Ex Parte Rodriguez et al

Board of Patent Appeals and Interferences

Nov 30, 2011

10778494 (B.P.A.I. Nov. 30, 2011)

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.
10/778,494 02/13/2004 Arturo A. Rodriguez 60374.0004USD7/968574 6759
62658 7590 12/01/2011
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
FEATHERSTONE, MARK D
ART UNIT PAPER NUMBER
2423
MAIL DATE DELIVERY MODE
12/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARTURO A. RODRIGUEZ and DEAN F. JERDING

____________________

Appeal 2009-014728
Application 10/778,494
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and THU A.
DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4-7, 9, 10, and 21-31. Claims 3, 8 and 11-20 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2009-014728
Application 10/778,494

2
A. INVENTION
According to Appellants, the invention relates to television systems
and, in particular, to media-on-demand (Spec. 1, ll. 10-11).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method implemented by a television set-top terminal
(STT) comprising the steps of:

providing a first list of selectable video-on-demand
presentation titles;

providing proximally in location to the first list an option
to browse the first list based on one of a plurality of different
categories;

providing a plurality of functional lists including a
shopping list, a reminder list, and a favorites list, each of the
functional lists identifying by title a corresponding plurality of
video-on-demand presentation titles selectable from the first list
of selectable video-on-demand presentation titles, wherein the
reminder list comprises titles that are not yet available for rental
but that will become available for rental at a future time, and
wherein the shopping list comprises titles selected by a user as
candidates for future purchase, wherein at least one of the
plurality of functional lists is associated with one of a plurality
of viewers and with an indication of the associated viewer;

providing a plurality of icons, each icon corresponding to
a one of the plurality of functional lists;

displaying the plurality of icons simultaneously with the
first list;

enabling a viewer to add any one of the plurality of
video-on-demand presentation titles in the first list to any one
Appeal 2009-014728
Application 10/778,494

3
of the plurality of functional lists by visually associating said
one of the plurality of video-on-demand presentation titles in
the first list with a respective one of the plurality of icons
responsive to viewer input provided via a remote control
device; and

displaying a representative movie icon corresponding to a
viewer selected video-on-demand presentation title from the
first list as the viewer selected video-on-demand presentation
title is being visually associated to one of the plurality of icons,
the representative movie icon being different than the plurality
of icons and being different than visual and textual
representations of the viewer selected video-on-demand
presentation title prior to the viewer input.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Florin US 5,594,509 Jan. 14, 1997
Johnston US 5,598,524 Jan. 28, 1997
LaJoie US 5,850,218 Dec. 15, 1998
Schein US 6,075,575 Jun. 13, 2000
Schindler US 6,359,636 B1 Mar. 19, 2002
Ellis US 2004/0117831 A1 Jun. 17, 2004
(filed Jun. 06, 2003)

Claims 1, 2, 4-7, 9, 10, and 21-31 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Schein, Ellis, LaJoie, Florin, Schindler
and Johnston.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
concluding that Schein in view of Ellis, LaJoie, Florin, Schindler and
Johnston would have suggested “providing proximally in location to the first
Appeal 2009-014728
Application 10/778,494

4
list an option to browse the first list based on one of a plurality of different
categories,” “providing a plurality of functional lists including a shopping
list, a reminder list, and a favorites list, each of the functional lists
identifying by title a corresponding plurality of video-on-demand
presentation titles selectable from the first list of selectable video-on-
demand presentation tittles,” “providing a plurality of icons, each icon
corresponding to a one of the plurality of functional lists” and “displaying
the plurality of icons simultaneously with the first list” (claim 1; emphasis
added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Schein
1. Schein discloses a local controller that includes a vertical scroll
mechanism for scrolling vertically through a column of items on the
television screen (col. 2, ll. 24-26), wherein a viewer can order video on
demand with a remote control device 2 by opening up the program’s
InfoMenu 130, thumb scrolling down the “order videos” items, and clicking
on cylinder 24 to be presented with a scrollable matrix or menu of movies or
other programs that may be ordered (col. 13, ll. 21-27; Figs. 10A and 11A-
11E).
2. An Item InfoMenu 130 is opened and the viewer can designate
a program as a favorite by scrolling down to section (4) to select “Put this
program on my favorite list” (col. 12, ll. 33-42; Fig. 9A-9F) or create a
Appeal 2009-014728
Application 10/778,494

5
program reminder by scrolling down to item (5) “Reminding when the
program airs” (col. 13, ll. 4-20; Figs. 10A-10D).
LaJoie
3. LaJoie discloses an interactive program guide within the set-top
terminal that allows the user to navigate through the abundance of programs
and services available in the cable television system, wherein, in the theme
mode, program information are displayed on programs which were, are, or
will be available for viewing based on a user selected category (col. 6, ll. 14-
46; Fig. 20).
4. Within general settings menu 224, the user may control settings
such as blocked channels 228, favorite channels 230, VCR timers 232, IPPV
purchases 234, sleep timer 236, and wake timers 238 (col 20, ll. 9-29; Fig.
10).
Ellis
5. Ellis discloses a system for providing an interactive television
program guide which may provide programming features such as television
program listings for movies, video-on-demand listings for movies, pay-per-
view listing for movies, and the like (Abstract).
6. The user may select Search option 132E which allows the user
to search the complete database of movies based on selected criteria, such as
the movie title, the move genre, and the like (p. 10, ¶ [0135]; Fig. 12).
7. The user may select My Schedule option 106N wherein screen
280 displays a list 281 of all programs that are scheduled for further viewing
and recording, and wherein these programs may be scheduled for reminders
(p. 12, ¶ [0150]; Fig. 20).
Appeal 2009-014728
Application 10/778,494

6
8. If the user selects Favorite option 132N, screen 320 provides
list 321 of a number of categories in which the user can choose favorites and
a number of items within each category that the user can rate individually (p.
13, ¶ [0156]; Fig. 24).
Schindler
9. Schindler discloses an interface with a standard television like
schedule (Fig. 13), wherein several icons are tied to functions controlled by
the system such as a record icon 1320, a remind icon 1322 and a buy icon
1324 (col. 18, ll. 10-15).

IV. ANALYSIS
As for independent claim 1, Appellants contend that “the plain
language of claim 1 requires the favorites list to identify titles selectable
from the first list of VoD titles” whereas “there is no connection Schein
between the favorites list discussed in connection with FIGs. 9E-9F and the
menu of programs for order discussed in connection with FIGs. 11A-11E –
the alleged ‘first list’” (App. Br 6). Appellants then contend that “LaJoie
depict[s] an interactive program guide, not a list of video-on-demand titles”
(App. Br. 7); that “[t]he icons in Fig. 13 of Schindler correspond to actions
rather than lists”; that “[a] grid of program cells [of Schindler] is not the
same as a ‘list of selectable video-on-demand presentation titles’” (App. Br.
8); and that “[t]he differences between claim 1 and the proposed are large
enough to be nonobvious” wherein there is “[n]o prima facie case of
motivation to combine” the references (App. Br. 8-11).
However, the Examiner finds that Schein discloses “providing a list of
VOD titles, of which the user can select particular titles, which is ‘presented
Appeal 2009-014728
Application 10/778,494

7
with an easily scrollable matrix or menu (not shown)’” (Ans. 11). In
particular, the Examiner finds that “as shown in fig. 11E, the movie
‘Legends of the Fall’ has been selected for ordering from the VOD list” and
“Schein provides the option to ‘go to your list of purchases’” (id). The
Examiner notes that “the title ‘Legends of the Fall’ is referred to as a VOD
program” (id.). Further, the Examiner finds that the secondary references to
Ellis and LaJoie “clearly disclose selecting titles from a VOD list and adding
those titles to a ‘reminder’ list and to a ‘shopping’ list” (id.).
The Examiner further finds that “the teaching of LaJoie to browse a
list of titles from a program list by category is applicable to the list of VOD
titles as taught by Schein in that a list of VOD titles are simply program
titles that are available for purchase” (Ans. 12) and that “Schindler does
describe the ability to drag and drop programs from the list of programs …
to icons to perform the corresponding functionality” (Ans. 13). The
Examiner then concludes that “one of ordinary skill in the art would be
motivated to combine” the teachings (Ans. 14-17).
Though Appellants argue that “there is no connection Schein between
the favorites list discussed in connection with FIGs. 9E-9F and the menu of
programs for order discussed in connection with FIGs. 11A-11E” (App. Br
6), that “LaJoie depict an interactive program guide, not a list of video-on-
demand titles” (App. Br. 7), that “[t]he icons in Fig. 13 of Schindler
correspond to actions rather than lists,” and that “[a] grid of program cells
[of Schindler] is not the same as a ‘list of selectable video-on-demand
presentation titles’” (App. Br. 8), Appellants appear to be arguing that
Schein, LaJoie, and Schindler individually do not anticipate the claimed
invention. However, the Examiner rejects the claims as obvious over the
Appeal 2009-014728
Application 10/778,494

8
combined teachings of the references. The test for obviousness is not what
each reference shows but what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
To determine whether Schein in view of Ellis, LaJoie, Florin,
Schindler and Johnston would have suggested “providing proximally in
location to the first list an option to browse the first list based on one of a
plurality of different categories,” “providing a plurality of functional lists
including a shopping list, a reminder list, and a favorites list, each of the
functional lists identifying by title a corresponding plurality of video-on-
demand presentation titles selectable from the first list of selectable video-
on-demand presentation tittles,” “providing a plurality of icons, each icon
corresponding to a one of the plurality of functional lists” and “displaying
the plurality of icons simultaneously with the first list” as recited in claim 1,
we first give the claim its broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
However, we will not read limitations from the Specification into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Schein discloses scrolling through a column of items on the television
screen to order video-on-demand (FF 1), wherein the viewer can scroll down
“order videos” items, designate a program as a favorite or create a program
reminder (FF 2). We find Schein’s list of “order videos” items to be a
shopping list comprising titles selected by the user, find Schein’s list of
reminders to be a reminder list comprising titles that are not yet available,
and find Schein’s list of favorites as a favorites list. Thus, we find Schein to
disclose providing a list of selectable video-on-demand presentation titles,
Appeal 2009-014728
Application 10/778,494

9
and providing a plurality of functional lists including a shopping list, a
reminder list and a favorites list.
Furthermore, LaJoie discloses an interactive program guide that
allows the user to navigate through the abundance of programs and services,
wherein, in the theme mode, program information are displayed on programs
which were, are, or will be available for viewing based on a user selected
category (FF 3) and the user may control settings such favorite channels and
purchases (FF 4). We find LaJoie to disclose providing proximally in
location to a list of selectable titles an option to browse the list based on one
of a plurality of different categories. We also find LaJoie’s list of favorite
channels to be a favorites list, find the list of purchases to be a shopping list
comprising titles selected by a user and, thus, find LaJoie to also disclose
providing a plurality of functional lists including a shopping list and a
favorites list.
In addition, Ellis discloses providing video-on-demand listings for
movies (FF 5), wherein the user may search the complete database of movies
based on selected criteria (FF 6), a list is displayed of all programs that are
scheduled for further viewing and recording, programs may be scheduled for
reminders (FF 7), and a list of a number of categories is provided in which
the user can choose favorites from the listings (FF 8). We find Ellis to also
disclose providing a list of selectable video-on-demand and providing an
option to browse the list based on criteria/categories. We also find Ellis’ list
of programs scheduled for reminders to comprise a reminder list of titles
from the selectable list of titles that are not yet available, Ellis’ list of
programs scheduled for further viewing and recording to comprise a
shopping list of titles from the selectable list of titles selected by a user as
Appeal 2009-014728
Application 10/778,494

10
candidates for future purchases, and Ellis’ list of favorites chosen by the user
from the selectable list of titles to be a favorites list. Thus, we find Ellis to
also disclose providing a plurality of functional lists including a shopping
list, a reminder list and a favorites list, each identifying by title
corresponding titles selected from the list of selectable titles.
Accordingly, we find no error in the Examiner’s conclusion that
Schein in view of Ellis and LaJoie would at least have suggested “providing
proximally in location to the first list an option to browse the first list based
on one of a plurality of different categories” and “providing a plurality of
functional lists including a shopping list, a reminder list, and a favorites list,
each of the functional lists identifying by title a corresponding plurality of
video-on-demand presentation titles selectable from the first list of selectable
video-on-demand presentation tittles” as required by claim 1.
Lastly, Schindler discloses icons tied to functions controlled by the
system such as a record icon, a remind icon and a buy icon (FF 9). We find
Schindler to disclose providing a plurality of icons, each icon corresponding
to one of a plurality of functional lists and displaying the plurality of icons.
We also find no error in the Examiner’s conclusion that Schein in view of
Ellis, LaJoie and Schindler would at least have suggested “providing a
plurality of icons, each icon corresponding to a one of the plurality of
functional lists” and “displaying the plurality of icons simultaneously with
the first list” as required by claim 1.
Although Appellants also argue that there is “[n]o prima facie case of
motivation to combine” the references (App. Br. 8-11), the Supreme Court
has determined that the conclusion of obviousness can be based on the
interrelated teachings of multiple patents, the effects of demands known to
Appeal 2009-014728
Application 10/778,494

11
the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As stated by the Supreme
Court, an obviousness “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.” KSR, 550 U.S. at 418. See also Dystar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006).
All of the references are directed to the same field of endeavor of title
selections. We conclude that such combination of Schein, Ellis, LaJoie,
Florin, Schindler and Johnston is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement.
Id. The skilled artisan would “be able to fit the teachings of multiple patents
together like pieces of a puzzle” since the skilled artisan is “a person of
ordinary creativity, not an automaton.” Id. at 420-21.
As discussed above, we find that Schein discloses providing a list of
selectable video-on-demand presentation titles (FF 1-2). Further, LaJoie
discloses providing proximally in location to a list of selectable titles an
option to browse the list based on one of a plurality of different categories
(FF 3-4). The Supreme Court has clearly stated, the “combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 401. This
reasoning is applicable here. We find the skill artisan would have found it
obvious upon reading LaJoie to add the option to browse a list of titles based
Appeal 2009-014728
Application 10/778,494

12
on one of a plurality of different categories to the list of selectable video-on-
demand of Schein.
Furthermore, we find that Schein already discloses providing a
plurality of functional lists including a shopping list, a reminder list and a
favorites list (FF 1-2). Further, LaJoie also discloses providing a plurality of
functional lists including a shopping list of purchases by the user and a
favorites list (FF 3-4). Similarly, Ellis also discloses providing a plurality of
functional lists including a shopping list, a reminder list and a favorites list,
each identifying by title corresponding titles selected from the list of
selectable titles. (FF 5-8). Thus, the skilled artisan would have found it
obvious upon reading LaJoie and Ellis to provide functional lists identifying
by title a corresponding presentation titles selectable from a selectable list as
the shopping list, reminder list, and favorites list of Schein.
Lastly, we find Schindler to disclose providing a plurality of icons,
each icon corresponding to one of a plurality of functions, such as remind
and shop/buy, and displaying the plurality of icons (FF 9). The skilled
artisan would have found it obvious upon reading Schindler to provide a
plurality of icons corresponding to reminder and shopping/buying
(functional) lists, of Schein in view of LaJoie and Ellis. Further, since
Schindler discloses displaying the icons, the artisan would have found it
obvious to display the icons simultaneously with the selectable list of the
combined teachings.
Accordingly, we find that the Examiner did not err in rejecting
independent claim 1 over Schein, Ellis, LaJoie, Florin, Schindler and
Johnston.
Appeal 2009-014728
Application 10/778,494

13
As for independent claims 6 and 27, Appellants merely repeat that the
favorites list of Schein “is not the same as a functional list” (App. Br. 12 and
17); that LaJoie depicts “an interactive program guide, not a list of video-on-
demand” (App. Br. 12-13); “[a] grid of program cells [of Schindler] is not
the same as a ‘list of selectable video-on-demand presentation titles’” (App.
Br. 13 and 18); and that “[t]he differences between claim [6 or 27] and the
proposed are large enough to be nonobvious” wherein there is “[n]o prima
facie case of motivation to combine” the references (App. Br. 14-17 and 18-
20).
Appellants appear to be repeating the argument that Schein, LaJoie,
and Schindler individually do not anticipate the claimed invention when the
Examiner rejects the claims as obvious over the combined teachings of the
references. As discussed above with respect to claim 1 which recites similar
features, we conclude that Schein in view of Ellis, LaJoie, Florin, Schindler
and Johnston would have suggested the recited features. Further, as
discussed above, we find that one of ordinary skill in the art would have
found it obvious to combine Schein, Ellis, LaJoie, Florin, Schindler and
Johnston from the same field of endeavor, since such combination is no
more than a simple arrangement of old elements with each performing the
same function it had been known to perform, yielding no more than one
would expect from such an arrangement.
Accordingly, we find that the Examiner also did not err in rejecting
independent claims 6, and 27 over Schein, Ellis, LaJoie, Florin, Schindler
and Johnston. Appellants do not provide arguments for claims 2, 4, 5, 7, 9,
10, 21-26 and 28-31 separate from those of claims 1, 6, and 27 from which
Appeal 2009-014728
Application 10/778,494

14
they respectively depend. Accordingly, claims 2, 4, 5, 7, 9, 10, 21-26 and
28-31 fall with claims 1, 6 and 27.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1, 2, 4-7, 9, 10, and 21-31 under
35 U.S.C. § 103(a) 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

peb