McCoy, Charles et al.

Patent Trials and Appeals Board

Jun 15, 2020

2019001175 (P.T.A.B. Jun. 15, 2020)

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.
13/474,619 05/17/2012 Charles McCoy 114514-085UT1 9696
103865 7590 06/15/2020
Procopio - SPE
525 B Street
Suite 2200
San Diego, CA 92101
EXAMINER
CHUNG, MONG-SHUNE
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CHARLES MCCOY, LEO MARK PEDLOW JR.,
LING JUN WONG, and TRUE XIONG
________________

Appeal 2019-001175
Application 13/474,619
Technology Center 2100
________________

Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3–9, 11, 13–15, 17, 18, 21 and 23, which constitute all
of the pending claims.1 Appeal Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Sony Corporation and Sony Network
Entertainment International LLC as the real party in interest. Appeal Brief
filed June 12, 2018 (“Appeal Br.”), 2.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
Customizing menus for a consumer electronics device,
including: generating a predefined menu identifier; preparing
menu definitions for the menus to be customized on the
consumer electronics device; generating menu configuration
information using the prepared menu definitions; transmitting
the generated menu configuration information to the consumer
electronics device; and identifying a specific menu and menu
items using the predefined menu identifier.
Abstract.
Independent claim 1, reproduced below with modified formatting and
added limitation designators, illustrates2 the appealed claims:
1. A method of customizing a plurality of menus within a menu
structure for a graphical user interface of a consumer electronics
device, the method comprising:
a) receiving a menu customization request at a server from
the consumer electronics device;
b) identifying the consumer electronics device using device
specific information included in the menu customization request;
c) generating a predefined menu identifier by the server;
d) identifying the plurality of menus and a plurality of menu
items by the server using the predefined menu identifier, wherein
the plurality of menu items is made up of items within a specific
menu of the plurality of menus and is configured in a hierarchical
arrangement;
e) identifying, by the server, locations within the menu
structure where the plurality of menu items are to be placed;
f) preparing menu definitions by the server for the plurality
of menus to be customized on the consumer electronics device;

2 Appellant argues claims 1 and 21 together as a group. See Appeal Br. 11–
16. Accordingly, we select independent claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(iv).
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g) generating menu configuration information by the server
using the prepared menu definitions and the predefined menu
identifier including the identified locations within the menu
structure;
h) transmitting the generated menu configuration
information by the server to the consumer electronics device;
i) rearranging, by the consumer electronics device, ordering
of the hierarchical arrangement of the plurality of menu items on
the plurality of menus of the consumer electronics device using
the generated menu configuration information,
j) wherein rearranging the ordering of the hierarchical
arrangement includes moving the plurality of menu items to:
1) locations that need to scroll through fewer menu
items than prior to the rearrangement;
2) locations that need to navigate through fewer menu
levels than prior to the rearrangement; and
3) locations in the menus that are easier to access than
prior to the rearrangement.
(Appeal Br. 20–21) (Claims App.).

STATEMENT OF THE REJECTIONS
Claims 1, 3, 4, 8, 13, 14, 17, and 21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over King (US 2008/0144793 Al; published
June 19, 2008), Nunome (US 2003/0028539 Al; published Feb. 6, 2003),
and Fukumoto (US 2002/0054146 Al; published May 9, 2002). Final Action
mailed Jan. 12, 2018 (“Final Act.”), 10–17.
Claims 5 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over King, Nunome, Fukumoto, and Elumalai
(US 2008/0229239 Al; published Sept. 18, 2008). Final Act. 17–20.
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Claims 6 and 23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over King, Nunome, Fukumoto, and Lin
(US 2002/0048283 Al; published Apr. 25, 2002). Final Act. 20–21.
Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over King, Nunome, Fukumoto, and Fleishman (US 2008/0126984 Al;
published May 29, 2008). Final Act. 22–23.
Claims 9, 11, and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over King, Nunome, Fukumoto, and Baumgartner
(US 2005/0160458 Al; published July 21, 2005). Final Act. 23–26.

STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

EXAMINER’S DETERMINATIONS
The Examiner finds that King teaches limitations f) through i) of
independent claim 1. Final Act. 11. That is, the Examiner finds that King
teaches the steps of preparing menu definitions by the server, generating
menu configuration information, transmitting the generated menu
configuration to the consumer electronics device, and the consumer
electronics device rearranging the ordering of the hierarchical arrangement
of menu items on the menus. Id.
The Examiner relies on Nunome for teaching the limitations a)
through e) of independent claim 1. Id. at 12–14. That is, the Examiner
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relies on Nunome for teaching the steps of receiving a menu customization
request at a server, identifying the consumer electronics device, generating a
predefined menu identifier, identifying the plurality of menus and menu
items, and “identifying, by the server, locations within the menu structure
where the plurality of menu items are to be placed.” Id.
The Examiner relies on Fukumoto for teaching the final limitation,
limitation j), of claim 1, which further specifies how the menu items are
arranged. Id. at 15. The Examiner also sets forth motivation for combining
the noted teachings of King, Nunome, and Fukumoto. Id. at 14–15.
Appellant presents two sets of arguments—a first set regarding
Nunome’s teachings (Appeal Br. 12–14) and a second set regarding
Fukumoto’s teachings (id. at 14–15). We address these arguments
separately below.

CONTENTIONS AND ANALYSIS
I.
Appellant first disputes the Examiner’s finding that Nunome teaches
or suggests claim 1’s limitations d) and e). Appeal Br. 12. As noted above,
these limitations read as follows:
d) identifying the plurality of menus and a plurality of menu
items by the server using the predefined menu identifier, wherein
the plurality of menu items is made up of items within a specific
menu of the plurality of menus and is configured in a hierarchical
arrangement;
e) identifying, by the server, locations within the menu
structure where the plurality of menu items are to be placed.
In particular, Appellant argues that that this claim language requires
that “when the consumer electronics device runs a third party application,
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the server will identify the device and obtain the predefined menu
identifier[,] which identifies the location within the menu structure where the
menu items are to be placed.” Id. Appellant argues that the following
passage of Appellant’s Specification supports this functionality:
The second purpose of the predefined menu identifiers is to
identify the locations within the menu structure where unknown
dynamic items will be placed. For example, if the consumer runs
an application that was written by a third party that provides
menus to the consumer, the device code can search for a menu
with a particular predefined identifier that would indicate where
to place menu items dynamically generated by an application. In
this case, the menus are only included as markers to particular
places in the menu definitions and would not be displayed to the
user.
Spec. col. 18, l. 18–col. 19, l. 4, cited in Appeal Br. 12 (emphasis added by
Appellant).
Appellant argues that the passages of Nunome cited by the Examiner
do not teach this claim language for the following reasons:
[T]he cited passages of Nunome seem to show menu
identification information in isolation, there is no reference to
these IDs being used to identify the menus and menu items,
where the menu items are made up of items within a specific
menu and are configured in a hierarchical arrangement. Further,
there is no reference to these IDs identifying the locations within
the menu structure where the menu items are to be placed.
Appeal Br. 14.
The Examiner responds, pointing to Nunome’s menu table 23, which
is stored in menu information DB 14. Examiner’s Answer mailed
September 10, 2018 (“Ans.”), 6 (citing Nunome FIG. 4A). The Examiner
explains, and we agree, how “[t]he information stored in said menu table 23
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gives a clear view of the hierarchical structures to different menus.” Id. As
the Examiner explains,
Menu table 23 includes a unique menu ID for each record in the table,
where the menu attribute column indicates each record as a menu item,
a menu, or both. The menu table 23 further includes a parent ID for
each record that is a menu item nested under a menu, where parent ID
indicates the menu ID that the menu item is nested under. For example,
the first record in the menu table 23 has a menu ID of “Menu001”.
According to the menu attribute, it is both a menu and also a menu item
nested under the menu “Menu200”. The second and the third records
in the menu table 23 indicating that “Menu002” and “Menu003”
respectively are menu items nested under menu “Menu001”.
Therefore, the menu table 23, which defines the menu elements and
hierarchical structures to the plurality of menus, is utilized by the
customer management server 10 to construct the menus to be sent to
the user terminal 100. Thus, the menu table 23 identifies each menu
item uniquely with the unique menu IDs.
Ans. 6.
Appellant’s arguments are unpersuasive. The Examiner has provided
a factual basis supporting the finding that Nunome’s ID is being used to
identify the menus and menu items, where the menu items are made up of
items within a specific menu and are configured in a hierarchical
arrangement. We agree with the Examiner and adopt these findings as our
own.
We next turn, then, to Appellant’s remaining argument that “there is
no reference to these IDs identifying the locations within the menu structure
where the menu items are to be placed.” Appeal Br. 14. To this argument,
the Examiner responds,
customer management server 10 can identify where each menu
items are to be placed in the menu hierarchy by identifying the
menu item by its menu ID using the menu table 23, where the
combination of the menu attribute and the parent ID allows the
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customer management server 10 give the information needed to
construct the menu to be sent to the user terminal 100.
Ans. 6–7 (citing Nunome ¶¶ 59, 61, 65, 76, 81, figs. 1, 2, 4A, 8A–C).
The Examiner’s response indicates that the Examiner is interpreting
the language of limitation e) more broadly than is Appellant. We understand
Appellant to be arguing that limitation e) requires that the server identify
locations within the menu structure where to place a plurality of new menu
items that are dynamically generated by, for example, a third-party
application. Appeal Br. 12 (citing Spec. col. 18, l. 18–col. 19, l. 4). In
contrast, we understand the Examiner to be taking the position that
limitation e) merely requires that the server identify locations within the
menu structure where a plurality of existing menu items are to be placed
when the device displays the menus and menu items to the user. See Ans. 6–
7.
Limitation e) appears on its face to be written broadly enough to cover
both the interpretation argued by Appellant and the interpretation taken by
the Examiner. Appellant does not present persuasive arguments for why the
Examiner’s broader interpretation is unreasonable, and the record indicates
that the Examiner’s interpretation is not unreasonable.
Accordingly, Appellant does not demonstrate error in the Examiner’s
interpretation of claim 1’s limitations d) and e) or in the Examiner’s findings
regarding Nunome. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “It is the
applicants’ burden to precisely define the invention, not the PTO’s.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant always has the
opportunity to amend the claims during prosecution, and broad interpretation
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by the Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404–05 (CCPA 1969).
II.
Appellant additionally argues that Fukumoto does not teach the last
limitation of claim 1, which, as noted above, reads as follows:
j) wherein rearranging the ordering of the hierarchical
arrangement includes moving the plurality of menu items to:
1) locations that need to scroll through fewer menu
items than prior to the rearrangement;
2) locations that need to navigate through fewer menu
levels than prior to the rearrangement; and
3) locations in the menus that are easier to access
than prior to the rearrangement.
Appellant argues,
Although the cited passages of Fukumoto state that the
customized menu scheme in menu hierarchy is configured to
permit addition and deletion of a customized menu and allow the
display at the highest hierarchical level of menu hierarchy, this
does not mean that the menu is at: locations that need to scroll
through fewer menu items than prior to the rearrangement;
locations that need to navigate through fewer menu levels than
prior to the rearrangement; and locations in the menus that are
easier to access than prior to the rearrangement.
Appeal Br. 15.
To explain how Fukumoto teaches the first two manners of
rearranging the menu items, the Examiner compares the original position of
the “Bass” menu item, as depicted in Fukumoto’s Figure 2, with the
customized position of the “Bass” menu item, as depicted in Figure 5:
Fukumoto teaches customizing menu having menu items
adjusted and placed at the highest level of menu hierarchy to
allow the user quick access without navigating to lower levels of
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the hierarchical menu structure as shown in figure 5. In figure 5,
the customized menu includes menu items such as “Bass”,
“Vertical Size”, “Language”, and among others. The “Bass”
menu item is derived from the “Sound Quality” menu, which is
nested under the “Main Menu”. Therefore, by moving the
“Bass” menu item to the highest level in the menu hierarchy, [sic]
allows the menu item to be accessed with [] the user navigating
[through fewer] hierarchical level[s] (e.g. accessed directed from
the highest menu in the hierarchy instead of navigating two
hierarchy levels down).
Further, the user selects the desired menu item by moving
a cursor up and/or down in the menu until the desired menu item
is reached. Therefore, by moving the “Bass” menu item to the
highest level in the menu hierarchy, allows the menu item to be
accessed with less user scrolling input (e.g. the first item in the
highest level in the menu hierarchy instead of moving the cursor
down to the least item (e.g. “Main Menu”) in the highest menu,
then moving the cursor down to the second item in the “Main
Menu” (e.g. “Sound Quality”), finally, moving the cursor down
to the third item in the “Sound Quality” menu.
Ans. 7–8 (paragraph formatting modified).
The Examiner additionally interprets the last recited manner of
rearranging the menu items of “wherein rearranging the ordering of the
hierarchical arrangement includes moving the plurality of menu items to: . . .
locations in the menus that are easier to access than prior to the
rearrangement,” as follows:
The last limitation (i.e. “locations in the menu that are easier to
access”) of limitation[] (j) has been interpreted to be merely a
benefit of rearranging menu items, and it appears to be equivalent
to the previous two limitations. The term “easier” is a subjective
term and does not give explicit definition to allow one of
ordinary skill in the art to discern to what degree of easiness
when compared to prior to the rearrangement meets the
limitation. As such, no patentable weight was given to said
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limitation. If the prosecution continues, the examiner will revisit
this limitation under 35 U.S.C. § 112, second paragraph.
Ans. 8.
We understand the Examiner’s position to be that the limitation’s last
recited manner of rearranging the menu items is merely a recitation of a
benefit that inherently flows from the existence of the first two
functionalities. Under that interpretation, the Examiner actually does give
patentable weight to the limitation, but merely finds that this third
functionality does not limit further the scope of the claim beyond the scope
that is encompassed by the first two manners of rearranging the menu items.
Appellant does not allege the Examiner’s claim interpretation is
unreasonable. We, therefore, look to Appellant’s Specification to determine
if the Examiner’s interpretation of the scope of the third manner of
rearrangement is reasonable. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (during examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the Specification).
Appellant states in the “Summary of Claimed Subject Matter” section
of the Appeal Brief, that the last limitation of claim 1 is supported by the
Specification at page 42, line 22 to page 43, line 7. Appeal Br. 4. This cited
passage appears as the last paragraph of the Specification’s following
disclosure:
FIG. 2C is a flowchart 230 illustrating a method of
collecting and analyzing dynamic system menu usage
statistics/data on a consumer electronics device in accordance
with one implementation of the present invention. In the
illustrated implementation of FIG. 2C, menu usage data (such as
how the user navigates through the menu) is monitored, tracked
and accumulated, at box 232. The method also includes
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transmitting the collected menu usage data, at box 234, to a
server for analysis, at box 236, to provide insight into the
consumer usage of the menus and to improve the design of the
menu interface. In one implementation, the consumer electronics
device is triggered to send the menu usage data once a certain
quantity of data has been collected by the consumer electronics
device. The menu usage data include: frequency of the menu
usage; day and time of the usage; a series of menu item clicks or
selections to determine a sequence of activity or path taken by a
consumer; a type of application launched; duration between two
menu selections; and a frequency of language changes. The
menu usage statistics may also include button presses on a
remote control. In addition to the frequency of language
changes, the languages that were chosen are of interest as is the
language in use when other menu items are chosen. For example,
if the statistics show that users have a hard time locating a
particular menu item when the language is set to French, but not
when the language is set to English or Spanish, then that could
indicate that the French translation for that menu item may need
to be reworded.
In another implementation, the menu usage data is
analyzed to improve a design of the menus on the consumer
electronics device. For example, the menu usage data is analyzed
to break down the analysis by the displayed language to identify
a particular translation that may need improvement if a menu
item is less used or harder to find when the menus are displayed
in a particular language. Other examples include moving popular
menu items to places that allow quicker access including
(1) locations that need to scroll through fewer menu items,
(2) locations that need to navigate through fewer menu levels, or
(3) locations in the menus that are easiest to access.
Spec. 41:16 – 43:10 (emphasis added).
This passage of Appellant’s Specification indicates that moving menu
items to (1) locations that require less scrolling, (2) locations that require
navigation through fewer menu levels, and (3) “locations in the menus that
are easiest to access” (or “easier to access,” as claimed), are all specific
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examples of how popular menu items more generally can be moved “to
places that allow quicker access.” Spec. 42:6–10. By specifying that these
three examples of how to move menu items to places that allow quicker
access are “other examples” (Spec. 43:6), Appellant’s Specification only
indicates that these three examples are separate and distinct from improving
menu designs by analyzing the languages in which the user determines it to
be hard to find menu items.
We see nothing in the cited portion of Appellant’s Specification
indicating that the Examiner’s interpretation of the third functionality is
unreasonable. We, instead, agree that the third recited functionality
reasonably can be interpreted as constituting a generic catchall recitation that
includes the first two functionalities of moving a menu item to the top of the
menu and moving the menu item to a less nested menu.
Accordingly, Appellant does not demonstrate error in the Examiner’s
interpretation of claim 1’s final limitations or in the Examiner’s findings
regarding Fukumoto.3

3 Because we are a tribunal of appellate review, we do not address, sua
sponte, the question of whether the relied upon passage of Appellant’s
Specification, which only employs the logical disjunction “or” to set forth
three alternative manners for moving popular menu items to places that
allow quicker access, provides adequate written description to support the
last limitation of independent claim 1, which uses the logical conjunction
“and” to claim a method that employs all three manners simultaneously.
Rather, we leave this question for the Examiner to explore upon any further
prosecution on the merits. See Frye, 94 USPQ2d 1075 (The Board conducts
a limited de novo review of the appealed rejections for error based upon the
issues identified by Appellant, and in light of the arguments and evidence
produced thereon.).
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CONCLUSIONS
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Accordingly,
we sustain the Examiner’s rejection of that claim of claims 3, 4, 8, 13, 14,
17, and 21, which Appellant does not argue separately. Appeal Br. 15–16.
With respect to the remaining rejections of claims 5–7, 9, 11, 15, 18,
and 23, Appellant does not separately argue these claims’ patentability based
upon either any additional claim language or any alleged deficiencies of the
additionally cited references. Appeal Br. 16–18. Rather, Appellant only
argues the patentability of these additional claims based upon the reasoning
set forth in relation to claim 1. Id. For the reasons discussed above, then,
we also sustain the rejections of claims 5–7, 9, 11, 15, 18, and 23.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 4, 8, 13, 14,
17, 21
103 King, Nunome,
Fukumoto
1, 3, 4, 8,
13, 14, 17,
21

5, 18 103 King, Nunome,
Fukumoto,  
Elumalai
5, 18
6, 23 103 King, Nunome,
Fukumoto, Lin
6, 23
7 103 King, Nunome,
Fukumoto,
Fleishman
7
9, 11, 15 103 King, Nunome,
Fukumoto,
Baumgartner
9, 11, 15
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Overall
Outcome
1, 3–9, 11,
13–15, 17,
18, 21, 23