Ex Parte Kitsukawa et al

Board of Patent Appeals and Interferences

Jul 27, 2006

09834511 (B.P.A.I. Jul. 27, 2006)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TADAMASA KITSUKAWA, TSUTOMU AKIYAMA, FREDERICK J.
ZUSTAK, HANS MAHR and ADITYA KRISHNAN
____________

Appeal No. 2006-1895
Application No. 09/834,511
____________

ON BRIEF
____________

Before THOMAS, RUGGIERO, and BLANKENSHIP, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants have appealed to the Board from the examiner’s final rejection of
claims 1 through 25, appellants having canceled claims 26 through 37.
Representative independent claim 1 is reproduced below:
1. A method for providing Internet content via an interactive television,
comprising the acts of:

prompting at least one consumer via the interactive television for input
regarding topics of interest;

receiving consumer input regarding topics of interest;

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transmitting the consumer input to a server; and

downloading the Internet content regarding topics of interest to the interactive
television as the content regarding topics of interest becomes available and prior to
receiving a consumer request for the Internet content.

The following references are relied on by the examiner:
Lawler et al. (Lawler) 5,699,107 Dec. 16, 1997
Shah-Nazaroff et al. (Shah-Nazaroff) 6,317,881 Nov. 13, 2001
(Filed Nov. 4, 1998)
Smith et al. (Smith) 6,742,033 May 25, 2004
(Filed Jun. 12, 2000)

Claims 1 through 25 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness as to claims 1, 15, and 18 through 25, the examiner relies upon Shah-
Nazaroff in view of Smith. In a second stated rejection the examiner relies upon Smith
and Lawler as to claims 2 through 4, with the addition of Shah-Nazaroff as to claims 5
through 14 in a third stated rejection. Lastly, in a fourth stated rejection the examiner
relies upon Shah-Nazaroff in view of Smith, further in view of Lawler as to claims 16
and 17.
Rather than repeat the positions of the appellants and the examiner, reference is
made to the brief and reply brief for appellants’ positions, and to the final rejection and
answer for the examiner’s positions.

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OPINION
For the reasons set forth by the examiner in the answer, as expanded upon here,
we sustain the various rejections of all claims on appeal under 35 U.S.C. § 103.
The arguments presented in the principal brief on appeal are directed only to
independent claims 1 and 15 within the first stated rejection and claim 2 within the
second stated rejection. No arguments are presented before us as to the third and fourth
stated rejections or any other claims on appeal.
Within the first stated rejection, we turn to the subject matter of independent
claim 1 on appeal. The language “as the content regarding topics of interest becomes
available” in the last clause of claim 1 on appeal does not necessarily refer to the
“Internet content” in the first part of this downloading clause and to the “Internet content”
in corresponding language set forth in the last few words of this claim. Notwithstanding
appellants’ repeated arguments beginning at the bottom of page 4 of the principal brief on
appeal, there is no clear statement in claim 1 that it is the Internet content regarding
topics of interest that is downloaded in the subclause “as the content regarding topics of
interest becomes available.” Plainly, the claims distinguish between the usages of the
terms “the Internet content” and “the content regarding topics of interest.”
Therefore, we do not agree with appellants continued inconsistence that in Shah-
Nazaroff the reference does not teach the so-called “as” clause. We find ourselves in
agreement with the examiner’s observations such as at the bottom of page 7 of the answer
that the content in this portion of the claim is the form of the reference’s custom program
listing per se, which appellants’ remarks at the bottom of page 4 of the reference plainly
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admit that Shah-Nazaroff teaches. Throughout this reference, there’s a continued
teaching that the particular program listing and associated ratings provided by individual
viewers, such as are provided for “potential subsequent viewers,” comprise the claimed
content in this portion of claim 1 on appeal. Appellants’ remarks do not take the position
that the claimed topics of interest are not taught in this reference. This so-called “as”
clause of claim 1 on appeal is taught or clearly suggested to the artisan at least at columns
4 through 7 of the Shah-Nazaroff patent. We therefore agree with the examiner’s
additional observations at page 6 of the answer with respect to the examiner’s
interpretations of this subclause. It is worthy of noting that rating information may be
sent to a prospective viewer in real time as discussed at the bottom of column 4.
Moreover, to the extent that Shah-Nazaroff does not teach actually downloading
the content per se, assuming for the sake of argument that the claim may be interpreted as
sending the Internet content regarding the topics of interest as they become available and
prior to receiving a customer request for the Internet content, the teachings at columns 5
through 7 plainly indicate to the artisan that the user is given the ability to subsequently
actually request Internet content related to the rating information received when it
becomes next available or in fact the content provider intends to rebroadcast it. As such,
the Shah-Nazaroff reference may in fact teach substantially all the subject matter of
independent claim 1 on appeal without the additional reliance upon Smith.

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On the other hand, to the extent the examiner is correct that Shah-Nazaroff is
silent as to the disclosing the content availability feature as well as to do so prior to
receiving customer request for content as alleged at the bottom of page 4 of the final
rejection, the examiner’s reliance upon the noted portions in Smith make it clear that the
teachings of Smith would have been an obvious enhancement to the artisan upon the
teachings in Shah-Nazaroff. Noting first that the structure of figure 1 of Shah-Nazaroff is
taught in figures 8 and 9 of that reference, the system controller in figure 8 is shown in
figure 9 to include a cache 904 which dovetails very clearly with the caching and cache
structures 80 and 85 within figure 1 of Smith. Obviously, to actually pre-cache program
content, that is, Internet content, information based on usage of monitoring teachings
would have dovetailed very appropriately within 35 U.S.C. § 103 with the teachings in a
structural sense with those in Shah-Nazaroff and provided a functional enhancement as
well.
Further enhancements to Shah-Nazaroff system are also evidenced as to the
subject matter of independent claim 15 on appeal. Notwithstanding the examiner’s views
with respect to this rejection apparently set forth at the bottom of page 5 of the final
rejection that this reference does not disclose the notion of priority of viewing habits, the
suggestibility of the priority of the type claimed is begun at the top of column 6, line 6 of
Shah-Nazariff where it discusses the content provider having available to it a ranked list
of broadcast content. This is subsequently discussed to the point of stating at column 7,

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line 30 through 32 that “the first broadcast in the list is intended to be the most likely to
be interesting to the viewer.” Again, the portions of Smith relied upon by the examiner
(column 4, line 36 through column 5, line 12 and the significant discussion at column 6,
lines 9 through 19) also dovetails with the already existing teaching in Smith and expands
upon them as well.
Appellants’ remarks in the brief and reply brief as to claim 15 and Smith in the
brief and reply brief do not appear to come to grips with the significant teaching value of
the subject matter argued in independent claim 15 on appeal. Smith does teach to
automatically download Internet content to a viewer based on monitored user activities to
create an historical usage pattern database (topics of interest) based upon these usages to
derive user-defined priority levels of topics of interest for different times of day as
claimed. Based upon the noted teaching value of Smith, the artisan may also have well
appreciated that the subject matter of independent claim 15 on appeal may be taught
substantially by Smith alone anyway.
We turn next to the argued subject matter of independent claim 2 on appeal in the
second stated rejection where the examiner relies upon Smith in view of Lawler within
35 U.S.C. § 103. The claim requires in part the determination of at least one topic of
interest for at least one customer “without the user specifying the topic.” This negative
limitation is apparently argued at the bottom of page 7 of the principal brief on appeal.
Appellants allege that the examiner admits that Smith fails to show the user to specify the

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topic of interest since the allegation is continued to be made that the algorithm does so
instead. Since the claim requires the absense of the user specifying the topic, the
teaching value of the automatic monitoring to derive user usage information for caching
purposes meets the limitation of the claim as argued by the examiner.
Appellants’ remarks at the bottom of page 7 of the principal brief on appeal do
not argue against the teachings of Lawler as relied upon by the examiner. The
examiner’s view at the bottom of page 7 of the final rejection that Smith does not teach
the notifying clause of independent claim 2 on appeal appears correct, but the artisan may
well interpret the teaching at figure 4 of Smith with respect to block 234 that once the
user actually accesses the pre-cached information, the customer is notified via the
interactive television regarding Internet content concerning a topic of interest as broadly
recited. To the extent the reference does not actively notify the viewer/user, Lawler
clearly teaches advantageously to do so since the reference teaches many reminders are
available here in this reference to the user shortly before the actual selected program
becomes available.
It is significant to note as well that the examiner’s allegations that Smith is
analogous art to Shah-Nazaroff in the first stated rejection and that Lawler in analogous
art to Smith and the second stated rejection have not been contested by appellants in the
brief and reply brief.

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Lastly, we note in passing that Shah-Nazaroff may also be interpreted by the
artisan as substantially anticipating the subject matter of independent claim 2 on appeal,
including the negative limitation “without the user specifying the topic.” Once the
viewer characteristics are determined in Shah-Nazaroff by the content provider or
otherwise, the reference functions to determine at least one topic of interest and to
actually notify the customer via the interactive television regarding Internet content
concerning the topic of interest without the user specifying the topic. Correspondingly,
the teaching value of Lawler would appear to be directly applicable to independent claim
2 on appeal on its own in a corresponding manner. Once the user program reminder
panel has been set or stored, Lawler functions on its own within the context of
independent claim 2 on appeal without the user specifying a topic. Because the user is
reminded shortly before the selected program becomes available, the teaching value of
Lawler as well is directly pertinent to the clause of independent claim 1 on appeal “as the
content regarding topics of interest becomes available.” Clearly, the user can then choose
to receive the requested content as set forth at the end of claim 1 on appeal.
In view of the foregoing, the decision of the examiner rejecting claims 1 through
25 under 35 U.S.C. § 103 is affirmed.

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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )

JDT:pgc

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