Ex Parte 5530469 et al

Patent Trials and Appeals BoardNov 29, 2012

90011240 - (D) (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 Appeal 2012-009161 Reexamination Control 90/011,228 & 90/011,240 Patent US 5,530,469 2 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; Appeal 2012-009161 Reexamination Control 90/011,228 & 90/011,240 Patent US 5,530,469 3 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. Appeal 2012-009161 Reexamination Control 90/011,228 & 90/011,240 Patent US 5,530,469 4 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 Appeal 2012-009161 Reexamination Control 90/011,228 & 90/011,240 Patent US 5,530,469 5 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 Appeal 2012-009161 Reexamination Control 90/011,228 & 90/011,240 Patent US 5,530,469 6 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 Appeal 2012-009161 Reexamination Control 90/011,228 & 90/011,240 Patent US 5,530,469 7 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