Ex Parte Bullinger et al

Board of Patent Appeals and Interferences

Sep 23, 2009

10276128 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WERNER BULLINGER and OLIVER ROTHE
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Appeal 2009-004829
Application 10/276,1281
Technology Center 2600
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Decided: September 23, 2009
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Before JOSEPH F. RUGGIERO, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Thomson Licensing LLC.
Appeal 2009-004829
Application 10/276,128

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 6, 11, 12, 14, 17, 18, 20-22, 25, and 35-38.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention relates to a system for operating a consumer
electronics appliance such as a television, video recorder, or DVD player, in
which various users each may configure a customized on-screen menu for
their own use. Means are provided whereby the user may select one
customized menu from the plurality, which are stored. In one embodiment,
the user’s identity is automatically recognized, e.g., by fingerprint (Spec. 2-
4).
Claim 1 is exemplary of the claims on appeal:
1. System for operating a consumer electronics appliance, comprising: a
processor for enabling a menu to be retrieved from a memory and displayed
on a screen, wherein the menu contains a plurality of menu items
corresponding to various operating parameters, wherein the menu items are
selectable by a user to build a customized menu while the menu items are
displayed on the screen, wherein the system enables a plurality of
customized menus to be built, and the memory is adapted to store the
plurality of customized menus containing different kinds of menu items, and
in that means for selecting an individual customized menu from the plurality
of customized menus are provided.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Matsuura US 5,999,228 Dec. 7, 1999

2 Claims 2-5, 7-10, 13, 15, 16, 19, 23, 24, and 26-34 have been cancelled.
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Claims 1, 6, and 35 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Matsuura.
Claims 11, 12, 14, 17, 18, 20-22, 25, and 36-38 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Matsuura.
Throughout this decision, we make reference to the Appeal Brief
(“Br.,” filed May 30, 2008) and the Examiner’s Answer (“Ans.,” mailed
June 24, 2008) for their respective details.
ISSUE
Appellants argue that Matsuura does not teach generating or storing a
plurality of customized menus, nor any means for selecting one customized
menu from among a plurality (App. Br. 4-5). In response, the Examiner
finds that Matsuura teaches “a customized menu that can be set by each of
the users” (see Ans. 3, citing Matsuura col. 5, ll. 65-67), and that the
submenus used in Matsuura read on the claimed “plurality of customized
menus” (Ans. 6).
Appellants’ contentions present us with the following issue:
Have Appellants shown that the Examiner erred in finding that
Matsuura teaches building and storing a plurality of customized menus, and
means for selecting an individual customized menu from the plurality of
customized menus?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a system for
operating a consumer electronics appliance, in which various users each may
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configure a customized on-screen menu for their own use. Means are
provided whereby the user may select one customized menu from the
plurality, which are stored. In one embodiment, the user’s identity is
automatically recognized, e.g., by fingerprint (Spec. 2-4).
Matsuura
2. Matsuura teaches “a customized menu that can be set by each
of the users in the present invention” (col. 5, ll. 65-66).
3. Matsuura’s disclosure concerns only a (singular) customized
menu. For example, RAM 4e “stores a customized menu constructed by a
user” (col. 4, ll. 57-58); “In the set screen 30 ‘ON/OFF’ is a sub-operation
item for ON/OFF setting of the customized menu” (col. 6, ll. 17-18); “the
user operates the selection key 27b to select the sequential position for the
‘VIDEO MODE’ to be displayed on the customized menu” (col. 7, ll. 12-
14); “'C. MENU’ is selected to display the customized menu set screen 30”
(col. 7, ll. 56-57); et cetera.
4. Matsuura Figs. 3-6 illustrate the process for customization of its
“Main Menu.”

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346
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(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
ANALYSIS
CLAIMS 1, 6, AND 35
Independent claim 1 (the sole independent claim in the application)
recites a system for operating a consumer electronics appliance that enables
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a plurality of customized menus to be built, a memory adapted to store the
plurality of customized menus, and means for selecting an individual
customized menu from the plurality of customized menus.
The Examiner finds that Matsuura teaches all the limitations of
independent claim 1, explaining that Matsuura’s teaching of “a customized
menu that can be set by each of the users in the present invention” (FF 2)
means that Matsuura enables a plurality of customized menus to be built
(Ans. 3). In the Response to Arguments section of the Examiner’s Answer,
the Examiner further finds that
Matsuura allows a user(s) to select any one of a plurality of menus
which can then be customized according to the user(s input, thus they
are menu items/menus within a menu/screen …. Therefore a
generated customized menu has associated with it a plurality of
customized sub-menus meeting the claim limitations.
Ans. 6.
The Examiner’s finding that Matsuura teaches a plurality of
customized menus is not supported by Matsuura’s overall disclosure.
Throughout Matsuura, reference is made only to “a customized menu”
(singular). For example, RAM 4e “stores a customized menu constructed by
a user” (FF 3); “In the set screen 30 ‘ON/OFF’ is a sub-operation item for
ON/OFF setting of the customized menu” (FF 3); “the user operates the
selection key 27b to select the sequential position for the ‘VIDEO MODE’
to be displayed on the customized menu” (FF 3); “'C. MENU’ is selected to
display the customized menu set screen 30” (FF 3); et cetera. Appellants
argue, and we agree, that Figures 3-6 of Matsuura, which illustrate menu
screens involved in the configuration of the customized menu, lack any
teaching of any way in which a plurality of customized menus may be
generated and stored (see App. Br. 6). We have reviewed Matsuura, and we
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find no teaching of any means to select an individual customized menu from
a plurality of customized menus. Further, the Examiner’s finding that
Matsuura teaches a plurality of customized sub-menus is erroneous. As may
be seen in Figures 3-6, Matsuura teaches only the customization of the
‘Main Menu’ (FF 4); there is no disclosure of user customization of any of
the sub-menus in the reference. Matsuura thus does not teach every element
of the invention recited in claim 1.
Appellants have demonstrated error in the Examiner’s § 102 rejection
of independent claim 1. Thus, we will not sustain the rejection of claim 1, or
of dependent claims 6 and 35, under 35 U.S.C. § 102(b) as being anticipated
by Matsuura.
CLAIMS 11, 12, 14, 17, 18, 20-22, 25, AND 36-38
Each of these claims is dependent from claim 1, whose rejection we
reverse supra, and each is rejected over the same reference (Matsuura) in
view of Official Notice. The notice taken by the Examiner fails to make up
for the deficiencies of Matsuura, which we have noted. We therefore reverse
the rejection of claims 11, 12, 14, 17, 18, 20-22, 25, and 36-38 under
§ 103(a), for the same reasons expressed with respect to claim 1 under
§ 102(b), supra.
CONCLUSION OF LAW
Appellants have shown that the Examiner erred in finding that
Matsuura teaches building and storing a plurality of customized menus, and
means for selecting an individual customized menu from the plurality of
customized menus.
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ORDER
The Examiner’s rejection of claims 1, 6, 11, 12, 14, 17, 18, 20-22, 25,
and 35-38 is reversed.
REVERSED

ELD

THOMSON MULTIMEDIA LICENSING INC
CN 5312
PRINCETON, NJ 08543-0028
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