Ex Parte 5530469 et al

Patent Trial and Appeal Board

Nov 29, 2012

90011240 (P.T.A.B. Nov. 29, 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.
90/011,228 09/13/2010 5530469 0815544.00001 9052
545 7590 11/29/2012
IP Patent Docketing
K&L GATES LLP
599 Lexington Avenue
33rd Floor
New York, NY 10022-6030
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/29/2012 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 INTERACTIVE TELEVISION COMPANY, LLC.
Patent Owner & Appellant
____________________

Appeal 2012-009161
Reexamination Control 90/011,228 & 90/011,240
Patent US 5,530,469
Technology Center 3900

____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and THOMAS
L. GIANNETTI, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. § 134(b) from the final
decision of the Examiner to reject claims 1-6. We have jurisdiction under 35
U.S.C. § 306. Oral hearing was on September 5, 2012.
We affirm.

Invention
The '469 patent relates to a computerized interactive television system
in which viewer inputs are correlated in real time with other viewer inputs,
with particularized results made available to each participating viewer. Col.
1, ll. 9-13.

Representative Claim
6. An interactive method to allow a plurality of users to
interact with program material, comprising in combination:

encoding inbound user responses from said plurality of
users;

storing parameters and computer program routines for
correlating user responses with said program material;

computing a result for each user and a tabulation of
results for a group of users in response to said inbound user
responses, said computation made in accordance with said
parameters and computer routines from said storing parameters
and computer program routines step;

storing said result for each user and a tabulation of results
for a group of responding users;

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calculating a composite result for a user based on the
user’s result and said results for a group of responding users;
and

transmitting said composite result to a user in response to
a user request for said composite result.

Owner’s Contentions
Owner contends that the Examiner erred in rejecting:
I. Claims 1 and 3-6 under 35 U.S.C. § 102(b) as being anticipated by
Pearson (US 5,018,736);
II. Claims 1-6 under 35 U.S.C. § 102(b) as being anticipated by Katz
(US 4,845,739); and
III. Claim 6 under 35 U.S.C. § 102(b) as being anticipated by Lange
(US 4,322,612).1

DISCUSSION
Appellant submits arguments for independent claim 6, and
acknowledges that the claims stand or fall with that claim. Reply Br. 5 n.1.
Accordingly, we will decide the appeal on the basis of claim 6. See also 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner’s Answer is hereby incorporated by reference. We
adopt the Examiner’s findings as our own. We add the following remarks
for emphasis.

1 It is not apparent why the Examiner and Appellant refer to Katz and Lange
as references under § 102(e). Katz issued July 4, 1989. Lange issued March
30, 1982. The filing date of the '469 patent is December 20, 1994, with no
claim to priority with respect to an earlier application.
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The bulk of Appellant’s arguments are based on the Examiner’s
alleged misinterpretation of language in claim 6, “calculating a composite
result for a user based on the user’s result and said results for a group of
responding users” (emphasis added). Patent Owner submits that, “as
properly construed, a composite result includes multiple results, rather than
merely being based on them.” App. Br. 11. That interpretation ignores the
actual language of the claim, however, which expressly recites that the
composite result is “based on” the user’s result and the results for a group of
responding users.
Moreover, claim 6 recites “transmitting said composite result.” The
claim also recites a “result” for each user and “results” for a “group of
users.” The “composite” modifier in the phrase “composite result” thus
could also be read as being present merely to distinguish the third-recited
“result” from the first two “results.” That is, the “composite result” can be
completely defined as being “based on the user’s result and said results for a
group of responding users” as specified in claim 6. Consistent with this
assessment, the word “composite” seems to appear only in the claims of the
'469 patent disclosure.
With respect to the “group of responding users,” Appellant submits
that “the phrases ‘group of users’ and ‘group of viewers’ should be
construed as a group of users (or viewers) including less than all of the
responding users (or viewers).” App. Br. 13-14. According to Appellant:
Claim 6 recites “a plurality of users.” Inbound user responses
are encoded from the plurality of users. Results are computed
“for each user,” though the tabulation of results is computed
“for a group of users.” Accordingly, a distinction is drawn in
the language of the claim between “each user” (e.g., each of the
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plurality of users providing inbound user responses) and the
“group of users.”

Id. at 16.
While we agree that claim 6 draws a distinction between “each user”
and the “group of users,” it simply does not follow that the “group of users”
must include fewer than all of the responding users.
Although the Examiner has interpreted the claims applying the
“broadest reasonable interpretation” standard, Appellant submits that some
other standard should apply. However, Appellant has not shown that the
claim interpretation would be any different under another standard. Even in
proceedings where the presumption of validity applies, our reviewing court
has repeatedly and consistently recognized that “courts may not redraft
claims, whether to make them operable or to sustain their validity.” Chef
Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004)
(citations omitted). “[I]n accord with our settled practice we construe the
claim as written, not as the patentees wish they had written it.” Id. Further,
our reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
In response to further reasoning provided by the Examiner in the
Answer, Appellant argues that the Examiner has relied upon two distinct
embodiments in Pearson (Reply Br. 15) and that information provided in a
printed publication is not transmitted to a user in response to a user request
(id. at 17). However, the Examiner makes clear that Pearson’s disclosure
related to publications is merely an alternative embodiment that is deemed to
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meet the asserted requirement that the “composite result” must include
provision of both the participant’s result and the result of all or a group of
participants as a separate listing. Ans. 75. As we are not persuaded that
claim 6 requires transmission of both the “user’s result” and the “results for
a group of responding users,” we are not persuaded of error in the rejection
over Pearson.
Similarly, Appellant notes that the Examiner has discussed additional
embodiments in Katz, but Appellant recognizes, correctly, that the rejection
is based on the “auction” embodiment. Reply Br. 21. We disagree that the
rejection has identified the bids themselves as both the “request for said
composite result” and the “inbound user responses” (id. at 24), because the
Answer (statement of the rejection) at pages 55 through 56 does not identify
the auction bids as “inbound user responses.” We may agree with Appellant
that Katz is “silent” about any request (i.e., the bids) for a composite result
being received through either the television link or the audio unit (Reply Br.
24). However, as the Examiner indicates, Katz discloses that
communication to callers with respect to bidding is provided through the
television link or the audio unit. Katz col. 15, ll. 35-38. Katz further
discloses that bids are received by actuating push buttons (col. 15, ll. 39-61),
but claim 6 does not require that the “user request” be effected by a
television link or an audio unit and does not preclude the “composite result”
being transmitted to the user by means of a television link or audio unit.
Appellant also, in the Reply Brief, takes the “bids” of Katz to be “user
responses” and alleges that Katz discloses that the bids are correlated with
each other, but not with the auction. Reply Br. 22. Consequently, according
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to Appellant, the auction of Katz cannot correspond to the recited “program
material.” Id. However, Appellant has failed to provide any reasonable
basis to conclude that a bid in an auction is somehow not “correlated with”
the auction.
In summary, as we are not persuaded that the Examiner erred in
rejecting representative claim 6, we sustain the § 102 rejections.

DECISION
The Examiner’s decision to reject claims 1-6 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

Patent Owner:

IP PATENT DOCKETING
K&L GATES LLP
599 LEXINGTON AVENUE
33rd FLOOR
NEW YORK, NY 10022-6030

Third Party Requester:

SNR DENTON US LLP
PO BOX 061080
CHICAGO, IL 60606-10806