Ex Parte Knee et al

Patent Trial and Appeal Board

Jan 24, 2013

10357154 (P.T.A.B. Jan. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT ALAN KNEE, ANTHONY R. FAVIA,
BRUCE DAVIS, and LARRY MILLER
____________

Appeal 2010-007982
Application 10/357,154
Technology Center 2400
____________

Before JOHN A. JEFFERY, JEREMY J. CURCURI,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-12, 14-25, 27-38, and 40-51, which constitute all the claims
pending in this application. See App. Br. 3.1 Claims 13, 26, 39, and 52 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed June 16, 2009
(“App. Br.”), the Examiner’s Answer mailed December 17, 2009 (“Ans.”),
and the Reply Brief filed February 17, 2010 (“Reply Br.”).
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STATEMENT OF THE CASE
Appellants’ invention relates to electronic program schedule systems
that provide users of television receivers with schedule information for
programs delivered, e.g., by broadcast, cablecast, or satellite. See Spec. ¶
1:4-10. Claim 1, which is illustrative of the invention, reads as follows:
1. A method for using an interactive television
program guide to display promotional information for a
user on a display, comprising:
allowing the user to use the interactive television
program guide to access information that is not
promotional information;
in response to a request by the user to access the
information that is not promotional information,
displaying the information that is not promotional
information in a first region on the display, wherein the
information that is not promotional information is
accessed by tuning to a virtual channel; and
simultaneously displaying promotional
information in a second region on the display, wherein
the promotional information in the second region on the
display extends substantially across the display and
wherein the promotional information is selectable by the
user.

THE REJECTION
Claims 1-12, 14-25, 27-38, and 40-51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bennington (US 6,418,556 B1, July 9,
2002) and Alten2 (US 5,781,246, July 14, 1998). See Ans. 3-6.

2 Bennington, Alten, and Appellants’ Specification all contain some
overlapping disclosure. If prosecution continues, Appellants and the
Examiner should consider whether, at the time Appellants’ invention was
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ISSUE
Appellants argue claims 1-12, 14-25, 27-38, and 40-51 as a group.
See App. Br. 8-14. The Examiner finds that Bennington teaches each
element of claim 1 except for “wherein the information that is not
promotional information is accessed by tuning to a virtual channel.” See
Ans. 3-4. The Examiner further finds that Alten teaches the missing
limitation and concludes that a person of ordinary skill in the art would have
modified Bennington according to the teaching of Alten. See Ans. 4 (citing
Alten, col. 28, ll. 33-36). The issue is whether the Examiner has articulated
a reason, with rational underpinning, to combine Bennington and Alten. See
App. Br. 8-11.

ANALYSIS
Bennington describes an electronic program scheduling system with a
receiver for receiving broadcast, satellite, or cablecast television programs.
See Bennington, Abstract. In Bennington’s system, a user navigates through
menus using a remote controller. See Bennington, col. 8, ll. 49-60.
Regarding claim 1, the Examiner finds that Bennington’s description of a
user accessing the menu of Figure 6 teaches displaying information that is
not promotional in a first region on the display in response to a request by
the user to access that information. See Ans. 3 (citing Bennington, col. 13,
ll. 15-22, 36-38, and identifying item 61 of Fig. 6 as the first region). The
Examiner also finds that Figure 6 shows simultaneously displaying

made, one or more of Alten and Bennington were owned by, or subject to
assignment to, the same person who owned Appellants’ invention, and, thus,
should be disqualified as prior art. See 35 U.S.C. § 103(c).
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promotional information in a second region on the display, wherein the
promotional information in the second region on the display extends
substantially across the display, see Ans. 4 (identifying items 62 and/or 64 of
Fig. 6 as the second region), and wherein the promotional information is
selectable by the user, see id. (citing Bennington, Figs. 15, 17; col. 13, ll. 38-
45).
The Examiner concedes that Bennington does not teach accessing the
non-promotional information “by tuning to a virtual channel.” Ans. 4.
However, the Examiner finds that Alten teaches accessing non-promotional
information by tuning to a virtual channel, see id. (citing Alten, Fig. 373; col.
28, ll. 29-37), and that a person of ordinary skill in the art would have
modified Bennington, per the teaching of Alten, “in order to have the virtual
channel appear as a conventional channel to the user, but not require any
additional bandwidth as a carrier.” Ans. 4. Alten teaches that a “Locator
screen 201” may be accessed in several ways, for example by including it
“as a virtual channel that is conveniently positioned in the channel-tuning
sequence, such as between the highest and lowest available channel
numbers” such that it “appears to be a conventional channel” but “requires
no additional bandwidth as a carrier.” Alten, col. 28, ll. 29-36. The Locator

3 The rejection refers to Alten’s Figure 20. See Ans. 4. However, the
Examiner states that Figure 20 was mistakenly referred to and that Figure 37
was intended to be cited. See Ans. 12. Indeed, Alten, at column 28, lines
29-37, which refers to “a virtual channel,” does so in the context of
discussing “Locator screen 201,” which is depicted in Figure 37, not Figure
20. See Alten, col. 27, ll. 37-39. Appellants argue that the Examiner’s
discussion of Figure 20 is “wrong and not relevant,” App. Br. 12; however,
Appellants themselves recognize that the passage in Alten cited by the
Examiner refers to Figure 37, see App. Br. 11. Thus, the Examiner’s
citation to Figure 20 of Alten is harmless error.
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screen 201 is a menu that “displays all available channel numbers grouped
according to the source of the program information appearing on any
particular channel at any particular time . . . .” Alten, col. 27, ll. 40-43.
Appellants argue that modifying Bennington to access the menu of
Figure 6 using a virtual channel would not save bandwidth. See App. Br. 9.
According to Appellants, Alten is comparing virtual channels to
conventional channels and Bennington’s Figure 6 menu is not a
conventional channel, but rather “a locally generated graphical menu that
already does not require the bandwidth of a conventional channel.” Id.
Instead, Appellants argue, even if Bennington were modified to carry Figure
6’s information over a virtual channel, it would still require the same amount
of bandwidth. See App. Br. 10. From that, Appellants argue that the
Examiner’s stated reason to combine Bennington and Alten lacks rational
underpinning. See App. Br. 9-10.
We disagree. The rejection is not stating that the menu of
Bennington’s Figure 6 is transmitted using a conventional channel and that a
person of ordinary skill in the art would have switched to using a virtual
channel to save bandwidth per the teaching of Alten. Rather, the Examiner
cites Alten to show that a virtual channel is a well-known technique used to
transmit data, such as menu data, without requiring a carrier to expend the
bandwidth necessary for a conventional channel. See Ans. 4. Appellants do
not provide any persuasive reason why Alten’s well-known technique would
fail to provide the same benefit when employed in Bennington’s system.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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same way, using the technique is obvious unless its actual application is
beyond his or her skill.”). We conclude that modifying Bennington in the
way suggested by the Examiner is nothing more than “the predictable use of
prior art elements according to their established functions.” Id.
Appellants point out that Bennington already discloses embedding
schedule data in the vertical blanking intervals (“VBI”) of a program
broadcast signal. See App. Br. 10 (citing Bennington, col. 6, ll. 54-56).
Appellants argue that “[t]his transmission method is the same method Alten
discusses using in connection with virtual channels”; therefore, modifying
Bennington would not save bandwidth because “Bennington already teaches
using the VBI transmission method for transmitting schedule data without
any use of virtual channels.” App. Br. 10 (emphasis in original).4 We are
not persuaded by this argument. As explained above, the Examiner does not
conclude that a person of ordinary skill in the art would have replaced a
conventional channel in Bennington with Alten’s virtual channel; rather, he
concludes that a virtual channel, as taught in Alten, is a well-known
technique for transmitting data such as that shown in Bennington’s Figure 6.

4 In fact, Bennington is not limited to carrying scheduling information in the
vertical blanking intervals, but also envisions transmitting such information
over conventional channels. See Bennington, col. 6, ll. 50-56 (“The data
stream may be modulated and then transmitted on the cable line in any
number of ways, including as part of a dedicated channel transmission
operating at a frequency of, for example, 75 MHz. Those of skill in the art
will understand that numerous other transmission schemes can be used to
transmit the data stream, such as embedding it in the vertical blanking
interval of a program broadcast signal.”). In the case where a “dedicated
channel” is used to carry Bennington’s menu information, switching to a
virtual channel, per the teaching of Alten, would have saved the bandwidth
that otherwise would have been allocated to the dedicated channel.
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See Ans. 4. Moreover, even if Bennington is indeed describing transmitting
information in the VBI using something different from virtual channels (as
opposed to describing virtual channels without actually using the words
“virtual channels”), this teaching would not have steered a skilled artisan
away from virtual channels. Rather, Bennington’s recognition of the utility
of transmitting menu data in the VBI shows that the leap a skilled artisan
would have had to have made to get from Bennington to claim 1, in light of
Alten, would have been that much smaller.
Appellants also argue that selecting the icon 65C of Bennington’s
Figure 6 to access the information of Figure 20 is not the equivalent of
tuning to a virtual channel, asserting instead that tuning to a virtual channel
requires entering a channel number or using a change channel command to
select information positioned in a channel-tuning sequence. See App. Br. 12
(citing Spec. 43:14-24). It is not necessary for us to find that selecting the
icon 65C, modified by the teaching of Alten, constitutes tuning to a virtual
channel. To be sure, the Examiner’s Response to Argument explains that
the icons in Figure 6’s menu, including icon 65C, link to other information,
including channel data, that may require additional transmission bandwidth
or channels to carry. See Ans. 7. However, the rejection itself cites to
Bennington’s description of a user tuning to the menu of Figure 6 as
teaching “allowing the user to use the interactive television program guide to
access information that is not promotional information,” see Ans. 3 (citing
Bennington, col. 13, ll. 15-22, 36-38), a finding we agree with. Thus, the
rejection, as stated, articulates sufficient grounds for concluding that claim 1
is obvious.
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Moreover, while Appellants’ Specification describes, as an example
of tuning to a virtual channel, entering a channel number using numeric keys
on a remote controller, see Spec. 43:4-7, and positioning virtual channels “at
any other desired location in the channel-tuning sequence,” Spec. 43:14-16,
Appellants do not explain why these examples should be imported as
limitations into claim 1. Indeed, the Specification, at page 43, lines 20-22,
further explains that virtual channels “also can be accessed as a menu in the
menu mode” and that “[w]hen accessed as a channel, these virtual channels
have the functionality of a channel, and when accessed as a menu, they
function as a Menu feature . . . .” Thus, if the information of Bennington’s
Figure 20 is accessed from Figure 6 using a virtual channel (as taught by
Alten), this would constitute tuning to a virtual channel.
Appellants contend that even if the Examiner is relying on tuning
from Bennington’s Figure 6 to Figure 20 to show accessing a virtual
channel, Figure 20 would not disclose displaying selectable promotional
information in a region of the display that extends substantially across the
display. See Reply Br. 6. This argument is also unpersuasive.
Characterizing information as promotional or not promotional in claim 1
does not functionally change the method of claim 1 or the circuitry recited as
carrying out the steps of this method, and, thus, such data is nonfunctional
descriptive material. See Ex parte Nehls, 88 USPQ2d 1883, 1888-89 (BPAI
2008) (precedential); see also Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative). As a general proposition, we need not give
patentable weight to nonfunctional descriptive material absent a new and
nonobvious functional relationship between the descriptive material and the
substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also
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King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010);
MPEP § 2111.05(I)(A) (citing In re Lowry, 32 F.3d 1579, 1584 (Fed. Cir.
1994)). Thus, the characterization of information as promotional or not
promotional in claim 1 does not carry patentable weight.
Like Bennington’s Figure 6, Figure 20 teaches displaying information
in a first region of the display (e.g., textual node identifier 201) and
simultaneously displaying other (selectable) information in a second region
of the display that extends substantially across the display (e.g., the list of
consecutive channels 202A-202C and the corresponding schedule
information, see Bennington, col. 15, ll. 21-40). Thus, regardless of whether
the Examiner refers to tuning to the menu of Figure 6 or to tuning from the
menu of Figure 6 to the menu of Figure 20, Bennington teaches each
element of claim 1 save the use of virtual channels. Since it was well-known
to use virtual channels to access such menu information, see Alten, col. 28,
ll. 33-36, we are not persuaded that the Examiner’s conclusion of
obviousness lacked rational underpinning.
Appellants do not separately argue claims 2-12, 14-25, 27-38, and 40-
51. See App. Br. 8-13.
Accordingly, we sustain the rejection of (1) independent claim 1; (2)
independent claims 14, 27, and 40, which contain limitations substantially
the same as claim 1; (3) claims 2-12, which depend on claim 1; (4) claims
15-25, which depend on claim 14; (5) claims 28-38, which depend on claim
27; and (6) claims 41-51, which depend on claim 40.

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ORDER
The decision of the Examiner to reject claims 1-12, 14-25, 27-38, and
40-51 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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