Ex Parte Casement et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11717917 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCIA A. CASEMENT and DAVID FOLKER
____________

Appeal 2010-003413
Application 11/717,917
Technology Center 2400
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Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and GLENN J.
PERRY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 29-52.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants’ invention provides television schedule information and
displays an action pop-up menu listing actions that can be scheduled. See
generally Abstract; ¶ 0030; Fig. 2. Claim 29 is illustrative:

1 On August 7, 2012, Appellants waived attendance at an oral hearing for
this appeal scheduled for November 6, 2012.
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29. A method for performing and scheduling actions related to
viewing and recording programs, comprising:

displaying a plurality of program listings;

selecting a program from the plurality of program listings;

displaying an action pop-up menu overlaid over the plurality of
program listings, wherein the action pop-up menu comprises a listing of a
plurality of selectable scheduling actions related to the selected program, the
listing including at least one action unrelated to recording;

selecting one of the plurality of scheduling actions using a highlight
region; and

scheduling the selected action.

THE REJECTION
The Examiner rejected claims 29-52 under 35 U.S.C. § 103(a) as
unpatentable over Davis (US 5,822,123; Oct. 13, 1998 (filed June 24,
1996)). Ans. 3-5.2

CONTENTIONS
The Examiner finds that Davis performs and schedules actions related
to viewing and recording programs recited in representative claim 1,
including displaying an “action pop-up menu” with selectable “scheduling
actions” which is said to correspond to Davis’ simultaneously-displayed
pop-up hints in Figures 43A-I. Ans. 3-8. The Examiner acknowledges that
Davis does not explicitly teach using a highlight region as claimed, but

2 Throughout this opinion, we refer to (1) the Appeal Brief filed April 27,
2009; (2) the Examiner’s Answer mailed August 6, 2009; and (3) the Reply
Brief filed October 5, 2009.
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nonetheless contends that this feature is well known in the art, especially
when selecting options, and therefore concludes that the claim would have
been obvious. Id.
Appellants argue that Davis does not display an action pop-up menu
including selectable scheduling actions as claimed since Davis’ pop-up hints
are instructive text objects—not selectable scheduling actions as claimed.
App. Br. 6-8; Reply Br. 4. Appellants add that it would not have been
obvious to select a scheduling action using a highlight region in Davis since
not only would other nonobvious steps be required to schedule the option
selected using this highlight region, but Davis actually teaches away from
this feature since attempting to use a highlight region for selection in Davis
would cause hints to disappear. App. Br. 8-11; Reply Br. 5-6. Appellants
add that Davis fails to teach or suggest other features of claims 34 and 38
summarized below. App. Br. 11-15; Reply Br. 6-8.

ISSUES
I. Under § 103, has the Examiner erred by finding that Davis would
have taught or suggested:
(1)(a) displaying an action pop-up menu listing selectable scheduling
actions; (b) selecting one scheduling action using a highlight region; and (c)
scheduling the selected action as recited in claim 1?
(2) displaying (a) a schedule of selected actions, and (b) an icon next
to each selected action to indicate the type of scheduled action as recited in
claim 34?
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(3)(a) displaying an action pop-up menu, and (b) scheduling the
selected action, both responsive to selecting the same key on the input
device as recited in claim 38?

II. Does Davis teach away from selecting one scheduling action
using a highlight region?

ANALYSIS
Claims 29-33, 39, 40, 41-45, 51, and 52
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 29 which recites, in pertinent part, (1)
displaying an action pop-up menu listing selectable scheduling actions; (2)
selecting one scheduling action using a highlight region; and (3) scheduling
the selected action. According to the Examiner, displaying an “action pop-
up menu” with selectable “scheduling actions” corresponds to Davis’
simultaneously-displayed pop-up hints in Figures 43A-I, including hints for
setting program reminders, as well as restricting and allowing program
viewing. Ans. 3-8 (citing Davis, col. 35, ll. 33-37; Figs. 43E, H; table in col.
37, ll. 27-55).
We see no error in this position. First, displaying multiple pop-up
hints simultaneously collectively constitute an “action pop-up menu” as
claimed since each displayed hint is associated with a corresponding
selectable action. See id. Although Appellants acknowledge that one of
these hints is associated with a “scheduling action,” namely setting a
reminder (Reply Br. 5), we nonetheless find that all of these identified
associated actions are “scheduling actions” under the term’s broadest
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reasonable interpretation. Since the term “schedule” is not defined in the
Specification, we construe the term according to its plain meaning which is
defined, in pertinent part, as “to plan for a certain time.”3 Given the breadth
of this term, nothing in the claim precludes the user’s selecting a particular
action associated with a hint (e.g., setting a reminder or restricting or
allowing program viewing) in Davis by pressing the appropriate keys which
causes the system to execute the associated action. See Davis, col. 35, l. 6 –
col. 37, l. 55. Doing so not only schedules that action for execution at the
system level, but also with respect to a particular scheduled program. See id.
Although the user does not select these “scheduling actions” directly from
the pop-up hint window itself in, for example, Figures 43E and H, the user
nonetheless selects and schedules these actions based on the hints in the
associated pop-up windows. In this sense, the windows are used to select
and schedule the corresponding action.4
Although nothing in the claim precludes these pop-up windows as
constituting “highlight regions” since these rectangular graphical regions are
superimposed on the underlying displayed image to highlight the associated
hint and corresponding action as shown in Figures 43A-I, we nonetheless
see no error in the Examiner’s position that highlighting options associated
with these regions would have been obvious, particularly since Davis is
replete with examples of highlighting selectable options. See Ans. 8 (citing

3 WEBSTER’S NEW WORLD DICTIONARY OF AMERICAN ENGLISH 1199 (3d
College ed. 1993).
4 Accord App. Br. 14 (admitting that the user in Davis presses one key (e.g.,
the “HELP” key) on a remote control to display hints, and then presses some
other key to schedule an action) (emphasis added); Ans. 10 (acknowledging
this admission).
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Davis, col. 27, ll. 17-21; Figs. 7-8); see also Davis, col. 18, ll. 53-56; col. 35,
ll. 7-14; Figs. 18, 43A. Based on these collective teachings, we therefore
find that Davis at least suggests selecting a scheduling action using a
highlight region as claimed.
Nor are we persuaded that Davis teaches away from this feature as
Appellants contend. App. Br. 9-11; Reply Br. 5-6 (citing Davis, col. 35, ll.
38-40). Even assuming, without deciding, that Davis removes a hint when
the user presses navigation keys as Appellants argue, that does not obviate
the user’s selecting the associated action since the selection is not directly
from the pop-up hint window—despite the window being used in that
selection as noted above. In any event, leaving aside the fact that this
navigation may or may not remove the other simultaneously-displayed pop-
up hint windows in this scenario, the user need not navigate these pop-up
hint windows to select the corresponding actions.
Lastly, we find Appellants’ arguments regarding the Examiner’s
allowing claims including a highlight region in the present application’s
parent application (App. Br. 11) unavailing. Not only are the actions during
prosecution of that application not binding on the dispute before us in the
present appeal, the claims in the respective applications have different scope
as the Examiner indicates. Ans. 8.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 29, and claims 30-33, 39, 40, 41-45, 51, and 52 not
separately argued with particularity.

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Claims 34-37 and 46-49
We also sustain the Examiner’s rejection of representative claim 34
reciting, in pertinent part, displaying (1) a schedule of selected actions, and
(2) an icon next to each selected action to indicate the type of scheduled
action. We see no error in the Examiner’s position (Ans. 4, 9) that Davis at
least suggests displaying a schedule of selected actions, namely the
programs “Stargate” and “Don Juan DeMarco,” and their associated icons in
Figure 43A. See Davis, col. 35, ll. 6-13, col. 37, ll. 27-55. Since selected
actions associated with pop-up hints are scheduled with respect to particular
programs as noted above, we see no reason why Davis does not at least
suggest displaying this schedule as the Examiner indicates. Appellants’
arguments (App. Br. 11-13; Reply Br. 6-7) are unavailing for they are not
commensurate with the scope of the claim.
Nor do we find error in the Examiner’s position that the “i” icons
adjacent the programs in Figure 43A indicate the type of scheduled action,
namely the type of program to be viewed (or not) based on a description of
its content and other related information. See Ans. 9 (citing Davis, col. 19,
ll. 58-63; Fig. 20).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 34, and claims 35-37 and 46-49 not separately argued
with particularity.

Claims 38 and 50
We will not, however, sustain the Examiner’s rejection of claim 38
reciting, in pertinent part, (1) displaying an action pop-up menu, and (2)
scheduling the selected action, both responsive to selecting the same key on
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the input device. Although the Examiner contends that these functions are
achieved by the user’s pressing the down key in connection with the pop-up
hints in Figures 43A-I (Ans. 4, 10-11), these hints are displayed when
pressing an invalid key or the “HELP” key as Appellants indicate. Reply Br.
8. See Davis, col. 34, l. 56 – col. 35, l. 49. Although pressing the down key
would cause a pop-up hint to appear in situations where the down key is
invalid for a particular function, the user would then schedule the
corresponding selected action by pressing a valid key, namely the correct
key indicated in the hint. In short, there would be no reason to select the
down key twice in this situation as Appellants indicate. App. Br. 14-15;
Reply Br. 8.
To the extent that the Examiner’s position is based on the user
selecting (1) the “HELP” key at least twice in connection with both
displaying and scheduling steps, and (2) additional keys to schedule selected
functions is a position that has not been articulated on this record. Although
independent claim 29 contains “comprising” language in the preamble which
does not preclude additional unrecited key selections,5 we will not speculate
regarding the obviousness of such a scenario here in the first instance on
appeal. What we can say is that the Examiner’s articulated position is
untenable on this record.
We are therefore persuaded that the Examiner erred in rejecting claim
38, and claim 50 which recites commensurate limitations.

5 “‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citation omitted).
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CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 29-37, 39-
49, 51, and 52, but erred in rejecting claims 38 and 50.

ORDER
The Examiner’s decision rejecting claims 29-52 is affirmed-in-part.
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-IN-PART

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