Ex Parte Wasilewski et al

Patent Trial and Appeal Board

Oct 24, 2012

10376863 (P.T.A.B. Oct. 24, 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.
10/376,863 02/28/2003 Anthony J. Wasilewski 60374.0047US01/968302 8800
62658 7590 10/24/2012
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
SHELEHEDA, JAMES R
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
10/24/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY J. WASILEWSKI and LUIS A. ROVIRA
____________

Appeal 2010-008005
Application 10/376,863
Technology Center 2400
____________

Before, JONI Y. CHANG, GLENN J. PERRY, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection
of claims 1, 3, 4, 6-9, 11, 12, 14-16, 18-21, 23, 25, 26, 28-31, 33, 34, 36-38, and
40-43. We have jurisdiction under 35 U.S. C. § 6(b). We reverse.

Appeal 2010-008005
Application 10/376,863

2

STATEMENT OF THE CASE
Appellant’s invention concerns a system for recalling surfed channels
including functionality that stores identifications of surfed channels and in
response to a user pressing a button on a device recalls each of the surfed channels
(Abstract).
Claim 1 is illustrative.
1. A method for recalling a plurality of surfed channels, the method
comprising the steps of:
providing a user interface screen that enables a user to set a quantity of the
plurality of surfed channels sequentially recalled in full-screen;
storing identifications of the plurality of surfed channels; and
recalling each of the plurality of surfed channels, immediately responsive to
each sequential keypress of a last channel button on a device by the user;
wherein the step of recalling includes the steps of:
immediately responsive to each sequential keypress of the last channel
button that is received while displaying a channel in full-screen mode, displaying
each of the plurality of the surfed channels in full-screen mode; and
immediately responsive to each sequential keypress of the last channel
button that is received while displaying an interactive programming guide (IPG)
screen, highlighting a program entry in the IPG, the highlighted program entry
associated with a corresponding one of the plurality of surfed channels.
(App. Br. 20, Claims Appendix).

Appeal 2010-008005
Application 10/376,863

3

THE REJECTIONS
Claims 1, 3, 4, 6-9, 11, 23, 25, 26, 28-31, and 33 were rejected under 35
U.S.C. § 103(a) as being unpatentable over US Patent Publication
2002/0056098A1 (hereinafter “White”) in view of US Patent 6,141,003
(hereinafter “Chor”) and US Patent 5,844,620 (hereinafter “Coleman”).
Claims 12, 14-16, 18-21, 34, and 36 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over White in view of Coleman.

ISSUES
The positions of the Examiner and the Appellants are detailed in the
Supplemental Appeal Brief filed on January 27, 2010, the Examiner’s Answer
mailed on February 3, 2010, and the Supplemental Reply Brief filed on March 31,
2010.1 The primary issues are (i) whether White teaches the claimed limitation of
immediately responsive to each sequential keypress of the last channel button,
highlighting the corresponding program in the IPG associated with a corresponding
one of the plurality of surfed channels (Supp. App. Br. 9, Reply Br. 6-7) and (ii)
whether features of White constitute a program guide that can be combined with
the interactive program guide taught by Coleman and Choi to teach the
highlighting feature of the claimed invention. (Supp. App. Br 8).

ANALYSIS

1 As a result of questions concerning the status of claims 37, 38, and 40-43, which
are now cancelled, the record also includes Appellants Appeal Brief filed on
February 2, 2009, Appellants’ Supplemental Appeal Brief filed on April 3, 2009,
an Examiner’s Answer mailed on July 8, 2009 and Appellants’ Reply Brief filed
on September 9, 2009. These pleadings are now superseded by the enumerated
current pleadings.
Appeal 2010-008005
Application 10/376,863

4

The Rejection of claims 1, 3, 4, 6-9, 11, 23, 25, 26, 28-31, and 33
Appellants argue that independent claims 1 and 23 and dependent claims 3,
6-9, 11, 25, 26, 28-31, and 33 are patentable for the same reasons as claim 1.
(Supp. App. 7-10, 12). Therefore, we address these claims together, with claim 1
being illustrative.
The Examiner finds that White teaches a system that is immediately
responsive to each sequential keypress of the last channel button received while
displaying an interactive program guide. (Ans. 12). The Examiner’s basis for this
finding is that whenever the user presses White’s “Recent” button, the screen
shown in Figure 8 of White is either first loaded or updated. (Id.). Citing
paragraphs 0047-0048 and 0067 of White, the Examiner finds that the system
White discloses highlights the currently viewed channel of the recent channels
when the screen is first loaded or updated, with the highlighted program entry
being associated with the corresponding one of the plurality of surfed channels.
(Id.).
Appellants note that claim 1 is limited to a feature in which a user
sequencing from one program entry to another in recall mode, results in a
corresponding one of the plurality of channels being highlighted, i.e., the one
corresponding to the surfed channel in the sequence. (Supp. Reply Br. 6-7).
Appellants’ position is consistent with the portion of the specification at page 13,
line 25- page 14, line 5, which Appellants assert supports this claim limitation and
which describes that pressing the Last Chanel button scrolls to the current program
entry the first time the button is pushed and scrolls to the channel entry
corresponding to the previous current channel if the button is pushed a second
time. (Supp. App. Br. 3, See also, Spec., p. 13, ll. 15-25).
Appeal 2010-008005
Application 10/376,863

5

White teaches a method to display images of recently viewed television
channels stored in a list. (Abstract). In White, a TV Recent screen includes an
array of small display screens, with the currently active channel containing a live
broadcast picture, while previously viewed channels are represented by still images
corresponding to the last image captured before the channel was de-selected.
(¶¶[0047], [0048], [0067]). A focus or highlight box indicates the active or
currently viewed screen. (¶¶ [0048], [0067]). The user can cause all of the still
images in the small display screens representing the de-selected channels to be
updated by pressing the "TV Recent" button on a remote control. (¶¶[0053],
[0068]). This results in all channels being scanned to capture a more recent image
of the de-selected or inactive channels. (Id.). In contrast to the invention recited in
claim 1, pressing the TV Recent button, as described in White, merely updates the
display associated with the inactive channels and does not result in changing the
highlighted channel to the active channel corresponding to a previous program
selection in the sequence of program selections. Thus, we agree with Appellants
that White does not disclose the feature recited in claim 1 of “immediately
responsive to each sequential keypress of the last channel button … received while
displaying an interactive programming guide (IPG) screen, highlighting a program
entry in the IPG … associated with a corresponding one of the plurality of surfed
channels.” (Emphasis added). Therefore, we reverse the Examiner’s rejection of
claims 1, 3, 4, 6-9, 11, 23, 25, 26, 28-31, and 33.
Since we agree with appellants that White does not disclose this limitation in
claim 1, we need not address Appellants' arguments concerning whether White
teaches interactive program guide. In addition, since claim 4, which Appellants
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Application 10/376,863

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argued separately, depends from claim 1, we reverse the rejection of claim 4 as
well.

The Rejection of Claims 12, 14-16, 18-21, 34, and 36
Each of claims 12, 14-16, 18-21, 34, and 36 either directly or indirectly
recite the same disputed limitation as that discussed above in claim 1 and
Appellants proffer essentially the same patentability arguments. Since we agree
with Appellants that White does not disclose the recited limitation, we reverse the
rejection of claims 12, 14-16, 18-21, 34 and 36.

ORDER
The rejection of claims 1, 3, 4, 6-9, 11, 23, 25, 26, 28-31, and 33 under 35
U.S.C. § 103(a) as being unpatentable over White in view of Chor and Coleman is
reversed.
The rejection of claims 12, 14-16, 18-21, 34, and 36 under 35 U.S.C. §
103(a) as being unpatentable over White in view of Coleman is reversed.

REVERSED
Rvb