Ex Parte IMAI et al

Patent Trial and Appeal Board

Jun 28, 2016

12369107 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/369,107 02/11/2009
23117 7590 06/30/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Daiji IMAI
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.
MEN-3917-17 3206
EXAMINER
LESNIEWSKI, VICTOR D
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAIJI IMAI and RYOICHIRO ATONO
Appeal2014-006452
Application 12/369,107 1
Technology Center 2400
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b)(l).
We affirm-in-part.
Invention
Appellants' invention relates the display of a plurality of program
information in tabular form, such as for a program guide for TV. (Spec.
1: 18-19; Abstract.) Such program information may include user
information registered by a user, indicating that the user is interested in an
associated program. Priority may be set for user information and the
1 Appellants identify Nintendo Co., Ltd. and HAL Laboratory, Inc. as the
real parties in interest. (Appeal Br. 3.)
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Application 12/369,107
depiction of the program in a program guide may be depicted on the basis of
the priority. (Abstract.)
Exemplary Claims
Claims L 3, and 11, reproduced below with certain key limitations
ernphas1zed, are exemplary:
1. A non-transitory storage medium storing computer
executable instructions to be executed by a computing system of
a program information displaying apparatus that is configured to
display a plurality of program information in tabular form, the
plurality of program information including a first program that is
displayed, said computer executable instructions comprising
instructions configured to:
set respective priorities of a plurality of user information;
accept user provided input that specifies the first program
that is displayed among said plurality of program information
that is displayed to the user;
register of any one of said plurality of user information
with respect to any one of said plurality of program information
in accordance with the specified first program; and
depict each program ir/ormation, including the first
program, on the basis of said priority of said user information
registered in said program information.
3. The medium of claim 1, wherein different display
manners are respectively set to said plurality of user
information, and said program information is depicted in the
display manner determined on the basis of said priority of said
user information.
11. A program guide system for displaying program
information, the system comprising:
a display device that is configured to display a program
guide that includes a plurality of programming sections;
a non-transitory storage medium system configured to
store a plurality of user profiles; and
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a processing system that includes at least one processor,
the processing system configured to:
accept user provided input via an input device, the
user provide input indicating a first programming section
among the plurality of displayed programming sections;
register a user profile of the plurality of user
profiles with the first programming section from the
plurality of programming sections in accordance with the
accepted user provided input;
receive user input of a selected priority;
order the plurality of user profiles in accordance
with the selected priority; and
output the first programming section of the
programming guide to the display device in accordance
with how the registered user profile is prioritized
according to the ordered plurality of user profiles.
Rejections
The Examiner rejects claims 1-10 and 14--16 under 35 U.S.C.
§ 102(e) as anticipated by Fukuda et al. (US 7,962,936 B2; iss. June 14,
2011) (hereinafter "Fukuda"). (Final 1A .. ction 2-7.)
The Examiner rejects claims 11-13 under 35 U.S.C. § 103(a) as
obvious over Fukuda and Sugimoto et al. (US 2007/0186241 Al; pub. Aug.
9, 2007) (hereinafter "Sugimoto"). (Final Action 7-11.)
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Issues
(A) Did the Examiner err in finding that Fukuda discloses "set[ting]
respective priorities of a plurality of user information," as recited in claim 1?
(B) Did the Examiner err in finding that Fukuda discloses
"register[ing] of any one of said plurality of user information with respect to
any one of said plurality of program information in accordance with the
specified first program," as recited in claim 1?
(C) Did the Examiner err in finding that Fukuda discloses "depict[ing]
each program information, including the first program, on the basis of said
priority of said user information registered in said program information," as
recited in claim 1?
(D) Did the Examiner err in finding that Fukuda discloses program
information "different display manners" and where program information is
"depicted in the display manner determined on the basis of priority of said
user information," as recited in claim 3?
(E) Did the Examiner err in finding that the combination of Fukuda
and Sugimoto teaches or suggests the outputting of a first programming
section of a programming guide in accordance with how a registered user
profile is prioritized according to an ordered plurality of user profiles, as
recited in claim 11?
ANALYSIS
(A) "set respective priorities of a plurality of user information"
The Examiner finds Fukuda discloses the setting of priorities of a
plurality of user information in its disclosure of the use of user profile
information in a preference analysis to determine a program's priority in a
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program guide. (Final Action 2; Answer 4.) The Examiner finds that in
Fukuda:
[c]learly user preferences have been set and are being analyzed.
Such preferences meet the limitation of "respective priorities of
a plurality of user information" as a preference is shown to be a
piece of user information that has priority over other pieces of
user information.
(Answer 4.)
Appellants argue that prioritization of plural users is required by the
disputed limitation, invoking the description of how this occurs in their
Specification (Reply Br. 4), and state that Fukuda does not disclose
prioritization of users (Appeal Br. 11 ). However, the claim language
requires the setting of respective priorities of user information, not of users.
Thus, this argument does not persuade us of Examiner error.
Appellants further argue that there is no disclosure in Fukuda that
preference information is prioritized with, for example, a user's address
information being given priority over genre preference information. (Appeal
Br. 11-12; Reply Br. 2--4.) The Examiner argues that in the context of
Fukuda, the prioritization of programs through analysis of user information
discloses prioritization of the user information. (Answer 4--5.) While the
Appellants are correct that analysis of information would not inherently
disclose setting respective priorities for that information (Reply Br. 3), we
agree with the Examiner that Fukuda discloses that during the analysis
priorities are used for user information, including in the disclosure that,
"during the ... preference analysis, each item of preference information
included in the user profile information will be weighted for analysis."
(Fukuda 27:57-59.)
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Accordingly, we are not persuaded the Examiner erred in finding
Fukuda discloses the setting of priorities for user information as recited in
independent claim 1 and commensurately recited in independent claims 9
and 10.
(B) "register of any one of said plurality of user information
with respect to any one of said plurality of program information
in accordance with the specified first program"
The Examiner finds Fukuda discloses the registration of user
information with respect to program information in Fukuda' s user
registration of preference information corresponding to program
information. (Final Action 3; Answer 5---6.) Appellants argue that their
Specification shows a specific user registering with a specific program, and
such registration of a user with a program is not shown in Fukuda. (Appeal
Br. 12-13.)
We agree with the Examiner that:
the claim language does not require registering the preference
information with a specific program, but only registering 'of
any one of said plurality of user information with respect to any
one of said plurality of program information'. This is done 'in
accordance with' a program, but the claim does not state that
the information is 'registered with' a program.
(Answer 5.)
The Appellants do not provide additional argument in the Appeal
Brief aside from the reference to the Specification and a conclusory
statement. (Appeal Br. 12-13.) Appellants assert in their Reply Brief that
the Examiner has advanced a new claim interpretation and that the
independent claims "clearly set forth that user information (any one of the
plural user information) is registered with program information in
accordance with a user specified program." (Reply Br. 5.) Appellants'
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attempt to read "with respect to" as "with" in the claim language, however,
is unpersuasive. The claim sets forth that user information is registered
"with respect to" some program information, as opposed to "with" a
program or program information. We agree with the Examiner that
"program information" and "user information" are broad terms (Final Action
13) and that Fukuda's disclosure of preference information regarding
program genres shows user information registered so as to determine
specific programs which are linked to a user (Final Action 3; Answer 5---6).
Accordingly, we are not persuaded the Examiner erred in finding
Fukuda discloses the registration of user information with respect to
program information in accordance with a specified first program as recited
in independent claim 1 and commensurately recited in independent claims 9
and 10.
(C) "depict each program information, including the first
program, on the basis of said priority of said user information
. rl . ",/ . {; . " regzstereu zn sazu program zr'1ormatzon
Appellants argue Fukuda does not disclose depicting program
information "on the basis of said priority of said user information registered
in said program information" because it does not disclose "displaying a
program based on how the user information is prioritized with the program."
(Appeal Br. 13 (emphasis omitted).) Appellants first reiterate that Fukuda
discloses prioritizing program information, rather than user information (id.;
Reply Br. 6), as we address supra in our discussion of the setting of
respective priorities. Appellant then argues, "[i]n a nutshell, Fukuda does
not disclose prioritizing users and displaying a program based on how users
that are registered with that program are prioritized." (Appeal Br. 13
(emphasis omitted).)
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As the Examiner points out, the claim language does not require the
prioritization of users. (Answer 7.) The Examiner finds the disputed
limitation is disclosed in Fukuda's teaching that program information is
depicted based on determined display rank, which in tum is based on
prioritized user preference information. (Final Action 3; Answer 6-7.)
Fukuda discloses that display of a program corresponds to determined
display rank which is based in part on weighted user preference information.
(Fukuda 27:57-28:3.) Thus, we agree with the Examiner that Fukuda
discloses the disputed limitation.
Accordingly, we are not persuaded the Examiner erred in finding
Fukuda discloses the depiction of program information on the basis of
priority of user information registered within the program information as
recited in independent claim 1 and commensurately recited in independent
claims 9 and 10.
Claims 14--16 are argued on the same basis as claims 1, 9, and 10
(Appeal Br. 13-14; Reply Br. 5) and claim 2 is not separately argued, and
thus we are not persuaded of Examiner error in the rejection of these claims.
Therefore, we affirm the rejection of claims 1, 2, 9, 10, and 14--16
under 35 U.S.C. § 102(e) as anticipated by Fukuda.
(D) "different display manners" and "said program
information is depicted in the display manner determined on the
basis of priority of said user information "
The Examiner finds that Fukuda discloses different display manners
and that program information is depicted in a display manner determined on
the basis of the priority of user information, in Fukuda's disclosure of two
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embodiments, one depicting only program information for the program with
the highest rank, and the second depicting program information in a layered
hierarchy. (Final Action 3; Answer 7.) In the context of anticipation, a
reference must disclose all the limitations of a claim, "arranged or combined
in the same way as in the claim," and disclosure of parts of the claim in
alternate embodiments of a patent specification may not satisfy this
requirement. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008). In this case, even were the alternate embodiments combined as
the Examiner does to disclose two display manners, as Appellant argues
(Appeal Br. 14), there is no finding that Fukuda teaches that the
determination of the display manner to be used is determined on the basis of
priority of user information.
Thus, we are persuaded the Examiner erred in finding Fukuda
discloses the subject matter recited in claim 3, and we reverse the rejection
of claim 3 and of claims 4--8 which depend from claim 3 directly or
indirectly under 35 U.S.C. § 102(e) as anticipated by Fukuda.
Claim 12 depends from claim 1, and similarly requires the different
depiction of a first program in a first and second display manner. Claim 13
depends from claim 10, and requires different depiction of each program
information, which includes at least a first program information, for different
selected prioritizations of users. The Examiner rejects each of these claims
as obvious in view of Fukuda and Sugimoto, relying on Sugimoto' s
disclosure of different program guides when user priority differs. (Final
Action 9-11.) As the Appellants argue, the depiction of the program in the
guide in Sugimoto does not change, only whether a program appears in the
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guide. (Appeal Br. 19-20.) Thus, we are persuaded that the Examiner erred
in finding that claims 12 and 13 are obvious in view of Fukuda and
Sugimoto, and we reverse the rejection of these claims.
(E) "output the first programming section of the programming
guide to the display device in accordance with how the
registered user profile is prioritized according to the ordered
plurality of user profiles"
In addressing claim 11, Appellants first argue that the combination of
Fukuda and Sugimoto does not teach the registration of a user profile.
(Appeal Br. 16-17; Reply Br. 7-8.) We address similar arguments supra in
(B) and agree with the Examiner's reasoning (Answer 8-10) in finding the
differences in the registration limitation in claim 11 (compared to the
corresponding limitation of claim 1) do not lead us to a different result.
Appellants additionally argue that the combination of Fukuda and
Sugimoto does not teach or suggest outputting a programming section to the
display device in accordance with how a user profile is prioritized. (Appeal
Br. 17-18.) Appellants contend that Sugimoto teaches using weight values
for various users to determine which program is displayed, but "does not
teach or suggest using the order" in which users are placed in order to output
a first section of the programming guide. (Id. at 18.) However, the claim
requires display "in accordance with how the registered user profile is
prioritized according to the ordered plurality of user profiles" - thus, we
agree with the Examiner that Sugimoto teaches that "users themselves are
... prioritized and this prioritization is used in the formation of a custom
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program guide" (Answer 10) and that this teaches or suggests displaying in
accordance with prioritization.
Additionally, we agree with the Examiner that Fukuda alone is used to
show a customized programming guide for a specific registered user (id. at
11; Final Action 8) which teaches or suggests the display of a programming
guide with one specific user given priority over all other users.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Fukuda and Sugimoto teaches or suggests the disputed
limitations of claim 11. Therefore, we affirm the rejection of claim 11 under
35 U.S.C. § 103(a) as obvious over the combination of Fukuda and
Sugimoto.
DECISION
We reverse the Examiner's decision rejecting claims 3-8, 12, and 13.
We affirm the Examiner's decision rejecting claims 1, 2, 9, 10, 11,
and 14--16.
Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED-IN-PART
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