Ex Parte Virzi et alDownload PDFPatent Trial and Appeal BoardJul 25, 201611693758 (P.T.A.B. Jul. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111693,758 03/30/2007 25537 7590 07/27/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Robert Virzi UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 20060344 9810 EXAMINER CHIN, RICKY ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 07/27/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT VIRZI and JOEL ANGIOLILLO Appeal2014-005023 Application 11/693,758 Technology Center 2400 Before JOHN A. JEFFERY, DAVID M. KOHUT, and MONICA S. ULLAGADDI, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-3, 6-16, and 19-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention enables alphanumeric channel changing by (1) receiving an entry corresponding to a channel name; (2) matching the name against channel data stored in a database; and (3) providing the channel based on the match. See generally Abstract. Claim 1 is illustrative: 1. A method, comprising: populating at least one database with channel data from metadata within one or more channels, wherein the channel data Appeal2014-005023 Application 11/693,758 comprises at least one of channel number, channel name, list of programs, program start and end times for each of the programs, and ratings; receiving an entry indicating that subsequent entries are alphabetic entries; receiving one or more subsequent entries corresponding to a partial name of a channel; matching the one or more subsequent entries against the channel data stored in the database to form a plurality of matches, wherein the plurality of matches are formed by popularity ratings over a range of viewers and frequency of use based on a pattern of use for a user within a particular time period corresponding to a time the one or more subsequent entries are received and wherein the frequency of use is independent of usage outside of the particular time period; automatically completing the one or more subsequent entries corresponding to metadata associated with a channel using the at least one of the plurality of matches; transmitting a video broadcast signal of at least one channel corresponding to the one or more subsequent entries based on at least one of the plurality of matches; and providing, at a display device, a name of the at least one channel corresponding to the one or more subsequent entries based on the match and enabling selection of at least one of the one or more subsequent entries based on the match. THE REJECTION The Examiner rejected claims 1-3, 6-16, and 19-22 under 35 U.S.C. § 103(a) as unpatentable over Bayrakeri (US 7,373,652 Bl; May 13, 2008), Rao (US 2006/0130098 Al; June 15, 2006) ("Rao '098"), Torii (US 2005/0183036 Al; Aug. 18, 2005), Ramer (US 7,548,915 B2; June 16, 2 Appeal2014-005023 Application 11/693,758 2009), Rao (US 2010/0299692 Al; Nov. 25, 2010) ("Rao '692"), and Boillot (US 2008/0235621 Al; Sept. 25, 2008). Ans. 2-9. 1 CONTENTIONS The Examiner finds that Bayrakeri ( 1) populates at least one database with the recited channel data; (2) receives entries corresponding to at least a partial name of a channel; (3) matches the entries against the stored channel data; ( 4) provides a corresponding channel to a display device; and ( 5) enables selecting subsequent entries based on the match. Ans. 2-3. The Examiner acknowledges that Bayrakeri does not, among other things, receive an entry indicating that subsequent entries are alphabetic entries. Ans. 3--4. The Examiner, however, cites (1) Rao '098 for receiving an entry indicating an alphabetic entry mode, and (2) Torii for indicating that subsequent entries are alphabetic entries, namely by switching input modes via a phone's power key. Ans. 4. The Examiner also acknowledges that the Bayrakeri/Rao '098/Torii system does not form matches by (1) viewer popularity ratings, and (2) use frequency for a particular time period as claimed, but cites Rao '692 and Ramer for teaching those elements, respectively. Ans. 4-5. The Examiner also acknowledges that the Bayrakeri/Rao '098/Torii/Ramer system does not automatically complete the subsequent entries as claimed, but cites Boillot for teaching this feature. Ans. 6. The Examiner adds that Rao '098 (1) transmits a video broadcast signal of at least one channel corresponding to 1 Throughout this opinion, we refer to ( 1) the Appeal Brief filed August 13, 2013 ("App. Br."); (2) the Examiner's Answer mailed December 19, 2013 ("Ans."); and (3) the Reply Brief filed January 22, 2014 ("Reply Br."). 3 Appeal2014-005023 Application 11/693,758 the subsequent entries based on at least one match, and (2) provides the channel's name at the display device. Ans. 3. Based on these collective teachings, the Examiner concludes that claim 1 would have been obvious. Ans. 2---6. Appellants argue that the cited prior art does not transmit a video broadcast signal of at least one channel corresponding to one or more subsequent entries based on at least one match, as claimed. App. Br. 8-10; Reply Br. 5---6. Although Appellants acknowledge that Rao '098's channel representations in Figure 4 are derived from matches from a search, Appellants contend that these representations are not video broadcast signals, but rather merely allow the user to navigate to a represented item, such as tuning to a represented channel. App. Br. 9; Reply Br. 4--5. Appellants add the Examiner's reliance on Rao '098 and Torii for teaching receiving an entry indicating that subsequent entries are alphabetic entries is misplaced. App. Br. 10-11; Reply Br. 6-8. According to Appellants, the fact that alphabetic text is entered in a search window in the electronic program guide (EPG) in Rao '098's Figure 4 does not indicate that subsequent entries are alphabetic text, nor is there a need for such an indication given Rao '098's key entries representing only letters. App. Br. 10-11. Appellants add that not only is Torii's power key used to switch between Japanese, English, and number modes, it is unclear why the Bayrakeri/Rao '098 system would be modified to switch between alphabetic and numeric entries as the Examiner proposes given Rao '098's full keyboard. App. Br. 11-12; Reply Br. 8. Lastly, Appellants argue that the Examiner provides no proper reason to combine the cited references and, therefore, the proposed combination 4 Appeal2014-005023 Application 11/693,758 lacks a rational underpinning and is based on impermissible hindsight. App. Br. 12-14; Reply Br. 9-10. ISSUES I. Under§ 103, has the Examiner erred in rejecting claim 1 by finding that the cited references collectively would have taught or suggested (1) receiving an entry indicating that subsequent entries are alphabetic entries, and (2) transmitting a video broadcast signal of at least one channel corresponding to one or more subsequent entries based on at least one of plural matches? II. Is the Examiner's proposed combination of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? ANALYSIS Claim 1 We begin by noting, as do Appellants (App. Br. 12; Reply Br. 9), that the Examiner relies on six references to reject the claims. That alone is not dispositive of error in the Examiner's rejection, for it is well settled that the number of references cited is not a factor in assessing the propriety of an obviousness rejection, but rather what the references would have meant to ordinarily skilled artisans. See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991 ). Accord Ans. 11 (citing Gorman). Notably, the Examiner's findings regarding four of the six cited references, namely Bayrakeri, Rao '692, Ramer, and Boillot, are undisputed, apart from Appellants' contention that Bayrakeri lacks foreign language 5 Appeal2014-005023 Application 11/693,758 functionality (unlike Torii) in connection with the above-noted combinability argument. See App. Br. 12, 14. Rather, this dispute turns on the Examiner's reliance on Rao '098 and Torii in connection with the disputed limitations noted in our issue statement, and the cited references' comb inability. On this record, we see no error in the Examiner's reliance on Rao '098 and Torii for teaching receiving an entry indicating that subsequent entries are alphabetic entries, as claimed. First, the EPG in Rao '098's Figure 4 includes a keyboard 404 for entering alphabetic characters, and a "NUMBERS" key. Rao '098 i-f 49. Although Rao '098 does not specify the function of the "NUMBERS" key, skilled artisans would nonetheless understand that at least one plausible function of this key is to enter numbers instead of letters-a function that even Appellants acknowledge as a possibility. See Reply Br. 7. This functionality, then, at least suggests that characters entered after selecting the "NUMBERS" key are only numbers; otherwise, entered characters are only letters. Therefore, by not pressing the "NUMBERS" key, Rao '098 at least suggests that all letter-based entries-including subsequent such entries- would be alphabetic. See Rao '098 i-f 49. Indicating such subsequent entries via a received entry from, for example, a dedicated key, would have been obvious, particularly in view of Torii whose system enables users to switch between alphabetic and numeric input modes by merely pressing a power switch as the Examiner indicates. Ans. 4, 10-11; Torii i-fi-165---68; Fig. 1. The Examiner's position, then, that providing a dedicated "ALPHABETICAL" key similar to the "NUMBERS" key in Rao '098's Figure 4 has at least a rational basis to enable users to easily toggle between 6 Appeal2014-005023 Application 11/693,758 input modes by merely pressing the associated key-a toggling function at least suggested by Torii's key-based input mode selection. That Torii's input mode selection includes additional language-based modes as Appellants indicate (App. Br. 11; Reply Br. 8) is of no consequence here, for Torii nonetheless teaches switching between alphabetic and numeric input modes using a key. Ans. 10-11. And even assuming, without deciding, that Rao '098 discloses a "full" keyboard as Appellants contend (App. Br. 11- 12; Reply Br. 8), we still see no reason why a dedicated key could not be provided to indicate alphabetic entries (including subsequent entries) as the Examiner proposes in a manner similar to numeric entries, and to enable easy and intuitive toggling between input modes. Ans. 10-11. Such an enhancement uses prior art elements predictably according to their established functions-an obvious improvement. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Nor do we find error in the Examiner's reliance on Rao '098 for teaching the recited transmitting step. Ans. 3, 9-10 (citing Rao '098 i-fi-f 18, 47; Figs. 1, 3-5). As the Examiner indicates, Rao '098's channel representations enable the user to, among other things, (1) tune to a represented channel, and (2) load a representative content item from a database. Ans. 10 (citing Rao '098 i147). Given Rao '098's broadcast network 106 in Figure 1 as noted in paragraph 18, Rao '098 at least suggests transmitting a video broadcast signal of at least one channel based on a match as claimed. Although Appellants acknowledge that Rao '098's representations in Figure 4 are derived from at least one match from a search, Appellants nonetheless contend that the representations are not video broadcast signals 7 Appeal2014-005023 Application 11/693,758 of at least one channel as claimed. App. Br. 9; Reply Br. 4--5. This argument, however, does not persuasively rebut the Examiner's position that is based on Rao '098's broadcast network transmission noted above. That is, tuning to a channel on a broadcast network to receive content delivered on that channel as Rao '098 suggests would involve transmitting a video broadcast signal associated with that content. Notably, claim 1 does not specify what element performs the transmitting step. As such, nothing in the claim precludes further transmitting a video broadcast signal to the user's receiver after tuning to a particular channel. That is, nothing in the claim precludes further transmitting a video broadcast signal to a particular user (e.g., from a set-top box to a television), where the signal is also transmitted from a content provider. Accord Spec. i-f 14 (noting that the media control station 122 may include an output to transmit the media signal to the display device 130); see also id. i-f 31 (noting that once a viewer chooses a desired channel, the media control station 122 passes the signal of the desired channel from a TV service provider to the display device). Therefore, Appellants' arguments regarding Rao '098's alleged shortcomings in this regard (App. Br. 8-10; Reply Br. 5-6) are unavailing, for they are not commensurate with the scope of the claim, which does not preclude the Examiner's interpretation. To the extent that Appellants attempt to argue Rao '098's alleged shortcomings in connection with the last clause of the claim, namely the "providing" and "enabling selection" steps (Reply Br. 6), such an argument raised for the first time in the Reply Brief is waived as untimely. See 37 C.F.R. § 41.41(b)(2) (2012) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any 8 Appeal2014-005023 Application 11/693,758 designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown."). In any event, Appellants' arguments regarding the last clause of claim 1 do not persuasively rebut the Examiner's reliance on Bayrakeri and Rao '098 for teaching these elements. See Ans. 3. Although Appellants contend that the "providing" and "enabling selection" steps of claim 1 's last clause occur after the "transmitting" step,2 the claim recites no such temporal requirement. It is well settled that method steps are not ordinarily construed to require an order where, as here, neither the claims nor the Specification expressly or implicitly requires performance in that order. See Altiris v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). In fact, nothing in the claim precludes the steps of the last two clauses of claim 1 from occurring simultaneously. Therefore, the Examiner's reliance on the collective teachings of Bayrakeri and Rao '098 for teaching these steps is reasonable, particularly since the Examiner's findings regarding Bayrakeri (Ans. 3) are undisputed. Lastly, we see no error in the Examiner's rationale to combine the references as proposed. For the reasons noted above and by the Examiner, the Examiner's proposed enhancements use prior art elements predictably according to their established functions to yield predictable results and, therefore, obvious improvements. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Appellants' contention that the Examiner's rejection 2 See Reply Br. 6 ("Accordingly, Rao '098 does not disclose both 'transmitting a video broadcast signal' and subsequently 'providing ... a name of the at least one channel ... and enabling selection of the at least one or more subsequent entries based on the match,' as claimed.") (emphasis in original). 9 Appeal2014-005023 Application 11/693,758 is based entirely on "improper hindsight conjecture" and inappropriately uses Appellants' statement of the problem in formulating the rejection (App. Br. 12-14; Reply Br. 9-10) is unavailing. Appellants' arguments regarding the individual shortcomings of Torii, Bayrakeri, and Rao '098 (App. Br. 12-14) do not show nonobviousness where, as here, the rejection is based on the cited references' collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). To be sure, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning .... " In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). But where, as here, the record tends to suggest that the Examiner's determination accounts for only knowledge within the level of ordinary skill when the claimed invention was made, and does not include knowledge gleaned only from Appellants' disclosure, such a reconstruction is proper. See id. On this record, then, we find the Examiner's proposed combination is supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1. Claims 2, 3, 6--16, and 19-22 We likewise sustain the Examiner's rejection of claims 2, 3, 6-16, and 19-22. Apart from summarily asserting that these claims are separately patentable because the cited prior art allegedly fails to disclose the recited features (App. Br. 14--18; Reply Br. 9-10), Appellants do not particularly show error in the Examiner's findings and conclusions in rejecting these 10 Appeal2014-005023 Application 11/693,758 claims. See 37 C.F.R. § 41.37(c)(l)(vii) (noting that an argument that merely points out what a claim recites is unpersuasive). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Therefore, we are not persuaded that the Examiner erred in rejecting claims 2, 3, 6-16, and 19- 22. CONCLUSION The Examiner did not err in rejecting claims 1-3, 6-16, and 19-22 under§ 103. DECISION The Examiner's decision rejecting claims 1-3, 6-16, and 19-22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation