Ex Parte Soundararajan

Board of Patent Appeals and Interferences

Aug 19, 2008

10043378 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARAVIND SOUNDARARAJAN
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Appeal 2008-0604
Application 10/043,3781
Technology Center 2600
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Decided: August 19, 2008
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Before MAHSHID D. SAADAT, MARC S. HOFF,
and KEVIN TURNER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Application filed October 26, 2001. The real party in interest is
Koninklijke Philips Electronics N.V..
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Appellant’s invention relates to a system and method for
automatically determining and applying viewer television channel
preferences (Spec. 7). An evaluation program analyzes data concerning
what channels were watched and for what duration, and assigns a weight
value to the channels viewed, based on how much time the viewer spent on
this channel relative to others (Spec. 7). In one embodiment, the most
heavily weighted channels appear first, at the ‘top’ of the electronic program
guide (EPG) whenever it is displayed (Spec. 8).
Claims 1 and 12 are exemplary:
1. In a television system capable of selectively displaying program
input from a plurality of programming channels, a system for enhanced
programming channel-selection control, said system comprising:

a selector for selecting the programming input to process for display;

a timer for timing the amount of time each channel is selected for
display;

a database for recording channel-selection durations;

a processor in communication with the database for periodically
compiling a program selection control list, wherein the program selection
control list includes channels selected and assigned weight values relative to
other listed channels, said weighted values calculated according to a pre-
determined algorithm from the channel-selection durations stored on the
database.

12. A method for enhancing channel selection in a television system
capable of displaying a program selected from a plurality of available
program channels, said method comprising:

maintaining a viewing-history record of the amount of time each
displayed program channel is displayed by the television system;
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ranking each displayed channel relative to the other displayed
channels according to the display time in the viewing-history record; and

creating a program selection control list for one of a plurality of
viewers based on the displayed channel ranking.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bates US 6,721,953 B1 Apr. 13, 2004
Claims 1-8, 10, and 11 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Bates.
Claim 9 and 12-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates.
Appellant contends that Bates does not anticipate claim 1 because
Bates does not teach a database for recording channel-selection duration, nor
selecting and assigning weight values to channels calculated from the
channel-selection durations stored on the database (Br. 6, 7). Appellant
further contends that Bates does not render claim 12 obvious for the same
reasons articulated with respect to the anticipation rejection of claim 1,
supra, and contests the Examiner’s use of official notice that it would have
been obvious to extend the teachings of Bates to “a plurality of viewers” (Br.
9).
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief (filed May 2, 2007) and the Answer (mailed
June 12, 2007) for their respective details.

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ISSUE
The principal issue in the appeal before us is whether the Examiner
erred in holding that Bates teaches compiling a program selection control list
that includes channels selected and assigned weight values relative to other
listed channels, the weighted values calculated according to a pre-
determined algorithm from stored channel-selection durations, as recited in
claim 1.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, he has invented a system and method
for automatically determining and applying viewer television channel
preferences (Spec. 7).
2. An evaluation program analyzes data concerning what channels
were watched and for what duration, and assigns a weight value to the
channels viewed, based on how much time the viewer spent on this channel
relative to others (Spec. 7).
3. In one embodiment, the most heavily weighted channels appear
first, at the ‘top’ of the electronic program guide (EPG) whenever it is
displayed (Spec. 8).

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Bates
4. Bates teaches an apparatus, program product and method in
which the scroll rate used to scroll through the program information for
various television programs available to a television viewer is dynamically
adjusted, e.g., by slowing down the scroll rate to increase the visibility for
important program information and speeding up the scroll rate to decrease
the visibility of less important program information (col. 2, ll. 45-57).
5. Bates teaches that “it is determined whether … the channel
being viewed … was viewed for a sufficient period of time to signify a
program suitable for designation as a ‘favorite’ program” (col. 7, l. 64 – col.
8, l. 1). If the program is deemed a favorite, and is already in the favorite
program table, its ‘watched count’ is incremented by 1; if it is not yet in the
favorite program table, relevant program identification information is added
to the table, along with an initial watched count of 1 (col. 8, ll. 8-24).
6. Bates Figure 3 shows “a favorite programs table data structure
utilized by the set top box of FIG. 2” (col. 3, ll. 52-53; emphasis added). In
the examples illustrated in Figure 3, channel 006 is listed twice, because two
distinct programs that aired on channel 006 were added to the favorite
programs list.
7. Bates teaches that one may modify its embodiments such that
user viewing habits are based on a channel-by-channel basis, storing favorite
channels rather than individual programs (col. 13, ll. 34-36).

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PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
Claims 1, 4-8, 10, and 11
The Examiner argues that Bates teaches a database for recording
channel-selection durations, as recited in claim 1, citing Bates’ disclosure
that information which signifies that a program has been viewed an
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additional time in excess of the predetermined threshold is recorded (col. 8,
ll. 19-33) as meeting this limitation.
We disagree with the Examiner’s interpretation of Bates. Bates
makes clear that what is recorded is that a program was viewed (i.e.,
selected) longer than a threshold length of time, rather than the actual
duration that a channel was selected. Bates explains: “it is determined
whether … the channel being viewed … was viewed for a sufficient period
of time to signify a program suitable for designation as a ‘favorite’ program”
(FF 5). If the program is deemed a favorite, and is already in the favorite
program table, its ‘watched count’ is incremented by 1; if it is not yet in the
favorite program table, relevant program identification information is added
to the table, along with an initial watched count of 1 (FF 5). Because Bates
stores a count of the number of times a particular program was selected for
longer than a threshold duration, rather than storing the duration that a
channel was selected, we find that Bates does not meet the limitation of “a
database for recording channel-selection durations.”
The Examiner further argues that Bates teaches a program selection
control list including channels selected and assigned weight values relative
to other listed channels, as recited in claim 1. According to the Examiner, in
the process of determining whether a channel being viewed was viewed for a
sufficient period of time, “channels are ranked and weighted, and in the
process of ‘assigning channel weight values,’ channel-viewing time is a
criterion for consideration” (Ans. 12, referring to Bates col. 7, l. 61 – col. 8,
l. 33). The Examiner cites Figure 3, element 54 as illustrating that
[channels] are effectively ranked by watched count (id.).
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We disagree that Bates assigns weight values to channels. As
mentioned supra, Bates teaches monitoring whether a given program is
selected for viewing for longer than a threshold period of time, and once it
is, adding that program to a favorite programs list (or incrementing its
watched count) (FF 5). Figure 3 shows “a favorite programs table data
structure utilized by the set top box of FIG. 2” (FF 6). We observe that in
Bates’s examples illustrated in Figure 3, channel 006 is listed twice, because
two distinct programs that aired on channel 006 were added to the favorite
programs list (id.). Bates’ disclosure that his objective is to generate a
favorite programs table rather than a favorite channels table, combined with
his example in which a single channel is listed in multiple entries of such a
table, make it clear that what is weighted in Bates (by “Watched Count”) is
not channels, but programs.
We note that Bates teaches that one may modify its embodiments such
that user viewing habits are based on a channel-by-channel basis, storing
favorite channels rather than individual programs (FF 7), which the
Examiner cites as evidence that Bates teaches assigning weight values to
channels (Ans. 12). However, we do not agree that this modification would
result in Bates teaching the claimed invention. If one modified Bates in this
manner, Bates would then monitor a given channel to determine if it is
selected for longer than a threshold period; once it is, the channel would be
added to a favorite channels table. The various watched counts of the
favorite channels could be construed as weights, except that the final clause
of claim 1 recites that weighted values are “calculated according to a pre-
determined algorithm from the channel-selection durations stored on the
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database.” As explained supra, Bates (even as modified) does not teach
storing channel-selection durations; it merely increments a count when a
program (or as modified, a channel) is selected for longer than a threshold
duration. Even under the modification disclosed in column 13, then, Bates
would not teach every element of claim 1.
Because we find that Bates does not teach every element recited in
claim 1, we therefore find error in the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(e). Claims 4-8, 10, and 11, not argued separately, all
depend from claim 1 directly or indirectly; we therefore find error in the
rejection of claims 4-8, 10, and 11 as well.
Claims 2 and 3
Claims 2 and 3 depend from claim 1. Because we do not sustain the
rejection of claim 1, supra, we also do not sustain the rejection of claims 2
and 3, for the same reasons.2
Claim 9
Claim 9, dependent from claim 1, stands rejected as obvious over
Bates, with the Examiner taking Official Notice that it would have been
obvious to modify Bates to include the limitations recited in claim 9.
Because we find supra that Bates does not teach all the limitations of claim
1, we do not sustain the rejection of claim 9, for the same reasons.3

2 We need not reach Appellant’s separate arguments for the patentability of
claims 2 and 3, respectively.
3 We need not reach Appellant’s separate arguments for the patentability of
claim 9.
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Claims 12-19
Claims 12-19 stand rejected as obvious over Bates. The Examiner
addresses the limitation of “creating a program selection control list for one
of a plurality of viewers based on the displayed channel ranking” by holding
that because duplicating parts is obvious, it would have been obvious to
duplicate the user and/or system in Bates, in order to share the system with
other users (Ans. 8). As with claim 1, the Examiner argues that Bates
teaches “maintaining a viewing-history record of the amount of time each
displayed program channel is displayed by the television system” (Ans. 16),
referring Appellant to column 7 and Figure 3 of Bates.
We are not persuaded by the Examiner’s position. As explained
supra, we find that Bates does not teach maintaining a record of the amount
of time each displayed program channel is displayed, but merely maintains a
record (“watched count”) of the number of times a program is displayed for
longer than a threshold amount of time (FF 5). Bates is also concerned with
developing a favorite programs list, which necessarily contains data records
of favorite programs, rather than favorite channels. Finally, simply
duplicating the parts of Bates would not result in a system that is functional
for multiple users, because Bates contains no teaching that it can maintain
multiple favorites lists, one for each user, and no teaching of any mechanism
whereby a user might identify himself to the system of Bates such that the
system would know to assign program selection data to that user rather than
any other.
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We therefore, find error in the Examiner’s rejection of claim 12 under
35 U.S.C. § 103. Because claims 13-19 depend from claim 12, we also find
error in the Examiner’s rejection of claims 13-19, for the same reasons.

CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-19. On the record before us, claims 1-19 have not been
shown to be unpatentable.

DECISION
The Examiner’s rejection of claims 1-19 is reversed.

REVERSED

KIS

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P. O. BOX 3001
BRIARCLIFF MANOR, NY 10510