Ex Parte Nakano et al

Board of Patent Appeals and Interferences

Sep 24, 2007

09839000 (B.P.A.I. Sep. 24, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MASAHIRO NAKANO,
TSUTOMU AKIYAMA, TADAMASA KITSUKAWA,
and SHIGEHARU KONDO
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Appeal 2007-0580
Application 09/839,0001
Technology Center 2600
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Decided: September 24, 2007
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Before LEE E. BARRETT, JOSEPH L. DIXON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1 and 3-22. We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We affirm-in-part.

1 Application for patent filed April 21, 2001, entitled "System and
Method for Interactive Television."
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BACKGROUND
The claims are directed to an interactive television (ITV) capable of
presenting both TV channels and "virtual channels." A virtual channel
corresponds to a Web page that is given a number like a conventional TV
channel which may be selected like a regular TV channel.
Claim 7 is illustrative:

7. An interactive television (ITV) comprising:

a housing;

a television tuner in the housing;

a microprocessor;

a user input device communicating with the microprocessor;
and

a memory system communicating with the microprocessor, the
memory system storing user data, the user data being at least partially
based on signals received from the user input device, wherein the
memory system further stores virtual channels displayable on the ITV,
and the microprocessor accesses the memory to display a virtual
channel in response to user input, a consumer profile being used to
tailor virtual channels.

THE REFERENCES

Greer US 5,978,828 Nov. 2, 1999
Norsworthy US 6,144,402 Nov. 7, 2000
Nobakht US 6,745,223 B1 Jun. 1, 2004
(filed Jan. 26, 2000)
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THE REJECTIONS
Claims 7-12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Nobakht.
Claims 1, 3, 4, 6, 15-20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nobakht and Greer.
Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nobakht and Greer, further in view of Norsworthy.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nobakht and Norsworthy.

DISCUSSION
Claims 7-14
The limitation at dispute in claim 7 is "a consumer profile being used
to tailor virtual channels."
Appellants argue (Br. 4):

Nobakht et al. nowhere teaches tailoring virtual channels to a
consumer profile as recited in claim 7. Instead, user validity is tested
for access to a virtual channel table but the table itself, and the
channels therein, are not established in accordance with user profiles.

The Examiner reads the consumer profile on Figure 3A, which shows
two user channel tables in an ITV (Answer 10). Parental control codes
allow a parent to restrict the Internet sites that can be accessed by a young
user (col. 5, l. 63 to col. 6, l. 28). Alternatively, the Examiner reads the
channel profile on Figure 5A, which show parental guidance fields to rate
the content of the virtual channels. The user terminal administrator (i.e., a
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parent) may restrict access to cites rated "PG" or "G" or the server may use
the parental guidance codes in conjunction with the user age stored on a
smart card to limit authorized channels (col. 9, ll. 5-29).
Appellants argue that the Examiner's conclusion that "tailoring virtual
channels to a consumer profile is equivalent to restricting consumers from
viewing virtual channels" is not supported (Reply Br. 1). It is also argued
that the Examiner does not contend that Appellants' argument in the Brief is
wrong (Reply Br. 1).
We agree with the Examiner's findings. A "consumer profile being
used to tailor virtual channels" is interpreted to mean that there is
information in a profile that determines which virtual channels a user
receives. Nobakht discloses that a parent can determine which channels can
be viewed by a young user, as noted by the Examiner, which is a profile. In
addition, Nobakht discloses that users can have channel table options. "For
example, user 'JOE JOCK' may subscribe to a premium package that
provides access to sports-based Internet sites. In addition, a young user may
only be authorized to download pre-defined children's sites and/or
educational sites from master channel table 112-a." (Col. 9, l. 65 to col. 10,
l. 2). That is, the channel table type in Figure 5(B) is a consumer profile
used to tailor virtual channels. As to Appellants' argument that the
Examiner did not deny the arguments were wrong, the Examiner's reference
to portions of Nobakht for the consumer profile in response to Appellants'
argument indicates that the Examiner considers the argument to be wrong.
The rejection of claims 7-12 is affirmed.
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The obviousness rejection of claims 13 and 14 is not separately
argued and, thus, these claims fall together with the claims on which they
depend. The rejection of claims 13 and 14 is affirmed.

Claims 1 and 3-6
The limitation at dispute in claim 1 is "in the event of an update [of
the virtual channels], only updated portions of a Web page corresponding to
the virtual channel are downloaded." The Specification describes that "[i]n
the event of an update, however, the logic moves to block 60 to download
the entire new Web page or pages that establish the virtual channel or, more
preferably to download only the changed portions thereof (page 11).
Appellants argue that Greer does not download only changed portions
of web pages (Br. 4). "Instead, it generates an alert when a web [page is]
changed beyond a threshold, but the entire page is downloaded, col. 3,
lines 18-19" (Br. 4). It is argued that "Claim 1 requires that only the updated
portions of the page be downloaded all the time" (Br. 5).
The Examiner states that "Greer discloses that a user can establish in
the event of an update to a Web Page via a user changeable value of an
object quotient (quantitative assessment of changes to the object) to update
the object or that only updated portions of a Web page are downloaded
(Column 7, lines 33-50)" (Answer 11-12). The Examiner finds that "[s]ince
Greer discloses enabling one or more objects including Ad Banner, GIF,
Button (Figure 9, 620, Object 1, 2, 3, 4, 5, of [sic, or] 6) of the Web page
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(Figure 9, 602,) then Greer meets the claimed 'only updated portions of a
Web page corresponding to a virtual channel are downloaded" (Answer 11).
Appellants respond that the Examiner has not explained how
"enabling one or more objects of the Web page" equals downloading only
the updated portions of a page and has not identified where Greer discloses
that only updated portions of Web pages are updated (Reply Br. 2).
We agree with Appellants. Greer applies a global quotient to
determine when to download an entire Web page, and that the global
quotient field 306 (Figure 4) can be based on object quotient fields 328
which specify the magnitude of change of the particular object (ad banner,
GIF, multimedia, text, frame, button) since the last update (Answer 11-12).
See Greer, col. 3, l. 40 to col. 4, l. 32. The user can determine what
magnitude and categorical nature of the change will trigger a change alert
(Figure 9, col. 8, ll. 1-22) or the page can simply be downloaded in addition
to or in lieu of notifying the user (col. 8, ll. 63-67). However, we find
nothing that suggests that only a portion of the Web page is downloaded.
Therefore, the rejection of claims 1, 3, 4, and 6 is reversed. Claim 5 stands
or falls with claims 4/1 and the rejection of claim 5 is reversed.

Comment on claim 1
The Specification describes downloading only the changed portions of
a Web site (page 11), but does not describe how this is accomplished. This
is not a trivial matter because not only would one have to keep track of the
objects, as in Greer, but one would have to know how to request only those
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portions that have changed from the Web site. Since the Specification
provides no details of how to download only the changed portions of a Web
site, it must be assumed that one of ordinary skill in the computer art
possessed the required knowledge to implement this feature or Appellants'
own disclosure would be nonenabling. See In re Epstein, 32 F.3d 1559,
1568, 31 USPQ2d 1817, 1823 (Fed. Cir. 1994) ("Rather, the Board's
observation that appellant did not provide the type of detail in his
specification that he now argues is necessary in prior art references supports
the Board's finding that one skilled in the art would have known how to
implement the features of the references and would have concluded that the
reference disclosures would have been enabling."); In re Fox,
471 F.2d 1405, 1407, 176 USPQ 340, 341 (CCPA 1973) (appellant's
specification "assumes anyone desiring to carry out the process would know
of the equipment and techniques to be used, none being specifically
described"); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1569, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988) ("The disclosure in Exhibit 5
is at least of the same level of technical detail as the disclosure in the '491
patent. If disclosure of a computer program is essential for an anticipating
reference, then the disclosure in the '491 patent would fail to satisfy the
enablement requirement of 35 U.S.C. § 112, First ¶.").

Claims 15-22
Claim 15 has not been separately argued. Whereas claim 1 recites "in
the event of an update [of the virtual channels], only updated portions of a
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Web page corresponding to the virtual channel are downloaded," claim 15
recites that "the microprocessor . . . determines whether the memory system
stores a latest version of the virtual channel and if so causes at least updated
portions of a Web page associated with the virtual channel automatically to
be downloaded." Claim 15 does not preclude downloading the whole Web
page and, thus, Appellants' arguments with respect to claim 1 do not apply to
claim 15. Arguments not made are waived. The rejection of claims 15-20
and 22 is affirmed. Claim 21 has not been separately argued and stands or
falls with claim 15. The rejection of claim 21 is affirmed.

CONCLUSION
The rejections of claims 7-22 are affirmed.
The rejections of claims 1 and 3-6 are reversed.
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) (2006).
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AFFIRMED-IN-PART

eld

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