Ex Parte Jerding et alDownload PDFBoard of Patent Appeals and InterferencesJan 12, 200909565931 (B.P.A.I. Jan. 12, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DEAN F. JERDING, ARTURO A. RODRIGUEZ, ROBERT O. BANKER, JOHN M. SCHLARB, ROBERT T. VAN ORDEN, and BINDU CRANDALL ____________ Appeal 2008-1611 Application 09/565,931 Technology Center 2400 ____________ Decided: January 12, 2009 ____________ Before MAHSHID D. SAADAT, ROBERT E. NAPPI and SCOTT R. BOALICK, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 37 and 50-66. Claims 1-36 and 38-49 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2008-1611 Application 09/565,931 STATEMENT OF THE CASE Appellants’ invention relates to a user interface for accessing services in a television system by presenting a menu containing a plurality of selectable link presentations corresponding to separate services or applications offered by the cable television system (Spec. 2:16-19). The subscriber navigates the menu with a remote device and selects a desired service for viewing by choosing the selectable link representation corresponding to the desired service or application (Spec. 2:19-22) An understanding of the invention can be derived from a reading of independent claim 37, which is reproduced as follows: 37. A method for accessing services by a client device coupled to a server device and a display, comprising the steps of: presenting a user a first menu on the display containing a first plurality of selectable link representations corresponding to a first plurality of services, the first menu configured to be presented to the user for a first predetermined time period; presenting the user a second menu on the display containing a second plurality of selectable link representations corresponding to a second plurality of services, the second menu configured to be presented to the user for a second predetermined time period upon expiration of the first predetermined time period; receiving user input denoting a selection of a selected link representation from the first or second time period; and activating a service that corresponds to the selected link representation. The Examiner relies on the following prior art references: Lemmons US 6,442,755 B1 Aug. 27, 2002 (filed Jan. 8, 1999) 2 Appeal 2008-1611 Application 09/565,931 The Examiner’s taking of Official Notice that setting time interval for displaying a TV program guide in different days of the week or displaying a part of the program guide list in a predetermined period of the day or week is well known.1 The rejections as presented by the Examiner are as follows: Claims 37, 54, and 57-63 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Lemmons. Claims 50-53, 55, 56, and 64-66 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lemmons in view of the Official Notice taken by the Examiner. We make reference to the Examiner’s Answer (mailed Jul. 17, 2007) and to the Brief (filed Feb. 16, 2007) and the Reply Brief (filed Sep. 17, 2007) for the arguments provided by Appellants and the Examiner and their respective details. Only those arguments actually made by Appellants have been considered in this decision. Arguments which Appellants did not make in the Briefs have not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUES 1. Under 35 U.S.C § 102(e), with respect to the appealed claims 37, 54, and 57-63, does Lemmons anticipate the claimed subject matter by teaching all of the claimed limitations? 1 The Examiner provided the Hancock (US 6,701,523 B1, issued Mar. 2, 2004, filed Sep. 16, 1999) and Rowe (US 6,792,615 B1, issued Sep. 14, 2004, filed May 19, 1999) references in support of the Official Notice taken as evidence of obviousness. 3 Appeal 2008-1611 Application 09/565,931 2. Under 35 U.S.C § 103(a), with respect to the appealed claims 50-53, 55, 56, and 64-66, would the ordinarily skilled artisan have found it obvious to modify Lemmons in view of the Official Notice taken by the Examiner to render the claimed invention unpatentable? PRINCIPLES OF LAW 1. Scope of claims The claim construction analysis begins with the words of the claim. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Philips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d at 1582 (Fed. Cir. 1996)). Furthermore, the specification is the single best guide to the meaning of a claim term. Phillips v. AWH Corp., 415 F.3d at 1315 (Fed. Cir. 2005). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). 2. Anticipation In rejecting claims under 35 U.S.C. § 102, a single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375-76, 77 (Fed. Cir. 2005), citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992). See also In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 4 Appeal 2008-1611 Application 09/565,931 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 (Fed. Cir. 1999) (quoting Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)). It is well settled that if a prior art device inherently possesses the capability of functioning in the manner claimed; anticipation exists regardless of whether there was recognition that it could be used to perform the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). 3. Obviousness The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The initial burden of establishing reasons for unpatentability rests on the Examiner. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992). The Examiner can satisfy this burden by showing some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (citing In re Kahn, 441 F.3d at 988 (Fed. Cir. 2006)). ANALYSIS 1. 35 U.S.C. § 102(e) Rejection Appellants argue that Lemmons does not anticipate the claims since the changes made to the display screen shown in Figure 6a, which result in the screen display of Figure 6b, are made only to the “display characteristic 5 Appeal 2008-1611 Application 09/565,931 and functionality of the program guide” (App. Br. 8). Appellants assert that the changes shown in Figure 6b are aesthetic updates made to the layout and configuration of the screens, and not to any pluralities of presented services (App. Br. 8-9; Reply Br. 3-5). The Examiner responds by stating that the new menu of Figure 6b replaces the menu of Figure 6a at a different time, which allows for new program listings and services associated with the new time period to be displayed (Ans. 11-12). Additionally, the Examiner relies on column 8, lines 48-52 of Lemmons disclosing a different “start time” for the program guide grid when the changed screen is displayed to characterize the programs associated with the new time as the claimed “second plurality of services” (Ans. 12). Initially, we observe that claim 1 does not recite any specific relationship or degree of difference between the first and the second plurality of services. Claim 37 merely recites “a first menu on the display containing a first plurality of selectable link representations corresponding to a first plurality of services” and “a second menu on the display containing a second plurality of selectable link representations corresponding to a second plurality of services.” The claim does not require mutually exclusive services on the first and the second menus, nor does it specify the extent to which the services on each menu could be similar. As such, and absent Appellants’ arguments to the contrary, we agree with the Examiner’s interpretation that the presenting an updated display screen corresponding to a different start time in Lemmons (col. 8, ll. 48-52) results in displaying a program guide that contains a different or a second plurality of links corresponding to a second plurality of services, as recited 6 Appeal 2008-1611 Application 09/565,931 in claim 37. While the layout and the screen characteristics of Lemmons’ display may change from the configuration shown in Figure 6a (col. 8, ll. 10-39) to that shown in Figure 6b (col. 8, ll. 40-56), passage of time results in displaying the programs associated with a new start time, as discussed above. We also find persuasive the Examiner’s assertion that advancing the program guide to a new start time causes the programs and services starting at the new time be displayed upon expiration of the previous start time or a first predetermined time period (Ans. 12-14). To support patentability of independent claim 57 as well as dependent claims 54, and 58-63, Appellants merely repeat the claim limitations of claim 57 and rely (App. Br. 10-11) on the same arguments presented with respect to claim 37, which we found supra to be unpersuasive. Based on the same reasons discussed above, we sustain the 35 U.S.C. § 102(e) rejection of claims 37, 54, and 57-63 as being anticipated by Lemmons. 2. 35 U.S.C. § 103(a) Rejection Appellants argue patentability of claims 50-53, 55, 56, and 64-66 based on the same arguments made with respect to claim 37, which we found to be unpersuasive.2 Therefore, for the reasons discussed above, we sustain the 35 U.S.C. § 103(a) rejection of claims 50-53, 55, 56, and 64-66 over Lemmons in view of the Official Notice taken by the Examiner. 2 Appellants object to the Examiner’s taking of Official Notice as unsubstantiated by citing a prior art reference supporting the position taken in the Official Notice (Reply Br. 5-6). In addition to being an untimely challenge, we note that the Examiner has already provided prior art references to Hancock and Rowe in support of the Official Notice taken. 7 Appeal 2008-1611 Application 09/565,931 CONCLUSION On the record before us, Appellants have failed to show that the Examiner has erred in rejecting claims 37, 54, and 57-63 under 35 U.S.C. § 102(e) and claims 50-53, 55, 56, and 64-66 under 35 U.S.C. § 103(a). We, therefore, sustain the rejection of all the claims on appeal. DECISION The decision of the Examiner rejecting the claims is affirmed. 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). 8 Appeal 2008-1611 Application 09/565,931 AFFIRMED Eld SCIENTIFIC-ATLANTA, INC. INTELLECTUAL PROPERTY DEPARTMENT 5030 SUGARLOAF PARKWAY LAWRENCEVILLE, GA 30044 9 Copy with citationCopy as parenthetical citation