Ex Parte Beadle et alDownload PDFPatent Trial and Appeal BoardDec 22, 201411812783 (P.T.A.B. Dec. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD BEADLE and JOHN L. DELAY ____________ Appeal 2012-009620 Application 11/812,783 Technology Center 2400 ____________ Before CARLA M. KRIVAK, JAMES R. HUGHES, and JOHNNY A. KUMAR, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 26–28, 31, and 56–58. (App. Br. 1.)1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We refer to Appellants’ Specification (“Spec.”) filed June 21, 2007; Appeal Brief (“App. Br.”) filed December 15, 2011; and Reply Brief (Reply Br.”) filed June 8, 2012. We also refer to the Examiner’s Answer (“Ans.”) mailed April 25, 2012 and Final Office Action (Final Rejection) (“Final Act.”) mailed July 19, 2011. Appeal 2012-009620 Application 11/812,783 2 Appellants’ Invention The invention at issue on appeal concerns systems and methods for creating smart electronic programming guides including creating a first smart electronic programming guide for a first mode of content delivery and a second smart electronic programming guide for a second mode of content delivery. (Spec. ¶¶ 2–3, 5–14; Abstract.) Representative Claim Independent claim 26, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 26. A method for creating a smart electronic programming guide, comprising: (a) determining an identity of a user interacting with a content presentation system; (b) collecting channel use information for each of a plurality of channels from the user’s interaction with the content presentation system; (c) storing the channel use information; (d) determining a value for each of said plural channels as a function of the channel use information; and (e) creating a smart electronic programming guide for said plural channels as a function of the determined value; further comprising creating a first smart electronic programming guide for said plural channels for a first mode of content delivery by said content presentation system and creating a second smart electronic programming guide for said plural channels for a second mode of content delivery by said content presentation system. Appeal 2012-009620 Application 11/812,783 3 Rejections on Appeal 1. The Examiner rejects claims 26, 27, 56, and 57 under 35 U.S.C. § 103(a) as being unpatentable over Thompson (US 2003/0018973 A1, published Jan. 23, 2003) and Soundararajan (US 2003/0084448 A1, published May 1, 2003). 2. The Examiner rejects claims 28 and 58 under 35 U.S.C. § 103(a) as being unpatentable over Thompson, Soundararajan, and Reynolds (US 6,563,515 B1, issued May 13, 2003). 3. The Examiner rejects claim 31 under 35 U.S.C. § 103(a) as being unpatentable over Thompson, Soundararajan, and Furusawa (US 2008/0172696 A1, published July 17, 2008 (filed Sept. 29, 2005)). ISSUE Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in finding that the combination of Thompson and Soundararajan collectively would have taught or suggested “creating a first smart electronic programming guide . . . for a first mode of content delivery . . . and creating a second smart electronic programming guide . . . for a second mode of content delivery by said content presentation system” within the meaning of Appellants’ claim 26 and the commensurate limitations of claims 31 and 56? Appeal 2012-009620 Application 11/812,783 4 ANALYSIS The Examiner rejects independent claim 26 under 35 U.S.C. § 103(a) over Thompson and Soundararajan. (Final Act. 2–3, 6–8; Ans. 4–6, 10–13.) Appellants contend, inter alia, that Soundararajan does not teach multiple programming guides for multiple different modes of content delivery. (App. Br. 3–4, 6–7; Reply Br. 1.) Specifically, Appellants contend that “the claimed features are not different guide modes as suggested by the Office, but rather different guides based on first and second ‘mode of content delivery’” (App. Br. 6) and Soundararajan instead describes multiple lists created for each viewer and/or a particular date and time (App. Br. 6–7). We agree with Appellants that the cited portions of Soundararajan do not discuss content delivery and “[n]one of the examples of guides used by the Office are for different ‘modes of content delivery’” (Reply Br. 1). Contrary to the Examiner’s position, Soundararajan at most describes “different ways or types of presenting the program guides” (Ans. 13), not different guides based on the way (method/mode) content is delivered as required by Appellants’ claim 26. A “mode” of content delivery is “a manner or way of . . .” or a “method or form” of delivering content. See Webster’s New World College Dictionary, 4th Ed. (1999), available at http://www.yourdictionary.com/). As explained by Appellants, the “mode” of delivering content may be conventional television (TV) using a conventional display and/or a picture-in picture (PIP) display, or other methods for delivering desired content — a radio, a music-player, a cell phone, the Internet (using a connected device such as a computer and display), a portable entertainment device (e.g., a portable DVD player), etc. (Spec. ¶¶ 6, 8, 118, 126, 164, 173.) Appeal 2012-009620 Application 11/812,783 5 Soundararajan is not concerned with the delivery of content, but instead describes different favorite channel lists depending upon the viewer, date, and/or time. (Soundararajan ¶¶ 12, 39–41.) Soundararajan’s teaching of varying a favorite channel list dependent on a user and/or time is not the same as presenting a different programming guide depending upon the manner in which content is provided (e.g., visually via a television display or aurally via a radio). Therefore, the cited portions of Soundararajan are insufficient to render obvious Appellants’ recited limitations of “creating a first smart electronic programming guide . . . for a first mode of content delivery . . . and creating a second smart electronic programming guide . . . for a second mode of content delivery by said content presentation system.” Consequently, we are constrained by the record before us to find that the Examiner erred in concluding Soundararajan (and Thompson) teaches the recited features of Appellants’ claim 26. Appellants’ independent claims 31 and 56 include limitations of commensurate scope. Appellants’ dependent claims 27, 28, 57, and 58 depend on and stand with claims 26 and 56. Accordingly, we reverse the Examiner’s obviousness rejection of claims 26–28, 31, and 56–58. CONCLUSIONS Appellants have shown that the Examiner erred in rejecting claims 26–28, 31, and 56–58 under 35 U.S.C. § 103(a). Appeal 2012-009620 Application 11/812,783 6 DECISION We reverse the Examiner’s rejections of claims 26–28, 31, and 56–58. REVERSED cdc Copy with citationCopy as parenthetical citation