Ex Parte Kim

Patent Trial and Appeal Board

May 28, 2014

10733579 (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KYUNG-AH KIM1
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Appeal 2011-009095
Application 10/733,579
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-15, 17-19, 21, 23, and 24. Appellant has previously
canceled claims 16, 20, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 The Real Party in Interest is Samsung Electronics, Co., Ltd. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellant’s invention relates to “a broadcast program information
search system and a method thereof, and more particularly, to a broadcast
program information search system and a method displaying search terms
. . . of high search frequency out of detailed information [from received]
broadcast programs so that a user can easily search for [desired] broadcast
programs.” Spec. ¶ [02].
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A content program information search system
comprising:
a server logically connected to a first database configured
to store a plurality of search terms inputted from external
devices; and
a digital signal receiver configured to detect and to
display for a selected search term of the plurality of search
terms at least one of a content signal and detailed content
information from a digital signal transmitted from a transmitter,
wherein said server is configured to extract from the first
database based on an order of priority based on search
frequency and to transmit to the transmitter at least one
transmission search term of the plurality of search terms, and

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Oct. 7, 2010); Reply Brief (“Reply Br.,” filed Mar. 7, 2011); Examiner’s
Answer (“Ans.,” mailed Jan. 6, 2011); Final Office Action (“FOA,” mailed
Mar. 3, 2010); and the original Specification (“Spec.,” filed Dec. 12, 2003).
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said digital signal receiver is configured to display in the
order of priority the at least one transmission search term
transmitted from the transmitter,
wherein the search frequency corresponds to a frequency
at which the search terms are input from the external input
device.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Lee US 6,463,428 B1 Oct. 8, 2002
Dagtas US 2003/0093260 A1 May 15, 2003
Robarts US 2005/0278741 A1 Dec. 15, 2005
Hori US 7,209,942 B1 Apr. 24, 2007
Kikinis US 7,213,256 B1 May 1, 2007
Rejections on Appeal
1. Claims 1-4, 7, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Robarts, Lee, and
Dagtas. Ans. 4.
2. Claims 8-15, 17-19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Robarts, Lee,
Kikinis, and Dagtas. Ans. 8.
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Robarts, Lee, Dagtas, and Hori.
Ans. 13.
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ISSUE
Appellant argues (App. Br. 13-18; Reply Br. 4-5) the Examiner’s
rejection of claims 1-4, 7, 23, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Robarts, Lee, and Dagtas is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a content program information search system “wherein the
search frequency corresponds to a frequency at which the search terms are
input from the external input device,” as recited in claim 1?
ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant’s arguments with respect to claim 1, and
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellant contends the Examiner’s cited combination of prior art does
not teach or suggest a search frequency that “corresponds to a frequency at
which the search terms are input from the external input device.” App.
Br. 16. Appellant further contends,
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[T]he issue here is not merely whether the search terms are
input from an external device or determining how frequently
the search word appears in a search result. Instead, the claimed
feature requires that the search frequency correspond to the
frequency at which the search terms are input by the external
device. That is, the input frequency of the search terms (how
frequently a particular search term was input) are used to
determine the order of priority.
App. Br. 16-17.
With respect to the cited prior art, Appellant contends, “Robarts at
most teaches a quick search using numeric key pads that produces a list with
elements that match the query, but does not teach or suggest ‘a frequency at
which the search terms are input.’” App. Br. 17. In Lee, “the keywords in
the list could each be ranked based on the frequency in which the keyword
appeared in the search result.” Id. Finally, “[Dagtas] does not teach or
suggest inputting search terms from an external device . . . [and even]
assuming arguendo, Dagtas discloses input from an external device, it does
not teach or suggest a frequency at which the search terms are input from the
external input device.” App. Br. 18.
In response to Appellant’s arguments in the Appeal Brief, the
Examiner finds, and we agree,
Lee teaches . . . the keywords in the list could each be ranked
based on frequency or frequency weighted by the context in
which the keyword appeared." This clearly teaches the search
frequency corresponds to a frequency of which the search terms
are used. Furthermore, Lee teaches . . . extracting keywords
from records based on frequency of occurrence or a variation.
This keyword extraction must be generated from some source.
There must be a user inputting keywords at some point in time
to be able to record data in a system. Hence, there must be
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external input for the system. In addition, Dagtas teaches the
search term can be inputted externally.
Ans. 15-16 (citing Lee col. 5, ll. 1-5 and 14-15).
The Examiner also correctly points out, “[t]he search frequency at
which the search terms are input is not specified in the claim. Almost any
frequency of search meets this limitation, once a day, weekly, monthly[,]
yearly, etc.” Ans. 16. We agree with the Examiner because claim 1 merely
requires that “the search frequency corresponds to a frequency at which the
search terms are input from the external input device.” Claim 1 (emphasis
added). We note the disputed “wherein” clause of claim 1 was added during
prosecution, and Appellant’s Specification does not provide any special
definition or meaning of the phrase “the search frequency corresponds to.”
In the Reply, Appellant reiterates,
[T]he frequency of appearance in the description does not teach
or suggest frequency at which the search terms are input from
the external input device . . . [i.e.], the claimed feature is
directed to the input frequency of the search terms, whereas Lee
is directed to determining the number of times a search term
appears in a description.
Reply Br. 4 (emphasis omitted). Appellant also disagrees with the
Examiner’s finding cited above that the search frequency at which the search
terms are input is not specified in the claim. We disagree with Appellant, as
discussed below.
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). In agreement with the Examiner, we
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find Appellant has not provided a definition of “corresponds to” in the
Specification that would preclude the Examiner’s broader interpretation.3
In further support of the Examiner’s position, we note Lee column 5,
lines 14-15 teaches or at least suggests that the search frequency corresponds
to a frequency of which the search terms are used, and that Lee extracts
keywords from records based on the frequency of occurrence or a variation.
Lee col. 5, ll. 1-5. We conclude it would have been obvious to a person of
ordinary skill in the art at the time of the invention that the disclosed
keyword extraction results from some positive action, e.g., a user inputting
keyword search terms which are recorded in a database and thereafter
prioritized based upon their frequency of occurrence, a situation which Lee
at least suggests. Lee, col. 5, ll. 1-5.
Indeed, the Supreme Court has indicated:
[It is an error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common

3 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”) (citation omitted). See also Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005) (“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. In particular, we have
expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.”) (citations omitted).
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sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (citation omitted). An
obviousness analysis is not confined to the explicit disclosure of the
references and can consider the inferences a skilled person would make, see
KSR, 550 U.S. at 418-19; the test is what the combined teaching of the
references would suggest to one of ordinary skill in the art, see In re Keller,
642 F.2d 413, 425 (CCPA 1981). Additionally, Appellant has presented no
evidence that determining the search term priority order based on a search
frequency that “corresponds to a frequency at which the search terms are
input from the external input device” (claim 1) was “uniquely challenging or
difficult for one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418-19), or “represented an unobvious step over the prior art.” Id.
We also note Appellant’s claim 1 is directed to a system. As a matter
of claim construction, we conclude the contested limitation of “the search
frequency corresponds to a frequency at which the search terms are input
from the external input device” is directed to mere data and/or functional
language, i.e., how the search term priority is determined.
Thus, we conclude the contested limitation does not further limit the
structure of the claimed system. Our reviewing court guides that the
patentability of an apparatus [or system] claim “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing
Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see
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also Superior Industries v. Masaba, 2013-1302, 2014 WL 163046 at *5
(Fed. Cir. Jan. 16, 2014) (Rader, J., concurring) (“[A] system claim
generally covers what the system is, not what the system does. Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990);
see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (‘The inventor of a
machine is entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.’). Thus, it is
usually improper to construe non-functional claim terms in system claims in
a way that makes infringement or validity turn on their function. Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).4
We find this reasoning applicable here, as Appellant urges the claimed
system (structure) patentably distinguishes over the prior art structure (Lee,
col. 5, ll. 1-15) based solely on a non-structural abstract and/or functional
limitation. See Claim 1; App. Br. 17; Reply Br. 4.
Accordingly, based upon the findings above, on this record, Appellant
has not provided sufficient evidence or argument to persuade us of any
reversible error in the Examiner’s reading of the contested limitations on the
cited prior art, or error in the Examiner’s resulting legal conclusion of
obviousness. Therefore, we sustain the Examiner’s obviousness rejection of
independent claim 1.
As Appellant has not provided separate arguments with respect to
dependent claims 2-4, 7, 23, and 24, rejected on the same basis as claim 1,

4 Superior Industries v. Masaba is a non-precedential opinion of the Court
of Appeals for the Federal Circuit. However, we consider the concurring
opinion by Chief Judge Rader as guiding because it cites precedential
authority in support.
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we similarly sustain the Examiner’s rejection of these claims under
35 U.S.C. § 103(a).
§ 103(a) Rejections of Claims 5, 6, 8-15, and 17-21
In view of the lack of any substantive or separate arguments directed
to the unpatentability rejection of claims 5 and 6 under § 103 over the
combination of Robarts, Lee, Dagtas, and Hori (see App. Br. 21), or the
unpatentability rejection of claims 8-15, 17-19, and 21 under § 103 over the
combination of Robarts, Lee, Kikinis, and Dagtas (see App. Br. 20), we
sustain the Examiner’s unpatentability rejection of these claims.
Appellant merely argues, “since claims 5 and 6 depend from claim 1
and since Hori does not cure the deficiencies of Robarts, Dagtas ad [sic] Lee
noted above with regard to claim 1, claims 5 and 6 are patentable at least by
virtue of their dependency and the additional features recited therein.” App.
Br. 21. When Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991 (Fed. Cir. 1983). Therefore, lacking separate, substantive
arguments, we sustain the Examiner’s unpatentability rejection of claims 5
and 6.
Further, Appellant merely argues independent claims 8, 11, 15, and 19
recite subject matter analogous to claim 1, and “since Kikinis does not teach
or suggest the features of claim 1 missing in Robarts, Lee and Dagtas, claims
8, 11, 15 and 19 are patentable for at least the analogous reasons claim 1 is
patentable and the additional features recited therein.” App. Br. 20.
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Arguments not made are considered waived. See Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to contest a
ground of rejection to the Board, section 1.192(c)(7) [(now section
41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of
that ground of rejection . . . . [T]he Board may treat any argument with
respect to that ground of rejection as waived.”).
Accordingly, we sustain the Examiner’s rejection of claims 5, 6, 8-15,
17-19, and 21.
CONCLUSION
The Examiner did not err with respect to the unpatentability rejections
of claims 1-15, 17-19, 21, 23, and 24 under 35 U.S.C. § 103(a) over the
various combinations of cited prior art, and we sustain the rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 1-15, 17-19, 21,
23, and 24.
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

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