Ex Parte Ujihara

Board of Patent Appeals and Interferences

Sep 23, 2010

10124761 (B.P.A.I. Sep. 23, 2010)

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.
10/124,761 04/16/2002 Karen Ujihara 057866-134127 8436
27148 7590 09/23/2010
POLSINELLI SHUGHART PC
700 W. 47TH STREET
SUITE 1000
KANSAS CITY, MO 64112-1802
EXAMINER
ORTIZ, BELIX M
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
09/23/2010 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 KAREN UJIHARA
____________

Appeal 2009-009964
Application 10/124,761
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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The Appellant appeals under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-38. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a system and data
architecture for presenting television programs (Spec. 1).

The Illustrative Claims
Claims 1 and 14, illustrative claims, read as follows:
1. A data structure, stored in a memory device, for use with a
computer application for selection of products containing
presentable programming, comprising:
a product selectable through the computerized application;
a link from the product to one to more program identifiers, such
that the application can traverse the data structure to read one or
more program identifiers when the product is selected; and
one or more programs identified by the one or more program
identifiers for presentation;
wherein the computerized application enables presentation of
the one or more identified programs after selection of the
product.
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14. A computerized user-interactive system for facilitating
allowing a user to select and be provided with a first product
comprising a first set of one or more entities including at least
one presentable program, the user-interactive system
comprising:
a computerized navigational system for enabling the user to
browse through representations associated with each of a
plurality of selectable products, each of the plurality of
selectable products comprising one or more presentable
programs, and for allowing the user to select the first product
form [sic, from] the plurality of selectable products;
a database for storing information associating each of the
plurality of selectable products with one or more entities
deliverable to the user, the one or more entities deliverable to
the user comprising one or more presentable programs;
wherein the database is accessible to facilitate providing the
user with the first set of one or more entities of the first product.
The References
The Examiner relies on the following references as evidence:
Moyer US 2003/0088483 A1 May 8, 2003
Barton US 2003/0095791 A1 May 22, 2003
Oral US 6,670,971 B1 Dec. 30, 2003

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The Rejections
The following rejections are before us for review:
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Oral and Moyer.
Claims 4-38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Oral, Moyer, and Barton.
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments which the Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

II. ISSUES
Has the Examiner erred in finding that the combination of Oral and
Moyer teaches or fairly suggests “a link from the product to one to more
program identifiers, such that the application can traverse the data structure
to read one or more program identifiers when the product is selected”, as
recited in claim 1?
Has the Examiner erred in finding that the combination of Oral, Moyer,
and Barton teaches or fairly suggests “a database for storing information
associating each of the plurality of selectable products with one or more
entities deliverable to the user, the one or more entities deliverable to the
user comprising one or more presentable programs”, as recited in claim 14?

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III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
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nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Moyer
1. Moyer discloses an e-commerce system for allowing a user to
select a product to purchase:
The commerce client 122 uses function-calling
information embedded in the passed MIME
message to call a method AddLineItem . . . The
AddLineItem method then, in a next step 614,
navigates a linked list of product data structures
associated with the merchant structure (either
found or created in the step 612). Each product
data structure in the list represents one product
offered for sale by a merchant. In the step 616, the
AddLineItem method allocates memory for a new
product data structure and populates it with data
packaged in the MIME message such as product
SKU, price, quantity, description, name, logo,
color, or size. The AddLineItem method then links
the new product data structure to the end of the
linked product data structures for the merchant.
([0113], Fig. 6) (Emphases added)
2. Moyer also discloses a program identifier (SKU):
In a step 618, the commerce client 122 invokes a
SetItemProperty method wherein the linked list of
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merchant structures is again navigated until a
merchant structure having a merchant name
matching the passed merchant name is found. In a
step 620, the product data structures referenced by
the merchant structure are navigated until a
product data structure is found having an SKU
field equivalent to the SKU number passed in the
MIME message. Then, in the step 622, the
SetItemProperty method navigates a linked list of
properties referenced by the product data structure
found, and does so for each property passed in the
MIME message.
([0114], Fig. 6) (Emphasis added).
Barton
3. Barton discloses a method and system of remotely selecting
television programs and setting a recording time for the program:
In the user database 220, separate event lists 350
are maintained for each user. The event lists 350
are stored in the event database 230. Each event
list 350 includes a plurality of event records 360.
Each event record includes a plurality of fields
among which are a time field 370, a channel field
380, and a duration field 390. The time field 370 is
used to indicate a start time for recording and is
comprised of the date and time of the program
event. The channel field 380 specifies which
channel the DVR should record. The duration field
390 is used to specify how long the DVR should
record the content for that program event.
([0032], Fig. 3) (Emphasis added).
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V. ANALYSIS
The Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellant’s Brief to show error in the proffered reasoned conclusion.
Id.
Grouping of Claims

The Appellant has elected to argue claims 1-3 together as a group
(App. Br. 4-7) and claims 14-38 together as a group (App. Br. 7-9).
Therefore, we select independent claim 1 and independent claim 14
respectively as the representative claims for those groups, and we will
address the Appellant’s arguments with respect thereto. 37 C.F.R. § 41.37
(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 103(a) rejections

We start our review by first determining the appropriate scope of the
argued claim limitations in the independent claims.
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First, the claims themselves do not define the argued terms.
Therefore, we have an obligation to construe the terms with broad yet
reasonable interpretations.
Furthermore, in light of the breadth of Appellant’s Specification, we
broadly but reasonably construe the claim limitation “link” as “[a]n
identifying term attached to an element in a system to facilitate connection
to other identified elements”2; the claim limitation “program identifier” as
any identifier to indicate or identify any program, structure, or event; the
claim limitation “product” as any product; the claims limitation “entity” as
any record, field, or element in a database; and the claim limitation
“associating” as connecting or joining together3 because there is no
limitation in the claim language to prevent us from reading the language
broadly.
We now address the merits of the Appellant’s contentions under our
claim construction.
With respect to claim 1, the Appellant contends that “[a]s disclosed in
the specification of currently pending application, a ‘program’ may be
interpreted as, for example, television programs, movies, and pay-per-view
events.” (App. Br. 5), and “[i]t is respectfully the opinion of the Appellants
that this interpretation is overly broad and not supported by the specification,

2 See WEBSTER’S II New Riverside University Dictionary (1994 ed.), at
696 (“link”).
3 See WEBSTER’S II New Riverside University Dictionary (1994 ed.), at
132 (“associate”).
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which clearly interprets a program as a viewable program, such as a
television program.” (Id. 7).
We disagree with the Appellant’s contentions. “[T]he line between
construing terms and importing limitations can be discerned with reasonable
certainty and predictability if the court's focus remains on understanding
how a person of ordinary skill in the art would understand the claim terms.
For instance, although the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.” Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc). We find that the language of claim 1 (see
representative claims) has broader scope than that the Appellant contended
because claim 1 recites a data structure stored in a memory device for using
with a computer application that has one or more program identified by
program identifiers. We do not find any limitations in claim 1 such as
television program for the claim limitation “program”, let alone movie or
pay-per-view events. As such, we decline to import the disclosed
embodiments in the Specification into claim 1. It is our view that a person
of ordinary skill in the art would understand the claim terms such as program
identifier, link, etc. as discussed above in our claim construction, and not
confine the claim terms to “television programs” or “pay-per-view events”.
The Appellant further contends that Moyer’s “secondary product”
comprises “finished goods” such as “consumables and accessories”, which
does not “correspond to a program identified by one or more program
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identifiers” (App. Br. 6). In particular, Moyer fails to teach a link from a
product to a program identifier. (Id.). The Appellant also contends that
there is a lack of motivation to modify Oral in view of Moyer because “the
methods and systems of Moyer and Oral represent disparate technologies,
systems, distribution methods and products.” (Id. 7).
We disagree with the Appellant’s contentions. We find Moyer
teaches that each product structure is linked by at least one identifier such as
product SKU (FF 1). We also find Moyer teaches that an application such as
a function can traverse a product structure by matching the SKU field of the
product structure and a passed SKU number (FF 2).
The Supreme Court noted that an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We
find the knowledge of linking a selected product structure by an identifier
such as SKU would have been within the skill in the art, as evidenced by
Moyer. We, therefore, find that combining the well-known elements of
product linked by its identifier taught by Moyer with the well-known
technique of selecting a product (television program) to be downloaded and
presented to a user taught by Oral is nothing more than a “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
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claim 1. We also sustain the Examiner’s obviousness rejection of its
dependent claims 2-13, which have not been separately argued, and fall
with their base claims. 37 C.F.R. § 41.37 (c)(1)(vii). See In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987).
With respect to claim 14, the Appellant contends that Barton’s
“database schema does not teach or suggest the database structure as claimed
as it merely provides information associating a user with at least one event,
whereas the claimed database structure associated a selectable product with
one or more entities deliverable to a user” (App. Br. 9).
We disagree with the Appellant’s contention. We find Barton teaches
that a user database for storing user information connects at least one event
lists 350 that each list (product) has the plurality of selectable records to be
filled for recording television programs (entities) to be presented to a user
(FF 3). We, therefore, conclude that the teachings of the Barton reference
read on the disputed limitations.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 14. We also sustain the Examiner’s obviousness rejections of its
dependent claims 15-38, which are not separately argued, and fall with
their respective base claims. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
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VI. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of the applied references, with Appellant’s
countervailing evidence and arguments for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1-38 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).

VII. ORDER
We affirm the obviousness rejections of claim 1-38 under 35 U.S.C.
§ 103(a).
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)(1)(iv).
AFFIRMED

tkl

POLINELLI SHUGHART PC
700 W. 47TH STREET
SUITE 1000
KANSAS CITY, MO 64112-1802