Ex Parte Dukes et al

Board of Patent Appeals and Interferences

May 7, 2012

10752824 (B.P.A.I. May. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DEREK DUKES, VALLA VAKILI, HAMID-REZA
BEHHNAM-DEHKORDY, and MATTHEW ROWLEN
____________________

Appeal 2010-002103
Application 10/752,824
Technology Center 2400
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/752,824

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a non-final rejection of
claims1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
Appellants’ invention relates generally to “a system and method for
integrating personalized data, services, content and community with
broadcasted, recorded and/ or downloaded content.” (Spec. 1). More
particularly, the invention on appeal is directed to user customization of a
multimedia interface. (Id.).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:

a user computer, coupled to a data network via a bi-
directional communication path, to display a user interface
usable to access a user account to enter a plurality of user
customization preferences that are associated with said user
account; and

a client-side device, coupled to the data network, to
receive non broadcast data from the data network and broadcast
programming content from a broadcast source via a uni-
directional communication path, said client-side device to
receive, said plurality of user customization preferences from
the user account via the data network;

display a plurality of media presentation options based on
said plurality of user customization preferences from the user
account;
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access selected broadcast programming content from the
broadcast source based on a user selection from said plurality of
media presentation options; and

construct a customized interface displaying selected non-
broadcast content retrieved from the data network according to
said plurality of customization preferences associated with the
user's account and selected broadcast content retrieved from the
broadcast source according to said plurality of customization
preferences associated with the user's account; wherein the
plurality of customization preferences associated with the user's
account are transferable to any device that identifies with the
user and is connectible to the data network.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dillon
Russo
Alexander
US 5,852,721
US 6,025,868
US 6,177,931 B1
Dec. 22, 1998
Feb. 15, 2000
Jan. 23, 2001
Numata
Cristofalo
US 2002/0038457 A1
US 2002/0166119 A1
Mar. 28, 2002
Nov. 7, 2002

Maissel WO 99/01984 Jan. 14, 1999

REJECTIONS
Claims 1-5, 9-14 and 18-23 and 27 stand rejected under 35 U.S.C
§103(a) as being unpatentable over the combination of Maissel, Alexander,
Cristofalo, and Dillon.
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Claims 6, 7, 15, 16, 24 and 25 stand rejected under 35 U.S.C §103(a)
as being unpatentable over the combination of Maissel, Alexander,
Cristofalo, Dillon, and Russo.
Claims 8, 17 and 26 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Maissel, Alexander, Cristofalo, Dillon,
Russo, and Numata.
CLAIM GROUPING
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

1. Under § 103, did the Examiner err in finding that the
combination of Maissel, Alexander, Cristofalo, and Dillon
would have taught or suggested “a user computer, coupled
to a data network via a bi-directional communication path,”
within the meaning of claim 1?
2. Under § 103, did the Examiner err in finding that the
combination of Maissel, Alexander, Cristofalo, and Dillon
would have taught or suggested “a client-side device,
coupled to the data network, to receive non broadcast data
from the data network and broadcast programming content
from a broadcast source via a uni-directional communication
path,” within the meaning of claim 1?
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3. Under § 103, did the Examiner err by improperly combining
the references?

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Brief, page 6, et seq.
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). We
consider Appellants’ arguments only to the extent that such arguments are
directed to claimed subject matter. We decline to read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Based upon our review of the record, we find the weight of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness.
Appellants principally contend that “[t]he only elements Appellants
claim as ‘coupled to a data network’ are a user computer and a client-side
device. Both elements are absent in the Examiner’s interpretation of the
claimed limitations.” (Ap. Br. 7).
We disagree. We agree with the Examiner’s finding that Maissel
would have taught or at least suggested “a user computer, coupled to a data
network,” as headend 340, which is depicted in Maissel’s Fig. 8A and
further described on pages 28-29 (Maissel) (See Ans. 11). In reviewing the
record, we conclude that the Examiner’s broader reading of the claimed
“user computer” is not precluded given the lack of any clear definition in
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Appellants’ Specification that corresponds to the disputed “user computer,
coupled to a data network”1 that is followed with a statement of intended
use: “to receive non broadcast data from the data network . . . .”2 (Claim 1).
We further observe that Maissel’s headend 340 includes a “PROFILE
STORAGE UNIT 370” (Fig. 8A) that stores viewer preference profiles, thus
teaching or suggesting the claimed “plurality of user customization
preferences associated with said user account.” (Claim 1). We also find
Maissel’s headend 340 operates in association with display apparatus 100.
(Fig. 8A).
Moreover, we agree with the Examiner’s finding that Maissel would
have taught or suggested “a client-side device, coupled to the data network,
to receive non broadcast data from the data network and broadcast
programming content from a broadcast source” (claim 1), as set top box
(STB) 110, as shown in Fig. 8a and discussed in detail in paragraph 4 of
page 15. (Maissel). We particularly observe that one disclosed embodiment
of Appellants’ client-side system 130 includes processing logic 150 which is
expressly described as a “set-top box (STB) device.” (Spec. 10, l. 3).

1 Appellants point to the Specification at paragraph [0008] (Pat. Appl.
Publication 2005/0076364, April 7, 2005) as providing support for the
claimed user computer. (App. Br. 3).
2 “An[ ]intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although “[s]uch
statements often . . . appear in the claim’s preamble,” In re Stencel, 828
F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can
appear elsewhere in a claim. Id.

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Regarding the claimed bi-directional communication and uni-
directional communication paths, respectively, the Examiner looks to the
Dillon reference as teaching or suggesting these additional limitations.
(Ans. 11-12). Dillon expressly evidences the well-known use of a “one-way
link” in column 1, at line 29, and Dillon expressly teaches the widely-used
“two-way link” in column two, at line 8. The Examiner’s rejection is based
on the combined teachings of the cited references. 3
Regarding Issue 3, “[w]hat the prior art teaches and whether it teaches
toward or away from the claimed invention … is a determination of fact.”
Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088
(Fed. Cir. 1995). “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent
method, however, does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). Thus, “[t]he prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed . . . .” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added).
This reasoning is applicable here. Notwithstanding Appellants’
multiple “teaching away” arguments (App. Br. 10-13), we are of the view
that Appellants’ claimed invention merely arranges prior art elements with

3 One cannot show nonobviousness by attacking references individually
where the rejections are based upon combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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each element performing the same function it had been known to perform
and yields no more than one would expect from such an arrangement. Our
reviewing courts guide that such a combination of familiar elements is
obvious. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Likewise, we are in accord with the Examiner’s findings regarding the
last “construct a customized interface” limitation as being taught or at least
suggested by the cited combination of references, with emphasis on the
teachings of Maissel and Alexander. (See Ans. 12-13). We also observe that
Appellant has not filed a Reply Brief that further rebuts the Examiner's
responsive arguments.
On this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. Accordingly, for essentially the same reasons articulated by
the Examiner in the Answer (11-18), as discussed above, we sustain the
obviousness rejection of representative claim 1 over the combination of
Maissel, Alexander, Cristofalo, and Dillon. Claims 2-27 (not argued
separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

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DECISION
We affirm the Examiner’s § 103 rejections of claims 1-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

ORDER
AFFIRMED

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