Ex Parte Kitsukawa

Board of Patent Appeals and Interferences

Jul 11, 2011

09802635 (B.P.A.I. Jul. 11, 2011)

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.
09/802,635 03/09/2001 Tadamasa Kitsukawa 50P4371 8537
36738 7590 07/12/2011
ROGITZ & ASSOCIATES
750 B STREET
SUITE 3120
SAN DIEGO, CA 92101
EXAMINER
LONSBERRY, HUNTER B
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
07/12/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TADAMASA KITSUKAWA
_____________

Appeal 2009-010974
Application 09/802,635
Technology Center 2400
______________

Before, JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, 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 1-5 and 7-9.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

1 Claims 6 and 10-26 were previously cancelled.
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INVENTION
The invention is directed to a method for billing for interactive
television that includes virtual channels that represent Web sites. See Spec:
3-4. Claim 1 is representative of the invention and is reproduced below:
1. A method for billing for interactive television,
comprising the acts of:
establishing an access restriction table for at least one
consumer, the access restriction table listing plural virtual
channels and an access flag for each channel, each access flag
indicating whether the channel can be accessed based on user
ID;
enabling the consumer to use a television to access
content associated with a virtual channel;
selectively restricting access to content using the access
flags;
recording at least one access record based on consumer
access activity related to the content; and
billing an entity at least partially based on the access
record.

REFERENCE
Watson US 5,289,271 Feb. 22, 1994

Urakoshi US 6,067,564 May 23, 2000

Connelly US 6,144,376 Nov. 7, 2000

Linehan US 2004/0249726 A1 Dec. 9, 2004
(filed Jul. 14, 2004)

REJECTIONS AT ISSUE
Claims 1-3, 5, and 7-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Connelly in view of Urakoshi and Watson. Ans. 3-7.
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Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Connelly in view of Urakoshi, Watson, and Linehan. Ans. 7-8.

ISSUES
Claims 1-3, 5, and 7-9
Appellant argues on pages 3-5 of the Appeal Brief and pages 1-3 of
the Reply Brief that the Examiner’s rejection of claims 1-3, 5, and 7-9 is in
error. These arguments present the following issues:
a) Did the Examiner use impermissible hindsight to combine
Urakoshi and Watson with Connelly?
b) Did the Examiner err in finding that Connelly in view of Urakoshi
and Watson discloses an access flag for each channel, each access
flag indicating whether the channel can be accessed based on user
ID?
Claim 4
Appellant argues on pages 5-6 of the Appeal Brief and page 3 of the
Reply Brief that the Examiner’s rejection of claim 4 is in error. These
arguments provide the following issue: did the Examiner err in finding that
Connelly in view of Urakoshi, Watson, and Linehan discloses billing an
entity wherein the entity is an owner or publisher of accessed content?

ANALYSIS
Claim 1
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 1. Claim 1 recites “establishing an access restriction table
for at least one consumer, the access restriction table listing plural virtual
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channels and an access flag for each channel, each access flag indicating
whether the channel can be access based on user ID.” The Examiner finds
that Urakoshi discloses a system that has an access restriction table in the
form of a channel guide that indicates what channels may be viewed based
upon the channel’s color, which is the same as an access flag. Ans. 12. The
Examiner also finds that each channel’s data set, along with a user ID and
password, determine the color, i.e., flag, to be displayed that indicates
whether a channel can be accessed. Ans. 12. Appellant argues that
Urakoshi’s program purchase menu 60, containing a user ID and password,
is only used to purchase PPV programming. App. Br. 4. Additionally,
Appellant contends that the program display mode is not associated with a
user. App. Br. 4. We agree with Appellant.
Urakoshi discloses a system where a charge amount and/or rating for
television programming can be set prior to viewing programming. Col. 6, ll.
1-16. These settings are compared to program data and channels are
displayed in a program guide in a particular color to indicate which
programs either contain or do not contain the specified criteria. Col. 7, l.
44-col. 8, l. 6. However, Urakoshi’s system does not base which channels
are to be displayed in a program guide based upon a user ID, as claimed.
The only mention in Urakoshi of a user ID is for purchasing pay-per-view
programming. Col. 5, ll. 9-14. Thus, the Examiner has not shown an access
restriction table that lists an access flag for each channel indicating whether
the channel can be accessed based on a user ID. The additional teachings of
Connelly and Watson do not make up for the deficiencies noted above.
Therefore, we will not sustain the Examiner’s rejection of claim 1.
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Claims 2-3, 5, and 7-9
While Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of independent claim 1, we are not persuaded of error
in the Examiner’s rejection of independent claim 2 and dependent claims 3,
5, and 7-9, as these claims contain different limitations than claim 1.
Appellant’s arguments that are generally directed toward these claims
include the argument that the combination of the references is based upon
hindsight reasoning since neither Urakoshi nor Watson mentions a virtual
channel and Connelly does not mention an access restriction table or billing.
App. Br. 4-5. Appellant’s arguments are not persuasive of reversible error
for the reasons stated in the Examiner’s Answer. We add the following for
emphasis.
First, as explained in In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971):
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.

Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants’ invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 3-5 and
11-14. To the extent that the Examiner relies on the knowledge of one of
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ordinary skill in the art to combine the teachings of the references, this
practice is consistent with current case law. For example, in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at
issue. To facilitate review, this analysis should be made explicit. See
In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the analysis
need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art
would employ.

In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 3-5 and 11-14.
Appellant additionally argues on pages 1-3 of the Reply Brief that
“the Answer . . . should be reviewed for error under the TSM test without
regard to non-TSM KSR rationales” since the Examiner “ignore[s] the new
KSR rationales by repeating the grounds for rejection that were rendered
under the pre-KSR teaching-suggestion-motivation (TSM)-only test.” Reply
Br. 1-2. We disagree with Appellant’s argument. The Examiner has not
ignored the “new” KSR rationales. The Examiner simply chose to use the
TSM test to prove that the combination was obvious by providing a
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motivation to combine the references. Ans. 13-14. The Examiner stated that
the combination would “allow parents to control the content that their child
accesses.” Ans. 14. In response, Appellant does not argue the sufficiency of
the motivation, but rather argues that the references do not disclose a “flag
for each channel.” Reply Br. 2. These arguments are directed toward the
rejection of claim 1 not claim 2 since claim 2 does not recite a “flag for each
channel.” Since there are no other arguments directed to the rejection of
claims 2-3, 5, or 7-9, we find the Examiner’s motivation to be sufficient.
For the reasons stated supra, we sustain the Examiner’s rejection of
claims 2-3, 5, and 7-9.
Claim 4
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 4. Claim 4 requires billing an entity wherein the entity is
the owner or publisher of the content accessed. Appellant argues that
Linehan does not disclose billing an owner or publisher. App. Br. 6. We
agree.
Linehan discloses a system wherein a merchant is hosted by a satellite
TV system operator and a purchase is made by a consumer using the
television. ¶ [0037]. However, the satellite TV system operator does not
bill the merchant. Instead, the purchase captures TV context information
and when the charge is posted to a consumer’s credit card by the acquiring
bank, the bank allocates revenue to the TV originator. ¶ [0063]. Thus, the
owner or publisher is never billed. The additional teachings of Connelly,
Urakoshi, and Watson do not make up for the deficiencies noted above.
Therefore, we will not sustain the Examiner’s rejection of claim 4.

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CONCLUSION
In regards to claims 2-3, 5, and 7-9, the Examiner did not use
impermissible hindsight to combine Urakoshi and Watson with Connelly.
In regards to claim 1, the Examiner erred in finding that Connelly in
view of Urakoshi and Watson discloses an access flag for each channel, each
access flag indicating whether the channel can be accessed based on user ID.
In regards to claim 4, the Examiner erred in finding that Connelly in
view of Urakoshi, Watson, and Linehan discloses billing an entity wherein
the entity is an owner or publisher of accessed content.

SUMMARY
The Examiner’s decision to reject claims 1 and 4 is reversed and
claims 2-3, 5, and 7-9 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).

AFFIRMED-IN-PART

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