Ex Parte SCHWAB et al

Board of Patent Appeals and Interferences

Sep 7, 2010

08822397 (B.P.A.I. Sep. 7, 2010)

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.
08/822,397 03/20/1997 BARRY H. SCHWAB VID-00203/29 6309
25006 7590 09/07/2010
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
BROWN, RUEBEN M
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/07/2010 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 BARRY H. SCHWAB and JOHN G. POSA
_____________

Appeal 2010-001886
Application 08/822,397
Technology Center 2400
______________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001886
Application 08/822,397

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 18 through 40.
We affirm in part.
INVENTION
The invention is directed to an apparatus for integration of plural
television signals. See page 2 of Appellants’ Specification. Claim 18 is
reproduced below:
18. A method of automatically changing from a first TV
program to an alternate TV program at a TV viewer location,
comprising the steps of:
entering, at the viewer location, information regarding a
viewing preference;
transmitting a TV program from a source to a viewer location;
receiving the TV program at the viewer location over a first TV
channel, the TV program including a pointer to an alternate TV
channel providing an alternate TV program with subject matter
directly related to the TV program; and
automatically switching the TV program to the alternate TV
program using the pointer and the information previously entered by
the viewer without requiring any additional viewer intervention at the
time of the switching.

REFERENCES
Vogel US 4,930,160 May 29, 1990
Abecassis US 5,664,046 Sep. 2, 1997

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Appeal 2010-001886
Application 08/822,397

REJECTIONS AT ISSUE
The Examiner has rejected claims 18 through 40 under 35 U.S.C.
§ 103(a) as being unpatentable over Vogel in view of Abecassis. The
Examiner’s rejection is on pages 4 through 10 of the Answer.2

ISSUES
Appellants argue on pages 3 through 7 of the Brief3 that the
Examiner’s rejection of claims 18 through 40 under 35 U.S.C. § 103(a) is in
error.
Appellants’ contentions with respect to claims 18 through 40 present
us with the issue: did the Examiner err in finding that the combination of the
references teaches a pointer in addition to viewer’s preference information to
switch to an alternate TV channel as claimed?
FINDINGS OF FACT
1. Vogel teaches a television system where classification codes can
cause the display to be switched to an alternate source. Abstract,
col. 3, ll. 46-67.
2. The alternate source of video can be a signal pattern generator to
provide electronic wall paper, from a remote source such as
another television broadcast or from a video disk/tape player.
Vogel, col. 6, ll. 25-45.

2 Throughout this decision we refer to the Examiner’s Answer dated July 20
2009.
3 Throughout this decision we refer to the Appeal Brief dated May 26, 2009
and Reply Brief dated September 21, 2009.
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Appeal 2010-001886
Application 08/822,397

ANALYSIS
Initially, we note that Appellants’ arguments address limitations in
independent claims 18, 26, and 34, but do not address the limitations of any
of the dependent claims. Accordingly, we will treat the claims in three
groups, with the independent claims as being representative of each group.
Claims 18 through 25
Appellants’ arguments have persuaded us that the Examiner erred in
finding that the combination of the references teaches a pointer to an
alternate TV channel as claimed. Claim 18 recites “the TV program
including a pointer to an alternative TV channel providing an alternate TV
program." Thus, the scope of claim 18 includes that the received TV
program includes a pointer that identifies the alternative TV channel of the
alternate television program.
The Examiner in rejecting this claim finds that Vogel teaches that a
classification code is included in the TV program, this code is extracted and
used to switch to receive alternative programming. Answer 5. Further, the
Examiner states that Vogel teaches that the alternative programming can be
electronic wall paper or from other sources such as another television
broadcast. Answer 11. Examiner concludes that Vogel selects a particular
video source signal in order to provide appropriate programming to a
recipient. Answer 12-13. Finally, the Examiner concludes that:
Vogel teaches that the microcomputer 6 generates an address from the
received classification codes, col. 4, lines 45-58 and applies it to the
table to determine switching to the alternate source, which reads on
the claimed ‘pointer '. Therefore, since Vogel provides a
classification code to the receiver, which the microcomputer 6 uses
for control in a channel-change procedure, to change the channel to a
particular channel, the classification code in Vogel reads on the
claimed ‘pointer.'
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Appeal 2010-001886
Application 08/822,397

Answer 13. We concur with these findings by the Examiner as they are
supported by the evidence (see Facts 1-2) with the exception that we do not
concur that these teachings meet the claimed pointer. As discussed above,
Appellants’ TV program includes a pointer that contains an identification of
the alternate television program. The Examiner has not shown that the
classification code which is included in the TV signal identifies an
alternative television program. Rather, the Examiner has shown that Vogel
teaches that alternative television program is determined from a table and
not a pointer. Accordingly, the Examiner has not shown that the
combination of the references teaches all of the limitations of independent
claim 18, so we do not sustain the Examiner’s rejection of claims 18 through
25.

Claims 26 through 40
Appellants’ arguments directed to the rejection of claims 26 through
40 under 35 U.S.C. § 103(a) relies on the same rationale as discussed with
respect to claim 18. However, the scope of independent claims 26 and 34
differs from independent claim 18. Independent claim 26 includes the
limitation directed to transmitting a TV program, “the program including
additional information for directing the channel selector to automatically
switch … to one or more secondary transmission carrying media.”
Independent claim 34 detects a channel change command and “automatically
select, on a different transmission medium, alternative program material.”
Thus, claims 26 and 34 are broader than claim 18 in that they do not require
that the TV program identifies the alternative TV channel. Claim 26 merely
recites that the TV channel includes “information” and claim 34 merely
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Appeal 2010-001886
Application 08/822,397

recites that an alternate medium is selected in response to a channel-change
command. As discussed above the Examiner has found that the
classification codes provide information to the receiver to change the
channel to an alternate source (channel). Thus, Appellants’ arguments
directed to Vogel not teaching a pointer have not persuaded us of error in the
Examiner’s rejection of claims 26 through 40 because neither claim 26 or
claim 34 recite a pointer.
Appellants’ further argument, on page 7 of the Brief that “Vogel
clearly teaches away from providing subject matter directly related to the TV
program, since the entire purpose of Vogel is to censor” is not persuasive.
We concur with the Examiner’s reasoning, on pages 14 and 15 of the
Answer that the skilled artisan would recognize that by the alternate media
including information related to the current program would maintain
continuity in the program.
Accordingly, we sustain the Examiner’s rejection of claims 26
through 40

CONCLUSION
Appellants have not persuaded us of error in the Examiner’s decision
rejecting claims 26 through 40. However, Appellants have persuaded us of
error in the Examiner’s decision rejecting claims 18 through 25.

ORDER
The Examiner’s decision rejecting claims 18 through 25 is reversed.
The Examiner’s decision rejecting claims 26-40 is affirmed.
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Appeal 2010-001886
Application 08/822,397

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 IN PART

ELD
GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
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