Ex Parte Hardacker et al

Patent Trial and Appeal Board

Sep 18, 2014

11583524 (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT L. HARDACKER and FREDERICK J. ZUSTAK
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Appeal 2012-006250
Application 11/583,524
Technology Center 2400
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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 Claims 24–27 are withdrawn.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.
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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
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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.
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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
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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
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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,
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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
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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
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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

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