Ex Parte Parker et al

Patent Trial and Appeal Board

Jan 5, 2015

11905247 (P.T.A.B. Jan. 5, 2015)

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.
11/905,247 09/28/2007 Alistair John Parker 18596-US 4227
23553 7590 01/06/2015
MARKS & CLERK
P.O. BOX 957
STATION B
OTTAWA, ON K1P 5S7
CANADA
EXAMINER
HANCE, ROBERT J
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
01/06/2015 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 ALISTAIR JOHN PARKER and JARED DAVID
MCNEILL
____________________

Appeal 2012-008879
Application 11/905,247
Technology Center 2400
____________________
Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 The real party in interest is Alcatel-Lucent.
2 Our Decision refers to the Appeal Brief filed Nov. 9, 2011 (“App. Br.”),
the Examiner’s Answer mailed Mar. 9, 2012 (“Ans.”), the Reply Brief filed
May 9, 2012 (“Reply Br.”), and the Specification as originally filed on Sept.
28, 2007 (“Spec.”).
Appeal 2012-008879
Application 11/905,247

2
BACKGROUND
The claims are directed to a three-dimensional (3D) electronic
program guide. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of displaying an electronic program guide (EPG),
comprising:

displaying a plurality of program blocks in a three dimensional (3D)
rendered landscape, each program block having a channel and a
program time, the channel and program time being represented by
location of the program block within two horizontal dimensions of the
3D rendered landscape, and each program block extending into a third
dimension above the two horizontal dimensions and displaying a
program identifier;

displaying a flag above each of at least one of the program blocks
satisfying at least one user-specified criterion, each flag being
displayed above the respective program block in the vertical
dimension of the 3D rendered landscape; and

providing navigation means for navigating the 3D rendered landscape
in three dimensions so as to allow perusal of the EPG.

REJECTIONS
Claims 1, 3-5, 7-9, 15, and 19 stand rejected under 35 U.S.C. § 103(a)
based on Noguchi3, Pilat4, and Arai.5 (Ans. 5).
Claims 2 and 6 stand rejected under 35 U.S.C. § 103(a) based on
Noguchi, Pilat, Arai, and Weishut.6 (Ans. 10).

3 US 6,034,677, issued Mar. 7, 2000.
4 US 2003/0084445 A1, published May 1, 2003.
5 US 2004/0221307 A1, issued Nov. 4, 2004.
6 US 2001/0023401 A1, published Sept. 20, 2001.
Appeal 2012-008879
Application 11/905,247

3
Claims 10-11 stand rejected under 35 U.S.C. § 103(a) based on
Noguchi, Pilat, Arai, and Rodriguez.7 (Ans. 11).
Claim 12 stands rejected under 35 U.S.C. § 103(a) based on Noguchi,
Pilat, Arai, and Kikinis.8 (Ans. 12).
Claims 13-14 stand rejected under 35 U.S.C. § 103(a) based on
Noguchi, Pilat, Arai, and Rovira.9 (Ans. 12).
Claim 16 stands rejected under 35 U.S.C. § 103(a) based on Noguchi,
Pilat, Arai, Proehl10 and LaJoie.11 (Ans. 13).
Claim 17 stands rejected under 35 U.S.C. § 103(a) based on Noguchi,
Pilat, Arai, and Proehl. (Ans. 15).
Claim 18 stands rejected under 35 U.S.C. § 103(a) based on Noguchi,
Pilat, Arai, Kikinis, and Weishut. (Ans. 15).

ANALYSIS
Claim 1
Appellants argue that Noguchi does not teach a three-dimensional
program guide (EPG), and that the recitation in claim 1 regarding displaying
a flag above a program block implies that the EPG display of claim 1 is
three-dimensional (3D) (App. Br. 4). Although Noguchi teaches a two-
dimensional (2D) EPG, the Examiner did not reject claim 1 over Noguchi
alone, but instead the combination of Noguchi, Pilat, and Arai. As
Appellants have not shown that this feature is missing from Pilat and Arai,

7 US 7,373,650 B1, issued May 13, 2008.
8 US 2002/0124254 A1, published Sept. 5, 2002.
9 US 2003/0005439 A1, published Jan. 2, 2003.
10 US 6,577,350 B1, issued June 10, 2003.
11 US 5,850,218, issued Dec. 15, 1998.
Appeal 2012-008879
Application 11/905,247

4
particularly Pilat which is the specific reference the Examiner relied to teach
this feature (see Ans. 5-6), we are not persuaded that the Examiner erred in
the rejection of claim 1 on this ground.12
In their Appeal Brief, Appellants note that claim 1 recites that the flag
appears above each program block satisfying at least one user-specified
criterion (App. Br. 4). In setting forth the rejection of claim 1, the Examiner
relied on Pilat to teach a flag appearing above each program block according
to a “criterion”, but did not use the words “user-specified criterion” as
claimed (emphasis added)(Ans. 5–6 citing Pilat ¶ 12, Fig. 1, elements 14,
16). It is not clear from the record whether Appellants are pointing out a
non-substantive typographical error or attempting to set forth an argument
that this omission amounts to a reversible error (see App. Br. 4). If the latter
was intended, arguments must be presented as a contention along with the
basis therefor.13 As Appellants have not presented an argument regarding
the omitted words in the required manner, we do not find Appellants’
argument persuasive. We sustain the Examiner’s obviousness rejection of
claim 1.

Claim 3
Regarding claim 3, Appellants argue that the cited references do not
teach the limitation “displaying a plurality of program blocks comprises
displaying each of the plurality of program blocks as a rectangle extending

12 “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc. 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
13 See 37 C.F.R. § 41.37(vii).
Appeal 2012-008879
Application 11/905,247

5
vertically into the vertical dimension of the 3D rendered landscape” (App.
Br. 5-6). Specifically, Appellants argue Pilat teaches that a block extends
vertically out of the horizontal plane defined by the channel and program
time when a predetermined TV program comes into view, at which point the
predetermined TV listing rises out above the normal level of the grid (id.).
Appellants argue that this program listing is displayed as a 3D prism, not as
a rectangle (id.). Appellants further state that if all the program blocks of
Pilat were displayed extending vertically, then the result would simply be
perusal of a raised two-dimensional grid, in contrast to the 3D landscape and
program blocks of Figures 1 and 2 of the Specification (id.).
The Examiner contends Pilat teaches the features of claim 3 (Ans.
17-18). Specifically, the Examiner states that every one of the program
blocks of Pilat’s Figure 1 extends above the two-dimensional floor of the
program guide and is therefore “a rectangle extending vertically into the
vertical dimension of the 3D rendered landscape” as claimed (id.). The
Examiner further states that the selected program of Pilat’s Figure 1, element
12, may be described as a 3D rectangular prism that has a rectangular face
upon which a program description is written as shown in Arai (see Arai,
Figure 32). Therefore, the Examiner concludes that claim 3 is taught by the
cited combination of references.
We agree with the Examiner that the features recited in claim 3 are
taught by the cited prior art references for the reasons set forth by the
Examiner. Although Appellants argue that it is unreasonable to regard the
rectangles of Pilat as extending vertically above the two-dimensional
“‘floor’” of the program guide (see Reply Br. 2), we are not persuaded that
claim 3, or claim 1 from which it depends, contains any recitation that would
Appeal 2012-008879
Application 11/905,247

6
preclude the Examiner from interpreting the claim broadly.14 For example,
there is no recitation of the term “floor” in the claims, or where this “floor”
may be positioned relative to the rectangular program blocks. Although
Appellants postulate different ways the Examiner may be interpreting claim
3 (see Reply Br. 2-3), we believe the Examiner was sufficiently clear in the
rejection under the rationale previously explained.

Motivation to Combine
Appellants next argue the motivation to combine the prior art
references as done by the Examiner in making the rejections (Ans. 6-7).
Specifically, according to Appellants, the Examiner stated that the
motivation to combine is “to provide a visually appealing EPG while
providing more attention-grabbing indications of a user’s favorite
programming” (id.). Appellants argue the Examiner is required to show that
a known problem existed that would have motivated one of ordinary skill to
combine the references as the Examiner did in the rejections (id.). No
authority is cited for this proposition.
In his Answer, the Examiner stated that the combined prior art
references are analogous art (see Ans. 5-17). A reference is analogous art to
the claimed invention if: (1) the reference is from the same field of endeavor
as the claimed invention (even if it addresses a different problem); or (2) the

14 During examination, claims their broadest reasonable interpretation
consistent with the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004).

Appeal 2012-008879
Application 11/905,247

7
reference is reasonably pertinent to the problem faced by the inventor (even
if it is not in the same field of endeavor as the claimed invention).15
The claimed invention and cited prior art references are in the same
field of endeavor, namely, EPG technology, so the references were properly
combined on this basis. Also, as previously indicated, the Examiner’s stated
reason for combining the references was “to provide a more visually
appealing [EPG]” (see, e.g., Ans. 6). Although Appellants have
characterized this statement as one of “general advantage” (App. Br. 6-7), it
is also a statement of the problem faced by the inventors, namely, providing
a more entertaining EPG, for EPGs which are more visually appealing are
more entertaining (see Spec. 6). Accordingly, the cited prior art references
are reasonably pertinent to the same problem faced by the inventors.16
Moreover, the Examiner finds that it is not necessary to show “‘a
known problem’” in order to show that the combination of references would
have been obvious (Ans. 18-19). Citing various precedents17, the Examiner
states that obviousness may be established by combining or modifying the
teachings of the prior art to produce the claimed invention where there is
some teaching, suggestion, or motivation to do so found in the knowledge
generally available to one of ordinary skill in the art (id.). The Examiner

15 See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); Manual of Patent
Examining Procedures, MPEP § 2141.01(a).
16 See In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed.
Cir. 2007)(quoting In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); MPEP
§ 2141.01(a).
17 See In re Fine, 837 F.2d 1071, (Fed. Cir. 1988), In re Jones, 958 F.2d 347,
(Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398,
(2007).
Appeal 2012-008879
Application 11/905,247

8
contends that a general advantage apparent to a skilled artisan at the time of
the invention is proper motivation to combine references (id.).
For the reasons stated, we are not persuaded that the Examiner erred
in combining the prior art references to make the rejections. We sustain the
Examiner’s obviousness rejection of claim 3.
Furthermore, for the above reasons, we are also affirming the
rejections of claims 2 and 4-19, because their merits were not separately
argued.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-19 is
affirmed.
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).

AFFIRMED

gvw