Ex Parte Crosby et al

Board of Patent Appeals and Interferences

Feb 10, 2006

09486545 (B.P.A.I. Feb. 10, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHEILA RENEE CROSBY, STEVEN TODD BARLOW,
and ROBERT JOHN STRONG
____________
Appeal No. 2006-0372
Application No. 09/486,545
____________
ON BRIEF
____________
Before KRASS, GROSS, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-14, which are all of the claims pending in
this application.
We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION under
37 CFR § 41.50(b).
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Application No. 09/486,545
Page 2
BACKGROUND
The appellants’ invention relates to a system and method for
navigating within a display having different sections
(specification, page 1).
Claim 1 is representative of the invention, and is reproduced as
follows:
1. A system for navigating within a display having one or
more display sections, comprising:
means for selecting a first section of said display;
means for navigating within said first section of said
display;
control means for displaying a navigational symbol on a
border of said first selected section, said symbol corresponding
to a direction in which a highlight may be moved; and
said control means moves said highlight to a second section
of said display in said corresponding direction in response to
the steps of highlighting said navigational symbol on said border
of said first selected section and selecting said navigational
symbol.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rowe et al. (Rowe) 5,812,123 Sep. 22, 1998
Montalbano 5,918,237 Jun. 29, 1999
Claims 1-3 and 5-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rowe.
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Application No. 09/486,545
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Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rowe in view of Montalbano.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (mailed June 3, 2005)
for the examiner's complete reasoning in support of the
rejections, and to the brief (filed March 14, 2005) for the
appellants’ argument thereagainst.
Only those arguments actually made by appellants have been
considered in this decision. Argument which appellants could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' argument set forth in the briefs along with the
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Application No. 09/486,545
Page 4
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with the rejection of
claims 1-3 and 5-14 under 35 U.S.C. § 103(a) as being
unpatentable over Rowe. We turn first to claim 1.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
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Application No. 09/486,545
Page 5
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (answer, page 4) is that in Rowe
each program title 66 or 66' contains information icons which can
be selected by the user, but that Rowe does not clearly show
navigating within the first section. The examiner asserts (id.)
that “[i]t is well known and would have been obvious to modify
the program tiles to provide more selecting information such as
links, audio files, images, and etc. to give the user more detail
about the current program.”
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Application No. 09/486,545
Page 6
Appellants' position (brief, page 5) is that the cited
reference fails to teach or suggest all of the limitations of
claim 1. It is argued (brief, page 6) that Rowe does not teach
or remotely suggest a means for navigating within said first
section of the display. It is further argued (id.) that “[t]he
examiner has been unable to provide a reference that teaches the
limitation of moving a highlight to a second section of said
display in said corresponding direction in response to the steps
of highlighting said navigational symbol on said border of said
first selected section and selecting said navigational symbol.”
In addition, appellants assert (brief, page 7) that the examiner
has been unable to provide a reference that teaches the
limitation of “means for navigating within said first section of
said display,” and that if Rowe were modified to include more
information within the focus frame, the user would be unable to
navigate within the focus frame since Rowe teaches that pushing
the navigational controls on the remote control moves the focus
frame to the adjacent section of the display.
From our review of Rowe, we find that as noted by the
examiner (answer, page 4), Rowe discloses that each program tile
contains information icons. Specifically, we find that Rowe
discloses (col. 16, line 59 through col. 17, line 10) that:
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Each program tile 66' represents information about
a selected program and can display the program title or
name, and the channel number. Each program tile 66'
also include the network name and the network symbol,
which is typically implemented as an icon graphically
representing the logo of the corresponding channel or
network. If display space is available within the
limited area of the program tile, then program
information of secondary interest to the user can be
presented as information icons on the program tiles
66'. Information icons, which are graphical images
representing secondary information items, can be used
to reduce the amount of text displayed by a program
tile, thereby making it easier for the subscriber to
locate and read the program titles. Information icons
can represent a variety of secondary program-related
information, including the items of closed captioning,
audience rating, awards, star rating.[sic] or reruns
status. It will be understood that the use of
information icons is an option for the user interface
supplied by the program schedule 50'.
From the disclosure of Rowe, we find that if space is available,
program information of secondary interest to the user can be
presented as information icons on the program tiles 66'. It is
disclosed that the graphical images representing secondary
information can be used to reduce the amount of text displayed by
a program tile for the subscriber to locate and read. Icons can
represent closed captioning, audience rating, awards, star rating
or reruns status. From the disclosure that the icons are read by
the user, we find no teaching or suggestion that the icons are
clickable by the user, but rather are simply read to provide the
secondary information; see also col. 4, lines 20-22.
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Accordingly, we do not agree with the examiner (answer, page 4)
that these icons are selectable by the user, but rather are like
the network symbols, which are also referred to as icons (col.
16, lines 61-64). From the above, we find that Rowe does not
disclose or suggest making the icons within program tiles
selectable, as Rowe does not disclose navigating within a section
of the display, as recited in claim 1. Accordingly, the
rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Rowe is reversed.
We also reverse the rejection of independent claims 7 and 13
because Rowe does not select icons within a section of the
display screen, as Rowe selects category, subcategory and program
tiles, rather than icons within a section of the display. As
claims 2, 3, 5, 6, 8 and 14 depend from independent claims 1, 7
or 13, the rejection of claims 2, 3, 5, 6, 8 and 14 under 35
U.S.C. § 103(a) is reversed.
Turning to independent claim 9, we observe that claim 9 does
not recite navigating within a section of the display. Nor does
the claim recite selecting of icons. In fact, the claim does not
recite icons at all. From our review of Rowe, we find that Rowe
discloses navigating within a display 50 (figure 3) having a
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plurality of display sections 52, 54, and 56. As shown in figure
3, upon moving focus frame 60 to subcategory tile 64,
representing basketball, the selection of subcategory tile 64
results in navigational arrow tab 67 being provided on a border
of the selected section or tile. Navigational arrow tabs 67
correspond to a navigable direction of a highlight (col. 8, lines
39-41 and col. 10, lines 58-64). By moving navigational key 70a,
for example, the selected subcategory will be changed. Since the
selection of subcategory 64 will result in the selected area
being highlighted, causing the arrow tabs 67 to appear, the
subsequent movement of navigation key 70a will result in the
selected subcategory appearing within the focus frame 60.
We are not persuaded by appellants’ assertion (brief, page
9) that Rowe does not teach navigating within a display having
one or more display sections in response to the steps of
highlighting a navigational symbol and selecting the navigational
symbol. In Rowe, upon moving the focus frame to subcategory 64,
the arrow tabs 67 will be displayed and the focus frame will be
highlighted. By moving navigation key 70a, the subcategory
displayed will scroll in the direction of the navigation arrow
tab selected, so that the selected subcategory will be displayed
in the focus frame. Thus, we find that Rowe discloses the
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Application No. 09/486,545
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language of claim 9. Accordingly, the rejection of claim 9 under
35 U.S.C. § 103(a) is affirmed. As claims 10 and 12 have not
been separately argued, they fall with claim 9 from which they
depend. Accordingly, the rejection of claims 10 and 12 under 35
U.S.C. § 103(a) is affirmed.
Turning to claim 11, appellants assert (brief, page 10) that
it is impossible in Rowe for the control means to move the
highlight to another icon within the selected icon. From our
review of claim 11, we find that the claim lacks antecedent basis
for the term icon, since the reference to “another icon in said
selected section” implies that there is already an icon within
the selected section. In our view, the language of claim 11 may
imply more than one icon within a single section of the display,
or an icon in addition to the navigational symbol with the
navigational symbol considered to be an icon, even though the
navigational symbol is not referred to as an icon in the claim.
Thus the scope and content of the claim cannot be readily
ascertained.
While we might speculate as to what is meant by the claim
language, our uncertainty provides us with no proper basis for
making the comparison between that which is claimed and the prior
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Application No. 09/486,545
Page 11
art as we are obliged to do. Rejections under 35 U.S.C. § 103
should not be based upon "considerable speculation as to the
meaning of the terms employed and assumptions as to the scope of
the claims." In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962). When no reasonably definite meaning can be ascribed
to certain terms in a claim, the subject matter does not become
obvious, but rather the claim becomes indefinite. In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly,
we are constrained to reverse, pro forma, the examiner's
rejection of claim 11 under 35 U.S.C. § 103. We hasten to add
that this is a procedural reversal rather than one based upon the
merits of the section 103 rejections.
We turn next to the rejection of claim 4 under 35 U.S.C.
§ 103(a) as being unpatentable over Rowe in view of Montalbano.
We reverse the rejection of dependent claim 4 because Montalbano
do not make up for the deficiencies of Rowe.
NEW GROUND OF REJECTION UNDER 37 CFR §41.50(b)
Claim 11 is rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. As set forth, supra, in our
reversal of the rejection of claim 11 under 35 U.S.C. § 103(a),
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Application No. 09/486,545
Page 12
we find the language of claim 11 to be indefinite because the
reference to “another icon in said selected section” implies that
there is already an icon within the selected section. As stated
above, the language of claim 11 implies more than one icon
within a single section of the display, or an icon in addition to
the navigational symbol with the navigational symbol considered
to be an icon, even though the navigational symbol is not
referred to as an icon in the claim. Thus the scope and content
of the claim cannot be readily ascertained, rendering the claim
indefinite within the meaning of 35 U.S.C. § 112, second
paragraph.
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004). 37 CFR
§ 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
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Application No. 09/486,545
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relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-8, 11, 13 and 14 under 35 U.S.C. § 103 is reversed. The
decision of the examiner to reject claims 9, 10 and 12 under 35
U.S.C. § 103(a) is affirmed. In addition, we have entered a new
ground of rejection against claim 11 as being indefinite within
the meaning of 35 U.S.C. § 112, second paragraph.
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Application No. 09/486,545
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART and NEW GROUND OF REJECTION
UNDER 37 CFR § 41.50(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
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Application No. 09/486,545
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