Ex Parte Preston et al

Patent Trial and Appeal Board

Feb 27, 2018

13651248 (P.T.A.B. Feb. 27, 2018)

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.
13/651,248 10/12/2012 Jim PRESTON 113142-0129-101 4888
75563 7590
Haley Guiliano LLP
75 Broad Street
Suite 1000
NEW YORK, NY 10004
EXAMINER
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
haleyguiliano_PAIR @ firsttofile. com
HGPatentDocket @ hglaw. com
DocketRequests @ hglaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM PRESTON and IRVAN KRANTZLER
Appeal 2017-002363
Application 13/651,248
Technology Center 2400
Before ELENI MANTIS MERCADER, LINZY T. McCARTNEY, and
CARL L. SILVERMAN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-002363
Application 13/651,248
BACKGROUND
The present patent application “relates to techniques for channel
searching and filtering.” Spec. 11, filed October 12, 2012. Claims 1,11,
and 21 are independent. Claim 1 illustrates the claimed subject matter:
1. A method comprising:
receiving user input specifying one or more characters;
using an initial character of the one or more characters to
select a specific channel filtering method for filtering a plurality
of channels from at least two channel filtering methods, the at
least two channel filtering methods comprising a first channel
filtering method for filtering the plurality of channels by channel
number and a second channel filtering method for filtering the
plurality of channels by channel name, each channel in the
plurality of channels being associated with a unique channel
name for identifying a content provider for that channel and a
unique channel number for a user of a multimedia device to use
to tune the multimedia device to that channel;
in response to using the initial character of the one or more
characters to select the second channel filtering method for
filtering the plurality of channels by channel name, identifying
one or more channels by identifying one or more channel names,
of the plurality of channel names, that contain the one or more
characters as a substring;
causing a subset of the one or more channel names to be
displayed to a user;
causing the multimedia device to tune to a particular
channel associated with a particular channel name of the one or
more channel names, the particular channel representing one of
the one or more channels identified by identifying the one or
more channel names;
wherein the method is performed by one or more
computing devices.
App. Br. 25, filed July 22, 2016 (formatting modified).
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Application 13/651,248
REJECTIONS
Claims Rejected Basis Reference(s)
1-30 §112 N/A
1-30 §103 Chin1 and Ellis2 or
Robarts3
1-30 §103 Javvji4 and Ellis or
Robarts
ANALYSIS
§112
Claim 1 recites “using an initial character of the one or more
characters to select a specific channel filtering method for filtering a
plurality of channels from at least two channel filtering methods.” App. Br.
25. Independent claims 11 and 21 recite similar limitations. See App. Br.
28, 32. The Examiner found Appellants’ written description does not
provide support for these limitations and rejected claims 1—30 for failing to
comply with the written description requirement. See Final Act. 2—3, 6—7,
mailed January 26, 2016. Appellants argue the Examiner erred, as at least
paragraphs 21, 60, 64, and 66 of Appellants’ written description provide
support for these limitations. See App. Br. 6—10; Reply Br. 1—5.
We agree with Appellants. To satisfy the written description
requirement, Appellants’ disclosure “must ‘clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.’”
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
1 Chin et al. (US 2003/0137605 Al; July 24, 2003).
2 Ellis (US 6,766,526 Bl; July 20, 2004).
3 Robarts et al. (US 2005/0278741 Al; December 15, 2005).
4 Javvji et al. (US 2010/0088728 Al; April 8, 2010).
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Appeal 2017-002363
Application 13/651,248
(enbanc) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562—63
(Fed. Cir. 1991)). That is, Appellants’ disclosure must “reasonably convey[]
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., 598 F.2d at 1351. At
least paragraph 60 of Appellants’ written description meets this standard.
Paragraph 60 discloses
[t]he filtering techniques that will be described hereafter
can be based on any number of criteria associated with the
channel including, but not limited to, channel number, channel
name, call sign, programs playing on the channel, etc. ... In
another embodiment, multimedia device 100 determines which
criteria will be used for fdtering based on user input. For
example, user input that starts with a number may be interpreted
as fdtering by channel number, whereas user input that starts
with a letter may be interpreted as filtering by channel name.
Spec. 1 60 (emphases added). This disclosure shows that the inventors
possessed as of the filing date of the invention “using an initial character of
the one or more characters to select a specific channel filtering method for
filtering a plurality of channels” (selecting one of two channel filtering
methods based on the user input that starts with a number or letter) “from at
least two channel filtering methods” (filtering channels by letter or number).
We therefore do not sustain the Examiner’s rejection of claims 1—30 under
35U.S.C. § 112.
§103
Appellants argue the Examiner’s combinations of (1) Chin and Ellis
or Robarts and (2) Javvji and Ellis or Robarts fail to teach or suggest the
following limitation recited in claim 1:
using an initial character of the one or more characters to select
a specific channel filtering method for filtering a plurality of
channels from at least two channel filtering methods, the at least
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Application 13/651,248
two channel filtering methods comprising a first channel filtering
method for filtering the plurality of channels by channel number
and a second channel filtering method for filtering the plurality
of channels by channel name.
See App. Br. 13—24; Reply Br. 8—13. According to Appellants, the cited art
not only fails to teach or suggest this limitation but also at least Ellis,
Robarts, and Javvji teach away from the subject matter recited in claim 1.
See App. Br. 13—24; Reply Br. 8—13. Appellants also argue the Examiner
improperly concluded the terms “channel name” and “channel names” are
non-functional descriptive material. See App. Br. 10-13; Reply Br. 5—8.
Although we agree with Appellants that the Examiner has not
established either Chin, Ellis, or Javvji alone teaches or suggests “using an
initial character” in the recited manner, we do not agree that the Examiner
erred. The Examiner also found Robarts teaches or suggests the disputed
“using an initial character” limitation and concluded claim 1 would have
been obvious in light Chin and Robarts and Javvji and Roberts. See Final
Act. 7—11, 18—21 (citing Robarts Tflf 106—144). The cited portions of
Robarts disclose that when a “viewer first depresses the ‘6’-key [on a remote
control], which has the associated letters M, N, and O” an electronic
program guide “constructs a query for all [electronic program guide] items
beginning with the digit ‘6,’ ‘M,’ ‘N,’ or ‘O.’” Robarts 1106. The cited
portions of Robarts also disclose that this query returns a list of channel
names that include the letters “M,” “N,” or “O” and channel numbers that
include the number “6.” See Robarts ^fl[ 106—121.
These disclosures teach or suggest using the number “6” (“using an
initial character of the one or more characters”) to filter channel numbers
and the letters associated with the number “6” to filter channel names (“to
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Application 13/651,248
select a specific channel filtering method for filtering a plurality of channels
from at least two channel filtering methods, . . . comprising . . . filtering the
plurality of channels by channel number and . . . filtering the plurality of
channels by channel name”). These disclosures also suggest that when a
viewer selects a number that does not have associated letters (e.g., the
number “0”) Robarts’s method filters only by channel number, as there are
no associated letters to filter channel names by. See Robarts Table 2
(showing no associated letters for the number “0”), 106—121 (describing
an exemplary filtering process). In any event, we note that claim 1
encompasses selecting both filtering methods, as the claim uses open-ended
“comprising” language and does not explicitly prohibit selecting additional
filtering methods. See, e.g., Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d
1364, 1368, (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim
indicates that the claim is open-ended and allows for additional steps.”).
With respect to Appellants’ assertions that Ellis, Robarts, and Javvji
teach away from the claimed invention, we find these assertions
unpersuasive. “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). Furthermore, teaching an alternative method
does not teach away from the use of a claimed method. In re Dunn, 349
F.2d 433, 438 (CCPA 1965); see also, Ex parte Shuping, No. 2008-0394,
2008 WL 336222, at *2 (BPAI 2008) (“[TJeaching a way is not teaching
away.”) (citation omitted).
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Application 13/651,248
Here, Appellants simply assert that Ellis and Robarts teach away from
the subject matter recited in claim 1 without explaining why that is the case.
See App. Br. 17—18, 23. This unsupported assertion does not establish the
Examiner erred. Cf. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the 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.”). And Appellants forfeited the argument that
Javvji teaches away from the claimed invention by failing to raise this
argument in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief. . . will not
be considered by the Board for purposes of the present appeal.”). In any
event, we see nothing in Ellis, Robarts, or Javvji that would discourage the
path taken by Appellants.
As for Appellants’ assertion that the Examiner improperly concluded
the terms “channel name” and “channel names” are non-functional
descriptive material, the Examiner explicitly found “the cited prior art
discloses all claimed limitations, including non-functional descriptive
materials.” Final Act. 6 (emphasis added). Therefore, even if we were to
agree with Appellants that the terms are functional, the Examiner found the
cited art teaches or suggests these elements, see Final Act. 7—11, 18—22, and
Appellants have not persuaded us the Examiner erred in this regard.
For the above reasons, we sustain the Examiner’s rejection of claim 1.
Because Appellants have not presented separate, persuasive patentability
arguments for claims 2—30, we also sustain the Examiner’s rejections of
these claims.
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Application 13/651,248
CONCLUSION
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1-30 §112 N/A 1—30
1-30 §103 Chin and
Robarts
1-30
1-30 §103 Javvji and
Robarts
1-30
Summary 1-30
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1). 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. § 1.136(a)(l)(iv).
AFFIRMED
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