Ex Parte Bernier

Board of Patent Appeals and Interferences

Dec 13, 2011

10224780 (B.P.A.I. Dec. 13, 2011)

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.
10/224,780 08/21/2002 Nicklas P. Bernier A-7732 1099
62658 7590 12/13/2011
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
LONSBERRY, HUNTER B
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
12/13/2011 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 NICKLAS P. BERNIER
____________________

Appeal 2010-001163
Application 10/224,780
Technology Center 2400
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 66-125 (App. Br. 2). Claims 1-65 have been canceled (id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellant’s invention relates to a home communication terminal
device and method that enables a user to specify favorite channels for
multiple favorite channel categories using a remote control; wherein, when
there are multiple favorite channel categories associated with a particular
user, the device displays a message that requests the user to select a favorite
channel category, otherwise the device selects a default category (Fig. 22A;
Spec. 1, ll.12-15 and 28, l. 27-30, l. 4).

B. ILLUSTRATIVE CLAIMS
Claim 66, 78, and 80 are exemplary:
66. A method for prompting and navigating favorite
channels with a remote control device, the method comprising
the steps of:

while presenting either an interactive program guide or a
media content instance presentation, receiving a first keypress
indication associated with commencing a display
favorites mode;

responsive to receiving the first keypress indication,
determining whether more than one favorites category exists;
and

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responsive to the determination, providing a user
interface screen when more than one favorites category exists,
wherein a message in the user interface screen prompts the user
to select a favorites category before commencing the display
favorites mode, otherwise commencing the display favorites
mode for a default favorites category responsive to the
determination.

78. A method for prompting favorite channels with a
remote control device, the method comprising the steps of:

while presenting either an interactive program guide or a
media content instance presentation, receiving a first keypress
indication associated with commencing a display
favorites mode; and

receiving an alphanumeric keypress indication a defined
threshold duration after receiving the first keypress indication,
wherein the alphanumeric keypress indication is associated with
a favorites category, wherein the alphanumeric keypress
indication is associated with a key corresponding to entry of a
number, single letter, or a combination of a letter and number.

80. A method for adding and deleting favorite
channels, the method comprising the steps of:

receiving a first keypress indication associated
with adding a first favorite channel to a favorite channel list that
is transparent to a user at a time corresponding to the reception
of the first keypress indication; and

responsive to the first keypress indication, adding the
first favorite channel to the favorite channel list; and

presenting a media content instance presentation on a
screen display associated with the first favorite channel
corresponding to a time of receiving the first keypress
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indication and to a time of adding the first favorite channel to
the favorite channel list.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Florin US 5,583,560 Dec. 10, 1996
Saib US 2001/0005905 A1 Jun. 28, 2001
Kamen US 2002/0122079 A1 Sep. 05, 2002
Williams US 7,313,806 B1 Dec. 25, 2007
(filed Oct. 30, 1998)

Claims 66-74 and 96-104 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Williams.
Claims 78, 79, 108, and 109 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Kamen.
Claims 80, 83, 89, 90, 93, 94, 110, 113, 119, 120, and 124 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Florin.
Claims 75-77 and 105-107 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williams in view of Florin.
Claims 81, 82, 84, 86-88, 111, 112, 114, 116-118, and 123 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Florin in view
of Saib.
Claims 85 and 115 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Florin in view of Saib and Kamen.
Claims 91, 92, 121, and 122 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Florin in view of Kamen.
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Claims 95 and 125 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Florin in view of Williams.

II. ISSUES
The main issues before us are whether the Examiner has erred in
determining that:
1. Williams teaches a method for prompting and navigating favorite
channels including “responsive to the determination [that more than one
favorites category exists], providing a user interface screen when more than
one favorites category exists, wherein a message in the user interface screen
prompts the user to select a favorites category before commencing the
display favorites mode otherwise commencing the display favorites mode for
a default favorites category responsive to the determination” (claim 66,
emphasis added);
2. Kamen teaches a method for prompting favorite channels with a
remote control device that includes “receiving an alphanumeric keypress
indication a defined threshold duration after receiving the first keypress
indication, wherein the alphanumeric keypress indication is associated with
a favorites category, wherein the alphanumeric keypress indication is
associated with a key corresponding to entry of a number, single letter, or a
combination of a letter and number” (claim 78, emphasis added); and
3. Florin teaches a method for adding and deleting favorite channels
that includes the step of “receiving a first keypress indication associated with
adding a first favorite channel to a favorite channel list that is transparent
to a user at a time corresponding to the reception of the first keypress
indication” (claim 80, emphasis added).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Williams
1. Williams is directed to a method and apparatus for channel
surfing based on user-definable preferences lists that identify a plurality of
channels (Abstract); wherein, when multiple user-definable preference lists
exist, the system or the user may select the list (e. g. the system may
randomly select one or the system gives the user an opportunity to choose)
(col. 7, ll. 10-20).
2. The user may select a particular category using a remote control
device by pushing a particular category button, pushing a channel selection
key corresponding to a particular category, or entering a category name (col.
7, ll. 1-5).
Kamen
3. Kamen discloses a method that allows a viewer of a multimedia
presentation system to select from multiple system functions affecting a
favorite channels list by depressing a single button on a remote control
device; wherein, the selection is made based upon the amount of time that
the button is depressed (Abstract; ¶ [0018]).
4. When the user briefly depresses a button number (e.g. (#) 3) of
the remote control device button (e.g., less than 1 second), the remote
control interprets this click as a digit for selecting a channel, and the system
will tune to channel #3 (id.). If, however, the user depresses the button for a
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longer period (e.g., between 1 and 2 seconds), then the system recalls
previously programmed selection #3 of a favorite channel list (id.).
Florin
5. Florin discloses an interactive audio-visual transceiver that
enables the user to mark programs by depressing a mark button 142;
wherein, the marked programs are signified by a check mark on the program
listing and are placed on a hidden marked program list which only becomes
displayed as a result of selection of a sub-category of the favorite channels
(Fig. 31 and 32; col. 13, ll. 15-19 and col. 19, ll.48-56).
6. When the user selects a “marked programs” icon, a favorite
channel list sub-category, displayed in a categories graphic overlay panel
300, the program listing 363 of programs that have been previously marked
is displayed along with each corresponding channel (Fig. 31and 32; col. 19,
ll. 20-25, 48-56) .

IV. ANALYSIS
Claims 66-74 and 96-104
As to independent claim 66, Appellant contends that “Williams fails
to disclose, teach, or suggest at least” “[a] method for prompting and
navigating favorite channels with a remote control device” including the step
of “responsive to the determination, providing a user interface screen when
more than one favorites category exists, wherein a message in the user
interface screen prompts the user to select a favorites category before
commencing the display favorites mode, otherwise commencing the display
favorites mode for a default favorites category responsive to the
determination” (App. Br. 7-8) because “it is unreasonable to determine that
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the elements disclosed by Williams teach wherein a message in the user
interface screen prompts the user to select a favorites category before
commencing the display favorites mode” (App. Br. 9). Appellant argues
that “Williams appears to teach keeping the display unchanged in response
to a user selecting a category of channels associated with that user” (id.).
Independent claim 96 recites claim limitations similar in scope to claim 66.
Though the Examiner finds that Williams discloses “[m]ultiple
[preferences] lists may correspond to a single user input”; wherein, the
“channel selector 221 selects one of the two preferences lists. . . . by giving
the user a choice of which list he or she prefers” (Ans. 22), we agree with
Appellant that “Williams appears to teach keeping the display unchanged”
(App. Br. 9). While Williams is directed to a method and apparatus for
channel surfing including user-definable preference lists that identify a
plurality of channels, wherein, when multiple user-definable preference lists
exist, the system may select the list (FF 1) or grant the user an opportunity to
choose the list (FF 1 and 2), Williams is silent to a change in the user
interface wherein a message is presented on the user interface screen that
prompts the user to select a favorites category before commencing the
display favorites mode.
Accordingly, we find that Appellant has shown that the Examiner
erred in rejecting claim 66 under 35 U.S.C. § 102(e) over Williams.
Independent claim 96 recites similar features and thus stands with claim 66,
as well as claims 67-74 and 97-104 depending from claims 66 and 96.
Claim 78, 79, 108, and 109
As to independent claim 78, Appellant contends that “Kamen fails to
disclose, teach, or suggest at least” “[a] method for prompting favorite
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channels with a remote control device” including the step of “receiving an
alphanumeric keypress indication a defined threshold duration after
receiving the first keypress indication, wherein the alphanumeric
keypress indication is associated with a favorites category, wherein the
alphanumeric keypress indication is associated with a key corresponding to
entry of a number, single letter, or a combination of a letter and number”
(App. Br. 11-12) because “[n]owhere does Kamen disclose the capability of
the keypress being [initially] ‘associated with a favorites category’” (App.
Br. 13).
Though the Examiner “interprets [the] channel selection [where the
user depresses the button briefly] to be ‘receiving a first keypress indication
associated with commencing a display favorites mode’” (Ans. 24), we do not
agree that the first keypress is associated with commencing a favorites
mode. Particularly, Kamen discloses that when the user depresses a button
number on the remote control briefly, the remote control interprets this click
as a digit for selecting a channel (not necessarily on a favorite channels list)
(FF 3 and 4). We find that it is only when the user depresses the button for a
longer period of time that the system recalls a previously programmed
selection from a favorite channel list which is associated with the button
number (FF 4).
Accordingly, we find that Appellant has shown that the Examiner
erred in rejecting claim 78 under 35 U.S.C. § 102(e) over Kamen.
Independent claim 108 recites similar features and thus stands with claim 78,
as well as claims 79 and 109 depending from claims 78 and 108.
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Claim 80, 83, 89, 90, 93, 94, 110, 113, 119, 120, and 124
As to independent claim 80, Appellant contends that “Florin fails to
disclose, teach, or suggest at least” “[a] method for adding and deleting
favorite channels” including the step of “receiving a first keypress
indication associated with adding a first favorite channel to a favorite
channel list that is transparent to a user at a time corresponding to the
reception of the first keypress indication” (App. Br. 15) because “Florin
merely appears to teach placing mark identifiers on particular airing of
programs, so that they may be accessed at a later time” (App. Br. 17).
Appellant argues that “[n]owhere does Florin disclose ‘adding a first favorite
channel to a favorite channel list that is transparent to a user’” (id.).
Though the Examiner finds that when the system “displays a program
listing of only programs that have been previously marked . . . the channel
[is] associated with each of the marked programs” (Ans. 27), we agree with
Appellant that this transparent list of marked programs is not the same as a
“favorite channel list that is transparent to a user” (App. Br. 17, emphasis
added). Particularly, Florin discloses an interactive audio-visual transceiver
that enables the user to mark programs by depressing a mark button;
wherein, the marked programs are stored in a marked program list that
becomes available for display only after selection of the “marked program”
favorite subcategory icon (FF 5). Albeit this list is transparent to the user,
we find that the list of marked programs is not a list of favorite channels as
required by claim 80 (FF 5 and 6).
Accordingly, we find that Appellant has shown that the Examiner
erred in rejecting claim 80 under 35 U.S.C. § 102(b) over Florin.
Independent claims 83, 110, and 113 recite similar features and thus stand
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with claim 80, as well as claims 89, 90, 93, 94, 119, 120, and 124 depending
from claims 83 and 113.
Rejection of claims 75-77, 81, 82, 84-88, 91, 92, 95,
105-107, 111, 112, 114-118, 121-123, and 125
As noted supra, we reversed the rejection of claims 66, 78, 83, 96,
113, and 80 from which claims 75-77, 81, 82, 84-88, 91, 92, 95, 105-107,
111, 112, 114-118, 121-123, and 125 respectively depend.
The Examiner has not identified how Florin cures the noted
deficiencies of Williams. As such, we also reverse the rejection of claims
75-77 and 105-107 over Williams in view of Florin. Additionally, the
Examiner has not identified how Saib, Kamen, and Williams cure the noted
deficiencies of Florin. As such, we also reverse the rejection of claims 81,
82, 84, 86-88, 111, 112, 114, 116-118, and 123 over Florin in view of Saib;
the rejection of claims 91, 92, 121, and 122 over Florin in view of Kamen;
and the rejection of claims 95 and 125 over Florin in view of Williams.
Finally, the Examiner has not identified how Saib and Kamen cure the noted
deficiencies of Florin. As such, we also reverse the rejection of claims 85
and 115 over Florin in view of Saib and Kamen.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 66-74, 78, 79, 96-104, 108, and
109 under 35 U.S.C. § 102(e), claims 80, 83, 89, 90, 93, 94, 110, 113, 119,
120, and 124 under 35 U.S.C. § 102(b), and claims 75-77, 81, 82, 84-88, 91,
92, 95, 105-107, 111, 112, 114-118, 121-123, and 125 under 35 U.S.C. §
103(a) is reversed.
REVERSED
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