Ex Parte Darbee et al

Patent Trial and Appeal Board

Mar 27, 2013

10119264 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL V. DARBEE, JOHN R. THOMPSON, BRANDT J.
THOMPSON, and FRANK A. O’DONNELL
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Appeal 2010-001506
Application 10/119,2641
Technology Center 2400
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Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is TV Compass, Inc.
Appeal 2010-001506
Application 10/119,264

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 101-115, which are all the claims
remaining in the application. Claims 1-100 are cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to a remote control for
operating a consumer electronic device. See Abstract.
Claim 101 is illustrative:
101. A remote control apparatus for controlling a broadcast
program receiver, comprising:
a portable device including
(i) a receiver for receipt of wireless incoming data
transmissions from a host device via a communications network, the
host device being located remotely from the portable device and the
broadcast program receiver and the data transmission between the
portable device and the host device via the communications network
being independent from the transmission of the broadcast program,
(ii) software for recording program data corresponding to
a broadcast program accessed at the broadcast program receiver,
(iii) a transmitter for sending wireless outgoing data
transmissions to the host device via the communications network, said
outgoing data transmissions including said program data, and
(iv) a display for visual presentation of at least a portion
of the incoming data received by the portable device from the host
device via the communications network, said portion of incoming data
being determined and transmitted by the host device in response to
program data received from the portable device, such that the visual
presentation on the display of the portable device has content related
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to the content of the broadcast program accessed at the broadcast
program receiver.

Appellants appeal the following rejections:
1. Claims 101-115 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Goldstein (US 5,410,326, issued Apr. 25, 1995).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(iv).
ANALYSIS
Claims 101, 106-109, 114, and 115
Issue 1: Did the Examiner err in finding that Goldstein discloses
incoming data being determined and transmitted by the host device in
response to program data received from the portable device, as claimed?

Appellants contend that “Goldstein simply does not disclose any
manner of presenting content to the remote display which is dependent upon
broadcast programming accessed at the set top box/TV and viewed on the
TV and tracked on the remote” (App. Br. 13). Appellants further contend
that “‘video menu’ is not a broadcast program” (id. at 14). We disagree with
Appellants.
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 101 essentially for the reasons
indicated by the Examiner. For example, the Examiner found that “the
selected program from the menu can be a broadcast program . . . and
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selected for recording thereby qualifying the selected broadcast program as
recording program data corresponding to broadcast programming accessed
at the broadcast program receiver” (Ans. 9). In other words, the Examiner
found, and we agree, that the claimed “program data” can be any data
corresponding to a broadcast program, and not necessarily the broadcast
itself. Specifically, the Examiner directed our attention to Goldstein’s
disclosure that “when the selection is made in step 736, step 747 will
generate an indication to the user on the remote control device that the
program is recordable” (Ans. 9). Stated differently, Goldstein discloses that
incoming data is received at the remote control device in response to
receiving selection data corresponding to a broadcast program.
Furthermore, we note that claim 101 does not require that the program
data be viewed on the TV and tracked on the remote as argued by Appellants
(App. Br. 13). Instead, claim 101 requires that there be “software for
recording program data corresponding to a broadcast program . . .” and that
the “incoming data being determined and transmitted by the host device in
response to program data received . . .” (see claim 101). However, the
claimed “software for recording . . .” is merely a recitation of intended use of
the software. An intended use of a claimed device does not limit the scope
of the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (product
claim’s intended use recitations not given patentable weight); see also
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.”). All that is required in
Goldstein is that the system is capable of recording data, not that actual
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program data is recorded, which the Examiner has demonstrated (see Ans.
9).
Specifically, Goldstein discloses “the selection of a program from a
video menu for recording . . . The compiled list of program selections for
recording is sent to a record cue in 741. . . . This related data is accessed in
742 and transmitted via the bidirectional FM communications link in 743 to
the universal remote control device” (col. 36, ll. 20-44). Thus, Goldstein
discloses transmitting data content to the remote display which is in response
to data received from the remote.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Goldstein, the Examiner’s 35 U.S.C. § 102(e) rejection of
representative independent claim 101, as well as claims 106-109, 114, and
115 not separately argued by Appellants, is sustained.

Claims 102 and 103
Issue 2: Did the Examiner err in finding that Goldstein discloses
incoming data transmission from a host device, as claimed?
Appellants contend that “[t]here is simply no teaching that the ‘is
recordable’ indication comes from the database 700 (the structure which the
Examiner claims meets the ‘host device’ limitation)” (App. Br. 16). We
disagree.
Goldstein discloses that the universal remote control device “is
connected over a bidirectional link to either a cable converter or a telephone
interface for receiving programming information” (see Abstract). Goldstein
further discloses “compiling a telephone transaction in response to a menu
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selection” and that the telephone interface can call back to the data base 700
(col. 36, ll. 3-13). Thus, we find Appellants’ arguments unavailing that
incoming messages, e.g., that a program is recordable, may not be received
from the data base 700. We, therefore, sustain the Examiner’s § 102(e)
rejection of claim 102.

Claims 110 and 104
Issue 3: Did the Examiner err in finding that Goldstein discloses the
visual presentation on the display of the portable device is provided without
at any time interfering with the program accessed at the broadcast program
receiver, as claimed?

Appellants contend that “Goldstein teaches that the visual presentation
on the remote is provided only by first interfering with the broadcast TV
program” (App. Br. 18). We disagree.
We find the evidence supports the Examiner’s finding that Goldstein
discloses such a feature at col. 23, ll. 9-11. Specifically, at the above-noted
citation, Goldstein discloses that “[t]here are two categories of messages,
one for display on the remote control device, one for display on the
television.” Thus, contrary to Appellants’ arguments, we agree with the
Examiner that claim 104 reads on the above noted disclosure of Goldstein.
We, therefore, sustain the Examiner’s § 102(e) rejection of claims 110 and
104.

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Claims 105, 111, 112, and 113
Issue 4: Did the Examiner err in finding that Goldstein discloses that
the visual presentation on the display of the portable device occurs in
response to signals generated by the real time clock, as claimed?

Appellants contend that “neither citation teaches that any message is
depicted in response to a real time clock signal” (App. Br. 19). We disagree.
The Examiner found that Goldstein discloses this feature in col. 25
(Ans. 4). Specifically, Goldstein discloses that “[t]he real time clock for the
system device is compared in 412 with each of the start times for the events
stored in the RAM . . . In the event a plurality of events are stored in the
RAM . . . a display indication is given at 420 to the user to remind the user .
. .” (col. 25, ll. 50-68). In other words, Goldstein uses the real time clock to
send a “reminder message” to the display when there are multiple events
stored. We, therefore, sustain the Examiner’s § 102(e) rejection of claims
105, 111, 112, and 113.

DECISION
We affirm the Examiner’s § 102(e) rejection of claims 101-115.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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