Ex Parte Williams et alDownload PDFPatent Trial and Appeal BoardJun 17, 201310627085 (P.T.A.B. Jun. 17, 2013) Copy Citation 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. 10/627,085 07/24/2003 Christopher D. Williams 42P6485C 3138 45209 7590 06/17/2013 Mission/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER SCHNURR, JOHN R ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 06/17/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER D. WILLIAMS, JEAN M. GOLDSCHMIDT IKI, ANTHONY A. SHAH-NAZAROFF, KENNETH ALAN MOORE, and DAVID N. HACKSON ____________________ Appeal 2010-011678 Application 10/627,085 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, BRYAN F. MOORE and MICHAEL J STRAUSS, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011678 Application 10/627,085 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claims 1 and 15 under appeal read as follows: 1. A method of choosing a preferences list comprising: receiving a user identification for a current user; identifying multiple stored preferences lists corresponding to the current user by searching a set of stored preferences lists, at least some of the preferences lists of the set of stored preferences lists corresponding to specific users, each of the preferences lists containing multiple entertainment programming channel identifiers; providing a list display of the identified stored preferences lists corresponding to the current user; selecting one of the identified stored preferences lists by receiving a user choice of one of the multiple identified preferences lists of the list display; and accessing the chosen preferences list. 15. A machine-readable tangible medium having stored thereon a series of instructions which, when executed by a processor, cause the processor to perform operations comprising: receiving a user identification for a current user; identifying multiple stored preferences lists corresponding to the current user by searching a set of stored preferences lists, at least some of the preferences lists of the set of stored preferences lists corresponding to specific users, each of the preferences lists containing multiple entertainment programming channel identifiers; providing a list display of the identified stored preferences lists corresponding to the current user; Appeal 2010-011678 Application 10/627,085 3 selecting one of the identified stored preferences lists by receiving a user choice of one of the multiple identified preferences lists of the list display; and accessing the chosen preferences list. Rejections on Appeal The Examiner rejected claims 1-14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Final Rej. 2-3). 1 The Examiner rejected claims 15-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Ans. 3-4). 2 The Examiner rejected claims 1-4, 6, 10-18, 20-25, and 30-32 under 35 U.S.C. § 102(e) as being anticipated by Ellis (US 7,185,355 Bl). 3 The Examiner rejected claims 5, 7-9, 19, 26-29, and 33 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ellis and Stinebruner (US 6,133,910). 4 1 As to this rejection, separate patentability is not argued for claim 2-14. Except for our ultimate decision, these claims are not discussed further herein. 2 Appellants do not dispute this rejection in the Reply Brief. We therefore affirm pro forma. Except for our ultimate decision, these claims are not discussed further herein. 3 As to this rejection, separate patentability is not argued for claim 2-4, 6, 10-18, 20-25, and 30-32. Except for our ultimate decision, these claims are not discussed further herein. 4 Appellants state, “The obviousness rejection is not contested separately from the anticipation rejection.” Except for our ultimate decision, these claims are not discussed further herein. Appeal 2010-011678 Application 10/627,085 4 Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: With respect to Claim 1, Appellant respectfully submits that the method is tied to a data store and a display. (App. Br. 9). Appellants further state: In light of the Supreme Court’s ruling three days ago in In re Bilski Appellants defer substantive argument at this time. As to Claim 1, as stated previously, Appellants believe that the storage and display of the lists is sufficient under the machine or transformation test. It is not necessary that every operation be tied to the machine. (Reply Br. 2)(Emphasis added). 2. Appellants contend that the Examiner erred in rejecting the claim 1 under 35 U.S.C. § 102(e) because: Claim 1 recites, inter alia, “searching a set of stored preferences lists” and “providing a list display of the identified stored preferences lists.” So according to the claim, the “lists” displayed in Figure 18 must already be stored, then searched, then displayed, before the user selects one. However, there is nothing in Ellis to suggest this manner of operation. (App. Br. 12)(Emphasis added). Appellants further indicate: The Examiner proposes next that the lists of Ellis Figure 18 are stored but this is not stated at Col. 12, lines 4-8. Appellants are unable to find any disclosure that the lists are stored and the Examiner has failed to point to any such disclosure. (Reply Br. 3). Issues on Appeal Did the Examiner err in rejecting claim 1 as being directed to non-statutory subject matter? Appeal 2010-011678 Application 10/627,085 5 Did the Examiner err in rejecting claim 1 as being anticipated under 35 U.S.C. § 102(e) because Ellis fails to disclose the “searching a set of stored preferences lists” limitation? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. As to Appellants’ above contention 1, beyond Appellants’ conclusory statement that they “believe that the storage and display of the lists is sufficient under the machine or transformation test” Appellants state that they “defer substantive argument at this time.” (Reply Br. 2). Such a conclusory statement and deferred argument does not explain why Appellants believe that the Examiner erred. We agree with Appellants’ above contention 2. The Examiner erred in finding that Ellis “searching a set of stored preferences lists” as claimed. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1-4, 6, 10-18, 20-25, and 30-32 as being anticipated under 35 U.S.C. § 102(e). (2) Appellants have established that the Examiner erred in rejecting claims 5, 7-9, 19, 26-29, and 33 as being unpatentable under 35 U.S.C. § 103(a). (3) The Examiner did not err in rejecting claims 1-19 as being unpatentable under 35 U.S.C. § 101. Appeal 2010-011678 Application 10/627,085 6 (4) On this record, claims 20-33 have not been shown to be unpatentable. (5) Claims 1-19 are not patentable. DECISION The Examiner’s rejection of claim 1-4, 6, 10-18, 20-25, and 30-32 as being anticipated under 35 U.S.C. § 102(e) is reversed. The Examiner’s rejections of claims 5, 7-9, 19, 26-29, and 33 as being unpatentable under 35 U.S.C. § 103(a) is reversed. The Examiner's rejection of claims 1-19 as being unpatentable under 35 U.S.C. § 101 is affirmed. AFFIRMED-IN-PART ELD Copy with citationCopy as parenthetical citation