Ex Parte Upadhya

Board of Patent Appeals and Interferences

Oct 31, 2007

10122743 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BHARGAVI UPADHYA
____________

Appeal 2007-2347
Application 10/122,743
Technology Center 2100
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Decided: October 31, 2007
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Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Appeal 2007-2347
Application 10/122,743

A. INVENTION
Previous systems for reminding a user of an event, such as a television
broadcast, required a user to be present at a specified computer at the time
the reminder was due. (Spec. 1). In addition, the user needed to be logged
into the server while entering a reminder request. (Id.)
By contrast, the invention at issue involves a system for reminding a
person of an event, such as a television program broadcast, such that a
reminder message is sent from a television set to a server, then sent to
another device, such as the user’s telephone. The message is sent to the
other device at a specified time. (Id.) The television is capable of
connecting to the server and transferring a reminder request to the server
without the need for the user to be logged into the system at the time of
transfer. (Id.)

B. ILLUSTRATIVE CLAIM
Claim 11, which further illustrates the invention, follows.
11. A processor-readable medium embodying a program of
instructions, the program of instructions being loadable onto a
programmable device selected from a television and a hi-fi, to provide
it with functionality to remind a person of an event, wherein the
computer program of instructions causes execution of the steps
comprising:
entering a reminder message;
storing the entered reminder message at the television or the hi-
fi; and
automatically transferring the reminder message to a service
station.

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C. REJECTION AND OBJECTION
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Publication No. 2001/0049617 (“Berenson”)
and U.S. Patent Publication No. 2002/0026496 (“Boyer”). The Examiner
further objects to the Specification for formatting issues.

II. CLAIMS 1, 3, AND 6-13
“When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately.” 37 C.F.R.
§ 41.37(c)(1)(vii) (2005).1
Here, Appellant argues claims 1-13, which are subject to the same
ground of rejection, as a group. (App. Br. 12-18).2 We select claim 11 as
the sole claim on which to decide the appeal of the group, except for claims
2, 4, and 5, which we address infra.3

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.
2 Appeal Brief filed May 22, 2006.
3 Appellant improperly added new arguments for claims 2, 4, and 5 in the
Reply Brief filed August 25, 2006, purportedly in response to the
Examiner’s Answer (Jun. 26, 2006). The Answer, however, merely repeated
the rejection applied against claims 2, 4, and 5 from the Final Rejection
(May 16, 2005). However, we will consider the new arguments, even
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Application 10/122,743

"Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween." Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144,
at *2 (BPAI 2007). The Examiner indicates that claim 11 is obvious over
the combination of Berenson and Boyer. The Examiner states:
Berenson teaches a computer with television capability
receives and stores a reminder message from a user in a
personal calendar system (reminder message is stored locally)
such as Microsoft Outlook for automatically transferring to an
web based calendaring system (automatically transferring the
reminder message to the service station) to request sending the
reminder message of a personal event to calendar owner or to
others (Figure 3, pages 1-4, [0016], [0025-0026], [0040-0044],
and [0047]).

. . . .

Boyer teaches user can use a personal computer (figure 1,
multimedia system 28), an integrated personal computer and a
television (figure 1, multimedia system 30), or Internet capable
set-top-box and a television to order an e-mail reminder
message (figure 1, multimedia system 32; pages 2-3, [0035 –
0038, and 0042-0043]).

(Supp. Ans. 3-4).

Appellant argues that there would have been insufficient motivation
for one of ordinary skill in the art to combine Berenson and Boyer because
“neither reference suggests modifying a television to have a storage means,”
“neither of the cited references recognizes the … problems solved by
Appellant’s disclosure,” and “there is no suggestion of an advantage or
though not timely presented, because the Examiner addressed the arguments
in the Supplemental Answer (Nov. 13, 2006). Appellant filed the Second
Reply Brief (Jan. 16, 2007) as a response to the Supplemental Answer.
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benefit from the combination” (App. Br. 15-16). Appellant further argues
that Berenson and Boyer fail to teach storing a message in a television set
(Reply Br. 3) or a “means for automatically transferring [a] message to [a]
service station.” (Id. 4).
However, Berenson discloses a system in which a user accesses
television programming information on a device and requests a reminder
from a server for certain programs to be broadcast. User information is
stored in a user database that interacts with the web server and stores
notification requests and other information (paras. [0021], [0024], [0025]).
At an appropriate time, the reminder is sent to the user using any of a
number of methods (phone, e-mail, pager, etc.). (Paras. [0029], [0038]).
One type of such a reminder is an event message “where the system puts an
entry into the user’s electronic personal calendar system indicating the time
and location of the selected event. The personal calendar system holds the
event data so the user may view it in the context of an overall personal
schedule.” (Para. [0031]). Regarding the user device for requesting
reminders, Berenson discloses “activating an audio visual device such as a
television or a television receiver on a computer . . . .” (Para. [0047]).
Boyer discloses a similar method and system for providing a
requested reminder of an event, such as television program broadcast. As in
the Berenson system, Boyer discloses browsing program listings on a
device, requesting a reminder for a particular program, and receiving the
reminder at the device from a server at the time of broadcast (para. [0042]).
Boyer further discloses that the device is a computer, an integrated personal
computer and television (e.g., a PC-TV hybrid), or a television set with a set-
top box (paras. [0035] - [0038], Fig. 1).
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We disagree with Appellant’s contention that the combination of
Berenson and Boyer does not teach a television set storing a reminder.
Specifically, Berenson discloses an “audio visual device such as a television
or a television receiver on a computer” (para. [0047]) that contains a
personal calendar that holds or stores a reminder (para. [0031]). The
personal calendar on the device (television or television receiver on a
computer) stores the reminder and therefore contains storage for storing the
reminder. Hence, we agree with the Examiner that Berenson discloses this
feature of a television storing a reminder. Boyer provides further support for
this teaching by disclosing that the device is a hybrid TV-PC or a television
set with a set-top box.
We also disagree with Appellant’s contention that neither Berenson
nor Boyer discloses automatically transferring messages to a service station.
As aforementioned, Berenson, for example, discloses a user requesting a
reminder for a particular program by entering the event into a search request
query or by entering an event criteria request. After the user in the Berenson
system enters the request, the request is stored in the user database.
Berenson does not indicate that the user must perform specific tasks to
forward the request to the user database. Hence, the request is transferred to
the user database automatically such that after the information is input into
the system by the user, the information is automatically transferred to the
user database. (Para. [0027]). We, therefore, agree with the Examiner that
the combination of Berenson and Boyer provides for automatically
transferring a message.
Appellant further argues that there would have been no motivation to
combine the Berenson and Boyer references because “neither of the cited
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references recognizes the … problems solved by Appellant’s disclosure”
(App. Br. 15) and that “the prior art did not appreciate or recognize” the
problem being addressed by Appellant’s disclosure (id. 15-16). However,
problems motivating one of ordinary skill in the art to combine references
are not limited to problems being solved by the patentee. Specifically, any
problem known in the art at the time of the invention can provide a reason
for one of ordinary skill in the art to combine references. KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007).
It follows that Appellant failed to demonstrate that the Examiner erred
in rejecting claim 11 as being obvious over Berenson and Boyer. We
therefore affirm the Examiner’s rejection of claim 11, and of claims 1, 3, 6-
10, 12 and 13, which fall therewith.

III. CLAIM 2
Appellant asserts that Berenson fails to disclose “maintaining a
current copy of an internally stored reminder message in the service station.”
(Reply Br. 5). The Examiner asserts that Berenson provides this feature
(Supp. Ans. 5). Berenson discloses that “the system puts an entry into the
user’s electronic personal calendar system” and that the “personal calendar
system holds the event data so the user may view it in the context of an
overall personal schedule.” (Para. [0031]). Hence, a “current copy” of the
entry is maintained (i.e., the system “holds” the event data) at the device. In
addition, the reminder message is also stored “in the service station” in the
system of Berenson (para. [0030]).
Therefore, we agree with the Examiner that Berenson teaches the
argued feature of claim 2.
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It follows that Appellant failed to demonstrate that the Examiner erred
in rejecting claim 2. Therefore, we affirm the obviousness rejection of
claim 2.

IV. CLAIM 4
Appellant asserts that Berenson “fails to teach (i) automatically
suppressing, and (ii) superfluous reminder messages stored on the service
station.” (Reply Br. 5). The Examiner asserts that Berenson discloses these
features (Supp. Ans. 5). A definition of “superfluous” was not provided in
the record. Therefore, we adopt a reasonable definition of the term
“superfluous message” as a message that is in excess of what is needed or is
non-essential. Berenson discloses that the calendaring system “may also
delete [a] previous reminder, if unread by the user or if it has already been
read.” (Para [0041]). A previous reminder that is either unread by the user
or already read by the user would be of no value to the user. Hence, such a
message is considered to be “in excess of what is needed” or “non-essential”
(i.e., “superfluous”). This superfluous message is detected in the
calendaring system of Berenson.
In addition, the Berenson system checks “the user’s personal calendar
system for availability before determining the media over which to send the
event message.” Berenson further discloses that “if the user is at home, a
phone message may be preferable; if at work, an email; if on the road, a
wireless message, etc.” (Para. [0043]). In this case, if the user is at home
and a phone message is preferable, for example, an e-mail message would be
considered in excess of what is needed or non-essential. Therefore, such a
message is construed as being “superfluous.” This message is not only
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detected in the Berenson system, but transmission of such a superfluous
message is automatically suppressed (i.e., a phone message is transmitted to
a user at home but an e-mail message is suppressed). Therefore, we agree
with the Examiner that Berenson teaches the argued feature of claim 4.
It follows that Appellant failed to demonstrate that the Examiner erred
in rejecting claim 4. Therefore, we affirm the obviousness rejection of
claim 4.

V. CLAIM 5
Appellant asserts that Berenson fails to disclose a first device that
“acknowledges the receipt of the first reminder” or that the
acknowledgement “is used as an alert to the existence of a superfluous
reminder message.” (Reply Br. 6). The Examiner asserts that Berenson
discloses these features (Supp. Ans. 5-6). Berenson discloses that the
system sends a “new reminder with . . . corrected data” and may further
delete a previous reminder “if unread by the user or if it has already been
read.” (Para. [0041]). The user acknowledges receipt of the reminder by
accepting or declining the entry from the system (i.e., “the correction to the
calendar entry . . . may be . . . an accept/decline entry, which allows the user
to decide whether to incorporate the correction into his calendar” (id.)). In
addition, the system notifies the user of the corrected information, thus
providing the user with an alert of the existence of not only the corrected
information but also the information that is deleted as a previous reminder.
Therefore, we agree with the Examiner that Berenson teaches the
argued feature of claim 5.
It follows that Appellant failed to demonstrate that the Examiner erred
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in rejecting claim 5. Therefore, we affirm the obviousness rejection of
claim 5.

VI. OBJECTION TO THE SPECIFICATION
The Examiner objects to the specification “for not having headers”
(Ans. 8). Appellant asserts that “the current format of the application is
acceptable and proper under applicable law and regulation.” (App. Br. 18).
We find Appellant’s argument is directed to a petitionable matter --
not an appealable matter.4 Therefore, we do not decide this issue.

CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
erred in rejecting claims 1-13 over the prior art.

DECISION
We affirm the Examiner’s decision rejecting claims 1-13.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

4 See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition….”).
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