Ex Parte Lyda

Board of Patent Appeals and Interferences

Jun 25, 2008

09920961 (B.P.A.I. Jun. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWIN LYDA
____________

Appeal 2008-0994
Application 09/920,961
Technology Center 2600
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Decided: June 25, 2008
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
SCOTT R. BOALICK, 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 1-7, 13-15, 17-21, and 23-25. Claims 8-12, 16, and 22 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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Application 09/920,961

Appellant’s invention relates to a remote response system in which
portable response devices are provided to users enabling users to input and
transmit data over existing communication systems. A remote response
device user can communicate with a presenter of broadcast programming in
real time without requiring the use of a personal computer.
(Specification 2).
Claim 1 is illustrative of the invention and reads as follows:
1. An electronic response device other than a personal computer, the
response device configured to allow a user to send data over a standard
communication system in response to a program received apart from the
response device, the response device comprising:
a user input mechanism for entry of user input and responses, the
mechanism operating without receiving signals eliciting a
response by the user;
means for requiring the user's input of a program identifier code for
the program received apart from the response device;
means for providing a user identifier code, the means selected from
the group consisting of having the user identifier code
associated with the response device and having the user input
the user identifier code;
a central processing unit (CPU) for correlating the responses the user
has entered into the user input mechanism to the program
identifier code and for processing the program identifier code,
the user identifier code, and responses the user has entered into
the user input mechanism;
a power source; and
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a transmitter connected to the CPU.
The Examiner’s Answer cites the following prior art references:
Lewis US 5,303,042 Apr. 12, 1994
Yoshinobu US 5,721,584 Feb. 24, 1998
Van Ee1 US 6,466,203 B2 Oct. 15, 2002
(filed Jul. 19, 2000)
Dobson US 6,704,317 B1 Mar. 9, 2004
(filed May 27, 1998)
Ferris WO 99/04568 Jan. 28, 1999

Claims 1, 2, 13-15, 17, 20, 21, and 23 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ferris.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ferris in view of Dobson.
Claims 4-6, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ferris alone.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ferris in view of Yoshinobu.
Claims 19 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ferris in view of Lewis.2
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to

1 The Van Ee reference is not part of any stated ground of rejection but,
rather, as indicated in the final Office action, is cited as evidence in support
of the Examiner’s rejection of claims 5 and 6.
2 As indicated at page 3 of the Answer, the Examiner has withdrawn the 35
U.S.C. § 112, first paragraph, rejection of claims 1-7, 13-15, 17-21, and 23-
25.
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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 Ferris have a disclosure which
anticipates the invention set forth in claims 1, 2, 13-15, 17, 20,
21, and 23?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claim 3,
would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Ferris with Dobson
to render the claimed invention unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 4-6,
18, and 24, would one of ordinary skill in the art at the time of
the invention have found the claimed invention obvious over
the teachings of Ferris alone?
(iv) Under 35 U.S.C. § 103(a), with respect to appealed claim 7,
would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Ferris with
Yoshinobu to render the claimed invention unpatentable?
(v) Under 35 U.S.C. § 103(a), with respect to appealed claims 19
and 25, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Ferris with Lewis
to render the claimed invention unpatentable?

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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

Claims 1 and 2

With respect to the 35 U.S.C. § 102(b) rejection of independent claim
1 based on the teachings of Ferris, the Examiner indicates (Ans. 3-8) how
the various limitations are read on the disclosure of Ferris. In particular, the
Examiner directs attention to the illustrations in Figures 3 and 4 of Ferris as
well as the accompanying description beginning at page 10, line 18 of Ferris.
Appellant’s arguments in response assert that the Examiner has not shown
how each of the claimed features is present in the disclosure of Ferris so as
to establish a prima facie case of anticipation.
After reviewing the Ferris reference in light of the arguments of
record, we are in general agreement with Appellant’s position as stated in
the Briefs. At the outset, however, we note that we do not agree with
Appellant’s contention (App. Br. 10-12; Reply Br. 2-3) that the Examiner
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erred in interpreting the claimed “input mechanism” as a keypad structure
separate from a response device. As asserted by the Examiner (Ans. 13-14),
Appellant’s disclosure, in particular, lines 1-4 at page 8 of the Specification
and the language of original dependent claims 2-5, simply does not support
the interpretation of the claim terminology “user input mechanism” urged by
Appellant in the Briefs. We find no error in the Examiner’s finding that the
separate keypad structure 622 of Ferris, illustrated in Figure 5 of Ferris,
corresponds to the claimed “user input mechanism” since it operates
“without receiving signals eliciting a response by the user” as claimed.
We do agree with Appellant (App. Br. 11; Reply Br. 4), however, that
the Examiner erred in finding that Ferris discloses the required user input of
a program identifier code for the program that is received apart from the
response device 614 as set forth in appealed claim 1. Our review of the
disclosure of Ferris reveals that the only embodiment examples in which a
user enters an identifier code are those illustrated in Figures 2J and 2L of
Ferris and discussed at page 27, lines 10-20 referenced by the Examiner.
However, in neither of these instances is the user entering a code for a
program that is received apart from the response device but, rather, is
responding to response eliciting information on the response device itself.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Ferris, we do not sustain the Examiner’s 35
U.S.C. § 102(b) rejection of appealed independent claim 1, nor of claim 2
dependent thereon.

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Claims 13, 14, 17, 20, and 23
Although we found Appellant’s arguments persuasive in convincing
us of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claims 1 and 2,
we reach the opposite conclusion with respect to the rejection of claims 13,
14, 17, 20, and 23. With respect to the claimed feature, in independent
claims 13 and 20, requiring user input of a program identifier code,
Appellant reiterates the argument (App. Br. 13-16; Reply Br. 4) made with
respect to claim 1, i.e., Ferris does not provide for user input of a program
identifier code for a program received apart from the response device.
We find, however, Appellant’s argument to be not commensurate with
the scope of claims 13 and 20. Unlike the language of claim 1, there is no
requirement in claims 13 and 20 that the program for which a program
identifier code is entered be received “apart from the response device.” We
make reference to the embodiment illustrated in Figure 2L of Ferris and
discussed at page 27, lines 10-20 of Ferris, cited by the Examiner (Ans. 15),
in which a user enters a product identification code which results in a display
of program information for the entered identification code. While such
displayed information apparently appears on the display of the response
device, such an occurrence is not precluded by the language of claims 13
and 20.
With respect to the claimed limitation of a user input device which
operates without eliciting a response by the user, we refer to our earlier
discussion in which we found that the Examiner did not err in treating the
claimed user input device, i.e., a keypad, as an entity separate from the
response device. We further find no error in the Examiner’s finding that the
remaining elements of claims 13 and 20 are present in the disclosure of
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Ferris. As disclosed by Ferris, an identifier code (HUUID) of the handset
assigned to a user is provided, the user identification and program
identification information is transmitted to a central location, and the user
response and program information is correlated (Ferris, page 13, line 23,
page 13, lines 18-27, and page 16, lines 14-19).
For all of the above reasons, since all of the claim limitations are
present in the disclosure of Ferris, we sustain the Examiner’s 35 U.S.C.
§ 102(b) rejection of appealed independent claims 13 and 20, as well as
dependent claims 14, 17, and 23 not separately argued by Appellant.

Claims 15 and 21
We sustain the Examiner’s 35 U.S.C. § 102(b) rejection, based on
Ferris, of these claims as well. Appellant’s arguments (App. Br. 14 and 16;
Reply Br. 4) to the contrary notwithstanding, the Figure 2L example
disclosed by Ferris at page 27, lines 10-20, at the very least, describes a
program presenter providing a display of information in response to a remote
query from a user.

35 U.S.C. § 103(a) REJECTIONS

The rejection of claim 3 based on Ferris in view of Dobson
This rejection is not sustained. The Examiner has added (Ans. 9) the
teachings of Dobson to Ferris to address the data burst transmission feature
of dependent claim 3. We find nothing in the disclosure of Dobson,
however, which overcomes the innate deficiencies of Ferris in disclosing the
claimed invention as set forth in base claim 1.
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The rejection of claims 4-6, 18, and 24 based on Ferris alone
This rejection is also not sustained. With respect to dependent claims
4-6, the Examiner’s line of reasoning (Ans. 9, 10, 18, and 19) with respect to
the claimed telephone number and Internet protocol features does not
overcome the previously discussed deficiencies of Ferris in disclosing the
invention as set forth in base claim 1.
With respect to dependent claims 18 and 24, the Examiner’s
explanation regarding the use of different telephone numbers to contact
different parties in Ferris does not address the specific language of
dependent claims 18 and 24. It is apparent that the language of claims 18
and 24 does not merely require the use of different telephone numbers for
different parties but, rather specifically requires the use of pre-assigned
telephone numbers that are tied to particular user responses.

The rejection of claim 7 based on Ferris in view of Yoshinobu
This rejection is not sustained as well. The Examiner has added (Ans.
11) the teachings of Yoshinobu to Ferris to address the connection status
indicator feature of dependent claim 7. We find nothing in the disclosure of
Yoshinobu, however, which overcomes the innate deficiencies of Ferris in
disclosing the claimed invention as set forth in base claim 1.

The rejection of claims 19 and 25 based on Ferris in view of Lewis
We sustain this rejection since Appellant’s arguments do not convince
us of any error in the Examiner’s stated position (Ans. 12, 19, and 20). As
set forth by the Examiner, Ferris discloses (page 25, third and fourth
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paragraphs) that a user is required to log on to the keypad before inputting
response data. While Appellant is correct (App. Br. 19-20; Reply Br. 5-6)
that Ferris does not disclose a requirement that a user log-in to a remote
computer system before inputting responses, it is Lewis that is applied by the
Examiner for this teaching. Further, we find no error in the Examiner’s
finding that a skilled artisan would have recognized and appreciated that the
remote computer log-in teachings of Lewis would have served as an obvious
enhancement to the system of Ferris, at the very least, for facilitating the
desire of Ferris (page 8, third paragraph) to log and track user interactions
with the described system.

CONCLUSION
In summary, with respect to the Examiner’s 35 U.S.C. § 102(b)
rejections of appealed claims 1, 2, 13-15, 17, 20, 21, and 23, we have
sustained the rejection of claims 13-15, 17, 20, 21, and 23 but have not
sustained the rejection of claims 1 and 2. With respect to the Examiner’s 35
U.S.C. § 103(a) rejections of appealed claims 3-7, 18, 19, 24, and 25, we
have sustained the rejection of claims 19 and 25, but have not sustained the
rejections of 3-7, 18, and 24. Accordingly, the Examiner’s decision
rejecting appealed claims 1-7, 13-15, 17-21, and 23-25 is affirmed-in-part.
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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)(effective
September 13, 2004).

AFFIRMED-IN-PART

eld

MARY J. GASKIN
ANNELIN & GASKIN
2170 BUCKTHORNE PL.
SUITE 220
THE WOODLANDS, TX 77380
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