Ex Parte Richmond et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201310159378 (P.T.A.B. Feb. 28, 2013) Copy Citation 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. 10/159,378 05/31/2002 Michael S. Richmond ITL.2106US (P13660) 9606 47795 7590 02/28/2013 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER LIN, JASON K ART UNIT PAPER NUMBER 2425 MAIL DATE DELIVERY MODE 02/28/2013 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 MICHAEL S. RICHMOND, PAUL PILAT, and MARY D. SMILEY ____________________ Appeal 2011-001097 Application 10/159,378 Technology Center 2400 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001097 Application 10/159,378 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 2. Claims 3-29 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Disclosed Invention Appellants disclose a method (Fig. 1 and 2B; claim 1) for using an electronic program guide (EPG) including keywords used to describe program guide items to search the Internet for Internet addresses and information relating to the program guide item (Spec. ¶¶ [0001], [0014], [0021], and [0022]; Abs.). Exemplary Claim Exemplary independent claim 1 under appeal, with emphasis added to the disputed portion of the claim, reads as follows: 1. A method comprising: automatically searching for an Internet address associated with a program entry in an electronic program guide using a key word obtained from said entry, before any selection of the entry by a user; creating a link to an Internet address based on a result of the searching for the Internet address; storing the Internet address in a memory; causing to be displayed, in said electronic programming guide, in association with said entry, an icon indicating the availability of an Internet search result; and Appeal 2011-001097 Application 10/159,378 3 in response to selection of the icon, causing to be displayed said Internet search result. Examiner’s Rejections (1) The Examiner rejected claim 1 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Legall (US 6,005,565), Tomsen (US Pat. App. Pub. No.: 2002/0147984 A1), and Stautner (US 6,172,677 B1). Ans. 3-6. (2) The Examiner rejected claim 2 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Legall, Tomsen, Stautner, and Ellis (US 7,051,360 B1).1 Ans. 6-7. Appellants’ Contentions (1) With regard to claim 1, rejected under 35 U.S.C. § 103(a) over Legall, Tomsen, and Stautner, Appellants present several arguments that the references nor their combination meet the claimed limitations, including (see App. Br. 10; Reply Br. 1-2): (a) Tomsen’s paragraph [0109] discloses requesting Internet information only in response to a user’s actuation of a button (App. Br. 10); and (b) Tomsen’s “FIND” button 240 is only operable to find information associated with a single program (Reply Br. 1). (d) the concept of providing information about pre-acquired search information is nowhere to be found in the cited references (App. Br. 10), and neither are the concepts of pre-caching information 1 Separate patentability is not argued for claim 2, and Appellants rely on the arguments presented for claim 1 with respect to claim 2 (depending from claim 1) (see App. Br. 11). Accordingly, our analysis herein will only address representative claim 1. Appeal 2011-001097 Application 10/159,378 4 on a variety of programs, and indicating the pre-caching icons to make the user aware of information that is available (Reply Br. 1). (2) With regard to claim 2, rejected under 35 U.S.C. § 103(a) over Legall, Tomsen, Stautner, and Ellis, Appellants rely on the arguments presented above with regard to claim 1 (see App. Br. 11). Issue on Appeal Based on Appellants’ arguments in the Appeal Brief (App. Br. 10-11) and the Reply Brief (Reply Br. 1-2), the following issues are presented on appeal: Did the Examiner err in rejecting representative claim 1 as being obvious because the combination of Legall, Tomsen, and Stautner fails to teach or suggest the method of automatically searching for an Internet address associated with a program entry “before any selection of the entry by a user,” as recited in claim 1? The issue of whether the Examiner erred in rejecting claim 2 as being obvious because the combination of Legall, Tomsen, Stautner will stand or fall with the issue above with regard to claim 1, from which claim 2 depends. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 10-11) and the Reply Brief (Reply Br. 1-2) that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the conclusions reached by the Examiner, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by Appeal 2011-001097 Application 10/159,378 5 the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 3-11). We highlight and amplify certain teachings and suggestions of the references, as well as certain ones of Appellants’ arguments as follows. We agree with the Examiner’s findings with respect to the individual references, and with the Examiner’s determination that it would have been obvious to combine the references based on the rationale set forth by the Examiner (Ans. 3-6), including using Tomsen’s feature of automatically searching for program entry information before any selection of the entry by a user as disclosed in paragraphs [0107] and [0108]. Because the Examiner relies on paragraphs [0107]-[0110] of Tomsen for this feature (Ans. 5), Appellants’ arguments (App. Br. 10; Reply Br. 1) that paragraph [0109] and Figure 12 of Tomsen disclose that the Internet information request is only initiated in response to, or after, user actuation of the “FIND” button 240 are unpersuasive in view of the Examiner’s additional reliance on paragraphs [0107] and [0108] of Tomsen which disclose the following: [0107] Referring now to FIG. 12, there is shown an alternative system 1200 for unprompted, context-sensitive querying according to an embodiment of the invention. In the depicted embodiment, the STB 102 does not send an information request 502 to a content source 114 in response to the user pressing the "FIND" button 240. Rather, the information request 502 is sent, for instance, (1) when the STB 102 is turned on, (2) at periodic intervals, and/or (3) when the user changes the channel being displayed by the STB 102 using the channel buttons 216 on the remote control 106. [0108] Furthermore, after the content source 114 identifies a set of search results 504, the user is not immediately presented with the search results 504, as was the case in Appeal 2011-001097 Application 10/159,378 6 FIG. 9. Instead, the search results 504 and the corresponding items of supplemental content 406 are retrieved from the content source 114 (or another location, such as the Internet 126) and pre-cached by the STB 102 in the storage device 310 for subsequent retrieval and display in response to a user command. (Tomsen, ¶¶ [0107] and [0108]) (italicized emphases added). As seen from paragraph [0107], automatic or unprompted searching or querying is performed, and it is not done in response to the use hitting the “FIND” button 240, but when the set top box 102 is turned on, and at periodic intervals (i.e., automatically) (see also ¶ [0113] describing that information requests 502 may be sent when the set top box 102 is turned on or at periodic intervals, without requiring user entry or action). And, as seen from paragraph [0108], the search results 504 and the supplemental content 406 from the search of the Internet 126 is pre-cached by set top box 102 in storage device 310 for later retrieval by the user. Then, after automatic searching has been performed and the information retrieved has been pre-cached as described in paragraphs [0107] and [0108], Tomsen discloses by way of an example in paragraph [0109] that search results 504 are retrieved from the storage device 310 after the user presses the “FIND” button 240 to find supplemental content 406 relating to a television broadcast and make a selection of an item from supplemental content 406 for display on television 104 as shown in Figure 10. Because Tomsen (¶¶ [0107] and [0108]) discloses “automatically searching for an Internet address associated with a program entry . . . before any selection of the entry by a user,” as recited in claim 1, the Examiner did Appeal 2011-001097 Application 10/159,378 7 not err in rejecting representative claim 1 as being obvious over the combination of Legall, Tomsen, and Stautner. We will sustain the rejection of claim 1 under § 103(a) over Legall, Tomsen, and Stautner for the reasons provided by the Examiner (Ans. 3-11). We will also sustain the rejection of claim 2 under § 103(a) over Legall, Tomsen, Stautner, and Ellis for the reasons provided for claim 1 from which claim 2 depends. In view of the foregoing, we conclude that the inventions recited in claims 1 and 2 have not been shown to be patentably distinguishable from the combined teachings of the applied prior art. CONCLUSIONS (1) The Examiner has not erred in determining that the combination of Legall, Tomsen, and Stautner teaches or suggests the method of “automatically searching for an Internet address associated with a program entry . . . before any selection of the entry by a user,” as recited in claim 1. (2) Appellants have not adequately shown that the Examiner erred in determining that the combination of Legall, Tomsen, Stautner, and Ellis teaches or suggests the method recited in claim 2. (3) The Examiner has not erred in rejecting claims 1 and 2 as being unpatentable under 35 U.S.C. § 103(a). DECISION The Examiner’s rejections of claims 1 and 2 under 35 U.S.C. § 103(a) are affirmed. Appeal 2011-001097 Application 10/159,378 8 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 Vsh Copy with citationCopy as parenthetical citation