Ex Parte Gaul et al

Board of Patent Appeals and Interferences

Jul 23, 2012

09924111 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/924,111 08/07/2001 Michael A. Gaul 60374.0004USI5/968011 9737
62658 7590 07/24/2012
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
HSIUNGFEI, PENG
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
07/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. GAUL and DEAN F. JERDING
____________

Appeal 2011-006984
Application 09/924,111
Technology Center 2400
____________

Before JOSEPH L. DIXON, THU A. DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006984
Application 09/924,111

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3, 6, 10-23, 26, 30-36, 39, 43-48, 51, and 55-741. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a system and method for
configuring an interactive program guide. See Abstract
Claim 1 is illustrative, with key disputed limitations emphasized:
1. A system for providing interactive media services
comprising:

memory for storing interactive program guide (IPG)
configuration data that is used to determine an IPG channel
listing characteristic where the channel listing characteristic
comprises a predetermined number of channels presented
concurrently; and

logic configured to modify the IPG configuration data in
response to a first user input requesting a change in the IPG
channel listing characteristic,

wherein the IPG channel listing characteristic is
represented by an object indicia presented to a user and an
action for reconfiguring the IPG channel listing characteristic
is represented by a tool indicia presented to the user such that a
first user input of selecting the object indicia and the tool
indicia modifies the IPG channel listing characteristic.

1 We note that Appellants erroneously list claims 55 and 56 as “cancelled”
(App. Br. 1) but then argue the Examiner’s rejection of those claims. App.
Br. 7. We consider herein Appellants’ patentability arguments with respect
to claims 55 and 56.
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The Examiner relies on the following as evidence of unpatentability:
Ward US 2007/0186240 A1 Aug. 9, 2007
(Eff. Filing date July 21, 1998)
Lemmons US 6,442,755 B1 Aug. 27, 2002
(Filed Jan. 8, 1999)

THE REJECTIONS
1. The Examiner rejected claims 1-3, 6, 10-14, 17-23, 26, 30-36,
39, 43-48, 51, and 55-74 under 35 U.S.C. § 102(e) as anticipated by Ward.
Ans. 3-52.
2. The Examiner rejected claims 15 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Ward and Lemmons. Ans. 5-6.

ISSUES
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issues
dispositive of the claims on appeal:
1. Under § 102, has the Examiner erred in rejecting claims 1-3, 6,
10-14, 17-23, 26, 30-36, 39, 43-48, 51, and 55-743 by finding that Ward
disclosed:
a. Interactive program guide configuration data, which may
include time, channel number and the like;
b. Logic configured to modify the interactive program guide
configuration data; and,

2 Throughout this opinion, we refer to the Appeal Brief filed December 5,
2008; the Examiner’s Answer mailed March 19, 2009; and, the Reply Brief
filed May 19, 2009.
3 Supra note 1, at 1.
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Application 09/924,111

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c. An “object” selectable by a user and a “tool” which
allows a user to modify the interactive program guide configuration
data?

ANALYSIS
The § 102 Rejection
Appellants argue, with respect to claims 1-3, 6, 10-14, 17-23, 26, 30-
36, 39, 43-48, 51, and 55-74, that Ward fails to disclose: interactive program
guide configuration data, which may include time, channel number and the
like (App. Br. 7, 10, 13, 15) ; logic configured to modify the interactive
program guide configuration data (App. Br. 8, 10, 16) ; and, an “object”
selectable by a user and a “tool” which allows a user to modify the
interactive program guide configuration data. App. Br. 9, 11, 14, 17, 19, 21,
23, 25, Reply Br. 3.
The Examiner finds that Ward discloses a system for providing a
program guide and points out that Ward expressly discloses that
configuration data utilized to determine program guide channel listing
characteristics are downloaded into memory, noting that the characteristics
comprise a predetermined number of channels presented. Ans. 3.
We find no error in the Examiner’s findings. We find that Appellants’
arguments with respect to the difference between “software instructions” and
“configuration data” are predicated on non-functional descriptive material
(i.e., particular data displayed for a viewer). In particular, the features in
Appellants’ claims that are directed to:
an IPG channel listing characteristic where the channel listing
characteristic comprises a predetermined number of channels
presented concurrently; (claim 1, see also claims 17, 30, and 43),
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an IPG time listing characteristic where the time listing characteristic
is at least one of the following:
a predetermined number of time listings presented concurrently
and a predetermined coverage of a time listing; (claim 6, see also
claims 26, 39, and 51),

are features which are “useful and intelligible only to the human mind.” See
In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)) (distinguishing such claim limitations
from claim limitations defining functional characteristics).4
The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See Lowry, 32 F.3d at
1583 (“Lowry does not claim merely the information content of a memory
. . . . Nor does he seek to patent the content of information resident in a
database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).

4 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP, 8th edition (revised Aug. 2006), § 2106.01.)

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Here, the informational content of the claimed display of various
formats of channel listings represent nonfunctional descriptive material that
is entitled to little or no weight in the patentability analysis.
Even if we arguendo accorded patentable weight to the disputed
display of various formats of channel listings, we find the evidence supports
the Examiner’s underlying factual findings and ultimate legal conclusion of
anticipation. In particular, we agree with the Examiner that Ward discloses
“interactive program guide (IPG) configuration data that is used to
determine an IPG channel listing characteristic” within the meaning of
Appellants’ claims.
Appellants also argue that Ward fails to disclose “logic configured to
modify the IPG configuration data in response to a first user input requesting
a change in the IPG channel listing characteristic . . .” (App. Br. 8)
(emphasis omitted) urging that the removal or change of programs listed to
be recorded within Ward changes the “content” rather than the “look” of the
program guide.
The Examiner finds that Ward discloses various “control buttons”
which permit the user to modify the displayed Watch/Record schedule
program guide. Ans. 7.
We are not persuaded that the Examiner erred in that we find that the
“content” of a display is inextricably intertwined with the “look” of a
display. We find that nowhere within Appellants’ claims do Appellants
recite the “look” of the program guide. Consequently, Appellants’
arguments are not commensurate with the scope of their claims. Further,
Appellants do not point to any definition for “channel listing characteristic”
within their Specification that would lead us to a narrower definition and we
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find that the Examiner’s assigned definition is within the broadest
reasonable interpretation of that term which is applied during prosecution.
Finally, Appellants argue that Ward fails to disclose that a listing
characteristic “is represented by an object indicia presented to a user” and
that an action for reconfiguring that listing characteristic “is represented by a
tool indicia presented to the user.” App. Br. 9, 11, 14, 17, 19, 21, 23, and 25
(emphasis omitted), see also Reply Br. 3.
The Examiner finds that Ward discloses presenting an “object,” the
“Watch/Record Schedule Guide” and that Ward discloses various “tools” in
the “Remove” or “Change” buttons. Ans. 7.
Again, we find the Examiner’s interpretation to be within the broadest
reasonable interpretation of “object” and “tool,” as utilized by Appellants.
Appellants point to no special definition of these terms and, consequently,
we find no error in the Examiner’s rejection.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1 and claims 2, 3, 6, 10-14, 17-23, 26, 30-36, 39, 43-48,
51, and 55-74.

The § 103 Rejection
Appellants do not separately argue the rejection of claims 15 and 16
as unpatentable over Ward and Lemmons. Consequently, for the reasons set
forth above, we affirm the Examiner’s rejection of those claims as
unpatentable under §103 over Ward and Lemmons.

CONCLUSION
The Examiner did not err in rejecting claims 1-3, 6, 10-23, 26, 30-36,
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39, 43-48, 51, and 55-74 under §102 and §103.

ORDER
The Examiner’s decision rejecting claims 1-3, 6, 10-23, 26, 30-36, 39,
43-48, 51, and 55-74 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)(1)(iv).

AFFIRMED

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