Ex Parte Sezan et al

Board of Patent Appeals and Interferences

Nov 8, 2010

09804612 (B.P.A.I. Nov. 8, 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.
09/804,612 03/12/2001 M. Ibrahim Sezan KLR 7146.115 3154
7590 11/09/2010
Kevin L. Russell
Suite 1600
601 SW Second Ave.
Portland, OR 97204-3157
EXAMINER
CHUONG, TRUC T
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
11/09/2010 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 IBRAHIM M. SEZAN, RICHARD QIAN, and
PETER J.L. VAN BEEK
____________

Appeal 2009-000771
Application 09/804,612
Technology Center 2100
____________

Before JAMES D. THOMAS, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-000771
Application 09/804,612

2
INTRODUCTION
Appellants request rehearing of our Decision (“Decision”), in which
we affirmed the rejection of claims 2-23 as being unpatentable over
Oosterhout and Yoshida and the rejection of claim 24 as being unpatentable
over Oosterhout, Yoshida, and Brown.

ANALYSIS
In their Request for Rehearing, Appellants allege that (1) “the
decision on appeal failed to respond to several of the App[ellants] arguments
of record, and in doing so failed to articulate a cogent explanation of
obviousness that is required to support a rejection under 35 U.S.C. § 103(a)”
(Req. 4); (2) the Examiner’s response is “an improper ‘bait and switch’
because [] what the Examiner contends is preference data as taught by
Oosterhout is completely different than the preference data as allegedly
taught by Yoshida” (Req. 7); (3) “any obviousness rejection needs an
explanation as to why that combination would be obvious, and neither the
Examiner nor the Board has provided that explanation” (Req. 7); (4) “[t]here
is no support in the specification for reading of the App[ellants’] claimed
‘user description scheme’ and its ‘user preference data indicative of
expected content preferences’ on a parental lock feature that blocks content
absent manual entry of a password so as to prevent others from watching
predefined content” (Req. 10.); and (5) “the Board has improperly construed
the term ‘without user input’ by depriving that term of any meaning,
essentially reading it out of the claim” (Req. 13).

Appeal 2009-000771
Application 09/804,612

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Regarding (1), Appellants argue that “the limitation [i.e., user
preference data . . . indicative of expected content preferences] could not be
read upon either Yoshida alone, or in combination with Oosterhout. The
Board’s decision failed to address any of these issues.” (Req. 6.) We
disagree with Appellants.
Specifically, in our Decision, we address this limitation by finding
that both Yoshida and Oosterhout reasonably teach “expected content
preferences.” (Decision 6.) For example, we found that “[b]ecause the
parent’s password in Yoshida prevents access to inappropriate content,
expected content follows for a predetermined user. As such, . . . expected
content preferences reads on at least Yoshida’s parental control features. In
addition, Oosterhout discloses that a user can select a ‘theme.’” (Id.) In
other words, our Decision clearly illustrated that both cited references,
Yoshida and Oosterhout, suggest using “user preferences” and obtaining
“expected content” based on such preferences. Thus, Appellants’ argument
(1) is unpersuasive.

Regarding (2), Appellants argue that the Examiner has performed an
improper “bait and switch.” We view this contention as alleging “new
reasoning” (i.e., a new ground) in the Final Rejection, which was reiterated
in the Answer. If Appellants believed that the new reasoning changed the
basis of the rejection so as to make, in effect, a new ground of rejection, they
could have filed a timely petition under § 1.181 to reopen the prosecution of
the subject application. See MPEP § 1207.03 (IV)(8th ed., rev. 7, July 2008).
Whether a rejection on appeal constitutes a new ground of rejection is
reviewed by way of petition, not appeal.
Appeal 2009-000771
Application 09/804,612

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Regarding (3), Appellants contend that no explanation was provided
for the obviousness rejection (Req. 7). We disagree. For example, the
Examiner stated in the Answer that “[i]t would have been obvious to a
person of ordinary skill in the art at the time of the invention to use the
password setup of Yoshida in the television program of Oosterhout to
prevent children from accessing inappropriate scenes or channels.” (Ans. 5.)
The Examiner further found that “both Oosterhout and Yoshida are in the
same field of [] invention because they deal with television/video
programming.” (Ans. 13.)
Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”)(citations
omitted, emphasis added). This reasoning is applicable here.
In this case, the Examiner properly demonstrated that the combined
teachings would have suggested to those of ordinary skill in the art a
television programming system that could include a password setup as
taught in Yoshida. It is not necessary for the Examiner to explain how the
combination of references would operate. Thus, we find that Appellants
have not demonstrated any lack of explanation or an error in the Examiner’s
combination of the references to form the claimed invention.
Appeal 2009-000771
Application 09/804,612

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Regarding (4), Appellants contend that there is no support in
Appellants’ Specification for reading the claimed “user description scheme”
on Yoshida’s parental lock feature. We disagree.
In our Decision, we broadly but reasonably construed the claimed
“expected content” (which relates to the user description scheme) as
denoting any content that is believed to be provided (Decision 5). We
broadly but reasonably applied this construction because Appellants’
Specification does not provide an explicit definition for the claimed “user
description scheme,” but rather gives examples of what it may include. (See
Spec., 10-11.) Although giving claims their broadest reasonable
interpretation must take into account any definitions given in the
Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), it is
improper to read into the claims limitations from examples given in the
Specification. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989)(emphasis
added). Absent claim language carrying a narrow meaning, we only limit
the claim based on the specification when sources expressly disclaim the
broader definition. In re Bigio, 381 F.3d 1320, 1324-25 (Fed. Cir. 2004).
Here, there is no claim language, in claim 21, which carry any
narrowing definition for the recited “user description scheme” and the
Specification does not provide an explicit definition. All that is required in
the claim is that it contains “user preference data” for a predetermined user
and a descriptor for the predetermined user (see Claim 21). Yoshida
discloses a program lock feature for restricting data using a password known
only by the child’s parents. (Decision, FF 1a-1c.) In other words, Yoshida’s
program lock feature allows the user to restrict inappropriate video scenes
(i.e., preference data) by using a password related to a predetermined user.
Appeal 2009-000771
Application 09/804,612

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As such, Yoshida expects to receive content that is appropriate for children.
We also point out that the claimed “user” can be an individual, a resident, a
family, an organization, etc. There are no requirements attached to the
claimed “user” other than to have a descriptor. Here, Yoshida’s user, e.g., a
parent and child (e.g., a family), has a password (i.e., a descriptor).
Therefore, we find that Yoshida’s program lock feature is consistent with
many of Appellants’ “user description scheme” examples, such as the user’s
personal preferences (i.e., to avoid inappropriate content), filtering history
(i.e., password filtering out inappropriate content), device setting history
(i.e., use of a password). (See Spec. 10.) Specifically, Appellants’
Specification states that a user description scheme can be compared with the
program’s intended audience profile and a determination can be made on
whether it matches that of the user (Spec. 11:21-24). Thus, Appellants’ own
Specification considers intended audience appropriateness when selecting
programs for a user, which is similar to Yoshida’s parental lock features.
Therefore, we find that Appellants have not demonstrated that
Yoshida’s lock feature is inconsistent with Appellants’ Specification.

Regarding (5), Appellants contend that “the Board has improperly
construed the term ‘without user input’ by depriving that term of any
meaning, essentially reading it out of the claim” (Req. 13). We disagree.
Claim 21 recites, inter alia, “an electronic device selecting without
user input at least one of a video, . . .” In our Decision, we found that
Oosterhout’s next button allows the user to “see” the next result, while
Oosterhout’s microprocessor sub-program automatically “selects” the next
video from the EPG to perceptibly display based on the theme previously
Appeal 2009-000771
Application 09/804,612

7
selected by the user (Decision 7). In other words, it is the “selecting” of
video that claim 21 requires to be done “without user input.” Oosterhout’s
microprocessor sub-program performs this video selection function using
preferences previously inputted by the user (see Decision, FFs 2a-2b). As
conceded by Appellants, “the processor . . . by its nature always
automatically perform the final step of implementing some manual input”
(Req. 13). Therefore, we find that Appellants have not demonstrated that the
Board improperly construed the term “an electronic device selecting without
user input.”

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with
respect to making any changes to the Decision.
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).

REHEARING DENIED

rwk

Kevin L. Russell
Suite 1600
601 SW Second Ave.
Portland, OR 97204-3157