Ex Parte Liebhold

Patent Trial and Appeal Board

Apr 10, 2014

10521386 (P.T.A.B. Apr. 10, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/521,386 01/18/2005 Valerie Sacrez Liebhold PU020345 2347
7590 04/11/2014
Joseph S Tripoli
Thomson Licensing Inc
Two Independence Way
Princeton, NJ 08540
EXAMINER
FINDLEY, CHRISTOPHER G
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
04/11/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VALERIE SACREZ LIEBHOLD
____________

Appeal 2011-012307
Application 10/521,386
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012307
Application 10/521,386
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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-18. Appellant appeals the
final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to controlling a digital recording apparatus to
allow a user to easily determine the available number of video programs
stored on the recording apparatus. (Spec. 1). Claim 1, reproduced below, is
representative of the claimed subject matter:

1. A method for controlling a digital video recording apparatus,
comprising the steps of:
[a] receiving a plurality of signals corresponding to a plurality
of video programs from a signal source;
[b] selecting ones of the plurality of video programs for
recording in response to user commands;
[c] storing the selected video programs in a storage device;
[d] maintaining data related to the video programs stored in the
storage device; and
[e] providing, [e1] in response to the digital video recording
apparatus being placed in a power ON state, [e2] an initial on
screen display message indicating a numerical value [e3]
representing a number of available video programs stored in
the storage device.
(Disputed limitation emphasized, steps lettered).

Appeal 2011-012307
Application 10/521,386
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REJECTION
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over (US 7,158,713 B2 ("Goto") and US 4,746,994
("Ettlinger").
GROUPING OF CLAIMS
Based on Appellant's arguments, we decide the appeal of the
obviousness rejection of claims 1-18 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1
ANALYSIS
A.
Regarding claim 1, limitation [e], at the outset we conclude
Appellant's arguments urging patentability are predicated on non-functional
descriptive material. (App. Br. 7-9). Non-functional descriptive material is
not accorded patentable weight.2 3 Specifically, limitation [e]

1 Appellant filed a Notice of Appeal on Feb. 22, 2011. The date of filing the
Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
2 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP § 2106.01, 8th ed., (revised Aug. 2006)).
Appeal 2011-012307
Application 10/521,386
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"providing . . . an initial on screen display message . . . " is merely a
message (data to be displayed) intended for human perception; therefore, the
informational content of the “initial on screen display message” is non-
functional descriptive material per se. (Claim 1).
We additionally conclude that claim 1 does not positively recite
actually displaying the initial on screen display message on a physical
display device, but rather merely requires “providing . . . an initial on screen
display message” to an unspecified entity. (Claim 1, emphasis added). Thus,
we conclude a broad but reasonable interpretation of contested limitation [e]
merely provides data (i.e., representing a display message) intended for
human perception, to an unspecified entity.4 The particular content of the
provided data (numerical value) is not positively recited as changing or
affecting any machine or computer function, nor the manner in which the
providing step is performed. Thus, we conclude the “providing” step or act
is performed in the same manner regardless of the particular numeric value

3 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
4 See also MPEP § 2111.05, 8th ed., Rev. 9, Aug. 2012 (“where the claim as
a whole is directed conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists.”).
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intended to be displayed as an “initial on screen display message.” (Claim
1).
Even if we assume arguendo the nonfunctional descriptive material in
limitation [e] may be accorded patentable weight by our reviewing court, we
find the weight of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness for the reasons
discussed below:
B.
Regarding the claim 1 limitation [e] "providing, in response to the
digital video recording apparatus being placed in a power ON state, an initial
on screen display message indicating a numerical value representing a
number of available video programs stored in the storage device," (emphasis
added) Appellant contends in Ettlinger:
If a user desires a numerical value representing a number of
available video programs, such user must count the number of
data files.
(App. Br. 7-8).
This is an additional step which does not occur in response to
the digital video recording apparatus being placed in a power
on state.
(Emphasis added; App. Br. 9).
Appellant's contentions are not persuasive because the user's counting
("providing [a] . . . message indicating a number value") is at least in
response to the displayed video program list message at startup of Ettlinger's
digital video recording apparatus ("a power ON state"). (Emphasis added.)
(Ans. 6-7; Ettlinger col. 20, ll. 11-15). Specifically, at Ettlinger's apparatus
startup when the program file list is displayed, then ("in response") the user
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would recognize the number of program files, as only four are depicted in
Table 1. (Id.).5 6
Furthermore, we conclude that Ettlinger's number of file versions in
the startup message Table 1 would have taught or suggested the broadest
reasonable interpretation of limitation [e] including "an initial on screen
display message indicating a numerical value." (See Ans. 6-7; Ettlinger col.
20, ll. 11-15, Table 1). Specifically, Ettlinger's version numeric value "12"
for the program file "ACT1 PTI," represents a number of available video
program versions. (Ans. 6; Ettlinger col. 20, ll. 25-26, Table 1). Therefore,
we conclude Ettlinger's version number would have taught or suggested
limitation [e] –[e3] "a numerical value representing a number of available
video programs stored in the storage device" because Ettlinger's version
number "represent[s] a number of available video programs" (i.e., versions)
of that program file (claim 1). For these reasons, on this record, we are not
persuaded the Examiner erred.

5 The Supreme Court guides the conclusion of obviousness can be based on
the 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, and an
obviousness “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., 550 U.S. 398, 418 (2007);
see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
6 We also observe it is common practice in the art to number items in a
program list as disclosed by Goto Fig. 6. (See Goto Fig. 6, video
number/Total available videos "6/8").
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For essentially the same reasons articulated by the Examiner (Ans. 6-
7), as discussed above, we find the aforementioned contested limitations are
at least suggested, and thus rendered obvious, by the cited combination of
references. Accordingly, we sustain the rejection of representative claim 1,
and of claims 2-18, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).

DECISION
We affirm the Examiner's rejection of claims 1-18 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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