Ex Parte RE35952 et al

Patent Trial and Appeal Board

Apr 19, 2013

90010726 (P.T.A.B. Apr. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
90/009,400 02/09/2009 RE 35952 4219
7590 04/19/2013
NIRO, SCAVONE, HALLER & NIRO
181 W. MADISON - SUITE 4600
CHICAGO, IL 60602
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/19/2013 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 TECHNOLOGY DEVELOPMENT AND LICENSING, LLC
Appellant and Patent Owner
____________

Appeal 2012-012562
Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456
Patent RE35,952
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and JUSTIN
ARBES, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

Technology Development and Licensing, LLC appeals under 35
U.S.C. § 134 and 306 from a final rejection of claims 1, 2, and 6-53.
Appellant does not appeal the final rejection of claim 5. App. Br. 14. We
have jurisdiction under 35 U.S.C. § 134 and 306.
We heard oral arguments on January 9, 2013.

Appeal 2012-012562
Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456
Patent No. RE35,952

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STATEMENT OF THE CASE

This proceeding arose from three separate third party requests for ex
parte reexamination of U.S. Patent No. RE35,952 („952 patent). The Office
granted and merged the three proceedings (i.e., Reexamination Control Nos.
90/009,400; 90/009,456; and 90/010,726 – see Decision Sua Sponte Merging
Reexamination Proceedings dated May 4, 2010). Presently, claims 1, 2, and
5-53 stand rejected and claims 3 and 4 are deemed patentable.
The invention relates to a television control system for selecting a
television channel corresponding to a preassigned channel tuning
designation (see Abstract). Claim 1 reads as follows:
1. In a television control system apparatus for
selecting a television channel corresponding to a preassigned
channel tuning designation, the system apparatus comprising:
tuner means for receiving a processor signal and a multi-
channel input signal, and in response to said processor signal,
tuning out all but one channel corresponding to a selected one
of said preassigned channel tuning designations;
memory mean for storing at least one operator-assigned
channel select designation for at least one of said channel
tuning designations;
first operator-actuated control means for generating a
first control output signal comprising a first data set
representative of a desired channel select designation for one of
said channel tuning designations;
second operator-actuated control means for generating a
second control output signal comprising a second data set
Appeal 2012-012562
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Patent No. RE35,952

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representative of a desired viewing channel identified by an
operator selected one of said channel select designations;
processor means for receiving said first and second
control output signals from said first and second operator-
actuated control means, and upon receipt of said first data set,
causing said memory means to store said desired channel select
designation as corresponding to said one channel tuning
designation, and upon receipt of said second data set, retrieving
from said memory means the one of said channel tuning
designations corresponding to said operator selected channel
select designation, and generating said processor signal to
correspond to said one channel tuning designation;
said first control output signal comprising a first one of
said channels of said multi-channel input signal;
said processor means including means for generating said
processor signal to cause said tuner means to tune out all but
said first one of said channels, and for receiving from said tuner
means said first control output signal comprising said first one
of said channels.

The Examiner rejected claims on the following bases:
(1) claims 1, 2, and 5-53 under 35 U.S.C. § 102(b) as anticipated by
Houston Tracker Systems, “Tracker System VIII – Installation and
Operation Manual,” 1986 (“Tracker”); and
(2) claims 1, 2, 5, 12, 13, 23, 24, and 48 under 35 U.S.C. § 102(e) as
anticipated by U.S. Patent No. 4.796,032 (“Sakurai”).

ISSUE
Did the Examiner err in rejecting claims 1, 2, and 6-53?
Appeal 2012-012562
Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456
Patent No. RE35,952

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PRINCIPLES OF LAW

The „952 patent term expired during the reexamination proceedings.
Under these circumstances, the “broadest reasonable” rule of claim
construction does not apply. Rather, claim construction rules employed in
infringement suits serve as appropriate guides. Conversely, “construing
express claim language” “narrowly” in light of the specification contrasts
with reading improper “inferential limitations” into a claim. Ex parte Papst-
Motoren, 1 USPQ2d 1655, 1656-57 (BPAI 1986) (citation omitted).
In all cases, claims “must be read in view of the specification. . . .
[T]he specification „is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.”‟ Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (en banc). Prosecution history may shed light on the claim scope
and should be used if available. Id. at 1317.
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).

Appeal 2012-012562
Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456
Patent No. RE35,952

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ANALYSIS
Claims 1 and 2
Appellant argues claim 1 “requires a first control output signal at the
origin of the signal (e.g., at a cable or satellite broadcast center)” (App. Br.
136) and contends that Tracker fails to disclose this feature. We disagree
with Appellant for at least the reasons set forth by the Examiner (see, e.g.,
Ans. 13-14). For example, as the Examiner points out, claim 1 does not
recite “a first control output signal at the origin of the signal.” In fact, claim
1 does not recite an “origin of the signal” at all. Instead, claim 1 merely
recites a “first control output signal” as “comprising a first data set
representative of a desired channel select designation” and “comprising a
first one of said channels of said multi-channel input signal.” Appellant
does not appear to dispute the Examiner‟s finding that Tracker discloses
these features. Thus, we disagree with Appellant‟s argument pertaining to
an “origin” of a first control output signal.
Appellant also argues that claim 1 recites a “system apparatus” and
that “[n]othing precludes the „system apparatus‟ from having a component . .
. at a remote location” (App. Br. 137). Hence, Appellant appears to argue
that Tracker fails to disclose a system apparatus containing a component
located at a remote location. We disagree with Appellant for at least the
reasons set forth by the Examiner (see, e.g., Ans. 14-16).
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Patent No. RE35,952

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We agree with Appellant that claim 1 recites a “system apparatus”
(i.e., a “television control system apparatus”) and that claim 1 does not
preclude components of the claimed “system apparatus” from being located
at a remote location. However, Appellant has not demonstrated that claim 1
requires a specific location for any of the components of the claimed
“system apparatus,” much less that a component of the system apparatus be
specifically located at a remote location. Thus, even assuming Appellant‟s
contention to be true that Tracker fails to disclose a component of the system
at a remote location, we disagree with Appellant that whether Tracker
discloses a component located at a remote location or not is relevant to claim
1.
Appellant also argues that Tracker fails to disclose “a first control
output signal comprising (i.e., using) one of the first channels of the multi-
channel input signal, i.e., . . . generating a first control output signal which
comes from anywhere other than a first operator actuated control means at
the source of the multi-channel signal” (App. Br. 140). Claim 1 recites the
“first control output signal comprising a first one of said channels of said
multi-channel input signal.”
We disagree with Appellant for at least the reasons set forth by the
Examiner (see, e.g., Ans. 17-18). For example, we agree with the Examiner
that claim 1 does not require “generating a first control output signal which
comes from anywhere other than a first operator actuated control means at
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the source of the multi-channel signal” as Appellant argues. Claim 1 also
does not recite a first control output signal using one of the first channels of
the multi-channel input signal as Appellant argues. Instead, claim 1 merely
recites a first control output signal comprising a first one of said channels of
said multi-channel input signal. We agree with the Examiner that Tracker
discloses this feature. As the Examiner points out (see, e.g., Ans. 18),
Tracker discloses “generating a first control output signal” (e.g., upon
moving “to the desired channel and satellite using the remote or front panel
controls” – p. 9, col. 1, bottom – and depression of a “FAVORITE
PROGRAM” button – p. 9, col. 2, top) “comprising a first one of said
channels of said multi-channel input signal” (e.g., indicating one of the
channels of the multi-channel input signal as by moving “to the desired
channel” – p. 9, col. 1, bottom). The signal of Tracker also comprises “a
first data set representative of a desired channel select designation” (e.g., a
“desired number (01-99) under which this program is to be stored” – p. 9,
col. 2).

Claims 7-10, 15, 19, 20, 21, 26, 28-30, 34, and 45
Claim 7 recites “an ordered cue.” Appellant argues that Tracker fails
to disclose the claimed “cue” because, according to Appellant, a “cue” must
include a “display code” (as disclosed in the Specification) and a “display
code” is “defined in the „952 Patent as „a series of alpha-/numeric characters
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chosen by the viewer for subsequent display on the television screen or a
display panel as a channel is chosen using the select code‟” (App. Br. 144-
45). Appellant states that Tracker discloses displaying “Galaxy G1” but that
such a display is not the same as a “display code” as part of the claimed
“cue” because the display “Galaxy G1” “cannot be altered by a viewer”
(App. Br. 145), and “[t]here is no disclosure anywhere in the Tracker VIII
Manual showing how a viewer can rename a satellite” (App. Br. 146). We
disagree with Appellant for at least the reasons set forth by the Examiner
(see, e.g., Ans. 21-25). Even assuming that a “cue” as recited in claim 7, for
example, requires a “display code” and that a “display code” is a series of
characters chosen by a viewer, as Appellant contends, Appellant has not
demonstrated that the “cue” must also include a “display code” that must be
“altered by a viewer.” While Appellant states that the Specification defines
a “display code” as something “chosen by the viewer,” Appellant does not
demonstrate that the Specification also defines the “display code” to be
“altered by a viewer.”
As the Examiner indicates and as Appellant states, Tracker discloses a
user selecting a favorite program from a list (or “cue”) of selections (p. 45).
Appellant does not demonstrate a difference between a viewer selecting a
favorite program from a list (or “cue”) as disclosed by Tracker and a viewer
choosing a series of alphanumeric characters as Appellant asserts is required
by the disputed claims.
Appeal 2012-012562
Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456
Patent No. RE35,952

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Claims 8, 9, 37, and 38
Regarding claims 8 and 9, Appellant argues that Tracker fails to
disclose a “plurality of ordered cues” (App. Br. 160). The Examiner states
that Tracker discloses a “„Favorite Programs‟ list, . . . as well as the
„Favorite Audio‟ list” (Ans. 25). Hence, the Examiner equates the claimed
“plurality of ordered cues” with a list of favorite television programs and a
list of favorite audio programs of Tracker. We disagree with the Examiner.
Claim 8 recites “selecting a television channel” corresponding to a
“channel tuning designation” including storing a value “for at least one of
said channel tuning designations” and “retaining said channel tuning
designations in a plurality of ordered cues.” Claim 8 first recites “a
preassigned channel tuning designation” and subsequently recites “channel
tuning designations,” resulting in an ambiguity in the claim since the plural
term “channel tuning designations” appears to lack antecedent basis. Since
the „952 patent term has expired, however, “a policy of liberal claim
construction may properly and should be applied . . . [to favor] a
construction of a patent claim that will render it valid, i.e., a narrow
construction, over a broad construction that would render it invalid” (Papst-
Motoren, 1 USPQ2d at 1656). The maxim that claims are construed, if
possible, to sustain their validity is limited “to cases in which „the court
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concludes, after applying all the available tools of claim construction, that
the claim is still ambiguous.‟ [quoting] Phillips v. AWH Corp., 415 F.3d
1303, 1327 (Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)).” Ex parte Katz, 2010
WL 1259722 at *7 (BPAI 2010).
Based on the foregoing, we construe claim 8 as requiring an apparatus
for selecting a television channel corresponding to any one of a plurality of
preassigned channel tuning designations and retaining the (plurality of)
channel tuning designations in a plurality of ordered cues. Under this
construction, we agree with the Examiner that a list of “favorite” television
programs of Tracker constitutes an “ordered cue” of television programs but
we disagree with the Examiner that a list of audio programs also constitutes
an “ordered cue” of television channels. Hence, Tracker appears to disclose
one list of television programs (i.e., one “ordered cue”) rather than a
plurality of ordered cues of television channels.
Claim 9 depends from claim 8. Claims 37 and 38 recite a similar
feature as claim 8 (i.e., “plurality of scroll sequences”). Appellant provides
similar arguments in support of claims 37 and 38 (App. Br. 160-163). We
agree with Appellant for reasons similar to those discussed above. Thus, we
do not sustain the rejection of claims 8, 9, 37, and 38 as anticipated by
Tracker, and need not address Appellant‟s remaining arguments regarding
claims 8, 9, 37, and 38.
Appeal 2012-012562
Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456
Patent No. RE35,952

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Claims 12, 13, 23, and 24
Appellant argues that Tracker “does not disclose two distinct control
means, each remotely located with respect to the other” (App. Br. 171).
Claim 12 recites the second operator-actuated control means distinct and
remotely located from the first operator-actuated control means. Claims 13,
23, and 24 recite a similar feature. We disagree with Appellant for at least
the reasons set forth by the Examiner (see, e.g., Ans. 47-50). For example,
as the Examiner points out, Tracker discloses “a main unit as well as a
remote control” (Ans. 50; see also Tracker, p. 6 – remote control unit vs.
console). We agree with the Examiner that the two separate components of
Tracker (i.e., the remote control unit as one component and the console as
another component) are “distinct” (i.e., are separate and recognizable as
different) and are “remotely located with respect to the other” (i.e., not co-
located within the same space).
Appellant argues that “those controls are exclusively local” and that
the Specification of the „952 patent indicates that “the first control output
signal is from the origin of the multi-channel signal” (App. Br. 171, citing
Declaration of Thomas A. Gafford, Ex. F (“Gafford Dec”) ¶¶ 19 and 20)).
However, we agree with the Examiner that none of claim 12, 13, 23, or 24
requires that the controls not be exclusively local and that the first control
output signal is from the origin of the multi-channel signal. While Mr.
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Patent No. RE35,952

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Gafford states that the Specification discloses an embodiment in which
“programming occurs from the origin of the signal, and not at the TV”
(Gafford Dec. ¶ 19), Mr. Gafford does not demonstrate that Tracker fails to
disclose the disputed claim feature (i.e., a second operator-actuated control
means distinct and remotely located from the first operator-actuated control
means).

Claims 52 and 53
Appellant argues that Tracker fails to disclose “generating” a second
control output signal, “retrieving” channel tuning designations, and
“generating said channel tuning control signal,” as recited in claim 5, from
which claims 52 and 53 depend (App. Br. 172-173). We disagree with
Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans.
50-52).
For example, Tracker discloses that “all of the FAVORITE
PROGRAMS . . . have been pre-programmed at the factory” (p. 45, col. 1).
Hence, Tracker discloses a “first person” generating the first control output
signal (i.e., a factory generating a signal that contains a “first data set” that is
stored and is representative of a desired channel) and a “second person”
generating the second control output signal (i.e., a user generating a signal
that contains a second data set that is representative of a desired viewing
channel – the user/viewer selects a desired channel).
Appeal 2012-012562
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Patent No. RE35,952

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Appellant also argues that Tracker only discloses “an Arabic numeral”
and not “a combination of letters and numerals, or a preset key” (App. Br.
173). However, as the Examiner points out, claims 52 and 53 do not require
“a combination of letters and numerals, or a preset key” as Appellant argues.
Instead, the disputed claims merely require that a first person generate a first
signal (claims 52 and 53) and a second person generate a second signal
(claim 52) or desired channel select designation (claim 53).
Affirmance of the rejection for claims 1, 2, 5, 12, 13, 23, 24, and 48
based on Tracker renders it unnecessary to reach the propriety of the
Examiner‟s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections
after finding an anticipation rejection to be upheld). As such, we need not
reach the propriety of the rejection of those claims over Sakurai.

CONCLUSION
The Examiner erred in rejecting claims 8, 9, 37, and 38 under 35
U.S.C. § 102(b) as anticipated by Tracker.
The Examiner did not err in rejecting claims 1, 2, 5-7, 10-36, and 39-
53 under 35 U.S.C. § 102(b) as anticipated by Tracker.

SUMMARY

We reverse the rejection of claims 8, 9, 37, and 38 under 35 U.S.C.
Appeal 2012-012562
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Patent No. RE35,952

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§ 102(b) as anticipated by Tracker.
We affirm the rejection of claims 1, 2, 5-7, 10-36, and 39-53 under 35
U.S.C. § 102(b) as anticipated by Tracker.

AFFIRMED-IN-PART

PATENT OWNER:
NIRO, SCAVONE, HALLER & NIRO
181 W. Madison-Suite 4600
Chicago, IL 60602

THIRD PARTY REQUESTER:
MEHRAN ARJOMAND
MORRISON & FOERSTER LLP
555 WEST FIFTH STREET
LOS ANGELES, CA 90013

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