Ex Parte Klopfenstein

Board of Patent Appeals and Interferences

Feb 24, 2009

10092039 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT EDWARD KLOPFENSTEIN
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Appeal 2008-4739
Application 10/092,039
Technology Center 2400
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Decided: February 24, 2009
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
ROBERT E. NAPPI, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-16, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2008-4739
Application 10/092,039

Appellant’s claimed invention relates to an electronic program guide
for televisions which includes a scan list that identifies a plurality of
program channels that are available for viewing. Upon a determination that
a program channel is not included within the available for viewing scan list,
the program guide information associated with that program channel is
deleted from the program guide database. (Spec. 2:6-17).
Claim 1 is illustrative of the invention and reads as follows:

1. A method, comprising:
adapting the storage of program guide information for a plurality of
programs in a receiver, wherein said adapting step includes:
determining whether a channel is included within a scan list comprising a
plurality of channels available for viewing; and
deleting program guide information associated with said channel if said
channel is not included within said scan list.

The Examiner relies on the following prior art references to show
unpatentability:
Lazarus US 5,652,613 Jul. 29, 1997
Duhault US 5, 900,868 May 4, 1999

Claims 1, 4-6, 10, 11, and 13-16 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Duhault.
Claims 2, 3, 7-9, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Duhault in view of Lazarus.

Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
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those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C. § 102(b), does Duhault have a disclosure
which anticipates the invention set forth in claims 1, 4-6,10, 11,
and 13-16?

The pivotal issue before us in making this determination is whether
Appellant has demonstrated that the Examiner erred in finding that Duhault
discloses the deletion of program information associated with a viewing
channel based on a determination that a viewing channel is not included
within a scan list of available viewing channels.

(ii) Under 35 U.S.C.§ 103(a), with respect to appealed claims 2, 3,
7-9, and 12, would one of ordinary skill in the art at the time of
the invention have found it obvious to combine Duhault with
Lazarus to render the claimed invention unpatentable?

The pivotal issue before us in making this determination is whether
Appellant has demonstrated the Examiner erred in determining the
obviousness to the skilled artisan of modifying Duhault by adding the
“housekeeping” program guide information deletion features of Lazarus.

FINDINGS OF FACT (FF)
The record supports the following findings of fact by a preponderance
of the evidence:
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Application 10/092,039

1. Duhault discloses (Figure 1, col. 2, ll. 9-32) a system for
displaying thumbnail images of a user’s customized list of television
viewing channels on a display.
2. Duhault further provides (Figure 5, col. 5, ll. 14-30) for the
entering by a user of an edit selection for one of the displayed viewing
channels. Upon detection of the entry of an edit selection, a set of optional
viewing parameters is provided.
3. Duhault’s disclosed (col. 5, ll. 30-34) optional viewing
parameters can include the deletion of a viewing channel from the user’s
customized channel list as well as the addition or deletion of a channel from
a parental control lock-out list.
4. Duhault also discloses (col. 5, ll. 34-43) that if a selection of an
optional viewing parameter is detected, the selected parameter is executed
upon the selected thumbnail.
5. Lazarus discloses (Figure 1, col. 2, ll. 44-64) a television
electronic program guide (EPG) which includes a two-level memory
“housekeeping” operation which functions to identify and delete obsolete
program schedule information.
6. Lazarus further describes (col. 4, ll. 46-54) an electronic
program guide “housekeeping” feature which suggests that a program record
will not be deleted from the program guide list if other showings of the
program are scheduled to be run on other channels in the future.

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PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
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 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent 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) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
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the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, 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.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION
Appellant’s arguments in response to the Examiner’s anticipation
rejection, based on Duhault, of independent claims 1, 10, and 16 assert that
the Examiner has not shown how each of the claimed features is present in
the disclosure of Duhault so as to establish a prima facie case of anticipation.
Appellant’s arguments focus on the contention that, in contrast to the
requirements of appealed independent claims 1, 10, and 16, Duhault does
not disclose the deletion of program guide information associated with a
channel if the channel is not included within a user’s scan list of available
viewing channels. According to Appellant (App. Br. 12; Reply Br. 12), in
the Figure 5 embodiment of Duhault referenced by the Examiner, a delete
operation is performed only when an edit/select viewing parameter input is
received from a user.
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We do not agree with Appellant. We find no error in the Examiner’s
determination (Ans. 4, 7, and 8) that Duhault’s disclosure (col. 5, ll. 14-43)
of enabling a user to delete a selected channel from the user’s customized
channel list, i.e., scan list, by entering an edit/select input corresponds to the
deleting operation set forth in each of the independent claims 1, 10, and 16.
It is apparent to us that an ordinarily skilled artisan would recognize and
appreciate that the logical end result of Duhault’s disclosed channel deletion
operation is a determination that when programming guide information for a
user’s customized channel list is to be displayed, the information for the
deleted, or locked out, channel will not be displayed since the deleted
channel is no longer in the user’s customized channel list.
The rule that anticipation requires that every element of a claim
appears in a single reference accommodates situations where the common
knowledge of “technologies” is not recorded in a reference, i.e., where
technical facts are known to those in the field of the invention. Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Similarly,
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) confirms the longstanding
interpretation that the teachings of a reference may be taken in combination
with knowledge of the skilled artisan to put the artisan in possession of the
claimed invention within 35 U.S.C. § 102 even though the patent does not
specifically disclose certain features.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding that all of the claimed limitations are
present in the disclosure of Duhault, the Examiner’s 35 U.S.C. § 102(b)
rejection of independent claims 1, 10, and 16, as well as dependent claims 4-
6, 11, and 13-15, not separately argued by Appellant, is sustained.
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35 U.S.C. § 103(a) REJECTION

We also sustain the Examiner’s obviousness rejection of dependent
claims 2, 3, 7-9, and 12 based on the combination of Duhault and Lazarus.
The Lazarus reference discloses (col. 4, ll. 46-54) a “housekeeping”
operation for an electronic program guide that functions to delete program
records that are obsolete but will retain program records if the information is
referenced by another channel, e.g., the showing of a particular program on
another channel at another time. We find no error in the Examiner’s line of
reasoning (Ans. 4-6, 9, and 10) establishing a basis for modifying the
disclosure of Duhault by adding the electronic programming guide
“housekeeping” teachings of Lazarus to address the features of the rejected
claims.
To whatever extent Appellant is suggesting (App. Br. 17-22; Reply
Br. 17-22) that the Examiner’s proposed combination of Duhault and
Lazarus must fail since Lazarus does not provide a disclosure of determining
the deletion of channels from a scan list, we find such contention to be
without merit since the Examiner has relied upon Duhault for this teaching.
It is apparent from the Examiner’s line of reasoning in the Answer that the
basis for the obviousness rejection is the combination of Duhault and
Lazarus. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Keller, 642 F. 2d 413, 425, (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097, (Fed. Cir. 1986).

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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1, 4-6,
10, 11, and 13-16 for anticipation under 35 U.S.C. § 102(b), nor in rejecting
claims 2, 3, 7-9, and 12 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 4-6, 10, 11, and 13-16
under 35 U.S.C. § 102(b) and claims 2, 3, 7-9, and 12 under 35 U.S.C.
§ 103(a) 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

gvw

JOSEPH J. LAKS
THOMSON LICENSING LLC
2 INDEPENDENCE WAY,
PATENT OPERATIONS
P. O. BOX 5312
PRINCETON, NJ 08543
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