Ex Parte Mears et al

Patent Trial and Appeal Board

Jul 16, 2013

10512367 (P.T.A.B. Jul. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK GILMORE MEARS and
KHELAN MAHESHCHANDRA MODI
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Appeal 2011-001905
Application 10/512,367
Technology Center 2400
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Before MARC S. HOFF, DENISE M. POTHIER, and MIRIAM L. QUINN,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-4, 6-9, and 11-14. Claims 5, 10, and 15 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to television signal processing, and, more
particularly, concerns a system, method, and/or apparatus for setting up a
television channel viewing list. Spec. 1, ll. 12-14. Details of the appealed
subject matter, with disputed claim language emphasized, are recited in
representative claim 1, reproduced below from the Claims Appendix of the
Appeal Brief:
1. A method of setting up a television channel viewing
list, comprising the step of:
displaying a television channel viewing list having a plurality of
available television channels;

displaying a plurality of indicators each associated with a
channel from said viewing list for which a value for a viewing
state parameter has not been set, said indicator indicating an
unset status for said viewing state parameter for that channel;
receiving user selection of a first viewing state with regard to
said television channel viewing list having a plurality of
available television channels;
setting each television channel of said plurality of available
television channels in the television channel viewing list to
said first viewing state;
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discontinuing display of said plurality of indicators each
associated with a channel from said viewing list for which a
value for a viewing state parameter has not been set, said
indicator indicating an unset status for said viewing state
parameter for that channel, in response to said receiving user
selection of a first viewing state with regard to said television
channel viewing list having a plurality of available television
channels;
receiving user selection of a second viewing state with regard
to one television channel within said plurality of available
television channels; and
setting said one television channel to said second viewing
state;
wherein said plurality of available television channels includes
all channels from said television channel viewing list that are
available for viewing; and
wherein said second viewing state is different from said first
viewing state.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 3 to 9 of the Answer:
Curreri US 6,817,027 B1 Nov. 9. 2004
Young US 5,809,204 Sept. 15, 1998
The Examiner provides the following ground of rejection, of which
Appellants seek review: claims 1-4, 6-9, and 11-14 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Curreri and Young (Ans. 3-9).
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner has erred in rejecting the pending claims as
obvious over Curreri and Young. Further, we have reviewed the Examiner’s
response to Appellants’ arguments.1
The single dispositive issue on appeal is whether the Examiner erred
in finding that Young teaches the limitation of
discontinuing display of said plurality of indicators each
associated with a channel from said viewing list for which a
value for a viewing state parameter has not been set, said
indicator indicating an unset status for said viewing state
parameter for that channel, in response to said receiving user
selection of a first viewing state with regard to said television
channel viewing list having a plurality of available television
channels,
[hereinafter the “discontinuing display step”] as recited in claim 1.
We are not persuaded that the Examiner so erred. Appellants first
contend that, although Young teaches setting a channel state to the “ON”
state, such a setting is ambiguous, and, therefore, does not meet the claimed
“unset” status. Br. 10. Further, Appellants contend that if the “ON” state is

1 Appellants’ argument in pages 12-16 as to claims 6-9 and 11-14 do
not present substantive arguments regarding those claims other than merely
restating the disputed limitations recited in independent claim 1 and
asserting that Curreri and Young fail to teach these limitations. Appellants,
therefore, did not argue separate patentability of independent claims 6 and
11, and of dependent claims 2-4, 7-9, and 12-14. Therefore, except for our
ultimate decision, these claims are not discussed further herein.
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selected by a user, the “ON” state display is not discontinued as the claims
require. We do not agree with Appellants’ contentions. Id.
Regarding Appellants’ first contention, we note that the Examiner
relies on Young teaching the change of channel status from the default “ON”
state (displayed with a green indicator), to other states, such as the “MY” or
“OFF” states (displayed with blue or gray, respectively). Ans. 4-5 (citing
Young col. 11, l. 61 – col. 12, l. 6). In the cited passage, Young describes
the “ON” state as a “default state before any customization.” Young, col.
11, l. 66 (emphasis added). The Examiner finds, and we agree, that the
default “ON” state for a channel is the “unset” status, which is indicated by
displaying a specific background color associated with that status. Ans. 9.
Further, when that “ON” status is changed, such as by selecting the “OFF”
status, Young’s indicator for the channel’s state changes to a gray
background color. Id; see also col. 12, ll. 4-6. The indicator of the “ON”
state (“unset” state), i.e. the green background color, is discontinued from
display because that color is replaced with another, the gray background for
the “OFF” state. Id. We find no definition of the recited claim term “unset
status” in the Specification, which in fact describes that any “designation”
may be used (Spec. 8, l. 23-24). As such, Appellants fail to show sufficient
evidence to persuade us that the broadest reasonable interpretation of the
term “unset” status is not met by Young’s default “ON” status.
Appellants’ second contention is unpersuasive because the argument
is not commensurate with the scope of the claim. The claims do not
preclude the “unset” status being set by a user. We agree with the
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Examiner’s findings regarding this argument, and hereby adopt them as our
own. Ans. 10.
Finally, Appellants’ remark that “there is no 35 USC 112 enabling
disclosure provided by Curreri or Young, alone or in combination, that
makes the present invention . . . in claim 1 unpatentable.” Br. 11.
Appellants’ argument is a bare assertion, devoid of facts sufficient to rebut
the presumption of operability given to the prior art. See In re Sasse, 629
F.2d 675, 681-682 (CCPA 1980). Appellants did not meet their burden.
Therefore, we are not persuaded by the argument.
CONCLUSION
We conclude that Appellants have not shown error in the Examiner’s
findings and conclusions that the combination of Curreri and Young renders
obvious the subject matter of claim 1. Therefore, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a). We group remaining pending claims 2-4,
6-9, and 11-14 with independent claim 1. See 37 C.F.R. §
41.37(c)(1)(vii)(2011).
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-4, 6-9, and
11-14.
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)(2011).

AFFIRMED

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