Ex Parte Storz

Board of Patent Appeals and Interferences

Nov 30, 2011

09330856 (B.P.A.I. Nov. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ACHIM STORZ
_____________

Appeal 2009-011517
Application 09/330,856
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

App
App

claim

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f

Appeal 2009-011517
Application 09/330,856

3
forward by an entire page, and the next program entry is highlighted (Spec.
6:25-28).
Claim 24, reproduced below, is representative of the subject matter on
appeal:
24. A method for navigating in an electronic broadcast channel
periodical, comprising the steps of:
displaying a page of the electronic broadcast channel periodical
having a list of chronologically presented program entries, each program
entry being displayed in a respective one of a plurality of sequential entry
positions;
determining activation of a cursor control key in a direction along the
sequential entry positions;
in response to the activation, highlighting a chronologically next
program entry of said list in said direction;
determining subsequent activation of said cursor control key in said
direction; and
in response to the subsequent activation, if the highlighted
chronologically next program entry highlighted before the subsequent
activation is located at a first program entry position or a last program entry
position in said sequential entry positions of said list, generating and
displaying a new page having a new list of chronologically presented
program entries by moving to said new list said first program entry or said
last program entry of the previous page to a last program entry position or to
a first program entry position of said new list with the new chronologically
presented program entries listed in chronological order there before or there
under, respectively.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Templeman US 5,845,303 Dec. 1, 1998
Schein US 6,075,575 Jun. 13, 2000
Appeal 2009-011517
Application 09/330,856

4
Satterfield US 6,564,378 B1 May 13, 2003
The following rejection is before us for review:
The Examiner rejected claims 24 to 42 under 35 U.S.C. § 103(a) as
being unpatentable over Schein in view of Templeman, and further in view
of Satterfield.

ISSUES
1. Did the Examiner err in determining that under 35 U.S.C. § 103(a)
the combination of Schein in view of Templeman, and further in view of
Satterfield, would have taught the limitation of:
in response to the subsequent activation, if the
highlighted chronologically next program entry highlighted
before the subsequent activation is located at a first program
entry position or a last program entry position . . . generating
and displaying a new page having a new list . . . by moving to
said new list said first program entry or said last program entry
of the previous page to a last program entry position or to a first
program entry position of said new list . . . respectively
as recited in claim 24 (emphases added) and similarly recited in claim 33?
2. Did the Examiner err in using impermissible hindsight in
determining that under 35 U.S.C. § 103(a) the combination of Schein in
view of Templeman, and further in view of Satterfield, was obvious in the
rejection of claim 24?

PRINCIPLE OF LAW
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill in the
art at the time the claimed invention was made and does not include
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Application 09/330,856

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knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).

ANALYSIS
Appellant argues (App. Br. 4-5) that the combination of Schein,
Templeman, and Satterfield would not have taught the limitation of:
in response to the subsequent activation, if the
highlighted chronologically next program entry highlighted
before the subsequent activation is located at a first program
entry position or a last program entry position . . . generating
and displaying a new page having a new list . . . by moving to
said new list said first program entry or said last program entry
of the previous page to a last program entry position or to a first
program entry position of said new list . . . respectively
as recited in claim 24 (emphases added) and similarly recited in claim 33.
Appellant argues (App. Br. 4) that the combination of Schein,
Templeman, and Satterfield does not teach the above limitation because
Satterfield discloses “generating a new page in an on-screen program guide
when the page up or page down key is pressed regardless of which program
entry is highlighted at the time the page up or page down is pressed.”
Appellant argues (App. Br. 5) that “the methods defined by independent
claims 24 and 33 are clearly dependent on the position of the highlighted
program entry.”
We are not persuaded by Appellant’s arguments. The Examiner
reasons (Ans. 13), and we agree, that the features upon which Appellant
relies (i.e., “dependent on the position of the highlighted program entry”) are
not recited in the claim.
The Examiner reasons (Ans. 14), and we agree, that Satterfield
teaches the limitation at issue because Satterfield will perform the limitation
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steps when “the highlighted chronologically next program entry highlighted
before the subsequent activation is located at a first program entry position
or a last program entry position” (emphases added). Furthermore,
Appellant’s argument (App. Br. 4) that Satterfield will meet the limitation of
“generating and displaying a new page” even when the highlighted program
entry is not in the “first program entry position or a last program entry
position” is not relevant because the claim does not prohibit this. In other
words, Appellant’s argument is not commensurate in scope with the claim
language.
Appellant further argues (App. Br. 5-7; Reply Br. 2-7) that the
combination of Schein, Templeman, and Satterfield is improper because the
Examiner used impermissible hindsight to meet the limitations of claim 24.
Appellant contends (App. Br. 5) that the Examiner selectively relies on the
page up/page down function of Satterfield, and avoids relying on the
scrolling function. Appellant explains (id.) given that claim 24 refers to
navigation using a “cursor control key,” a person skilled in the art would be
more likely to modify Schein and Templeton with those teachings of
Satterfield relating to the use of its cursor keys 54 for the scrolling function,
instead of those teachings relating to the use of the page up and page down
keys 56 for the page up/page down function.
We are not persuaded by Appellant’s argument. The Examiner
reasons (Ans. 4-5, 16), and we agree, that the combination of Schein and
Templeman teaches a pagination method that paginates to a new page in
response to scrolling up/down beyond the boundaries of a page/screen. The
Examiner also reasons (Ans. 5-6) that Satterfield teaches a pagination (page
up/down) method where a new page of text is presented with an single entry
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overlap so that the last line of text of the previous page is located at the first
line of text of the new page. Therefore, one skilled in the art in seeking to
improve the pagination method of combination of Schein and Templeman
would look to the teachings of Satterfield related to pagination (page
up/down with single entry overlap) as opposed to Satterfield’s teaching
related to scrolling.
We also agree with the Examiner’s reasoning (Ans. 6) that
it would have been obvious to one in the ordinary skill in the art
to modify Schein in view of Templeman by implementing a
method of overlap between two adjacent text mode screens, as
taught by Satterfield, so to maintain contextual reference and
provide to user a friendly way to navigate through the EPG.
For these reasons, we find that the Examiner’s combination of Schein,
Templeman, and Satterfield was not based on improper hindsight. See
McLaughlin, 443 F.2d at 1395.
For these reasons we will sustain the Examiner’s rejection of claim 24
and of claim 33 that has similar limitations as claim 24. We will also sustain
the rejection of claims 25 to 32 and of claims 34 to 42 that depend from
claims 24 and 33, respectively, because no additional arguments of
patentability were presented with respect to these claims. See In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987).

CONCLUSIONS
1. The Examiner did not err in determining that under 35 U.S.C.
§ 103(a) the combination of Schein in view of Templeman, and further in
view of Satterfield would have taught the limitation of:
in response to the subsequent activation, if the
highlighted chronologically next program entry highlighted
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before the subsequent activation is located at a first program
entry position or a last program entry position . . . generating
and displaying a new page having a new list . . . by moving to
said new list said first program entry or said last program entry
of the previous page to a last program entry position or to a first
program entry position of said new list . . . respectively
as recited in claim 24 (emphasis added) and similarly recited in claim 33.
2. The Examiner did not err by using impermissible hindsight in
determining that under 35 U.S.C. § 103(a) the combination of Schein in
view of Templeman, and further in view of Satterfield, was obvious in the
rejection of claim 24.

ORDER
The decision of the Examiner to reject claims 24 to 42 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

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