Ex Parte Fischer

Board of Patent Appeals and Interferences

Dec 3, 2010

10004089 (B.P.A.I. Dec. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM A. FISCHER
____________________

Appeal 2009-007799
Application 10/004,0891
Technology Center 2400
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and DEBRA K. STEPHENS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed October 23, 2001. The real party in interest is Hewlett-
Packard Development Company.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007799
Application 10/004,089

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STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 17, 24 to 27,
and 33 to 36 under authority of 35 U.S.C. § 134(a). Claims 18 to 23 and 28
to 32 are cancelled. The Board of Patent Appeals and Interferences (BPAI)
has jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections.

Appellant’s invention relates to a method of configuring a
standardized user interface capable of playing music from a variety of
sources. (See Spec. 3, ll. 16 to 23.) In the words of Appellant:
[If a] user were to select [an] “Internet Broadcast” service
program, remote computer 300 can begin by conveying
instructions that program or configure the input devices, such as
program select switch 110, that allow the user to select one of a
list of Internet broadcast stations conveyed by way of remote
computer 300. Remote computer 300 then conveys a list of
Internet broadcast stations or other resources available at
various network locations on the network.
In the event that the user selects “MP3 Music Server,”
remote computer 300 desirably conveys interface instructions
that allow the user to select several title . . . . The remote
computer can then convey a list of stored MP3 titles available
on a disk or other media accessible by the remote computer.

(Spec. 4, l. 21 to Spec. 5, l. 2.)

The following illustrates the claims on appeal:
Claim 1:
1. A method of configuring a user interface of computer-
assisted equipment according to a service program, comprising
the steps of:
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said computer-assisted equipment transmitting a message
to a remote computer;

said remote computer determining that said service
program is available on said remote computer and is suitable
for use with said computer-assisted equipment, said
determining being based on said message;

said remote computer transmitting said service program
to said computer-assisted equipment;

said remote computer conveying plural interface
instructions that allows said computer-assisted equipment to
cooperate with said remote computer in accordance with said
service program, wherein said service program programs one or
more selectors located on a surface of the computer-assisted
equipment, wherein said selectors are configured to select and
play Internet broadcasts and MP3 files stored on media resident
within the remote computer and to control additional service
programs running on the remote computer;

said computer-assisted equipment configuring plural user
interfaces containing respective functions of said computer-
assisted equipment and functions of the remote computer;

displaying the user interfaces on the computer assisted
equipment;

said computer-assisted equipment receiving content
including audio, video and text while a remote control device
receives interface instructions and controls the content, wherein
after the content is received, the content is buffered in a
memory device; and

said service program programming one or more of
selectors to use the buffered content to perform freeze frame
and instant replay and for displaying pertinent text information
on the display.

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Application 10/004,089

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jain US 6,144,375 Nov. 07, 2000
Kusano US 2003/0074421 A1 Apr. 17, 2003
(filed Aug. 14, 2001)
REJECTIONS
The Examiner rejects the claims as follows:
R1: Claims 1 to 17, 24 to 26, and 33 to 36 stand rejected under 35
U.S.C. § 103(a) for being obvious over Kusano in view of Jain.
R2: Claim 27 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Kusano in view of Official Notice.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether Kusano and Jain renders obvious Appellant’s claim limitations
“said computer-assisted equipment receiving content . . . while a remote
control device receives interface instructions and controls the content” and
“said service program programming one or more of selectors to use the
buffered content to perform freeze frame and instant replay” of claim 1.

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FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a method and media for receiving interface
instructions at computer-assisted equipment while a remote control device
receives interface instructions and controls the content (e.g., MP3 files and
Internet audio broadcast) (claim 1; Spec. 4, ll. 8 and 22). Appellant’s claim
1 further includes a service program that programs selectors to perform
freeze-frame and instant replay functions (claim 1).
Kusano
2. The Kusano reference discloses a method for receiving interface
instructions at a local web server while a Consumer Equipment (CE) device
receives interface instructions and controls the content (e.g., MP3 files).
(See ¶¶ [0027]; [0032]; [0043]; [0044]; and [0046].) Kusano further
discloses programming buttons that allow for freeze frame and instant replay
of content. (See Figs. 6 and 7.)

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

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ANALYSIS
Argument with respect to the rejection
of claims 1 to 17, 24 to 26, and 33 to 36
under 35 U.S.C. § 103(a) [R1]

The Examiner has rejected the noted claims for being obvious over
Kusano and Jain, pages 4 to 9 of the Examiner’s Answer.
The Examiner has cited buttons, as shown in Figures 6 and 7 of
Kusano, for pausing or fast forwarding content on the face of Kusano’s
graphical computer user interface (Ans. 5, middle). Appellant argues the
Examiner’s rejection R1 is improper because Kusano does not disclose
programming the selectors to use buffered content to perform freeze frame
and instant replay and display pertinent text information while the remote
control device receives interface instructions and controls the content (App.
Br. 10, bottom).
In reply, the Examiner specifically states: “[t]here is no clear reason
for one to tie the two limitations [i.e., “said computer-assisted equipment
receiving content . . . while a remote control device receives interface
instructions and controls the content” and “said service program
programming one or more of selectors to use the buffered content to perform
freeze frame and instant replay” of claim 1] since the programming of the
selector may occur prior to or after the reception of the interface instruction
or content.” (Ans. 11).
We agree with the Examiner. For the following reasons, we find that
Appellant’s above-stated argument is not commensurate with the scope of
claim 1. We find that Appellant has invented a method and media for
computer-assisted equipment receiving content while a remote control
device receives interface instructions and controls the content (e.g., MP3
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files and Internet audio broadcasts) (FF#1). We find that Appellant’s claim
1 further includes a service program that programs selectors to perform
freeze-frame and instant-replay functions (id.). In comparison, we find the
Kusano reference discloses a method for receiving content at a local server
with a customized Graphical User Interface (GUI) (collectively, the claimed
“computer-assisted equipment”) while a consumer electronics device (the
claimed “remote control device”) receives interface instructions and controls
the content (FF#2). We further find that Kusano discloses a set of
programming buttons (the claimed “selectors”) that allow for freeze frame
and instant replay of content (id.).
We note that claim 1 simply does not correspond with Appellant’s
assertion that Kusano’s fast-forward and pause buttons (cited as the claimed
“selectors”) must be programmed to use buffered content to perform freeze
frame and instant replay and display pertinent text information while the
remote control device receives interface instructions and controls the content
(App. Br. 10, bottom). Nowhere in claim 1 is there a requirement that these
events occur simultaneously, or even in a certain order. Although we
consider exemplary claim 1 as a conceptual whole, we do not read the claim
as requiring these two method steps (i.e., “said computer-assisted equipment
receiving content . . . while a remote control device receives interface
instructions and controls the content” and “said service program
programming one or more of selectors to use the buffered content to perform
freeze frame and instant replay” of claim 1) to occur concurrently or in any
prescribed order. Since Appellant’s argument is not commensurate with the
scope of the claim language, we find that Appellant has not shown error in
the Examiner’s rejection R1. Accordingly, we affirm the rejection R1.
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Argument with respect to the rejection
of claim 27
under 35 U.S.C. § 103(a) [R2]

The Examiner has rejected the noted claim for being obvious over
Kusano and Official Notice, page 9 of the Examiner’s Answer.
With respect to claim 27, Appellant has made no separate argument in
accordance with 37 C.F.R. § 41.37(c)(1)(vii). We thus affirm the rejection
R2.

CONCLUSION OF LAW
Based on the Findings of Facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1 to 17,
24 to 27, and 33 to 36.

DECISION
We affirm the Examiner’s rejections R1 and R2 of claims 1 to 17, 24
to 27, and 33 to 36.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Appeal 2009-007799
Application 10/004,089

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