Ex Parte Lin et al

Patent Trials and Appeals Board

Feb 20, 2013

11398138 - (R) (P.T.A.B. Feb. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL
BOARD
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Ex parte FRANK LI-DE LIN and RACHEL THUY NGUYEN
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Appeal 2011-006197
Application 11/398,138
Technology Center 2100
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Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-006197
Application 11/398,138

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I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on May 27, 2011 for reconsideration
of our affirmance of the Examiner’s rejection of claim 13 in a Decision
mailed May 27, 2011 (hereinafter “Decision”).
The Decision affirmed the Examiner’s rejection under 35 U.S.C.
§ 102(e) of claims 1-4, 6, 8-10, 12-17, and 20 over Smith.
We have reconsidered our Decision regarding claim 13 in light of
Appellants’ comments in the Request, and grant the request solely to clarify
our holding regarding claim 13. As noted infra, we maintain our affirmance
of the Examiner’s rejection of claim 13, but for the reasons indicated below.
We otherwise decline to change our Decision for the reasons discussed infra.

A. CLAIM AT ISSUE
Claim 13 is set forth below:
13. A system, comprising:
a [sic] audio-video device;

a processor controlling at least in part a display of the
audio-video device to display a GUI in at least a portion of the
display, the GUI comprising:

at least one column of control buttons, at least some
control buttons being selectable to alter an order of presentation
of select buttons; and

at least two columns of select buttons, a select button
being selectable to select a respective multimedia stream for
playing thereof on the audio-video device.

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Application 11/398,138

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B. REJECTION
The prior art relied upon by the Examiner in rejecting claim 13 is:
Smith US 6,970,602 B1 Nov. 29, 2005

Claim 13 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Smith.

II. ISSUE
The issue we address on this Request is whether Appellants have
identified that the Board has misapplied the relevant law and
misapprehended the Appellants’ argument by finding no error in the
Examiner’s finding that Smith discloses “at least some control buttons being
selectable to alter an order of presentation of select buttons” (claim 13).

III. ANALYSIS
Appellants contend that “[t]he Decision, however, did not address,
discuss, or mention the reordering feature of Claim 13” (Request 2).
According to Appellants, “Smith does not appear to suggest that an order
presentation is altered” (id.).
Although we previously indicated that claim 13 fell with claim 1
(Decision 6) and did not squarely address Appellants’ separate arguments in
connection with the particular recited function associated with the selectable
control buttons, namely to alter an order of presentation of select buttons
(App. Br. 7-8; Reply Br. 3-4), we nonetheless maintain our affirmance of the
Examiner’s rejection of that claim for the following reasons.
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Application 11/398,138

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First, claim 13 merely requires “control buttons being selectable to
alter an order of presentation of select buttons” (emphasis added). We agree
with the Examiner that “claim 13 does not recite ‘reordering’” (Ans. 13).
That is, claim 13 does not recite any “reordering” features, as Appellants
contend, but rather merely “control buttons” that are “selectable” for the
intended purpose of altering an order of presentation. “An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). We therefore find that claim 13 only requires
control buttons that are selectable.
As we found in our Decision, Smith discloses a multimedia document
such as a webpage, which comprises buttons and links (Decision 4). As set
forth in our Decision, “a user is able to ‘do something’ such as interact with
Smith’s webpage comprising buttons and links by clicking on the buttons
and links” (Decision 5). That is, we find Smith discloses “at least some
control buttons being selectable” as required by claim 13.
Further, we note that claim 13 does not define as to what “an order of
presentation” means, includes or represents. In fact, claim 13 does not even
define “presentation.” We give “presentation” its broadest reasonable
interpretation as an offering for display and find “an order of presentation”
as any order in which the buttons are offered to be displayed.
Since Smith discloses buttons being selectable (Decision 4), we find
Smith discloses that the order in which the buttons are selected comprises an
order in which the buttons are offered for display, wherein changes in
selections comprise an altering of the order of selections.
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Thus, even if the altering of the order of presentation were not merely
an intended purpose of the buttons, we find no error in the Examiner’s
finding that Smith discloses such step by disclosing “a select button being
selectable to select a respective multimedia stream for playing thereof on the
audio-video device” (Ans. 5, emphasis omitted).
Accordingly, giving the claims their broadest but reasonable
interpretation, we find no error in the Examiner’s finding that Smith
discloses “at least some control buttons being selectable to alter an order of
presentation of select buttons” as required by claim 13. Thus, we maintain
our affirmance of the Examiner’s rejection of claim 13.
Accordingly, although we have modified our Decision to clarify our
holding regarding claim 13 in light of Appellants’ Request, we nonetheless
find Appellants’ substantive arguments unavailing.

IV. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing, and we grant Appellants’ request solely to clarify
our holding regarding claim 13. Therefore, to the extent that we overlooked
Appellants’ separate arguments regarding claim 13, we nonetheless find
them unpersuasive for the reasons noted above. Accordingly we are still of
the view that the invention set forth in claim 13 is unpatentable over the
applied prior art based on the record before us in the original appeal. This
Decision on Appellants’ Request for Rehearing is deemed to incorporate our
earlier Decision (mailed May 27, 2011) by reference. See 37 C.F.R. §
41.52(a)(1).

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Application 11/398,138

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V. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of May 27, 2011 regarding claim 13. But we deny
the request with respect to changing any other aspect of our earlier Decision.

REHEARING GRANTED-IN-PART

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