Ex Parte Barsness et al

Board of Patent Appeals and Interferences

Feb 10, 2009

09903350 (B.P.A.I. Feb. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC LAWRENCE BARSNESS, CARY LEE BATES,
PAUL REUBEN DAY, ROBERT RICHARD RASCH,
and JOHN MATTHEW SANTOSUOSSO
____________

Appeal 2008-5844
Application 09/903,350
Technology Center 2400
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Decided:1 February 10, 2009
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Before JOHN A. JEFFERY, KARL D. EASTHOM, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/903,350

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 3, 7-11, 24, and 27. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants invented a method for providing viewership information to
television viewers. To this end, viewership data is collected from multiple
viewers, processed, and ultimately transmitted to end-user receivers. The
transmitted data can represent a growth rate of viewers for a particular
program.2 Claim 3 is illustrative:
3. A method for providing viewership information to a plurality of
television viewers, comprising:

collecting viewership data of a plurality of viewers, wherein the
viewership data comprises a plurality of counts corresponding to a plurality
of time intervals for each program, and wherein each count represents a
number of viewers of a respective program during a respective time interval;

processing the viewership data to provide on-screen interface
information; and

transmitting, to a plurality of end-user receivers, the on-screen
interface information and data for an electronic program guide, wherein the
on-screen interface information is viewable in one or more graphical
representations of the plurality of counts displayed along with each
respective program entry displayed by the electronic program guide on
displays connected to the plurality of end-user receivers, wherein
transmitting the on-screen interface information further comprises
transmitting data representing a growth rate of viewers for a particular
program.

2 See generally Abstract; Spec. ¶¶ 0005-09.
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The Examiner relies on the following prior art reference to show
unpatentability:

Berezowski US 2002/0056087 A1 May 9, 2002
(filed Mar. 30, 2001)

The Examiner rejected claims 3, 7-11, 24, and 27 under 35 U.S.C.
§ 102(e) as anticipated by Berezowski (Ans. 3-7).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding representative claim 3,4 Appellants argue that Berezowski
fails to disclose transmitting on-screen guide information including a growth
rate of viewers for a particular program as claimed. Appellants emphasize
that Berezowski does not teach the recited growth rate which refers to an
increase in the size of an audience per unit time (Br. 13; emphasis added).
The Examiner takes the position that users can determine the change in size
of an audience in Berezowski by merely comparing the displayed audience
information for a particular program at two different times (Ans. 8).

3 Throughout this opinion, we refer to the Appeal Brief filed Mar. 8, 2007
and the Examiner’s Answer mailed July 25, 2007.
4 Appellants argue independent claims 3, 24, and 27 together as a group. See
Br. 12-13. Accordingly, we select claim 3 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Regarding representative claim 7,5 Appellants argue that Berezowski
fails to disclose transmitting on-screen interface information as claimed,
namely transmitting group information identifying group members of the
identified group of end-user receivers from which viewership data is
collected. According to Appellants, the Specification of the present
application indicates that group members may be identified “by name,
initials or other descriptors,” but Berezowski merely teaches displaying a
number of viewers in a zip code that are watching a particular show. As
such, Appellants contend, Berezowski does not identify individual members
of the group (Br. 13).
The Examiner, however, takes the position that this limitation is fully
met by Berezowski since location-based audience information is provided
for a particular program (i.e., based on viewers in the same zip code, or other
regional or national data) (Ans. 9).
The issues before us, then, are as follows:

ISSUES
Under § 102, have Appellants shown that the Examiner erred in
finding that Berezowski transmits:
(1) on-screen interface information comprising data representing a
growth rate of viewers for a particular program in rejecting representative
claim 3; and

5 Appellants argue independent claim 7 separately, but do not separately
argue dependent claims 8-11. See Br. 13. Accordingly, we group these
claims together and select claim 7 as representative.
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(2) group information identifying group members of an identified
group of end-user receivers from which viewership data is collected in
rejecting representative claim 7?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Berezowski discloses audience measuring systems for personal
video recording systems and interactive television applications that provide
audience information to users (Berezowski, Abstract; ¶ 0002).
2. Audience information is provided to the user in various forms
including, among other things, overlaying the information onto the program
the user is watching or displaying the information when the user selects an
audience information icon 550. This audience information can relate to the
user’s current video or application (Berezowski, ¶ 0072; Fig. 5).
3. Audience information can include, among other things, the
audience size or market share for a particular program, or any other suitable
information related to the program’s audience (Berezowski, ¶ 0073).
4. Berezowski in Figure 6 shows a display 600 that provides the user
with the size of the audience for a currently-viewed program in real time.
The display graphically illustrates (e.g., via a pie chart 605) information
pertaining to the number of users watching a particular program (i.e., “Mad
About You”) compared with other programs for a particular time slot
(Berezowski; ¶ 0074; Fig. 6).
5. Berezowski in Figure 16 shows a display 1700 that provides the
user with audience information for a particular program (“I Love Lucy”)
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with respect to viewers in the same zip code. The user may also select
audience information based on (1) national data; (2) regional data; or (3)
market data (Berezowski, ¶ 0089; Fig. 16).
6. The user in Berezowski can also select audience information based
on certain demographic information which may be based, at least in part, on
identifying information or information from user profiles (Berezowski, ¶
0089).
7. The Specification of the present application indicates that “[t]he
viewing members may be represented by name, initials or other descriptors”
(Spec. ¶ 0069).

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
During patent examination, a claim is given its broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). However, such an interpretation must not import
limitations from the specification into the claims. “[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments....[C]laims may embrace different subject matter than is
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illustrated in the specific embodiments in the specification.” Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations and
internal quotation marks omitted).

ANALYSIS
Claims 3, 24, and 27
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 3 which calls for, in pertinent
part, transmitting on-screen interface information comprising data
representing a growth rate of viewers for a particular program. We note at
the outset that, as a general proposition, merely reciting what data represents
essentially constitutes non-functional descriptive material as it does not
further limit the claimed invention either functionally or structurally. Such
non-functional descriptive material does not patentably distinguish over
prior art that otherwise renders the claims unpatentable.6
Nevertheless, we find that Berezowski still fully meets this limitation.
While Berezowski may not expressly indicate that the audience information
presented to user represents a growth rate of viewers for a particular
program, Berezowski nonetheless at least implicitly teaches this feature.
Berezowski’s display in Figure 6 provides the user with comparative
information regarding the size of the audience for a currently-viewed
program in real time (FF 4). As such, this information will update in real
time to indicate the current audience information as the program progresses.

6 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, No. 2007-1823, slip op. at 11-17 (BPAI Jan. 28, 2008) (precedential),
available at http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf
(discussing cases pertaining to non-functional descriptive material).
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These updates would, at a minimum, provide data representing a
change in viewership at least with respect to the time periods between
updates (i.e., the data would represent a “growth rate” of viewers—even if
negative or zero). Moreover, since the currently-viewed program is shown
in a finite, predetermined time period, this displayed real-time audience
information (and the resulting changes in that information) would also
represent a growth rate of viewers for the duration of the program.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 3. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 24 and 27 which
fall with claim 3.

Claims 7-11
We also find no error in the Examiner’s anticipation rejection of
representative claim 7 which calls for, in pertinent part, transmitting group
information identifying group members of an identified group of end-user
receivers from which viewership data is collected.
First, Appellants’ contention that Berezowski does not identify
individual members of the group (Br. 13) is not commensurate with the
scope of the claim. Claim 7 does not require identifying the individual
members, but rather more broadly recites “identifying group members of the
defined group.” Although the Specification does indicate that “[t]he viewing
members may be represented by name, initials or other descriptors” (FF 7)
as Appellants argue,7 the claim is not so limited and we decline to import

7 Although Appellants indicate that this passage appears in Paragraph 0071
of the Specification (Br. 13), it actually appears in Paragraph 0069.
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this description into the claims. See Phillips, 415 F.3d at 1323. But even if
we were to limit the claim to this description, we note the generic, open-
ended term “or other descriptors” does not preclude the Examiner’s
interpretation of the identification information in Berezowski.
Berezowski provides audience information based on information that
would, at least broadly, identify members of a group. For example,
Berezowski can tailor the displayed audience information for a particular
program with respect to a particular location (FF 5) or demographic (FF 6).
This displayed information would, in effect, identify viewers in a particular
location or with certain demographic characteristics from the group of
viewers watching that particular program. That such information can be
derived from identifying information or user profiles (FF 6) only bolsters
this conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 7. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 8-11 which fall
with claim 7.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
3, 7-11, 24, and 27 under § 102.

ORDER
The Examiner’s decision rejecting claims 3, 7-11, 24, and 27 is
affirmed.
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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

ELD

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
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