably be correct for Appellant’s limited definition, we find that “machine operating data” and “display data” used in teletext systems can be said to be in different formats. Additionally, Appellant argues that the subject matter of such prior art teletext systems was made of record in the Specification of the '094 Patent, and the invention to which the '094 Patent is directed is contrasted therewith, such that one of ordinary skill in the art would understand the distinction (App. Br. 28). While we appreciate that one aim of the system disclosed by the '094 Patent was to improve and surpass the prior art teletext systems, it does not follow that Appellant’s claims cannot read upon such systems. The disclosure of prior art does not inoculate a claim from reading upon the same art by virtue of such a disclosure. Appellant has provided us with no evidence that teletext systems of WST and Lilley were before the original Examiner of the 09/316,164 patent application such that no new question of patentability should have been found (App. Br. 27). Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 14 Appellant also argues that the claims require a selection of formats (App. Br. 21-22), and that a control program would be of no use if records from the transmission databases were uniformly and always in a single format (App. Br. 23-25). However, as discussed supra, we find teletext systems as providing data in multiple formats, and require the ability to distinguish display data from program data. (iii) Anticipation by WST and Lilley under 35 U.S.C. § 102 Independent claims 1, 8, 15, 22, and 29 Appellant argues that WST fails to disclose records having one of a selection of formats and that there would be no reason to have a control program recited in claim 1 to determine the format of the second record if they were in a single format (App. Br. 27-29). Similar arguments are raised with respect to Lilley (App. Br. 47-48). As discussed supra, we do not find that teletext systems, of which WST describes a type thereof, disclose a single format record. We find that WST discloses the transmission and receipt of teletext pages having differing formats, i.e., “machine operating data” and “display data,” and a control mechanism to distinguish between the formats (FF 6). Lilley provides a similar disclosure (FF 7). As such, we do not find these arguments to be compelling. Appellant also argues that claim 1 requires that the records of multiple formats are present in a transmission database, a data stream, and a user’s database, and the rejection does not point to any teachings of WST that Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 15 disclose the same (App. Br. 29). Similar arguments are raised with respect to Lilley (App. Br. 48-49). The Examiner finds that given the definition of database discussed supra, a general source of information must be contained in both WST and Lilley to transmit the various forms of data (Ans. 24). Similarly, both systems, in WST and Lilley, have some type of memory in order to run executable code received in separate items (id.). We agree and further note that Lilley does disclose the use of databases (FF 7), such that we do not find this argument to be compelling. Additionally Appellant argues that any such database is not inherent in WST because pages of data may be fed to a broadcaster over data lines without being stored in a transmission database (App. Br. 29-30). Also, Appellant argues that nothing in WST corresponds to the user’s database (App. Br. 30). Similar arguments are raised with respect to Lilley (App. Br. 50). As discussed above, we do not find the requirements for a database in either WST or Lilley to be anything beyond a source of information or a data storage device. We find at least the same to be disclosed in WST and Lilley such that we do not find this argument to be compelling. Appellant also argues that WST does not disclose generating a display on the television consistent with the format determined by the control program (App. Br. 31). Similar arguments are raised with respect to Lilley (App. Br. 50). We assume that these arguments are drawn to the determination of format, as the actual generation of a display on the television is self-evident from the disclosures (FF 6-7). With respect to the Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 16 determination of format, these arguments are addressed supra, and not found to be compelling. Appellant also argues that nowhere in WST is there disclosure that executable code is run when required (App. Br. 31-32). Appellant also argues that claim 1 specifies “when required” and not “if required,” such that the running of executable code is affirmatively required (App. Br. 32). Similar arguments are raised with respect to Lilley (App. Br. 50-52). We need not address whether the running of executable code is required by claim 1, as we agree with the Examiner (Ans. 26-27) that it is inherent in the systems of WST and Lilley that if they can receive executable code, those systems must be able to execute such code. As such we do not find Appellant’s argument to be compelling. With respect to claims 8, 15, 22, and 29, while Appellant argues the elements of those claims separately with respect to the disclosures of WST and Lilley (App. Br. 33-46, 52-66), the arguments raised are largely the same as those raised against claim 1 with respect to WST. As we do not find those arguments to be compelling, we find no error in the rejections of claims 1, 8, 15, 22, and 29 over WST and Lilley. Dependent claims 2, 6, 7, 9, 13, 14, 20, 21, 23, 27, 28, 30, 34, and 35 Appellant argues that the dependent claims are not taught by WST by virtue of their dependence on the independent claims discussed supra (App. Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 17 Br. 46). Because we find that all of the elements of the independent claims are taught by WST, we do not find this argument to be compelling. (iv) Anticipation by Wendorf under 35 U.S.C. § 102 Independent claims 1, 8, 15, 22, and 29 As an initial matter, Appellant argues that the rejection over Wendorf is inconsistent and without appropriate basis because the map of Wendorf, asserted to be equivalent to a record of claim 1, is not in multiple different formats (App. Br. 66-67). Appellant argues that “while the actual character data in maps may vary, the format of a map or map update is not disclosed to vary” (App. Br. 67). The Examiner finds that Wendorf discloses the transmission of different types of data through the maps, and thus different formats (Ans. 28-29). We agree with the Examiner. Further to our discussion of “format” supra, we do not concur with Appellant that format is limited to the layout of the data. Wendorf discloses that the map includes multiple tables having different formats, with the number of tables at least equal to the number of combinations of identical service types transmitted of different channels (FF 9). The tables can vary and thus provide variation in the format of the map. As such, we do not find Appellant’s arguments to be compelling. Appellant also argues that claim 1 requires that the data stream is broadcast within a carrier signal, which would be understood by one of ordinary skill in the art as being within a television or commercial radio Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 18 carrier signal, in the context of the Specification (App. Br. 67). Appellant continues that Wendorf specifies that maps and map updates are given their own channels within the bands, and not within a carrier signal (App. Br. 68). The Examiner finds that the inventors have not acted as their own lexicographers to redefine “carrier signal,” and such a signal is “a sinusoidal signal of constant amplitude and frequency that is modulated with [an] information bearing signal” (Ans. 29). We agree with the Examiner. Wendorf recites that channels can include multiplexed information streams corresponding to data or radio or television signals (FF 8). Although the radio or television signals are not specifically addressed as carrier signals, we find that the multiplexing of data with those signals, with subsequent transmission, would be the same as “broadcasting the data stream with the carrier signal,” recited in claim 1. As such, we do not find Appellant’s arguments to be compelling. Appellant also argues that Wendorf fails to teach the determination of the format of a record using a control program because having a user select a service is not equivalent (App. Br. 68). The Examiner disagrees and finds that claim does not prevent a user’s selection of the type of information to be displayed from being equivalent to determining the format of a second record using a control program (Ans. 29-30). We agree with the Examiner because we find that the user, using a control program, can select information for display, which determines the format of the received information. We acknowledge that this is different than how the control Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 19 program in the '094 Patent determines the format, but we find that it satisfies the requirements of the claimed step. As such, we do not find Appellant’s arguments to be compelling. Appellant also argues that there is no transmission database inherent or implicit in Wendorf, that Wendorf does not disclose constructing a data stream from individual records, or that Wendorf provides for a user’s database having second records comprising at least some of the first records (App. Br. 69-72). The Examiner finds that the disclosure of Wendorf provides for the storage of received and decoded maps in the receiver’s memory and that the broadcast system itself is a database, i.e., a general source of any form of information (Ans. 31). Further in line with our discussion of the term “database” supra, and the disclosure of Wendorf (FF 8, 10), we agree with the Examiner and do not find Appellant’s arguments to be compelling. Finally, Appellant argues that Wendorf does not disclose “running, when required, the executable program code,” recited in claim 1 (App. Br. 73-74). Appellant also takes issue with the Examiner’s finding that this recitation of claim 1 is an alternative recitation that is not required, and any document utilized in a anticipation rejection of clam 1 must include the disclosure of at least the capability of performing each step (id.). The Examiner finds that the running of executable program code is not necessary in claim 1, and, given the claim’s language, “there cannot be any Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 20 requirement to run a non-existing executable program” (Ans. 26). We agree with the Examiner. Claim 1 recites, in part, that the at least one record comprises “executable program code or an object broadcast from the first records” and the step of “running, when required, the executable program code.” As the Examiner finds (id.), data may be provided to the television set and there need not be executable program code be part of the received records. “It is also an elementary principle of patent law that when, as by recitation of ranges, or otherwise, a claim covers several compositions, the claim is “anticipated” if one of them is in the prior art.” Titanium Metals Corp. of Am. v. Banner, 778 F.2d. 775, 782 (Fed. Cir. 1985). While the referenced case is directed to chemical compositions, we find that it is equally applicable to claims which provide limitations in the alternative. See Also Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1377-1381 (Fed. Cir. 2009)( If a limitation is optional, then prior art without the optional limitation can anticipate). As such, we do not find Appellant’s arguments to be compelling and we find no error in the Examiner’s rejection of claim 1. With respect to claims 8, 15, 22, and 29, while Appellant argues the elements of those claims separately (App. Br. 74-88), the arguments raised are largely the same as those raised against claim 1. As we do not find those arguments to be compelling, we find no error in the rejections of claims 1, 8, 15, 22, and 29 over Wendorf. Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 21 Dependent claims 2, 3, 6, 7, 9, 10, 13, 14, 16, 17, 20, 21, 23, 24, 27, 28, 30, 31, 34, and 35 Appellant argues that the dependent claims are not taught by Wendorf by virtue of their dependence on the independent claims discussed supra (App. Br. 88). Because we find that all of the elements of the independent claims are taught by Wendorf, we do not find this argument to be compelling. In addition, Appellant argues that Wendorf does not disclose that the maps can be “a text page, a video frame, an audio segment, a block or a file of other data stream” and cannot anticipate the subject matter of claim 2 and similar claims (id.). We find, however, that the Examiner has supplied portions of Wendorf that disclose all of the elements of the dependent claims (Ans. 12-13). As such, we do not find Appellant’s arguments to be compelling and find that the Examiner did not err in rejecting 2, 3, 6, 7, 9, 10, 13, 14, 16, 17, 20, 21, 23, 24, 27, 28, 30, 31, 34, and 35 to be anticipated by Wendorf. (v) Obviousness over WST or Lilley, taken with Jacobson, under 35 U.S.C. § 103 Claims 4, 5, 11, 12, 18, 19, 25, 26, 32, and 33 Appellant argues that the claims rejected as being obvious should be allowable by virtue of their dependence (App. Br. 89). Given our findings regarding the independent claims in view of WST and Lilley, we do not find Appellant’s argument to be compelling. Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 22 In addition, Appellant argues that “there is no proper explanation for why WST or Lilley would be modified to include return links or accepting requests for particular user requested records” because such processes would be controlled by the equipment provided to the user (id.). While the Examiner does not respond to Appellant’s argument directly (Ans. 32), the rejection supplies a motivation of being able to offer financial transaction services in addition to other datacast services (Ans. 14). We find the Examiner’s motivation to be sufficient to support the obviousness finding of the rejection. As such, we do not find that the Examiner erred in rejecting claims 4, 5, 11, 12, 18, 19, 25, 26, 32, and 33 as being obvious over WST or Lilley, taken with Jacobson. CONCLUSIONS We find that: (i) a teletext page, as disclosed in WST and Lilley, can be considered a “data record,” in keeping with the scope of that term in the claims, consistent with the instant Specification; (ii) the proper definition and scope of the claim term “format,” consistent with the instant Specification, encompasses a record containing a displayable page and a record containing a piece of executable code being in different formats; (iii) the Examiner did not err in determining that WST and Lilley each independently disclose all of the elements of independent claims 1, 8, 15, 22, and 29 under 35 U.S.C. § 102; (iv) that the Examiner did not err in determining that Wendorf discloses all of the elements of independent Appeal 2010-002221 Reexamination Control 90/008,058 United States Patent 6,076,094 23 claims 1, 8, 15, 22, and 29 under 35 U.S.C. § 102; and (v) the Examiner did not err in determining that WST or Lilley, taken with Jacobson, teach or suggest all of the elements of claims 4, 5, 11, 12, 18, 19, 25, 26, 32, and 33 under 35 U.S.C. § 103. DECISION We affirm the Examiner’s decision to reject claims 1-35. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED ack cc: PATENT OWNER: GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 THIRD PARTY REQUESTER: Richard Kim MORRISON & FOESTER LLP 12531 HIGH BLUFF DRIVE, SUITE 100 SAN DIEGO, CA 92130 Copy with citationCopy as parenthetical citation