Ex Parte True

Board of Patent Appeals and Interferences

Jun 15, 2012

10468558 (B.P.A.I. Jun. 15, 2012)

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.
10/468,558 08/21/2003 Steven Ray True PU010045 4623
7590 06/15/2012
Joseph S Tripoli
Thomson Multimedia Licensing Inc
P O Box 5312
Princeton, NJ 08543-5312
EXAMINER
INGVOLDSTAD, BENNETT
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
06/15/2012 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 STEPHEN RAY TRUE
____________________

Appeal 2009-011211
Application 10/468,558
Technology Center 2400
____________________

Before: ST. JOHN COURTENAY III, ANDREW DILLON, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The invention on appeal is directed to the field of program guide data
for video systems. (Spec. 1). More particularly, Appellant’s invention is
directed to processing and displaying program information in an electronic
program guide:
so that video programs having the same title and representing
different episodes of a particular program are simultaneously
displayed and may be distinguished by the corresponding program
descriptions without the user selecting any of the video programs in
the list.
(Claim 1).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for assisting a user in selecting a video
program comprising:

periodically receiving and storing electronic program
guide information which includes titles and program
descriptions for upcoming programs; and

enabling display of a list of video programs in a format
which includes titles and corresponding program descriptions,
so that video programs having the same title and representing
different episodes of a particular program are simultaneously
displayed and may be distinguished by the corresponding
program descriptions without the user selecting any of the
video programs in the list.

(disputed limitations emphasized).
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REJECTION
Claims 1-10 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Finseth (US Pat. App. Pub. No:
2004/0158857, Aug. 12, 2004, effectively filed Mar. 24, 2000) and Hanafee
(US Pat. 6,342,926 B1, Jan. 29, 2002).

GROUPING OF CLAIMS
Based on Appellant’s arguments (App. Br. 3-7), we decide the appeal
on the basis of representative claims 1 and 6. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE

Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or
suggested the following disputed limitation:

enabling display of a list of video programs in a
format which includes titles and corresponding
program descriptions, so that video programs
having the same title and representing different
episodes of a particular program are
simultaneously displayed and may be distinguished
by the corresponding program descriptions
without the user selecting any of the video
programs in the list,

within the meaning of independent claim 1, and the
commensurate limitation recited in independent claim 6 ?

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ANALYSIS
Representative Claims 1 and 6
Appellant contends that the combination of Finseth and Hanafee does
not teach or suggest the aforementioned disputed limitation (see Issue
statement supra ). (App. Br. 3-4).
Based upon our review of the record, we find Appellant’s arguments
urging patentability are predicated on non-functional descriptive material
(i.e., a particular screen display seen by a viewer). (Id.). In particular, the
features in Appellant’s claims that are directed to
display of a list of video programs in a format
which includes titles and corresponding program
descriptions, so that video programs having the
same title and representing different episodes of a
particular program are simultaneously displayed
and may be distinguished by the corresponding
program descriptions without the user selecting
any of the video programs in the list, [claim 1]

are “useful and intelligible only to the human mind.” See In re Lowry, 32
F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395,
1399 (CCPA 1969)) (distinguishing such claim limitations from claim
limitations defining functional characteristics).1

1 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP, 8th edition (revised Aug. 2006), § 2106.01.)

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The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See Lowry, 32 F.3d at
1583 (“Lowry does not claim merely the information content of a memory
. . . Nor does he seek to patent the content of information resident in a
database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
Here, the informational content of the claimed formatted display of a
list of video programs represents nonfunctional descriptive material that is
entitled to no weight in the patentability analysis.
Even if we arguendo accorded patentable weight to the disputed
formatted display of a list of video programs, we find the evidence supports
the Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness . In particular, we agree with the Examiner that at least
Finseth’s Fig. 14 and Hanafee’s Fig. 9, when combined, would have taught
or suggested “a list of video programs in a format which includes titles and
corresponding program descriptions, so that video programs having the
same title and representing different episodes of a particular program are
simultaneously displayed and may be distinguished by the corresponding
program descriptions without the user selecting any of the video programs
in the list,” within the meaning of claim 1.
Regarding Appellant’s additional contention that the Examiner has
relied on impermissible hindsight in formulating the rejection (App. Br. 4),
we are fully cognizant of the hindsight bias that often plagues determinations
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of obviousness. See Graham v. John Deere Co., 383 U.S. 1, 36 (1966).
However, we are also mindful that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results,” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1739 (2007). Supreme Court precedent guides our review:
Invention or discovery is the requirement which
constitutes the foundation of the right to obtain a
patent . . . unless more ingenuity and skill were
required in making or applying the said
improvement than are possessed by an ordinary
mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which
constitute the essential elements of every
invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Regarding Appellant’s additional contention that the Examiner’s
proffered combination does not recognize the same problem addressed by
the invention on appeal (App. Br. 4), our reviewing court guides that “[a]s
long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references
be combined for the reasons contemplated by the inventor.” In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992).
Notwithstanding Appellant’s arguments, we are of the view that
Appellant’s claimed invention merely arranges prior art elements with each
element performing the same function it had been known to perform and
yields no more than one would expect from such an arrangement. Our
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reviewing courts guide that such a combination of familiar elements is
obvious. See KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976)). Appellant has not filed a Reply Brief rebutting the
Examiner's response to Appellant’s contentions in the Appeal Brief.
For these reasons, we are not persuaded by Appellant’s arguments that
the Examiner erred. On this record, we find the weight of the evidence
supports the Examiner’s ultimate legal conclusion of obviousness.
Therefore, we sustain the Examiner’s rejection of representative claim 1, and
also representative claim 6 which recites commensurate limitations.
Dependent claims 2-5, and 7-10 (not argued separately) fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s §103 rejection of claims 1-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
ORDER
AFFIRMED

Vsh