Ex Parte Walrath

Board of Patent Appeals and Interferences

Jun 26, 2012

11262069 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CRAIG WALRATH
____________________

Appeal 2010-003134
Application 11/262,069
Technology Center 2612
____________________

Before: LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003134
Application 11/262,069

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The invention on appeal is directed to a method and system for
content distribution using an Intelligent Data Management Arrangement
(IDMA). (Abstract). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An intelligent data management arrangement comprising:
an input module, the input module configured to receive
a remote control signal and at least one content signal, the at
least one content signal sent by at least one content source;
a processing module, the processing module configured
to store, translate, and switch the at least one content signal in
accordance with the remote control signal;
an output module, the output module configured to send
a machine control signal, and to send a display signal, the
machine control signal configured to control the at least one
content source; and
an interface module for providing:
a control interface, the control interface
configured to manage the remote control signal
and the machine control signal,
a display interface, the display interface
configured to manage the display signal, and
a content interface, the content interface
configured to manage the at least one content
signal.

(disputed limitations emphasized).
Appeal 2010-003134
Application 11/262,069

3
REJECTIONS
1. Claims 1, 9, 22, 24, 26, and 27 stand provisionally rejected on the ground
of obviousness-type nonstatutory double patenting over the subject
matter of claims 1, 2, 9, 10, 16, and 17 of copending Application No.
11/262,102.
2. Claims 1, 3-13, 19, and 22-26 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over the combination of Shah (U.S. Patent
Application Publication No. 2002/0026552 A1, published February 28,
2002) and Spilo (U.S. Patent No. 7,374,671 B2, issued May 20, 2008).
3. Claims 2, 14-16, and 27 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Shah, Spilo, and Green (U.S. Patent
Application Publication No. 2006/0087445 A1, published April 27,
2006).
4. Claim 17 stands rejected under 35 U.S.C § 103(a) as being unpatentable
over the combination of Shah, Spilo, Green, and Dutta (U.S. Patent
Application Publication No. 2003/0131352 A1, published July 10, 2003).
5. Claim 18 stands rejected under 35 U.S.C § 103(a) as being unpatentable
over the combination of Shah, Green, Dutta, and Humpleman (U.S.
Patent No. 6,243,707 B1, issued June 5, 2001).
6. Claims 20 and 21 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Shah, Spilo, and Rogers (U.S.
Patent Application Publication No. 2007/0071026 A1, published March
29, 2007).

Appeal 2010-003134
Application 11/262,069

4
GROUPING OF CLAIMS
Based on Appellant’s arguments (App. Br. 12-14), we decide the
appeal on the basis of representative claims 1, 9, and 22. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ANALYSIS
At the outset, we dismiss the provisional obviousness-type double
patenting rejection as moot, because copending Application No. 11/262,102
was abandoned for failure to respond to an office action (abandonment
mailed Oct. 27, 2009).
Independent Claim 1
Appellant argues that the remote control in Shah is not usable to
cause content signals to be translated, switched, and stored as required by
Appellant’s claim 1. (App. Br. 12). In the Reply Brief, Appellant
unequivocally contends that “Spilo’s controller 100 does not store content
signals.” (Reply Br. 1).
Issue: Under § 103, did the Examiner err in finding that the
cited references, either alone or in combination, would have
taught or suggested a “processing module configured to store,
translate, and switch the at least one content signal in
accordance with the remote control signal,” within the meaning
of independent claim 1(disputed limitations emphasized)?

As a threshold issue, and a matter of claim construction, we observe
that Appellant’s principal argument distinguishing the claimed invention
over the cited combination of references is grounded solely on the type or
content of the data that falls within the scope of the claimed content signal.
(App. Br. 12)
Appeal 2010-003134
Application 11/262,069

5
Based upon our review of the record, we find Appellant’s principal
argument urging patentability is predicated on non-functional descriptive
material (i.e., the type or content of the claimed content signal). (App. Br.
12). Given the support in Appellant’s Specification (describing content
sources as providing audio and/or video signals and data streams, para. 23),
we conclude that the claimed content signals cover audio and/or video
material that is “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).1
The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
1579, at 1583 (Fed. Cir. 1994) (“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).

1 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.)

Appeal 2010-003134
Application 11/262,069

6
Here, the informational content of the claimed content signals
represents nonfunctional descriptive material that is entitled to no weight in
the patentability analysis. In particular, the claimed content signals are not
positively recited in representative claim 1 as changing or altering the
machine or computer so as to impart functionality (i.e., the content signals
are not executable instructions). See n.1 supra.
We further observe the use of “configured to” language regarding the
intended use of the recited processing module: “the processing module
configured to store, translate, and switch the at least one content signal in
accordance with the remote control signal” (Claim 1) (emphasis added).
“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.
This reasoning is applicable here. Thus, we conclude that the recited
functions of storing, translating, and switching are not positively recited as
actually occurring.
Even if we arguendo accorded patentable weight to the disputed
content signals and the intended use or purpose of the claimed processing
module, we find unavailing Appellant’s unequivocal statement that
“[n]owhere does Spilo teach that the controller 100 receives a content signal,
much less stores a content signal.” (Reply Br. 1-2) (emphasis added).
Appeal 2010-003134
Application 11/262,069

7
To the contrary, Spilo expressly discloses that “controller 100 may
perform digital recording, digital playback, and/or connect to a digital
network 109 to retrieve and play content . . . .” (Col. 7, ll. 1-3) (emphasis
added).
Thus, while Spilo saves (stores) remote control protocols (col. 8, l. 7),
Spilo’s controller 100 (Fig. 1) also stores audio and video content 2 that is
digitally recorded for later playback (col. 7, ll. 1-3, col. 5, l. 60), as
controlled by remote control device 110 (Fig. 1, col. 7, ll. 31-32). See also
col. 6, ll. 33-35: “t]he controller identifies the media devices, and allows a
user to control them, by sending commands through a single remote
associated with the controller.” Spilo additionally teaches that controller
100 performs a variety of functions that include “routing data such as audio
and video signals” (i.e., switching). (Col. 6, ll. 57-60) (emphasis added).
In reviewing the record, we are also in accord with the Examiner’s
findings (Ans. 5-6) regarding Shah’s audio/video signal (content) switching
(Fig. 1, Crosspoint Switching Matrix 26), and content translation (Fig. 1,
Encoders 18-25). The Examiner acknowledges that “Shah does not
specifically disclose a processing module configured to store the content
signal in accordance with the remote control signal.” (Ans. 6) (emphasis
added). For the reasons discussed above, we agree with the Examiner that
Spilo would have taught or suggested the claimed features admitted to be
missing from Shah. We emphasize that the Examiner’s ultimate legal

2 Cf. Appellant’s Specification: “A second storage method is full content
record 712 . . . Full content record 712 may store an entire program of
content signal from a content source.” (Spec. 15, Para. 47).
Appeal 2010-003134
Application 11/262,069

8
conclusion of obviousness for claim 1 is based on the combined teachings
and suggestions of Shah and Spilo.
For these reasons, on this record, we are not persuaded that the
Examiner erred. Therefore, we sustain the Examiner’s obviousness rejection
of representative claim 1, and associated dependent claims 3-8, and
independent claim 26 (not argued separately), which fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).
Independent Claim 9
Appellant also urges the patentability of claim 9 based upon Spilo’s
controller being incapable of storing content. (App. Br. 13). We have fully
addressed this argument supra and found it unpersuasive. Therefore, for the
same reasons discussed above regarding claim 1, we sustain the Examiner’s
obviousness rejection for representative claim 9, and associated dependent
claims 10-13 and 19 (not argued separately) which fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).
Independent Claim 22
Issue: Under § 103, did the Examiner err in finding that Spilo
discloses “auto identifying the content source and installing a
first set of configuration parameters corresponding to the
content source to the IDMA,” within the meaning of
independent claim 22 (disputed limitation emphasized)?

Appellant argues that the disputed limitation “auto identifying” is not
taught in Spilo because a person must press a designated key on the remote
control as part of the process to program the universal remote control. (App.
Br. 13; Reply Br. 2)). Appellant urges, based on Appellant’s disclosure of
“plug and play operability” in the Specification, that “auto identifying”
Appeal 2010-003134
Application 11/262,069

9
means an action which occurs automatically upon connection of a source,
and does not include the pressing of a button. (Reply Br. 2).
We decline Appellant’s invitation to read limitations from the
Specification into the claims. Patentability is based upon the claims. “It is
the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp.
of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citation
omitted). A basic canon of claim construction is that one may not read a
limitation into a claim from the written description. Renishaw PLC v.
Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
We also observe the sweeping breadth of claim 22, given that only
one of the steps need be performed: “performing any of the following steps
(a) – (e)” (Claim 22) (emphasis added). As pointed out by the Examiner
(Ans. 15), Spilo teaches that “[o]nce the television set is properly identified,
the controller may configure the television set automatically.” (Col. 9, ll. 1-
3). The Examiner appears to conclude that the plain language of claim 22
does not preclude such automatic identification from being initiated
manually by a user. (Ans. 15).
Even if we assume arguendo (without deciding) that Appellant is
correct that Spilo does not teach the auto identifying step (a) because a
person must press a designated key on the remote control in order for the
controller to identify the television set and configure it automatically, it is
well settled that merely providing a mechanical or automatic means to
replace manual activity to accomplish the same result is an obvious
improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958). Nor has
Appellant shown that automatically identifying the content source in lieu of
manual interaction would have been uniquely challenging or otherwise
Appeal 2010-003134
Application 11/262,069

10
beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
For these reasons, on this record, we are not persuaded that the
Examiner erred. Therefore, we sustain the Examiner’s obviousness rejection
of representative claim 22, and associated claims 23-25 (not argued
separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).
Remaining Dependent Claims 2, 14-18, 20, 21, and 27
We have considered representative claims 1, 9, and 22 above to the
extent that claims have been separately argued. Regarding the remaining
dependent claims 2, 14-18, 20, 21, and 27, Appellant contends that the
relied-upon secondary references do not overcome the deficiencies of Shah
and Spilo. (App. Br. 14).
However, for the reasons discussed above, we find no deficiencies
with Shah and Spilo. Therefore, we sustain the Examiner’s obviousness
rejections of claims 2, 14-18, 20, 21, and 27 for the same reasons discussed
above regarding independent claims 1, 9, and 22.

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
llw