Ex parte YUEN

Board of Patent Appeals and Interferences

Apr 10, 2000

08279628 (B.P.A.I. Apr. 10, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HENRY C. YUEN
____________
Appeal No. 1997-4140
Application No. 08/279,628
____________
ON BRIEF
____________
Before JERRY SMITH, BARRETT, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 27 and 28. The appellant
filed an amendment after final rejection on July 22, 1996, it
was entered. We reverse.
Appeal No. 1997-4140 Page 2
Application No. 08/279,628
BACKGROUND
Bar code programming (BCP) of a videocassette recorder
(VCR) typically requires the use of a television (TV) program
guide and a bar code sheet. The guide lists channel, date,
time, and length (CDTL) data for TV programs. The sheet
contains separate groups of codes for TV channels, dates,
times, and program lengths. A user first consults the guide
to identify the CDTL data for a TV program to be recorded. He
then enters the data by using a bar code reader (BCR) to scan
appropriate codes on the sheet. Using both the guide and
sheet, however, is cumbersome. Furthermore, the hand-to-eye
translation and coordination required in such use is tedious
and error-prone.
The invention at issue in this appeal allows a user to
program a VCR quickly, easily, and accurately. He simply
scans bar codes without reading time and channel data. More
specifically, the user employs a TV calendar that includes bar
codes concerning TV programs. The calendar is formatted as a
rectangular grid of cells arranged in rows and columns. Bar
codes for channels are arranged along one side of the grid,
Appeal No. 1997-4140 Page 3
Application No. 08/279,628
bar codes for times, along another side. Each cell lies at
the intersection of a channel bar code and a time bar code and
contains a TV program descriptor.
To program a VCR using the TV calendar, a user first
finds the descriptor of a TV program to be recorded. He then
moves a BCR vertically to the column heading to scan the time
bar code for the program. The user last moves the BCR
horizontally to the row heading to scan the bar code for the
program. The scanned bar codes are converted to data, which
are applied to the VCR to instruct it to record the desired
program.
Claim 27, which is representative for our purposes,
follows:
27. A method of controlling a VCR with
a television calendar having a rectangular grid of
cells arranged in horizontal rows and vertical
columns, a television program descriptor located in
each cell, a first set of bar codes arranged along
one side of the grid, a second set of bar codes
arranged along another side of the grid
perpendicular to the first set so each cell lies at
the intersection of a bar code in the one set that
represents time and a bar code in the other set that
Appeal No. 1997-4140 Page 4
Application No. 08/279,628
represents channel, the method comprising the steps
of:
selecting a descriptor of a television program
to be recorded on the VCR;
reading the bar code in one of the sets that
corresponds to the cell in which the selected
descriptor is located to identify the time of the
selected descriptor;
reading the bar code in the other set that
corresponds to the cell in which the selected
descriptor is located to identify the channel of the
selected descriptor;
converting the read bar codes to time and
channel signals; and
applying the time and channel signals to the VCR
to record the program represented by the selected
descriptor.
The references relied on in rejecting the claims follow:
Kajitani et al. (Kajitani) 4,841,132 Jun. 20, 1989
Shibuya et al. (Shibuya) 5,056,070 Oct. 8, 1991
Yuen et al. (Yuen) 5,335,079 Aug. 2, 1994
(filed Mar. 27,
1991).
Claims 27 and 28 stand rejected under 35 U.S.C. § 103 as
obvious over Kajitani in view of Yuen and Shibuya. Rather
than repeat the arguments of the appellant or examiner in
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Application No. 08/279,628
toto, we refer the reader to the briefs and answers for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
the totality of the record, we are persuaded that the examiner
erred in rejecting claims 27 and 28. Accordingly, we reverse.
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift
to the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
Appeal No. 1997-4140 Page 6
Application No. 08/279,628
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these in mind, we analyze the examiner’s rejection.
The examiner summarizes his rejection as follows.
Since both Kajitani and Yuen et al disclose and
teach the use of recording calendars to perform a
method of control [sic] a VCR to record a selected
television program of a channel at predetermined
time , it would have been obvious to one of ordinary
skill in the art to combine Kajitani's calendar with
Yuen et al's [sic] calendar by rearranging and
printing the first set of bar codes and second set
of bar codes and descriptors so that the
descriptors at locations associated with the bar
codes to produce a calendar of grid of the claimed
invention. (Examiner’s Answer at 7-8 (extra spaces
in original).)
The appellant argues, “A Yuen/Kajitani combination would not
produce a comprehensive, integrated grid of program
descriptors directly referencing associated bar codes ....”
(Appeal Br. at 5.)
Claims 27 and 28 each specify in pertinent part the
following limitations:
a television calendar having a rectangular grid of
cells arranged in horizontal rows and vertical
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Application No. 08/279,628
columns, a television program descriptor located in
each cell, a first set of bar codes arranged along
one side of the grid, a second set of bar codes
arranged along another side of the grid
perpendicular to the first set so each cell lies at
the intersection of a bar code in the one set that
represents time and a bar code in the other set that
represents channel ....
In summary, the claimed limitations recite a TV calendar
formatted as a rectangular grid of cells arranged in rows and
columns, with channel bar codes along one side of the grid,
time bar codes along another side, and a TV program descriptor
in each cell.

The examiner fails to show a teaching or suggestion of
the claimed limitations. “Obviousness may not be established
using hindsight or in view of the teachings or suggestions of
the inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73
F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983)). “The
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
Appeal No. 1997-4140 Page 8
Application No. 08/279,628
modification.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). “It is
impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the
prior art so that the claimed invention is rendered obvious.”
Fritch, 972 F.2 at 1266, 23 USPQ2d at 1784, (citing In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991)).
Here, the examiner admits that Kajitani fails to “teach
the second set of bar codes is arranged in a horizontal row
which is perpendicular to the first set of bar codes and ...
the incorporating of program descriptors at locations of the
intersections of the first set of bar codes and second set of
bar codes.” (Examiner’s Answer at 4-5.) This is an
understatement. The reference merely “shows a ... practical
program sheet 1 made by printing channels, dates, start times
and end times on a synthetic resin plate or sheet material.”
Col. 4, ll. 3-6. The sheet contains no TV program
descriptors. It is merely a bar code sheet. Fig. 4. In
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Application No. 08/279,628
addition, the sheet is not formatted as a rectangular grid
that lists channels along one side and times along another
side. Instead, it is formatted as a collection of columns
that list channels and times in separate columns. Id.
Furthermore, the sheet does not arrange bar codes along either
of its sides. Instead, it includes bar codes inside its
columns. Id.
The examiner fails to show that Yuen remedies the defects
of Kajitani. Yuen merely teaches a “television calendar 200
....” Col. 14, l. 65. The calendar has “multiple time of day
sections 206, channel identifiers 208, and descriptive program
identifiers 210, including the name of the program ....”
Col. 14, l. 66 - col. 15, l. 2. Figure 8 of the reference
shows that the calendar is not formatted as a rectangular grid
of cells arranged in rows and columns. Instead, it is
“arranged in a manner that is common in television guide
publications.” Col. 15, ll. 2-3. Although the calendar lists
times along one side, it does not list channels along another
side. Instead, it lists the channel identifiers in the same
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Application No. 08/279,628
section as the times and in a section immediately to the right
thereof. Fig. 8.
The examiner merely relies on Shibuya to “teach[] the use
of recording code [sic] representing of [sic] time for the day
of month for programming a VCR.” (Examiner’s Answer at 6.)
He does not allege, let alone show, that the Shibuya remedies
the defects of Kajitani and Yuen.
For the foregoing reasons, we are not persuaded that
teachings from the prior art would appear to have suggested
the claimed limitation of a TV calendar formatted as a
rectangular grid of cells arranged in rows and columns, with
channel bar codes along one side of the grid, time bar codes
along another side, and a TV program descriptor in each cell.
The examiner impermissibly relies on the appellant’s teachings
or suggestions; he has not established a prima facie case of
obviousness. Therefore, we reverse the rejection of claims 27
and 28 under
35 U.S.C. § 103.
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Application No. 08/279,628
We end by noting that our reversal is based only on the
references applied in the rejection. The appellant submitted
European Patent Application 0 254 518 (‘518 Application) and
Japanese Patent Abstract JP1241923 (Tadao) in an Information
Disclosure Statement. (Paper No. 6 at 1.) The ‘518
Application teaches a program sheet 30 formatted as a
rectangular grid of cells arranged in rows and columns, with
broadcasting stations 31 and channel numbers 32 along one side
of the grid, hours along another side, and titles of programs
33 and bar codes 34 in each cell. Col. 4, ll. 29-35
(referencing Fig. 6). Tadao teaches bar codes 2 and 3-3 in a
”program column of a newspaper or a magazine ....”
Constitution, l. 2. Scanning the bar codes “sets the
broadcast station ... and broadcast start time of the reserved
broadcast program ....” Id. at ll. 8-9. Nevertheless,
neither the ‘518 Application nor Tadao is applied or is at
issue in the rejection before us.
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Application No. 08/279,628
CONCLUSION
To summarize, the rejection of claims 27 and 28 under
35 U.S.C. § 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1997-4140 Page 13
Application No. 08/279,628
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