Ex Parte Hardacker et alDownload PDFPatent Trial and Appeal BoardSep 18, 201411583524 (P.T.A.B. Sep. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT L. HARDACKER and FREDERICK J. ZUSTAK ____________ Appeal 2012-006250 Application 11/583,524 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., KRISTEN L. DROESCH, and DANIEL N. FISHMAN, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1–20, 221, and 23. Claims 24–27 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellants’ disclosed invention relates to a TV, including a processor and a display presenting a map of the topology of the home network. Spec., 1 The Examiner and Appellants refer to claims 22 and 23 as claims 21 and 22. See Final Action 4; Ans. 3; App. Br. 2, 5, 9. Appeal 2012-006250 Application 11/583,524 2 Abs.; 1–3; Figs. 2–4. The map can change the appearance of network component icons and paths between the icons. Id. Independent claims 1 and 13 are illustrative and reproduced below: 1. A system, comprising: a TV including a TV processor and a display; and a user input device communicating with the processor, wherein the processor causes a map to be presented in the display showing at least portions of a network including the TV and at least one network component and at least one communication path therebetween, wherein a user can manipulate the user input device to navigate around the map and cause content to be transmitted from a source component shown in the map to a sink component shown on the map a network map being presented on the display, wherein responsive to a viewer selection to view a “movie A”: icons on the map representing components that are completely unsuitable for sourcing “movie A” or playing “movie A” are lowlighted or removed from the map entirely, or path lines from icons on the map representing components that are completely unsuitable for sourcing “movie A” or playing “movie A” are lowlighted or removed from the map entirely, or both path lines icons on the map representing components that are completely unsuitable for sourcing “movie A” or playing “movie A” and icons on the map representing components that are completely unsuitable for sourcing “movie A” or playing “movie A” are lowlighted or removed from the map entirely. 13. A TV-centric system comprising; a TV including a TV processor and a display; a user input device communicating with the processor, wherein the processor causes a map to be presented in the display showing at least portions of a network including the TV and at least one network component and at least one communication path therebetween, wherein the map changes the appearance of a path between icons or the appearance of both a component Appeal 2012-006250 Application 11/583,524 3 icon and a path between icons to provide visible indication of advantageous path selection or both advantageous component and advantageous path selection for executing a user-desired task. REJECTIONS Claims 1–3 and 9–11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura (U.S. Patent No. 5,883,621, Mar. 16, 1999), Kelts (U.S. Patent Appl. Publ. No. 2001/0300667 A1, Oct. 18, 2001), and Walker (U.S. Patent Appl. Publ. No. 2007/0157241 A1, July 5, 2007). Claims 4–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura, Kelts, and Walker, and further in view of Brockway (U.S. Patent No. 7,600,227 B2, Oct. 6, 2009). Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura, Kelts, and Walker, and further in view of Sagey (U.S. Patent Appl. Publ. No. 2003/0158927 A1, Aug. 21, 2003). Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura, Kelts, Walker, and Sagey, and further in view of Stecyk (U.S. Patent Appl. Publ. No. 2003/0075983 A1, Apr. 24, 2003). Claims 13–15 and 17–19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura and Walker. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura and Walker, and further in view of Sagey. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura, Walker, Sagey and further in view of Stecyk. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Iwamura and Walker, and further in view of Brockway. Appeal 2012-006250 Application 11/583,524 4 ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments in the Appeal Brief presented in response to the Final Office Action, and Appellants’ arguments in the Reply Brief presented in response to the Answer. We highlight and address specific findings and arguments for emphasis as follows. Claims 1–3, 10, 13–15, and 18 Appellants argue that Iwamura does not teach indicating path selections that are unsuitable, as recited in claim 1, and indicating path selections that are advantageous, as recited in independent claim 13. App. Br. 5, 8–9; see Reply Br. 1–2, 4–5. Appellants assert that Iwamura only discloses a change in appearance indicating a selection. App. Br. 5–6. We are not persuaded by Appellants’ arguments because the claim language in dispute is directed to non-functional descriptive material. Claim construction is an issue of law subject to review de novo. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). The recitation of the lowlighted or removed icons and/or path lines on the map representing components that are completely unsuitable for sourcing “movie A” or playing “movie A,” as recited in claim 1, provides a description of the information that is intended to be conveyed to a user via the lowlighted or removed icons and/or path lines on the map. Similarly, the recitation of the changed appearance of a component icon and/or path between icons providing a visible indication of advantageous component and/or advantageous path selection, as recited in claim 13, provides a description of the information that is intended to be conveyed to a user via the changed appearance of the icon and/or path. These descriptions of information Appeal 2012-006250 Application 11/583,524 5 intended to be conveyed to the user are not functionally related to the claimed system elements (i.e., TV, TV processor, display, and user input device, etc.). In other words, the claimed system elements are not affected, altered, or changed based on the information that is intended to be conveyed to the user. The claimed system elements are the same regardless of the information that is intended to be conveyed. Non-functional descriptive material is not entitled to patentable weight. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); see also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). We agree with, and adopt as our own, the Examiner’s findings that Iwamura teaches a display wherein path lines from icons on the map are not highlighted (i.e., lowlighted, not displayed). Ans. 6; see also Iwamura, Fig. 12 (depicting the path from mini-disc (MD) recorder icon without arrows, depicting the path between digital video disc (DVD) player and digital video cassette recorder 1 (DVCR1) with arrows, and depicting the path between digital video cassette recorder 2 (DVCR2) and integrated receiver decoder (IRD) with arrows). We further agree with, and adopt as our own, the Examiner’s finding that Iwamura teaches that the map changes the appearance of the path between the icons. Ans. 12–13 (citing Iwamura, col. 8, ll. 18–65; Figs. 5, 6, 10, 12). We further note that claim 1 recites a disjunctive limitation with the following three options: (1) icons on the map are lowlighted or removed from the map entirely; or (2) path lines from icons on the map are lowlighted or removed from the map entirely; or (3) both path lines on the map and icons on the map are lowlighted or removed from the map entirely. Similarly, independent claim 13 recites a disjunctive limitation with the Appeal 2012-006250 Application 11/583,524 6 following two options: (1) the map changes the appearance of the path between icons; or (2) the map changes the appearance of both a component icon and a path between icons. When a claim covers several alternatives, the claim may be unpatentable if any of the alternatives within the scope of the claim are taught by the prior art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). Because the Examiner finds that Iwamura teaches path lines from icons on the map are lowlighted or removed from the map entirely (i.e., second option of claim 1) and teaches the map changes the appearance of a path between icons (i.e., first option of claim 13), we need not address whether Iwamura alone, or in combination with the additional applied prior art, teaches or suggests the remaining options of claims 1 and 13. For these reasons, we sustain the rejections of claim 1, and dependent claims 2, 3, and 10, not separately argued, as obvious over Iwamura, Kelts, and Walker, and independent claim 13, and dependent claims 14, 15, and 18, not separately argued, as unpatentable over Iwamura and Walker. Dependent Claims 9 and 17 Claims 9 and 17 depend from claims 1 and 13, respectively, and further recite “the network includes audio-video components and non-audio- video components selected from the group consisting of: a printer, and a scanner, the map displaying only icons indicating audio-video components.” Appellants argue that the Examiner’s taking of Official Notice based on Huang (see Ans. 23) is improper because nothing in the relied upon portions of Huang has anything to do with network maps. App. Br. 7; Reply Br. 2. Appellants further argue that Huang shows a diagram illustrating different types of devices separated by type for illustration. App. Br. 7 (citing Huang, Appeal 2012-006250 Application 11/583,524 7 U.S. Pat. Publ. No. 2011/0093903 A1, ¶¶ 14, 46; Figs. 2, 5A); Reply Br. 3 (citing Huang, ¶¶ 10, 11, 28, Figs. 1, 2, 5A). For similar reasons as those explained above addressing claims 1 and 13, Appellants’ arguments are unpersuasive as they are directed to non- functional descriptive material which is not entitled to patentable weight. Similar to claims 1 and 13, the map displaying only icons indicating audio- video components is a description of the information that is intended to be conveyed to a user via the displayed icons. We agree with, and adopt as our own, the Examiner’s findings that Walker discloses a network including a PC (personal computer), and that it was well known in the art at the time the invention was made that computers connect with printers or scanners. Ans. 8. We further note that Iwamura teaches a map displaying only icons indicating audio-video components. Iwamura, Figs. 6, 7, 10–13. It would have been obvious to one with ordinary skill in the art at the time the invention was made to modify the network including a computer as taught by Iwamura and Walker, to include a printer or a scanner, in order to provide scanning and printing capabilities for the users of the computer and network. For these reasons, in addition to those addressing claims 1 and 13, above, we sustain the rejections of claim 9 as obvious over Iwamura, Kelts, and Walker, and claim 17 as unpatentable over Iwamura and Walker. Dependent Claims 11 and 19 Claims 11 and 19 depend from claims 1 and 13, respectively, and further recite “the map changes the appearance of at least one component icon, or of a path between icons, or of a component icon and a path between icons to provide a visible indication of whether a component is energized.” Appellants argue that the relied upon portions of Iwamura are silent on any Appeal 2012-006250 Application 11/583,524 8 visible indication on a network map regarding when a component is energized. App. Br. 7; Reply Br. 4. For similar reasons as those explained above addressing claims 1 and 13, Appellants’ arguments are unpersuasive as they are directed to non- functional descriptive material which is not entitled to patentable weight. Similar to claims 1 and 13, a visible indication of whether a component is energized is a description of the information that is intended to be conveyed to a user via the changed appearance of the icon and/or path between icons. We agree with, and adopt as our own the Examiner’s finding that Iwamura teaches that the map changes the appearance of the path between the icons. Ans. 12–13 (citing Iwamura, col. 8, ll. 18–65; Figs. 5, 6, 10, 12). Furthermore, Iwamura teaches that when a component, such as DVCR1, is operating (i.e., energized) the icon representing the component may be animated. Iwamura, col. 6, ll. 15–18. For these reasons, in addition to those addressing claims 1 and 13, above, we sustain the rejections of claim 11 as obvious over Iwamura, Kelts, and Walker, and claim 19 as unpatentable over Iwamura and Walker. Dependent Claims 4–8, 12, 16, 20, 22, and 23 Appellants do not separately argue the limitations of claims 4–8, and 12, ultimately dependent from claim 1, and claims 16, 20, 22, and 23, ultimately dependent from claim 13. App. Br. 8–9. For the same reasons as independent claims 1 and 13, we sustain the following rejections: (1) claims 4–7 as unpatentable over Iwamura, Kelts, Walker, and Brockway; (2) claim 8 as unpatentable over Iwamura, Kelts, Walker, and Sagey; (3) claim 12 as unpatentable over Iwamura, Kelts, Walker, Sagey, and Stecyk; (4) claim 16 as unpatentable over Iwamura, Walker, and Sagey; (5) claim 20 as Appeal 2012-006250 Application 11/583,524 9 unpatentable over Iwamura, Walker, Sagey, and Stecyk; and (6) claims 22 and 23 as unpatentable over Iwamura, Walker, and Brockway. DECISION We AFFIRM the rejections of claims 1–20, 22, and 23 under 35 U.S.C. §103(a) as being unpatentable over the applied prior art. TIME PERIOD 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 msc Copy with citationCopy as parenthetical citation