Ex Parte Potrebic

Board of Patent Appeals and Interferences

Aug 27, 2008

09781110 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER J. POTREBIC
____________

Appeal 2008-2335
Application 09/781,110
Technology Center 2600
____________

Decided: August 27, 2008
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-5, 9-23, 25, 26, and 28-35.1 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

1 After the Appeal Brief was filed, the Examiner entered an amendment filed
on June 28, 2007 that corrected an apparent typographical error in claim 1.
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STATEMENT OF THE CASE
Appellant invented a system and method for recording “fragmented”
programs that are aired over multiple days (e.g., mini-series, ongoing
sporting events, etc.). Using electronic program guide (EPG) data, the
system automatically identifies fragments of one or more programs that are
related and sequentially records each of the identified fragments. Thus, to
record shows associated with a particular fragmented program, viewers need
only identify the fragmented program without having to identify the date and
time of each airing.2 Claims 1 and 21 are illustrative:
1. In an entertainment system that includes a video recording
apparatus, a method for automatically recording a fragmented program that
includes a series of fragments that are temporally separated from each other
and that have been designated as being related one to another wherein each
fragment is broadcast to the entertainment system as a separate and
independent program from other related fragments, the method comprising
the acts of:

providing a list of categories that include one or more fragmented
programs for selection to a user;

upon receiving user selection of one of the categories, identifying with
electronic program guide data each of one or more fragmented programs that
corresponds to the selected category and that is scheduled to be displayed
during a specific period of time, wherein the electronic program guide data
used to identify the one or more fragmented programs includes a unique
identifier that is assigned to each fragment in a group of fragments that are
designated by a network as being related, such that the unique identifier is
common to each fragment within a corresponding grouping of programs,
which are identified by the network as being related, and such that each
fragment corresponding to the fragmented program grouping has a same
unique identifier that is distinguished and independent from a program title;

2 See generally Spec. 4:2-6:4.
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displaying in a fragmented program list, each of the identified one or
more fragmented programs corresponding to the selected category, wherein
the fragmented program list only includes the identified one or more
fragmented programs;

receiving user input requesting one or more of the displayed
fragmented programs in the list to be recorded without requiring the user to
separately identify each of the fragments associated with the fragmented
programs;

in response to said user input selecting one or more of the displayed
fragmented programs, examining the electronic program guide data and
identifying each of the fragments corresponding to the selected one or more
fragmented programs for each of the identified fragments, automatically
determining a start time for the fragment and recording the fragment with
the video recording apparatus when the fragment is aired.

21. A recording system for recording video data corresponding to
fragments wherein each fragment is broadcast to the recording system as a
separate and independent program from other related fragments, the
recording system comprising:

a signal receiver for receiving a signal that carries programming, wherein
said programming includes a fragmented program, which includes a
plurality of fragments that are scheduled to be aired over a series of days;

a user input interface coupled to said signal input, wherein said user
interface provides a list of categories that correspond to a plurality of
fragmented programs, and a fragmented program list that is displayed in
response to a user selection of a category from the list of categories, the
fragmented program list displaying each of, and only, one or more identified
fragmented programs corresponding to the selected category;

wherein upon receipt of additional user input selecting one of the
fragmented programs from the user input interface the recording system uses
electronic program guide data to identify each of a plurality of fragments of
said selected fragmented program, wherein the electronic program guide
data used to identify the one or more fragmented programs includes a unique
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identifier that is assigned to each fragment in a group of fragments that are
designated by a network as being related, such that the unique identifier is
common to each fragment within a corresponding grouping of fragmented
programs, which are identified by the network as being related, and such that
each fragment corresponding to the fragmented program grouping has a
same unique identifier that is distinguished and independent from a program
title; and

a signal recorder coupled to said signal input for sequentially
recording onto a storage medium each of said plurality of fragments.

The Examiner relies on the following prior art references to show
unpatentability:
Abbott US 5,973,679 Oct. 26, 1999
Yi US 6,094,427 Jul. 25, 2000
Wood US 2003/0044165 A1 Mar. 6, 2003
(eff. filed Aug. 7, 1998)
Knudson US 2005/0273819 A1 Dec. 8, 2005
(eff. filed Jun. 11, 1999)

1. Claims 1-5, 9-23, 25, 26, 28-31, and 33-35 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Wood, Knudson, and Abbott.
2. Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wood, Knudson, Abbott, and Yi.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs3 and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by

3 We refer to (1) the Appeal Brief filed November 27, 2006; (2) the Reply
Brief filed May 7, 2007; and (3) the Supplemental Reply Brief filed August
28, 2007 throughout this opinion.
4 We refer to the most recent Answer mailed June 28, 2007 throughout this
opinion.
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Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE REJECTION OVER WOOD, KNUDSON, AND ABBOTT
Claims 1-5, 9-20, 26, and 28-35
We first consider the Examiner’s obviousness rejection of claims 1-5,
9-23, 25, 26, 28-31, and 33-35 over Wood, Knudson, and Abbott (Ans. 3;
Final Rej. 2-10).5 Regarding representative claim 1,6 Appellant argues the
cited prior art does not teach or suggest the electronic program guide (EPG)
data including a unique identifier that is (1) assigned to each fragment
related to the selected category; (2) common to each fragment in the
category; and (3) distinguished and independent from a program title, as
claimed (App. Br. 10-11).
According to Appellant, the Examiner concedes that Wood and
Knudson fail to explicitly teach such a unique identifier (App. Br. 11; Reply
Br. 3; Supp. Reply Br. 2-3). As such, Appellant focuses the arguments
initially on the tertiary reference (Abbott). Appellant contends that Abbott is
deficient with respect to the disputed unique identifier limitation since

5 We note that the Examiner’s Answer does not expressly state the
Examiner’s grounds of rejection, but instead refers us to a previous office
action (Ans. 3-4). Such incorporations by reference, however, are improper
under current practice. See MPEP § 1207.02 (“An examiner's answer should
not refer, either directly or indirectly, to any prior Office action without fully
restating the point relied on in the answer.”).
6 Appellant argues claims 1-5, 9-20, 26, and 28-35 together as a group. See
App. Br. 10-19. Accordingly, we select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
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Abbott pertains to hierarchical organization and synchronization of program
data for a single program. As such, Appellant argues, Abbott is not
concerned with the relationship between multiple separate programs or
fragments (App. Br. 12-13). Although Appellant acknowledges that Abbott
teaches that a “series” can be uniquely identified, Appellant emphasizes that
the meaning of the term “series” in Abbott pertains to different portions of
the same program: a meaning that is completely different from that of the
present invention which refers to a group of related programs that are aired
at different times (App. Br. 13-14; Reply Br. 3; Supp. Reply Br. 3-4;
emphasis added). Based on these differences, Appellant argues that the
Examiner has not provided a reason that would have prompted ordinarily
skilled artisans in the relevant field to combine the teachings of Abbott with
Wood and Knudson (Supp. Reply Br. 6-7).
Appellant also argues that the cited prior art fails to generate and
display a list of only the identified fragmented programs that correspond to
the selected category, as claimed. Appellant contends that the Examiner
conceded that Wood fails to disclose such a feature, and thus focuses the
arguments initially on the secondary reference to Knudson. According to
Appellant, Knudson’s program listings list all the programs scheduled for
each channel, not only the fragmented programs related to the selected
category as claimed (App. Br. 15-16; Reply Br. 4). Appellant adds that the
recording and reminding features in Knudson relied upon by the Examiner
pertain to events occurring after the user selects the program. But the
fragmented program list of the claimed invention, Appellant argues, is
displayed before the viewer selects a program to record (App. Br. 17).
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Lastly, Appellant contends that that the Examiner erred in using
hindsight to reconstruct the claimed unique identifier from the cited
references. According to Appellant, the Examiner is not merely combining
known elements from different references to arrive at the claimed invention.
Rather, Appellant argues, the Examiner is piecing together references to
construct an unknown element, and then combining this constructed
unknown element with other elements to arrive at the claimed invention
(Supp. Reply Br. 4-5).
In response, the Examiner essentially reiterates the relied-upon
teachings of Wood and Knudson, but adds that Abbott assigns a unique
identifier to a series (Ans. 5-7). The Examiner then concludes that the
disputed limitations would have been obvious to ordinarily skilled artisans in
light of the collective teachings of the references (id.).

ISSUE
The issue before us, then, is whether Appellant has shown the
Examiner erred in finding that the collective teachings of the cited prior art
teach or suggest the limitations of representative claim 1.
The issue turns on whether the prior art teaches or suggests a unique
identifier that is (1) assigned to each fragment related to the selected
category; (2) common to each fragment in the category; and (3)
distinguished and independent from a program title, as claimed. The issue
also turns on whether the cited prior art teaches or suggests generating and
displaying a list of only the identified fragmented programs that correspond
to the selected category, as claimed.

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FINDINGS OF FACT
1. Wood discloses a video data recording system that enables the user
to specify criteria for recording shows from an input data source for later
playback (Wood, Abstract). Show selection information is based on
incoming channel guide data (e.g., program titles, start and end times,
channel information, etc.) obtained from channel guide data source 109 that
periodically updates the local channel guide database 103 with this
information (Wood, ¶ 0027; Fig. 1).
2. The user’s program selection criteria are stored in a criteria
database 104 (Wood, ¶ 0029). This criteria can include (1) the show title;
(2) a keyword such as an actor’s name or text from a show description; (3)
show class (e.g., action, mystery, etc.); and (4) rating information (Wood, ¶
0043). The user can also specify, among other things, the number of shows
in a series to record and whether reruns are recorded (Wood, ¶ 0044).
Alternatively, all shows in a series can be recorded if desired (Wood, ¶¶
0051-52; Fig. 9).
3. The user can provide selected criteria via user interface 108
(Wood, ¶¶ 0038, 0045). In some embodiments, the user is presented with a
pop-up menu that is derived from information contained in the channel guide
database (Wood, ¶¶ 0045-46). To simplify the display, various display
options can be used including enabling the user to select from a list of letters
(A-Z) corresponding to the first letter of the title (Wood, ¶ 0047) and using
hierarchical lists (Wood, ¶ 0048). Similar methods can be used for other
criteria selections (Wood, ¶ 0049).
4. Recording in Wood is based on matches between the criteria
database and the channel guide database. When a match occurs, the
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processor 101 causes video input signals to be recorded on video storage 105
(Wood, ¶ 0029; Fig. 1).

PRINCIPLES OF LAW
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).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727
(2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock [,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
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in the fashion claimed.” Id. at 1740-41. Such a showing requires “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.” Id. at 1741 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Based on the functionality of Wood’s criteria-based recording system
noted in the Findings of Fact section above, we find that this reference
amply suggests the disputed unique identifier limitation of representative
claim 1. First, Wood expressly states that the user can specify recording
shows in a series (Wood, ¶ 0044; Finding of Fact (FF) 2). Skilled artisans
would understand from this teaching that the individual shows of a particular
series would be related “fragments” with respect to that series, particularly
in light of the term’s definition in the Specification.7

7 See Spec. 4:15-16 (“A fragmented program is a program that has multiple
airings broadcast over multiple days. Each airing is generally referred to as
a fragment.”); see also id. at 4:21-22 (“An ongoing television program
includes a series of episodes that are aired on a regular basis.”).
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Second, Wood expressly discloses that the user can select all shows in
a series to record (FF 2). One example of this technique is shown in Figure
9 in which all shows (i.e., “fragments”) in the “Scooby Doo” series are
selected for recording. Apart from indicating that the shows in this series
are selected, Wood does not detail how each fragment is selected.
Nevertheless, we find that some sort of unique identifier would be assigned
to the shows associated with the selected series to facilitate identifying and
selecting those shows for recording. Otherwise, we fail to see how the
individual shows of the series could be identified for selection.
Indeed, the display of Figure 9 of Wood at least suggests unique
identifiers. As shown in that figure, the very title of the selected series
(“Scooby Doo”) is distinguished from the other program titles and therefore
constitutes a unique identifier with respect to the other programs. By
automatically selecting all shows in this series (i.e., as indicated by the
double-dot indicator adjacent the title in Figure 9), skilled artisans would
understand that the system would identify and associate the shows pertaining
to this selected series as part of this selection process. This identification
and association in Wood would therefore involve assigning a unique
identifier to the shows for selection.
Although one such identifier that would be common to all shows of a
series would be the title of the series itself, skilled artisans would recognize
that other common unique identifiers could also be used, such as the time
and channel that a particular series is aired. For example, in Figure 9 of
Wood, the “Scooby Doo” series is shown on Channel 1003 (TBS) from
8:30-9:00 PM. No other series has this unique attribute (i.e., a program aired
from 8:30-9:00 PM on Channel 1003). Furthermore, skilled artisans would
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recognize that the shows of this recurring series (i.e., the particular episodes
or “fragments” of the “Scooby Doo” series) would likewise share this same
unique attribute. As such, a particular recurring series (and associated
fragments of the series) can be uniquely identified not only by the title of the
series, but also by the time and channel that each show of the series was
aired—an identifier independent of the program title. We therefore find that
Wood teaches or suggests the disputed unique identifier limitations of
representative claim 1.
We also find that Wood suggests displaying a fragmented program
list, as claimed. As we indicated in the Findings of Fact section, the user in
Wood can specify a variety of criteria for recording selected shows
including, among other things, keywords and the particular class of the show
(FF 2). A recurring series (or a particular type of recurring series) could be
such a class (e.g., all recurring series within a particular time slot and/or
channel, all recurring series that are comedies, etc.). Furthermore, Wood
provides a pop-up menu that can display lists of programs in a simplified
manner (i.e., by presenting subsets of information via particular letters,
hierarchically, etc.) (FF 3). Based on these teachings, we see no reason why
users in Wood could not tailor the displayed programs for selection
consistent with series-specific criteria (i.e., to show only recurring series or
the desired types of recurring series). Such a feature would, at a minimum,
simplify the display by showing only those shows that meet the desired
criteria.
In sum, the functionality of Wood teaches or suggests (1) providing a
list of categories that can include fragmented programs (e.g., providing an
initial menu of categories of shows denoted by first letter, hierarchically,
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etc.); (2) identifying the fragmented programs and assigning a unique
identifier to each fragment in a group of fragments (i.e., identifying
individual shows of a series for selection); and (3) displaying each of the
identified fragmented programs corresponding to the selected category in a
fragmented program list (e.g., a narrowly tailored list displaying only the
selected series).
An example utilizing this functionality is illustrative. Assume that the
user in Wood is interested in television series that are animated (e.g., the
“Scooby Doo” series in Figure 9). Consistent with this criteria, the initial
list of categories (criteria) presented to the user via the pop-up menu could
be narrowly tailored to this particular type of series (i.e., animated series).
By selecting a series as an initial criteria or category, the system would
therefore automatically identify all fragmented programs that match the
specific criteria specified (i.e., all series that are animated).
The resulting display responsive to this selection could include
detailed information about the series as well as the time and channel it is
aired.8 As we noted previously, the fact that the individual shows of the
selected series are aired at the same time and on the same channel indicates
that they have a unique identifier associated with them. This resulting
display would also constitute a “fragmented program list” since it would be
tailored to the selected category (animated series) and therefore include only
fragmented programs (i.e., all animated series in the database). From this

8 Such a display need not be in a chronological program guide format shown
in Figure 9 of Wood, but could be in a tabular format listing the individual
selected programs such as that shown in Figure 12 of Knudson. Presenting
information in this manner would be a predictable variation well within the
level of ordinarily skilled artisans.
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display of all animated series, the user could then select one or more of these
displayed series for recording via a procedure commensurate with that
described in Paragraph 0051 of Wood.
We, therefore, find that Wood alone teaches or suggests all limitations
of representative claim 1. Since the teachings of Knudson and Abbott are
merely cumulative to the teachings of Wood, we need not address
Appellant’s arguments pertaining to the alleged deficiencies of these
additional references.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1 based on the collective
teachings of the cited prior art. Therefore, we will sustain the Examiner’s
rejection of claim 1, and claims 2-5, 9-20, 26, and 28-35 which fall with
claim 1.

Claims 21-23 and 25
Regarding representative independent claim 21,9 Appellant argues
that, unlike claim 1, claim 21 requires that upon receiving user selection of
one of the fragmented programs, the method uses EPG data to identify each
of a plurality of fragments of the selected fragment program (i.e., a unique
identifier in the EPG data is used to identify which fragments are related to a
fragment program) (App. Br. 19-20; Reply Br. 5).
We are not persuaded by these arguments, however, for the reasons
indicated with respect to claim 1 above. Although we recognize the

9 Appellant argues claims 21-23 and 25 together as a group. See App. Br.
19-20; see also Reply Br. 5. Accordingly, we select claim 21 as
representative.
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distinction between claims 1 and 21 noted by Appellant, we find that the
functionality of Wood described above nonetheless amply suggests all
limitations of claim 21.
As we indicated previously, the list of categories initially presented to
the user in Wood can be limited to fragmented programs (e.g., a particular
type of series). Upon selection of such a category, all fragmented programs
corresponding to that category would then be displayed (i.e., a “fragmented
program list” would be displayed). Upon selection of a particular series for
recording (i.e., in a manner commensurate with the procedure described in
Paragraph 0051 of Wood), the system can uniquely identify the associated
shows of the series not only by the title of the series, but also by the time and
channel that each show of the series was aired—an identifier independent of
the program title. We therefore find that Wood teaches or suggests all
limitations of representative claim 21.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 21 based on the collective
teachings of the cited prior art. Therefore, we will sustain the Examiner’s
rejection of claim 21, and claims 22, 23, and 25 which fall with claim 21.

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Claim 32
We will also sustain the Examiner’s obviousness rejection of claim 32
over Wood, Knudson, Abbott, and Yi (Ans. 3-4; Fin. Rej. 10-11).10 We find
that the Examiner has established at least a prima facie case of obviousness
that Appellant has not persuasively rebutted. Once the Examiner has
satisfied the burden of presenting a prima facie case of obviousness, the
burden then shifts to Appellant to present evidence and/or arguments that
persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant did not present any specific arguments pertaining to this
rejection or particularly point out errors in the Examiner’s reasoning to
persuasively rebut the Examiner's prima facie case of obviousness. See, e.g.,
App. Br. 10 (excluding the Examiner’s rejection of claim 32 over Wood,
Knudson, Abbott, and Yi in the issues to be reviewed on appeal). Since
Appellant has not persuasively rebutted the Examiner’s prima facie case of
obviousness for claim 32, the rejection of that claim is therefore sustained.

10 Although the Examiner rejected claim 32 in the Final Rejection over
Wood, Knudson, Abbott, and Yi (Final Rej. 10-11), Appellant incorrectly
indicates in the Appeal Brief and Reply Brief that claim 32 was rejected over
Wood, Knudson, and Abbott. See, e.g., App. Br. 10 and 15; see also Reply
Br. 2. The Supplemental Reply Brief does include the Yi reference in
connection with the claims rejected by the Examiner, but does not
specifically identify claim 32 as the only claim rejected over the Yi
reference. See Supp. Reply Br. 2.

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CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-5, 9-23, 25, 26, and 28-35 under § 103 over the collective teachings of the
cited prior art.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-5, 9-23,
25, 26, and 28-35 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

eld

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