Ex Parte Rudolph

Patent Trial and Appeal Board

Jun 30, 2015

11961873 (P.T.A.B. Jun. 30, 2015)

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.
11/961,873 12/20/2007 Daniel L. Rudolph ES-1083 (290110.416) 7049
70336 7590 06/30/2015
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
06/30/2015 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 DANIEL L. RUDOLPH
____________

Appeal 2013-003552
Application 11/961,873
Technology Center 2400
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–4, 6–12, 14–19, and 21–23.
Claims 5, 13, and 20 have been canceled. (App. Br. 2.)1 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to Appellant’s Specification (“Spec.”) filed December 20, 2007;
Appeal Brief (“App. Br.”) filed August 7, 2012; and Reply Brief (“Reply
Br.”) filed January 7, 2013. We also refer to the Examiner’s Answer
(“Ans.”) mailed November 7, 2012, and Final Office Action (Final
Rejection) (“Final Act.”) mailed December 7, 2011.
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Application 11/961,873

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Appellant’s Invention
The invention at issue on appeal concerns receiving devices,
computer-readable media, and methods for presenting information about
available television or broadcast video programming by storing attributes,
including attributes of programs previously viewed on a viewing
(presentation) device and programs indicated to be of interest to a viewer of
the viewing device, and selecting future programs based on the attributes
and excluding previously viewed programs. The selected future programs
are then presented in a generated program guide to a viewer. (Spec. ¶¶ 1–3;
Abstract.)
Illustrative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A receiving device for presenting information about
available programming, comprising:
a memory;
an electronic program guide generator stored on the
memory that is configured, when executed, to:
store one or more attributes of a plurality of
broadcast video programs that have been viewed on a
presentation device;
identify one or more of the plurality of broadcast
video programs that have been viewed on the presentation
device during a first time period;
identify one or more programs of interest selected
for recording and store one or more attributes of the one or
more programs of interest that have been selected for recording;
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Application 11/961,873

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select one or more future programs to be
broadcast, each program of the one or more future programs
scheduled for broadcast during the first time period, and the
selection being made based on determining whether the one or
more future programs to be broadcast, other than one of the
identified one or more broadcast video programs that have
been viewed on the presentation device, has at least one
attribute that is the same as one of the stored attributes of one
of the identified one or more broadcast video programs that
have been viewed on the presentation device during the first
time period and determining whether the one or more future
programs to be broadcast has at least one attribute that is the
same as one of the stored attributes of one of the identified one
or more programs of interest that have been selected for
recording; and
in response to a received user input, provide
electronic program guide information for the first time period
on the presentation device, the electronic program guide
including scheduling information for the selected one or more
future programs for the first time period.
Rejection on Appeal
The Examiner rejects claims 1–4, 6–12, 14–19, and 21–23 under
35 U.S.C. § 103(a) as being unpatentable over Maissel (US 6,637,029 B1,
issued Oct. 21, 2003) and Ozer (US 2004/0203639 A1, published Oct. 14,
2004).

ISSUE
Based upon our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that Maissel and Ozer
collectively would have taught or suggested:
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an electronic program guide generator stored on the
memory that is configured, when executed, to:
. . .
select one or more future programs to be broadcast, . . .
the selection being made based on determining whether the one
or more future programs to be broadcast, other than one of the
identified one or more broadcast video programs that have
been viewed on the presentation device, has at least one
attribute that is the same as one of the stored attributes of one of
the identified one or more broadcast video programs that have
been viewed on the presentation device . . . and . . . at least one
attribute that is the same as one of the stored attributes of one of
the identified one or more programs of interest that have been
selected for recording
(Claim 1 (emphasis added)) within the meaning of Appellant’s claim 1 and
the commensurate limitations of claims 6 and 15?

ANALYSIS
The Examiner rejects independent claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over Maissel and Ozer. (Final Act. 3–6; Ans. 4–10.)
Appellant contends that Maissel and Ozer do not teach the features of
representative claim 1. (App. Br. 6–9; Reply Br. 7–11.) Specifically,
Appellant contends, inter alia, that Maissel and Ozer do not teach an
electronic program guide generator configured to select one or more future
video programs to be broadcast which excludes from the group of future
video programs identified previously viewed broadcast video programs.
(App. Br. 7–9; Reply Br. 7–11.)
We agree with Appellant that the combination of Maissel and Ozer
“does not exclude programs that have already been viewed from being in its
pool of programs from which to choose for inclusion on the electronic
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program guide” (App. Br. 8). Although both Maissel (see col. 12, ll. 35–41)
and Ozer (see ¶ 60) describe using previously viewed program information
in programming selection criteria, neither reference explicitly describes
excluding previously viewed programs from the group of future video
programs to be selected for display in an electronic program guide. Further,
the Examiner presents conflicting claim interpretations and reasoning
alternately include and omit this limitation from the claims. (See Final Act.
3–6; Ans. 4–10.) While the Examiner is correct that Appellant’s
Specification does not explicitly discuss excluding the selection of
previously viewed programs (Ans. 5–8), as pointed out by Appellant (Reply
Br. 9–10), it is improper to import (or omit) limitations from the
Specification.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding that Maissel and Ozer teach the recited
features of Appellant’s claim 1. Appellants’ independent claims 6 and 15
include limitations of commensurate scope. Appellant’s dependent claims
2–4, 7–12, 14, 16–19, and 21–23 depend from and stand with their
respective base claims. Accordingly, we reverse the Examiner’s
obviousness rejection of claims 1–4, 6–12, 14–19, and 21–23.

CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–4,
6–12, 14–19, and 21–23 under 35 U.S.C. § 103(a).
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Application 11/961,873

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DECISION
We reverse the Examiner’s rejection of claims 1–4, 6–12, 14–19, and
21–23.

REVERSED

msc