Time Warner Cable Enterprises LLC

Patent Trials and Appeals Board

Mar 23, 2022

2021000757 (P.T.A.B. Mar. 23, 2022)

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. 15/990,819 05/28/2018 Glen Hardin TW-77CON2 8525 149299 7590 03/23/2022 Straub & Straub - Charter 1st Fl, Building 1, Door B 788 Shrewsbury Ave Tinton Falls, NJ 07724 EXAMINER LE, RONG ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 03/23/2022 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 GLEN HARDIN, NIEM DANG, GREG VON DER AHE, and PETER AGNVALL Appeal 2021-000757 Application 15/990,819 Technology Center 2400 Before MINN CHUNG, ADAM J. PYONIN, and PHILLIP A. BENNETT, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-3, 5-16, 19, and 20. See Final 1 In this Decision, we refer to Appellant’s Appeal Brief filed June 23, 2020 (“Appeal Br.”) and Reply Brief filed November 9, 2020 (“Reply Br.”); and the Examiner’s Final Office Action mailed November 21, 2019 (“Final Act.”) and Answer mailed September 9, 2020 (“Ans.”). We also refer the Specification filed May 28, 2018 (“Spec.”). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest as Time Warner Cable Enterprises LLC. Appeal Br. 3. Appeal 2021-000757 Application 15/990,819 2 Act. 5-13. The Examiner has found claims 4, 17, and 21 to contain allowable subject matter. Id. at 13. Claim 18 has been cancelled. Id. at 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The subject matter of the present application pertains to methods and apparatuses for “providing an automatically appearing program guide that allows a user to automatically scroll through the program guide listings.” Spec. ¶ 2. By way of Background, Appellant’s Specification describes that While remote controls with large numbers of keys work well for most individuals, they can be difficult for some individuals. For example, individuals with physical disabilities, eye sight limitations and/or other limitations may find it difficult to distinguish between different buttons and/or reliably press individual buttons on a remote control with a large number of buttons. Id. ¶ 4. The Specification further describes that “[f]or this reason, hospitals, rehabilitation centers and/or other locations where handicapped or physically impaired individual may be located often use relatively simple remote controls,” such as a remote control “limited to up and down arrows for changing channels with another button for calling for help and possibly a button for powering the display device on and off.” Id. ¶¶ 4-5. With such basic remote controls, however, “it has proven difficult to provide users meaningful access to grid based program guides and/or to allow the users to select program channels and/or programs from such guides.” Id. ¶ 5. With this background, Appellant’s Specification purports to describe improved methods and apparatuses that “allow users to easily access and scroll through program channel listings and/or other available programming Appeal 2021-000757 Application 15/990,819 3 information” using a remote control with relatively few buttons, e.g., “allow a user of a remote control with relatively few keys to access a grid based program guides and select content listed in such a guide.” Id. ¶¶ 7-8. Figure 6 of Appellant’s Specification is reproduced below. Appeal 2021-000757 Application 15/990,819 4 Figure 6 is a drawing, including drawings 602 and 650, illustrating a concept of logically modifying a program channel lineup to present programming content. Id. ¶¶ 22, 78. Drawing 602 shown in Figure 6 illustrates an actual program channel lineup with a sequential arrangement of program channels as provided by the service provider. Id. ¶ 78. When a user normally selects a channel using the up or down button on the remote or using a program guide, the user device, e.g., a set top box, uses the channel lineup 602 to retrieve information and parameters for receiving the content corresponding to the channel. Id. Drawing 650 illustrates a modified channel lineup in an exemplary embodiment. Id. ¶ 79. According to Appellant’s Specification, when displaying of the automatic program guide is enabled, the actual channel lineup, such as the one shown by drawing 602, is modified as illustrated in drawing 650. Id. As shown in drawing 650, an automatic guide channel (with channel number 999) is placed at channel positions 670 and 672, each of which is adjacent to a current channel being displayed, e.g., “ANIMAL PLANET” (channel 106), “BBC AMERICA” (channel 108), and “BET” (channel 110). Id. When the user presses the up or down button on the remote control to select the automatic guide channel, instead of tuning to an actual program channel, the user will be presented with a grid-based automatic program guide, such as the program guide depicted in Figure 7. Id. Appeal 2021-000757 Application 15/990,819 5 Figure 7 of the Specification is reproduced below. Figure 7 illustrates a displayed automatic program guide after being invoked by the user pressing of a channel up button on a remote control to select an automatic guide channel. Id. ¶¶ 23, 81. In an embodiment, when the automatic program guide is displayed by pressing a channel up button on the remote control to select the automatic guide channel, the automatic scrolling starts in the downward direction to the high number channels. Id. ¶ 81. The user may then press the up or down button on the remote control to select and tune to the program channel in the highlighted portion of the automatic program guide and start outputting the corresponding program content in place of the automatic program guide. Id. Appeal 2021-000757 Application 15/990,819 6 Claims 1, 14, and 19 are independent. Claim 1, reproduced below with the disputed limitations emphasized, is illustrative of the claimed subject matter: 1. A method of operating a device to implement a program guide, comprising: modifying a program channel lineup to generate a modified program lineup, said modifying the program channel lineup including placing an automatic guide channel at a first position and at a second position in the program channel lineup, said first and second positions being adjacent, in said modified program lineup, a position of a current channel being displayed; and taking an action based on the modified program channel lineup in response to a user pressing an up button or a down button on a remote control. Appeal Br. 27 (Claims App.). REJECTIONS The Examiner relies on the following references: Name3 Reference Date Pugh US 2002/0166126 A1 Nov. 7, 2002 Migos US 2009/0100464 A1 Apr. 16, 2009 Sirpal US 2014/0059615 A1 Feb. 27, 2014 Claims 1-3, 5, 12, 14-16, 19, and 20 stand rejected under 35 U.S.C. § 102 as anticipated by Migos. Final Act. 5-8. 3 All citations herein to the prior art are by reference to the first named inventor only. Appeal 2021-000757 Application 15/990,819 7 Claims 6-8 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Migos and Sirpal. Final Act. 9-11. Claims 9-11 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Migos, Sirpal, and Pugh. Final Act. 11-13. ISSUE4 The issue presented by Appellant’s contentions is whether the Examiner erred in finding that Migos discloses modifying a program channel lineup to generate a modified program lineup, said modifying the program channel lineup including placing an automatic guide channel at a first position and at a second position in the program channel lineup, said first and second positions being adjacent, in said modified program lineup, a position of a current channel being displayed, as recited in claim 1 (with emphasis added) and similarly recited in independent claims 14 and 19. ANALYSIS In rejecting the pending claims, the Examiner finds that Migos discloses all limitations of independent claims 1, 14, and 19. Final Act. 5-6. In particular, the Examiner relies on Migos’s Electronic Program Guide (“EPG”) that filters a displayed channel guide based on user preferences as disclosing the disputed limitations. Id. (citing Migos Figs. 2-5, ¶¶ 18, 23, 35, 42-44, 49); Ans. 3-4 (citing Migos Figs. 2-5, 7, ¶¶ 18, 23, 35, 42-44, 49, 50-53). According to the Examiner, 4 Appellant’s arguments raise additional issues. Because the identified issue is dispositive of the appeal, we do not reach the additional issues. Appeal 2021-000757 Application 15/990,819 8 Migos teach[es] filtering the channel guide using the current available information into category set by the viewer (modifying a program channel lineup to generate a modified program lineup), such as sports, and displaying to the viewer only available relevant sports content currently available and their corresponding information as a guide list for selection and display accordingly (modifying the program channel lineup including placing an automatic guide channel at a first position and at a second position in the program channel lineup, first and second positions being adjacent, in said modified program lineup, a position of the current channel being displayed). . . . Migos teach displaying currently on channel in only of the guide slots (current channel being displayed). Final Act. 5-6 (citing Migos Figs. 2-5, ¶¶ 18, 23, 35, 42-44, 49); see also Ans. 3-4 (citing Migos Figs. 2-5, 7, ¶¶ 18, 23, 35, 42-44, 49, 50-53). The Examiner further finds that Specifically Migos teach[es] Channel 2 on the filtered channel lineup list and having channel 605 (above) and 3, 4 (below) the channel 2 as shown, which reads on (an automatic guide channel at a first position and at a second position in the program channel lineup, first and second positions being adjacent). Ans. 4 (citing Migos Fig. 7, ¶¶ 50-53). Appellant asserts that Migos does not anticipate independent claims 1, 14, and, 19 because Migos does not disclose “placing an automatic guide channel at a first position and at a second position in the program channel lineup, said first and second positions being adjacent, in said modified program lineup, a position of a current channel being displayed,” as recited in claim 1 and similarly recited in independent claims 14 and 19. Appeal Br. 12-15. Appellant argues that the claimed “automatic guide channel” is “a channel (not multiple different channels) which appears at two different positions in the program channel line up in claim 1, i.e., at a first po[si]tion Appeal 2021-000757 Application 15/990,819 9 and a second position.” Id. at 14. According to Appellant, Migos’s channels 605, 3, 4, and 2 cited by the Examiner are “each different program channels all of which appear at only one position in the Examiner cited Figure 7 program channel line up.” Id. (citing Migos Fig. 7). Appellant similarly argues that “Figure 5 and the other figures cited by the Examiner suffer from the same deficiency. Consider Figure 5 which, as in the case of Figure 7 of the Migos reference, shows channels which each appear only a single time at one position.” Id. at 15 (citing Migos Fig. 5). Appellant further argues that In the Examiner’s answer with regard to claim 1 the Examiner cites 4 different channels, i.e., channels 2, 605, 3 and 4, none of which occur more than once in the program listing in the reference cited by the Examiner. Accordingly irrespective of which individual channel the Examiner equates to “an automatic program guide channel” the requirement that channel appear “at a first position and at a second position in the program channel lineup” is not satisfied by the Examiner cited prior art. Reply Br. 3. We are persuaded the Examiner errs. “[A]n invention is anticipated if the same device, including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (citations omitted). Further, “[a]nticipation requires that a single reference describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (internal quotations and citation omitted). Appeal 2021-000757 Application 15/990,819 10 Figure 7 of Migos is reproduced below. Figure 7 illustrates an exemplar EPG showing a filtered program lineup based on the “sports” criterion. Migos ¶ 53. Although Figure 7 shows that channel 2 relied on by the Examiner is placed “adjacent” to channel 605 and channel 3, the Examiner does not explain sufficiently how channel 2 discloses “an automatic guide channel at a first position and at a second position in the program channel lineup” recited in the claim. See Ans. 4. Claim 1 plainly recites placing “an automatic guide channel” at “a first position” and “a second position in the program channel lineup.” We agree with Appellant that this claim language requires “an automatic guide channel” is placed at two different positions, i.e., “at a first position” and “at a second position,” in the program channel lineup. Appeal Br. 14. As Appellant persuasively argues, neither Figure 7 nor Figure 5 of Migos relied on by the Examiner discloses a channel placed Appeal 2021-000757 Application 15/990,819 11 at two different positions because Migos’s figures show program channels appearing only once in the program channel lineup. Id. at 15; Reply Br. 3. In addition, although the Examiner identifies the channels in Migos’s filtered program lineup as “an automatic guide channel,” the Examiner does not explain sufficiently how channel 2 or any other channel in the filtered program lineup discloses an “automatic guide channel” or “guide channel” recited in the independent claims. See Final Act. 5-6; Ans. 4. Based on the claim language, the term “automatic guide channel” indicates that it is a channel for showing an automatic program guide. This plain meaning interpretation is consistent with the disclosure in the Specification. As discussed above, the Specification describes that an automatic guide channel (with channel number 999) is placed at two different channel positions (channel positions 670 and 672), each of which is adjacent to a current channel being displayed, e.g., “ANIMAL PLANET” (channel 106), “BBC AMERICA” (channel 108), and “BET” (channel 110). Spec. ¶ 79, Fig. 6. The Specification further describes that when the user presses the up or down button on the remote control to select the automatic guide channel, instead of tuning to an actual program channel, the user will be presented with a grid-based automatic program guide, such as the program guide depicted in Figure 7. Id. ¶ 79. In addition, in the “Field of the Invention” Section, Appellant’s Specification states that “[t]he present invention relates . . . to methods and apparatus for providing an automatically appearing program guide that allows a user to automatically scroll through the program guide listings.” Id. ¶ 2 (emphases added). The Examiner does not address the plain language of the term “automatic guide channel” or explain sufficiently how the channels in Appeal 2021-000757 Application 15/990,819 12 Migos’s filtered program lineup disclose a channel for showing an automatic program guide. To the extent the Examiner’s finding is based on an implied claim construction of the term “automatic guide channel” to mean any channel in the modified program channel lineup, we determine that such a claim interpretation is contrary to the claim language and divorced from the Specification, and, therefore, unreasonably broad in the context of this Application. See In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (“While the Board must give the terms their broadest reasonable construction, the construction cannot be divorced from the specification and the record evidence.”); In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (A broadest reasonable interpretation must reasonably reflect the plain language of the claim, the specification, and teachings in the underlying patent.); In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (internal citations omitted) (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is . . . an interpretation that corresponds with what and how the inventor describes [the] invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”). In sum, we find that the Examiner does not show sufficiently how Migos discloses an “automatic guide channel” for displaying an automatic program guide and that such an “automatic guide channel” is placed “at a first position” and “at a second position” in the program channel lineup, as recited in claim 1 and similarly recited in independent claims 14 and 19. Accordingly, we determine the Examiner errs, as the findings in the Examiner’s rejection are not sufficient to show Migos discloses all of the limitations of claims 1, 14, and 19, and, therefore, do not sustain the Appeal 2021-000757 Application 15/990,819 13 Examiner’s rejection of independent claims 1, 14, and 19, under 35 U.S.C. § 102 as anticipated by Migos, together with the rejection of claims 2, 3, 5, 12, 15, 16, and 20, which depend from claims 1, 14, or 19. Furthermore, we do not sustain the rejection of dependent claims 6-8 and 13 under 35 U.S.C. § 103 over Migos and Sirpal or the rejection of dependent claims 9-11 over Migos, Sirpal, and Pugh because the Examiner’s applications of Sirpal or Pugh do not cure the deficiency in the rejection of the base claims addressed above. CONCLUSION The decision of the Examiner to reject claims 1-3, 5-16, 19, and 20 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1-3, 5, 12, 14-16, 19, 20 102 Migos 1-3, 5, 12, 14-16, 19, 20 6-8, 13 103 Migos, Sirpal 6-8, 13 9-11 103 Migos, Sirpal, Pugh 9-11 Overall Outcome 1-3, 5-16, 19, 20 REVERSED