Ex Parte Kamen et al

Patent Trial and Appeal Board

Jan 30, 2013

10008229 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/008,229 11/30/2001 Yakov Kamen 007287.00015 6955
22907 7590 01/31/2013
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
RAMAN, USHA
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
01/31/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YAKOV KAMEN and DAN KIKINIS
____________

Appeal 2011-007329
Application 10/008,229
Technology Center 2400
____________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-17 and 19-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to adding categories of broadcasted programs
to a set of categories based on tuning of a broadcasted program viewing
device. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:

providing a first set of categories of broadcasted
programs;

providing a second set of categories of broadcasted
programs; and

adding a first category from the first set to the second set
of categories of broadcasted programs in response to tuning a
broadcasted program viewing device to a broadcasted program
fitting into the first category of the first set of categories a
predetermined number of times, wherein the predetermined
number of times is greater than 1.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rothmuller

Bedard

Blonstein

US 5,635,989

US 5,801,747

US 5,978,043

June 3, 1997

Sept. 1, 1998

Nov. 2, 1999

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Schein

Candelore1

Ellis
US 6,323,911 B1

US 2002/0104081 A1

US 2005/0204382 A1
Nov. 27, 2001
(filed Apr. 28, 1997)

Aug. 1, 2002
(filed Dec. 4, 2000)

Sept. 15, 2005
(cont. of 09/717,729,
filed Nov. 21, 2000)

REJECTIONS
Claims 7-12 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claim 21 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1, 7, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Candelore and Bedard.
Claims 2 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Bedard, and Blonstein.
Claims 3-5 and 9-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Bedard, and Rothmuller.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Bedard, Ellis, and Schein.
Claims 13 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Ellis, and Schein.

1 Although the filing date of Candelore is after the filing date of provisional
application 60/250,977 to which the present application claims priority,
Appellants have not raised the issue of whether Candelore is prior art to the
appealed claims. Accordingly, we assume that the Examiner correctly
applies Candelore as prior art in rejecting the appealed claims.
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Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Ellis, Schein, and Blonstein.
Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Ellis, Schein, and Rothmuller.

ANALYSIS
The Non-Statutory Subject Matter Rejection
We agree with the Examiner and find that independent claim 7 recites
non-statutory subject matter (Ans. 3-4). Claim 7 is drawn to “tangible
computer-readable media,” which when read in light of the Specification
encompasses “electrical, optical, acoustical and other forms of propagated
signals (e.g., carrier waves, infrared signals, digital signals, etc.)” (Spec. ¶
[0029]). Such physical, and thus tangible, but transitory signals are not
patentable. See In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007); see also
“Subject Matter Eligibility of Computer Readable Media,” 1351 Off. Gaz.
Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such a computer
readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation ‘non-transitory’ to the claim.”).
We are therefore not persuaded that the Examiner erred in rejecting
claim 7 and claims 8-12, which depend from claim 7 and also encompass
unpatentable transitory signals.

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The Written Description Rejection
Appellants argue that the Specification describes “adding the [sic] a
first category from the first set to the second set of categories of broadcasted
programs in response to tuning a broadcasted program viewing device to a
broadcasted program fitting into the first category of the first set of
categories a predetermined number of times” and that “[i]t then follows that
the predetermined number of times would be determined prior to providing
the first set of categories [as recited in claim 21] in order to identify the first
category of the first set of categories to be added and determine whether the
threshold is met” (App. Br. 5) (citing Spec. ¶¶ [0014]-[0015]). However, it
does not necessarily follow from Appellants’ cited description that the
predetermined number of times would be predetermined prior to the step of
“providing the first set of categories of broadcasted programs,” as recited in
claim 21. For example, the predetermining of that threshold number could
occur after the “providing” step but before the “adding” step. Although the
number must be predetermined at some time prior to using the number for
the “adding” step, Appellants have not shown which possible time for
predetermining this number they were in possession of when the application
was originally filed. The test for satisfying the written description
requirement is not whether there exists a logical possibility for a claimed
feature, but whether Appellants had actual possession. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Appellants have not
shown that the Specification provides evidence of such actual possession.
We are therefore not persuaded that the Examiner erred in rejecting
claim 21.

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The Obviousness Rejections
Claims 1, 7, 19, and 21
Appellants contend that neither Candelore nor Bedard, alone or in
combination, disclose “adding … a first category from the first set to the
second set of categories of broadcasted programs in response to tuning a
broadcasted program viewing device to a broadcasted program fitting into
the first category of the first set of categories a predetermined number of
times, wherein the predetermined number of times is greater than 1,” as
recited in claim 1 (App. Br. 5-7). We disagree.
We first note that the Examiner interprets the claim 1 limitation
“categories of broadcasted programs” to include channels in finding that
Candelore’s electronic program guide (EPG) meets the limitation of a “first
set of categories of broadcast programs” and that Candelore’s favorites list,
which may include channels, meets the limitation of “a second set of
categories of broadcasted programs.” (See Ans. 5). We agree with this
interpretation and find that the broadest reasonable interpretation of
“categories of broadcasted programs” encompasses channels. For example,
the Specification provides that “some channels may be oriented towards one
category of content.” (Spec. ¶ [0004]). We thus agree with the Examiner
(Ans. 5; Candelore, ¶¶ [0045]-[0046]) and find that Candelore discloses
“adding a first category [i.e., a channel] from the first set [i.e., the channels
available on the EPG] to the second set of categories [i.e., the favorites list]”
(claim 1).
Regarding the limitation “in response to tuning a broadcasted program
viewing device to a broadcasted program fitting into the first category of the
first set of categories a predetermined number of times, wherein the
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predetermined number of times is greater than 1” (claim 1), we find that
Bedard discloses this feature (Ans. 5). While Appellants correctly argue that
Bedard discloses a predetermined amount of time that a program must be
viewed before a channel is added to Bedard’s viewer profile (App. Br. 6-7),
which Bedard calls a “viewing unit” (Bedard, col. 4, ll. 5-14), this is not the
only criterion Bedard requires for adding a channel to the viewer profile.
Bedard adds a channel to the viewer profile based on the number of times a
program has been viewed for the predetermined amount of time, i.e., the
number of “viewing units.” Specifically, Bedard discloses “a channel of
channels 100 is eligible to become a viewer profile entry 202 (i.e., more than
one viewing unit during the viewer profile collection period).” (Bedard, col.
5, ll. 7-9) (emphasis added). Appellants’ arguments do not specifically
address this portion of Bedard relied upon by the Examiner (see Ans. 5).
Accordingly, we are not persuaded of error in the Examiner’s finding that
Bedard discloses “a predetermined number of times, wherein the
predetermined number of times is greater than 1” (claim 1).
We are therefore not persuaded that the Examiner erred in rejecting
claim 1 and claims 7, 19, and 21 not separately argued. Although claims 6
and 12, which depend from claims 1 and 7, are nominally argued separately,
Appellants provide no new specific arguments for patentability for these
claims (see App. Br. 8-9). We therefore sustain the rejection of claims 6 and
12 for the reasons discussed above.
Claims 2 and 8
Appellants contend that “Blonstein describes removing a channel
from a favorites list. See col. 12, lines 23-30. However, there is no teaching
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or suggestion of removing a category as recited in claims 2 and 8.” (App.
Br. 8). We disagree.
As discussed above, we interpret the claimed “categories of
broadcasted programs” (claim 1) to include channels. Blonstein discloses
removing a channel from a favorites list (Blonstein, col. 12, ll. 23-30), as
Appellants admit, which meets the claim 2 limitation “removing a second
category from the second set.” We are therefore not persuaded that the
Examiner erred in rejecting claim 2 and claim 8 not separately argued.
Claims 3-5 and 9-11
Appellants contend:
At most Rothmuller describes removing a program title from a
favorite program list based upon expiration of a predefined time
period. There is absolutely no teaching or suggestion of
removing any category, let alone a category from a set of
categories upon a broadcast viewing device not being tuned for
a period of time at least equal to a first predetermined threshold,
to at least one broadcasted program predetermined to be in the
second category from the second set.

(App. Br. 8). However, Appellants’ argument does not take into
consideration the collective teachings of the references.
Candelore discloses that the favorites list can be based on the rank of
channels according to certain relative statistics and limited, for example, to
the top fifteen channels (Candelore, ¶ [0038]). Bedard discloses that a
viewer profile is limited to a certain number of channels, for example, 10%
of all channels, or a numeric limit such as eight channels (Bedard, col. 4, l.
66-col. 5, l. 6). Thus, both Candelore and Bedard suggest removing
channels from a set of channels because, in order to add a new channel to a
limited favorites list of channels, some channel must be removed at some
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point in time. As Appellants correctly assert, Rothmuller discloses
removing a program, rather than a channel, or category, from a favorites list
based upon a predetermined period of time (Rothmuller, col. 6, ll. 48-54).
However, we agree with the Examiner (Ans. 7-8) and find that one of
ordinary skill in the art would have applied Rothmuller’s general technique
of removing items from a favorites list based on a predetermined period of
time to the channels in the favorites list of the combination of Candelore and
Bedard. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We are therefore not persuaded that the Examiner erred in rejecting
claim 3 and claims 4, 5, and 9-11 not separately argued.

Claims 13, 15-17, and 20
Appellants contend:
At most, Candelore describes adding a program to a favorites
list based on relative viewing statistics. See paras. [0045],
[0046]. There is absolutely no teaching or suggestion in
Candelore of adding a category to a second set and tuning a
broadcasted program viewing device for a period at least equal
to a first predetermined threshold.

(App. Br. 9). We disagree.
As discussed above, we interpret the term “categories” to include
channels. Thus, we agree with the Examiner (Ans. 10; Candelore, ¶¶
[0045]-[0046]) and find that Candelore discloses the limitation “to add a
category from the first set to a second set of categories,” as recited in claim
13. Further, Candelore discloses that, in determining whether to add a
channel to the favorites list, “the relative statistics can be based on the
number of times a channel was tuned in to for over a certain period of time,
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e.g., 10, 20, or 30 minutes.” (Candelore, ¶ [0045]). In other words, a
channel must be viewed at least, for example, 10, 20, or 30 minutes before
that viewing event can be counted toward the statistics for that channel. One
of ordinary skill in the art would thus understand that adding a channel to
Candelore’s favorites list is based at least in part on tuning to that channel
for a predetermined period of time.
We are therefore not persuaded that the Examiner erred in rejecting
claim 13 and claim 20 not separately argued. Although claims 15-17, which
depend from claim 13, are nominally argued separately, Appellants provide
no new specific arguments for these claims (see App. Br. 10). We therefore
sustain the rejection of claims 15-17 for the reasons discussed above.
Claim 14
Appellants’ argument for claim 14 is the same as that provided for
claim 2, namely, that “at most, Blonstein describes removing a channel from
a favorites list.” (App. Br. 10). However, this argument is not persuasive for
the reasons discussed above. We are therefore not persuaded that the
Examiner erred in rejecting claim 14.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 7-12 under 35 U.S.C. §
101.
The Examiner did not err in rejecting claim 21 under 35 U.S.C. § 112,
first paragraph.
The Examiner did not err in rejecting claims 1-17 and 19-21 under 35
U.S.C. § 103(a).

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DECISION
For the above reasons, we affirm the rejections of claims 1-17 and 19-
21.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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