Ex Parte Connelly et al

Board of Patent Appeals and Interferences

Jul 19, 2007

09250940 (B.P.A.I. Jul. 19, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAY H. CONNELLY and HERMAN D’HOOGE
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Appeal 2007-0591
Application 09/250,9401
Technology Center 2600
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Decided: July 19, 2007
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Before JAMES D. THOMAS, KENNETH W. HAIRSTON, and ALLEN R.
MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

1 Filing date: February 18, 1999. The real party in interest is Intel
Corporation.
Appeal 2007-0591
Application 09/250,940

STATEMENT OF THE CASE2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 2-11, 13-16, 18-27, 29-333, 38, and 41-48 entered April 5, 2005. We
have jurisdiction under 35 U.S.C. § 6(b).4
Appellants invented a method, apparatus, and medium for controlling
an electronic device. The system allows control of the electronic device
using command signals which are broadcast with data signals. For example,
the command signal can be used to control a home appliance while the data
signal is being output to a television. (Specification 5:3-12).
As best representative of the disclosed and claimed invention, claim
41 is reproduced below:

41. A communication and control system, comprising:
an input device generating a data signal;
a command device generating a command signal associated
with the data signal;
a first device receiving the data and the command signal
associated with the data signal, the first device generating a transmission
signal including the data signal and the associated command signal;
a second device receiving the transmission signal and extracting
the data signal and the associated command signal from the transmission
signal;

2 Throughout our opinion, we shall make references to Appellants’ Appeal
Brief (“Br.”) filed on March 27, 2006, and Reply Brief (“Reply Br.”) filed
on July 13, 2006, and also to the Examiner’s Answer (“Answer”) mailed on
June 16, 2006, for the respective details thereof.
3 The Examiner noted that the status of the claims in the Appeal Brief was
incorrect and that the rejection of claims 34-36 was withdrawn (Answer 2).
4 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
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an output device receiving the data signal from the second
device; and
at least one target device controlled automatically as a function
of the associated command signal while the output device provides an output
as a function of the data signal.

REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Jackson US 5,963,264 Oct. 5, 1999
Michaud US 6,057,874 May 2, 2000
Adams US 6,108,042 Aug. 22, 2000

Claims 2-9, 12-16, 18-27, 29-32, 38, and 41-48 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Michaud and Jackson; and
Claims 10, 11, and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Michaud, Jackson, and Adams.
Claims 1, 12, 17, 28, 37, 39, and 40 are canceled.
Claims 34-36 are allowed.5
Appellants contend that the Examiner has failed to show the
following:
(a) Jackson refers to an IR code list, an IR selection, an EPG selection,
and an EPG, none of which disclose or suggest the recited command signal
for the following reasons:
(i) The [IR] list is not used to control a device, for example, the
VCR 38 of Jackson, while data with which the list was transmitted is

5 The Examiner noted that the statement of the status of claims contained in
the brief was incorrect and the rejection as to claims 34-36 was withdrawn.
(See Answer 14).
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output by an output device, for example, the TV/monitor 36 of
Jackson. Instead, the list is stored in a memory 18, while data with
which the list was transmitted is output by the TV/monitor 36. (Br.
26:4-13).
(ii) “…, the IR selection is not transmitted in a transmission
signal with a data signal…. Rather, the IR selection is (a) provided by
user without data for output by an output device and (b) used by the
IR generator 23 to transmit an IR signal to the VCR 38 separate from
any data that might be output by an output device…” (Br. 26:20-26).
(iii) “The [EPG] selection is not transmitted in a transmission
signal with a data signal… transmission of the video and audio signals
is entirely separate from transmission of the EPG selection. The video
and audio signals are received from uplink center 1 and the EPG
selection is received from a user.” (Br. 26:31 thru 27:12).
(iv) “…the EPG is not a command signal. … The EPG is used
for comparison with a previously stored signal (the EPG selection 7
stored in a memory 15) to determine when a selected program starts
and stops. Based on the comparison, the CPU 16 controls the VCR
38. However, the EPG itself is not a signal that commands such
control.” (Br. 27:14-18).
Appellants further contend that the cited art fails to show the
following:
(v) “…, nowhere does Jackson disclose or suggest controlling
the VCR 38 in accordance with the EPG while outputting data at the
TV/Monitor 36, where the output data and the EPG are transmitted
together….the VCR 38 may be controlled immediately subsequent to
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the output of data with which the EPG was transmitted; not at the
same time.” (Br. 27:22-31).
(vi) “Neither Michaud nor Jackson suggest a modification of
Michaud such that a command signal and data signal transmitted
together control a target device and cause output by an output device
simultaneously.” (Br. 28:11-14).
(vii) “…VCR 38 may be controlled immediately subsequent to
the output of data with which the EPG was transmitted; not at the
same time. …other data transmitted subsequent to the
transmission of the EPG would be output at the TV/monitor 36.”
(Reply Br. 4, emphasis in original).
We Affirm.

ISSUE
Whether Appellants have shown that the Examiner has erred in
rejecting claims 2-11, 13-16, 18-27, 29-33, 38, and 41-48 based on
obviousness.
The issue specifically turns on:
Whether the combination of Michaud and Jackson teach or suggest at
least one target device controlled automatically as a function of the
associated command signal while the output device provides an output as a
function of the data signal.

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FINDINGS OF FACT
The following findings of fact (FF) are believed to be supported by a
preponderance of the evidence.

Findings Related to Claim Construction
1. The phrase “while the output device provides an output as a
function of the data signal” is illustrated in the Specification in the following
manner: “The data signal may display the TV program on the television set
while the command signal may control an intensity of the lights in the room
in which the TV program is being viewed. Thus, the lights may be dimmed
or brightened at selected times during the TV program.” (emphasis added)
(Specification 5).
2. The ordinary and usual meaning of “while” is (a) during the time
that [take a nap ~ I’m out]; (b) as long as [~ there’s life there’s hope].
Merriam-Webster’s Collegiate Dictionary, p.1426 (11th Edition 2005).
3. The Specification does not provide a lexicographic definition for
the term “a command signal associated with the data signal”.
4. The ordinary and usual meaning of “associated with” is any
relationship in any way.

The Invention
5. Appellants state at page 4 of the Specification that the invention
comprises an output device 25 that may include, e.g., a display device such
as a television set,... . Target device 35 may include, e.g., …a VCR (Video
Cassette Recorder),… .
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6. In addition, the Specification specifically points out that “the
broadcaster, e.g., may also control the VCR to record the TV program
requested by the user”. (Specification 10:29-30).

The scope and content of the prior art
Michaud
7. The scope and content of Michaud is not disputed by Appellants.
8. We adopt the Examiner’s findings that Michaud discloses:
an input device generating a data signal;
a command device generating a command signal associated
with the data signal;
a first device receiving the data signal and the command
signal associated with the data signal, the first device generating a
transmission signal including data signal and the command and the
associated command signal;
a second device receiving the transmission signal and
extracting the data signal and the associated command signal from
the transmission signal; and
the output device receiving the data signal from the second
device.
(Answer 3-4).
Jackson
9. We adopt the Examiner’s findings that:
Jackson teaches that a digital satellite receiving system
receives and processes a digital data stream containing
television programming information, EPG information, and a
list of video cassette recorders (VCRs) and corresponding
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infrared (IR) codes used to control the listed models of VCRs
contained in the list, ... the digital receiving system uses the
codes saved in nonvolatile memory to generate and transmit an
IR signal to the VCR to start recording when the EPG
determines the selected event begins, the EPG and selected
program are monitored during recording, at the end of the
program, a transmitted IR signal terminates the recording
operation (see abstract, Figs. 1 and 2, col. 3, line 32 to col. 6,
line 27).

(Answer 4-5).
10. We also highlight further aspects of the prior art Jackson:
a. The prior art Jackson discloses that there is a great need for
a television receiver that can receive IR codes from a remote
programming source via a data stream, and use these IR
codes to control a VCR in real time to automatically record
programs selected from an EPG (Electronic Programming
Guide). (Col. 1, ll. 60-67).
b. Jackson also discloses that a digital data stream conforming
to the MPEG-2 standard contains television programming,
an EPG, and hardware specific VCR IR codes. The digital
data stream is transmitted from an uplink center to a
satellite, which re-directs the data stream to subscribers.
(Col. 2, ll. 47-52).
c. In Jackson, the satellite receiver continuously monitors the
data stream for updates to the EPG so that recording
operations may be coordinated to reflect last minute changes
to programming schedules. (Col. 2, ll. 64-67).
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d. In Jackson, “the recording process thereby begins when the
programming selection is actually aired, and not necessarily
when it was originally scheduled to begin. Thus, the present
invention allows for real-time schedule changes to occur for
both starting time and stopping time, such as a sporting
event which goes into overtime, and ensures the entire
program will be recorded… .” (Col. 5, ll. 61-67).
11. Thus, Jackson shows that the following feature found in
Appellants’ claim 41 is known in the prior art:
…at least one target device controlled automatically as a
function of the associated command signal while the output device provides
an output as a function of the data signal.

Adams
12. We adopt the Examiner’s findings that:
“Adams et al teach that the satellite receiver 14 enables reception
of packetized digital data streams over a satellite link. The
packetized digital data streams received by the satellite receiver
14 include video data packets, audio data packets, and associated
data packets. The satellite receiver 14 transfers the received
digital data stream packets to the computer system 10 over a
communication line 30 (Fig. 1, col. 4, lines 9-27).”

(Answer 13).

13. We also highlight the further aspects of the prior art Adams:
a. In Adams, the computer system 10 extracts associated data
packets of the incoming packetized digital data stream on
the communication line 30 and decodes the associated data
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packets according to a predefined video command and
control protocol. (Col. 4, ll. 48-52).

PRINCIPLES OF LAW
Principles Of Law Relating To Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S.Ct. at
1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious. In particular, the Supreme
Court emphasized that “the principles laid down in Graham reaffirmed the
‘functional approach’ of Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739,
82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1, 12
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(1966) (emphasis added)), and reaffirmed principles based on its precedent
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.” Id.
The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.

ANALYSIS
Whether the combination of Michaud and Jackson teach or suggest at
least one target device controlled automatically as a function of the
associated command signal while the output device provides an output
as a function of the data signal.

For claims 2-9, 11, 13-16, 18-27, 29-32, 38, and 41-48, Appellants
merely repeat the same arguments made for claim 41. For claims 10 and 33,
Appellants add an additional argument. We will therefore treat claims 2-9,
11, 13-16, 18-27, 29-32, 38, and 41-48 as standing or falling with claim 41.
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We address the Appellants’ arguments regarding claims 10 and 33
separately below. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young,
927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).

Claim Interpretation.
Claims are given their 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, 70 USPQ2d
1827, 1830 (Fed. Cir. 2004).
The Board is required to use a different standard for construing claims
than that used by district courts. We have held that it is error for the Board
to “appl[y] the mode of claim interpretation that is used by courts in
litigation, when interpreting the claims of issued patents in connection with
determinations of infringement and validity.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989); accord In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“It would be inconsistent with the role assigned to the PTO in issuing a
patent to require it to interpret claims in the same manner as judges who,
post-issuance, operate under the assumption the patent is valid.”). Instead,
as we explained above, the PTO is obligated to give claims their broadest
reasonable interpretation during examination. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004).
Appellants do not dispute that Michaud teaches all the elements of the
claimed device but for automatically controlling a target device as a function
of an associated command signal while the output device provides an output
as a function of the data signal. (Appeal Br. 5)
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After recognizing that Michaud fails to disclose the above noted
feature, the Examiner relies on Jackson, explaining that Jackson discloses
that a digital satellite receiving system receives and processes a digital data
stream containing television programming information, EPG information,
and a list of video cassette recorders (VCRs) and corresponding infrared (IR)
codes used to control the listed models of VCRs contained in the list.
(Answer 4-5).
Initially, we note that although Appellants have argued that Jackson’s
VCR 38 may be controlled immediately subsequent to the output of data
with which the EPG was transmitted, not at the same time nor
simultaneously therewith, Appellants have not defined such a strict time
occurrence in the claims, particularly claim 41. As noted above, during
patent prosecution, claims are construed as broadly as is reasonable. Hence,
the claimed “…controlled automatically as a function of the associated
command signal while the output device provides an output as a function of
the data signal” reads on automatically controlled during or as long as there
is any output by the output device, not merely at the “same time” or
“simultaneously” with the start of the output, as suggested by Appellants.
Hence, the claimed term “while” reads on any portion during or as long as
the data signal is being transmitted, not just the portion immediately at the
start thereof. (FF 1 and 2).

The Level Of Ordinary Skill in the Pertinent Art
Neither the Examiner nor Appellants have addressed the level of
ordinary skill in the pertinent art addressed herein. Accordingly, we will
consider Michaud, Jackson, and Adams as representative of the level of
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ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59
USPQ2d 1795, 1797 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error ‘where the
prior art itself reflects an appropriate level and a need for testimony is not
shown.’”). Appellants have presented no evidence of secondary
considerations of non-obviousness for our consideration.

Obviousness
Jackson specifically discloses that a television receiver receives IR
codes from a remote programming source via a data stream, and uses these
IR codes to control a VCR in real time to automatically record programs
selected from an EPG (FF 10a). Jackson uses a digital data stream that
contains television programming, an EPG, and hardware specific VCR IR
codes (FF 10b). As a result, Jackson describes automatically controlling a
VCR in real time based on IR codes transmitted via a data stream. Even if
Jackson stores the IR list in memory, and both the IR selection and the EPG
selection are not transmitted in a transmission signal with the data signal,
Jackson does describe a digital data stream that includes an EPG, IR codes
and data signals (television programming). Thus, Jackson discloses
transmitting both the codes used to control the VCR and the output data
signal relating to the television program. Furthermore, Jackson continuously
monitors the data stream for updates to the EPG so that recording operations
may be coordinated to reflect last minute changes to programming schedules
(FF 10c). As a result, Jackson can control the VCR when the associated data
signal is actually airing, and not necessarily when it was originally
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scheduled to begin (FF 10d). As such, Jackson shows an association
between the data signal and the command signal. (FF 3-4).
As to the claim requirement that a target device is controlled
automatically as a function of the associated command signal while the
output device provides an output as a function of the data signal, this claim
limitation relates to a transmission signal including the data signal and an
associated command signal. In other words, the command signal and the
data signal are required to be associated with each other. We note that both
Michaud and Jackson disclose a transmission signal that includes a data
signal (e.g., a television program) and command signal (FF 8, 10b) related to
recording the television program. Furthermore, Jackson discloses
controlling the VCR while outputting the data signal (FF 10a). Thus, an
association between controlling the VCR and outputting the data signal is
shown in Jackson.
Appellants’ own disclosure contemplates using a television set and a
VCR combination as the output device and target device, respectively, and
that the VCR may be controlled to record TV programs (FF 5 and 6). Such a
combination of devices, e.g., a television set and a VCR, necessarily requires
that the control of the VCR be during the outputting of the TV program.
However, it is our view that the claim language has not limited the control of
the target device to any particular portion of the TV program, just while the
program is airing.
Thus, it is our view that the combination of Michaud and Jackson
have disclosed an association between the command signal and the data
signal. Thus, it would have been obvious to a person of ordinary skill in the
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art to have applied Jackson’s automatic control of the VCR to Michaud’s
system to result in the subject matter of claim 41.
Accordingly, the Examiner’s obviousness rejection of representative
claim 41 is sustained based on the combination of Michaud and Jackson.

Claims 10 and 33 Argued Separately
Regarding claims 10 and 33, Appellants contend that “while Adams et
al. may provide for packetized digital data streams, nowhere does the
combination of Michaud, Jackson, and Adams et al. disclose or suggest
attachment of a command signal “to a data packet…including the data
signal” if the transmission signal is in the digital format, as recited in claim
10” (Br. 33:3-6 and Br. 34:3-6). While Adams discloses a packetized digital
data stream, Jackson further discloses a “digital data stream” conforming to
the MPEG-2 standard that contains television programming (e.g., data
signals), an EPG, and hardware specific VCR IR codes (e.g., command
signals) (FF 10b). As such, both Adams and Jackson contemplate using a
digital data stream with Adams further disclosing a packetized form thereof
and Jackson further disclosing a digital data stream including both data
signals and command signals. Thus, it is our view that it would have been
obvious to a person of ordinary skill in the art to have a data packet
including the data signal and command signal when the transmission signal
is in the digital format as taught by Jackson and Adams, to result in the
subject matter of claims 10 and 33.
Therefore, we will sustain the Examiner’s rejection under 35 U.S.C.
§ 103 for the same reasons as set forth above.

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CONCLUSION
Appellants have failed to establish that the Examiner erred in rejecting
claims 2-9, 12-16, 18-27, 29-32, 38, and 41-48 as being unpatentable under
35 U.S.C. § 103(a) over Michaud and Jackson.
Appellant have further failed to established that the Examiner erred in
rejecting claims 10, 11, and 33 as being unpatentable under 35 U.S.C.
§ 103(a) over Michaud, Jackson, and Adams.
Thus, claims 2-11, 13-16, 18-27, 29-33, 38, and 41-48 are not
patentable.

DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection under 35 U.S.C. § 103 of claims 2-11, 13-16, 18-27, 29-33, 38, and
41-48.
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).

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AFFIRMED

eld

MICHELLE M. CARNIAUX
KENYON & KENYON
ONE BROADWAY
NEW YORK, NY 10004
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