Ex Parte Jerding et al

Board of Patent Appeals and Interferences

Jan 12, 2009

09565931 (B.P.A.I. Jan. 12, 2009)

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
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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)
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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.
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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.
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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
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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
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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.
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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).
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AFFIRMED

Eld

SCIENTIFIC-ATLANTA, INC.
INTELLECTUAL PROPERTY DEPARTMENT
5030 SUGARLOAF PARKWAY
LAWRENCEVILLE, GA 30044
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