Ex Parte ISHIGURO

Patent Trial and Appeal Board

Aug 5, 2013

11928064 (P.T.A.B. Aug. 5, 2013)

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SATOSHI ISHIGURO
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Appeal 2011-007894
Application 11/928,064
Technology Center 2100
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Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims directed to a TV
system with TV tuner. The Examiner entered rejections under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellant identifies the Real Party in Interest as Sony Corp. and Sony
Electronics, Inc. (App. Br. 2).
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STATEMENT OF THE CASE
Appellant’s invention relates to a TV where “an unused item is
removed from the menu when the processor determines that the unused item
has not been selected for at least a threshold time period.” (Specification 2,
ll. 1-3). “The thresholds may vary from menu item to menu item if desired.”
(Specification 5, ll. 16-17).
Claims 1-10 and 13-19 are on appeal. Claim 1 is representative and
reads as follows (emphasis added):
1. A TV system with TV tuner and comprising:
a TV display; and
a processor executing logic to cause a TV menu to be
presented on the display, the menu listing items representative
at least of audio video categories, all unused item being
removed from the menu when the processor determines that the
unused item has not been selected for at least a threshold time
period, a first threshold time period being used to test a first
item on the TV menu and a second threshold time period being
used to test a second item on the TV menu, the first threshold
time period being different from the second threshold time
period.

9. A TV comprising:
a display; and
a processor presenting a menu on the display, the menu
containing at least icons representing entertainment content
categories, the menu being dynamically updated by the
processor to reflect the non-use of at least one icon;
the processor periodically determining whether a timer
associated with an icon indicates that a threshold period has
elapsed since a most recent selection of the icon, and if so,
incrementing a counter; and
the processor determining whether the counter has
reached a threshold and if so, removing the associated icon
from the menu.
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14. A method comprising:
displaying a menu on a TV display, the menu listing
categories of entertainment available for presentation on the
TV;
providing category selection information to the TV, the
information including at least a time period since at least a first
category on the menu was selected;
based at least in part on the time period, selectively
removing the at least first category from the menu;
based on a time period, removing at least a second
category from the menu; and
responsive to a “menu reset” command input using a user
interface selector element presented on the TV display,
replacing onto the menu both the first and second categories
that had been removed and resetting timers associated with the
first and second categories.

The claims stand rejected as follows:
I. Claims 1-5 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Hochmuth2 and Grossman.3
II. Claims 14-18 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Hochmuth and Grossman.
III. Claims 6 and 19 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Hochmuth, Grossman and Kumagai.4
IV. Claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Hochmuth, Grossman and Tsai.5

2 Hochmuth, US 6,377,286 B1, Apr. 23, 2002.
3 Grossman et al., USPN 5,682,486, Oct. 28, 1997.
4 Kumagai et al., US 7,631,274 B2, Dec. 8, 2009.
5 Tsai et al., US 2006/0166700 A1, Jul. 27, 2006.
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V. Claims 9-10 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Hochmuth and Tsai.
VI. Claim 13 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Hochmuth, Tsai and Kumagai.

I. – CLAIM 1
Issue
The Examiner rejected claims 1-5 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hochmuth and Grossman. The
Examiner finds that Hochmuth discloses “a default threshold is set and user
can specify a specific threshold for a[n] individual file, therefore a first item
and a second item can have different threshold time period” (Ans. 5, citing
Hochmuth at col. 4, ll. 50-65). The Examiner thus concludes that the
combined references teach a first and second threshold time periods where
the first threshold time period being different from the second threshold time
period.
With regard to claim 1, Appellant contends that “the relied upon
portion of Hochmuth teaches that a universal time period may be set, either
by default or by the user, but default or not, only a single time period is used
in the test in the relied-upon portion of Hochmuth” (App. Br. 5.)
The issue presented is:
Does the evidence of record support the Examiner’s finding that the
combined prior art teaches or suggests all elements of claim 1?
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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Hochmuth discloses that “If a particular icon residing on the
computer desktop has not been used more than a specified number of times
is more than a specified period of time, that icon may be removed from the
computer desktop” (Hochmuth, abstract).
FF2. Hochmuth discloses that
The specified period, and the specified threshold number of
times a file must occur in the desktop event log within that
specified period before it is considered for the creation of a
shortcut may both be initially set to a default values. However,
it is desirable to let the user adjust those values through a
variety of means that are well known in the art.
(Id. at col. 4, ll. 58-63.)
Principles of Law
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). When determining whether a
claim is obvious, an examiner must make “a searching comparison of the
claimed invention — including all its limitations — with the teachings of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
Analysis
We agree with Appellant that the cited references do not support a
prima facie case of obviousness. As Appellant argues, Hochmuth discloses
that a user may adjust one specified time period, not adjust both a first and
second threshold time period such that the first and second threshold time
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period would be different (Ans. 5 and FF2). As the Examiner does not
provide any persuasive rationale as to why a person of ordinary skill in the
art would have modified the teachings of Hochmuth to arrive at the subject
matter now claimed, we find the Examiner has failed to establish a prima
facie case for with regard to claim 1.
Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Hochmuth
and Grossman discloses a TV having all limitations of independent claim 1
and dependent claims thereto (claims 2-5 and 8).

II. – CLAIM 14
Issue
The Examiner rejected claims 14-18 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hochmuth and Grossman. The
Examiner finds that
Hochmuth does not expressly show responsive to a
‘menu reset’ command input using a user interface selector
element presented on the display, replacing onto the menu both
the first and second categories that had been removed and
resetting timers associated with the first and second categories.
However, it would have been obvious for a person of ordinary
skill in the art to include a ‘menu reset’ command input for the
stack icon to quickly restore the deleted items (see col. 7 lines
1-10 - user can simply select the icon that represent the stack of
removed icons and put them back).
(Ans. 11.)
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Appellant contends that “[m]ultiple items cannot be replaced in
Hochmuth responsive to a single universal ‘menu reset’ command” (App.
Br. 6).
The issue presented is:
Does the evidence of record support the Examiner’s finding that the
combined prior art teaches or suggests all elements of claim 14?
Additional Findings of Fact
FF3. Hochmuth discloses that
An appropriate icon representing the stack may be displayed on
the computer desktop to allow the user to easily access these
items that have been removed from the computer desktop and
to retrieve items from the stack and place them back on the
computer desktop.
(Hochmuth col. 7, ll. 5-10.)
Analysis
We find that Appellant has the better position. Hochmuth discloses
that a “stack” icon is created so that the user can retrieve items stored in the
“stack” and put them back on the computer desktop (FF2). There is no
evidential finding on this record demonstrating that a person of ordinary skill
in the art would have found this manual restore operation to be equivalent of
a “menu reset” function (Reply Br. 2-3). The Examiner does not provide
any persuasive rationale as to why a person of ordinary skill in the art would
have modified the teachings of Hochmuth to arrive at the subject matter of
claim 14.
Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Hochmuth
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and Grossman discloses a TV having all limitations of independent claim 14
and dependent claims thereto (claims 15-18).

III. – CLAIMS 6 AND 19
The rejections of dependent claims 6 and 9 rely upon the underlying
obviousness rejection of claim 1 over the combination of Hochmuth and
Grossman. Having reversed the rejections of claim 1 and 14 over Hochmuth
and Grossman, we necessarily reverse the rejection of claims 6 and 19
further including Kumagai, since Kumagai does not cure the deficiencies of
Hochmuth and Grossman.

III. – CLAIM 7
The rejection of dependent claim 7 relies upon the underlying
obviousness rejection of claim 1 over the combination of Hochmuth and
Grossman. Having reversed the rejection of claim 1 over Hochmuth and
Grossman, we necessarily reverse the rejection of claim 7 further including
Tsai, since Tsai does not cure the deficiencies of Hochmuth and Grossman.

V. – CLAIM 9
Issue
The Examiner rejected claims 9-10 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hochmuth and Tsai. The Examiner
finds that “Hochmuth expressly specifies that icons ‘not used for a specified
time or not used frequently enough over a specified period of time,’ may be
removed from the desktop (see Col. 2 lines 25-27)” (Ans. 15).
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Appellant contends as follows:
Note that trying to shoehorn Hochmuth into Claim 9, the
examiner on page 7 must resort to speculation that “if” the
threshold period is specified as a number of boot-ups,
something might result. A number of boot-ups, however, is not
a time period. It is a number that might take a few minutes to
reach or forever. For being based on dearly flawed logic - that a
number of events is the same thing as a time period - the
rejection of Claim 9 further merits reversal.
(App. Br. 7.)
The issue presented is:
Does the evidence of record support the Examiner’s finding that the
combined prior art teaches or suggests all elements of claim 9?

Additional Findings of Fact
FF4. Hochmuth discloses that “[w]hen a particular object is not used
for a specified amount of time, or not used frequently enough over a
specified period of time, that object is removed from the computer desktop”
(Hochmuth col. 2, ll. 25-28; emphasis added.)
FF5. Hochmuth discloses as follows:
step 610 checks the desktop event log, or some other usage
information, to see if the last usage of that item was more than a
specified threshold amount of time ago. This threshold amount
of time may be measured in time units, as a predetermined
number of GUI commands, or as a predetermined number of
boot-ups or logins. If the item has been used more recently than
the specified threshold amount of time, then the process
proceeds to step 608. If the item has not been used more
recently than the threshold amount of time, then the process
proceeds to step 612 where the user is asked if that item should
be removed from the computer desktop completely, or removed
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from the computer desktop and placed in the stack. This step is
optional.
(Id. at col. 6, ll. 50-62; emphasis added.)
Analysis
Hochmuth clearly teaches that a specified amount of time may be
used as the threshold for triggering the removal of items (FF4 and FF5). We
are thus not persuaded by Appellant’s arguments to the contrary (App. Br. 7
and Reply Br. 3).
Conclusion of Law
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Hochmuth and
Tsai teaches or suggests all limitations of independent claim 9. Claim 10
falls with claim 9. 37 C.F.R. § 41.37(c)(1)(vii).

VII. – CLAIM 13
Regarding the rejection of claim 13, Appellant argues that “[t]his
claim inherits the patentability of its base claim” and do not provide
additional argument or evidence (App. Br. 7). Thus, for the same reasons
discussed above, Appellant’s arguments do not persuade us that the
Examiner has erred in concluding that claim 13 is obvious.

SUMMARY
We reverse the rejection of claims 1-5 and 8 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Hochmuth and Grossman.
We reverse the rejection of claims 14-18 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hochmuth and Grossman.
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We reverse the rejection of claims 6 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Hochmuth, Grossman and
Kumagai.
We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hochmuth, Grossman and Tsai.
We affirm the rejection of claims 9-10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hochmuth and Tsai.
We affirm the rejection of claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hochmuth, Tsai and Kumagai.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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