Ex Parte Andersen et al

Patent Trial and Appeal Board

Sep 26, 2012

10074484 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/074,484 02/11/2002 David B. Andersen ITL.2155US (P12916) 7314
47795 7590 09/26/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
09/26/2012 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 DAVID B. ANDERSEN, SRIDHAR IYENGAR,
PAUL PILAT, and MARY D. SMILEY
____________________

Appeal 2010-006090
Application 10/074,484
Technology Center 2400
____________________

Before KARL D. EASTHOM, JEFFREY B. ROBERTSON, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006090
Application 10/074,484

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4, 6-12, 14, 16, 17, 20, and 22-25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

THE INVENTION
Appellants state that the invention relates to program schedules and
specifically to the identification of a specific category of programs in a
program schedule. (Spec. 1, ll. 4-5.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
creating a program schedule that includes a listing for a
television program that has supplementary content provided as
an enhancement transmitted in association with the television
program;
associating a first predefined unique symbol with a first
type of the supplementary content to indicate a one-screen
interactivity mode to display first interactive content and the
television program on a first screen by a processor;
associating a second predefined unique symbol with a
second type of the supplementary content to indicate a two-
screen interactivity mode to display, on a second screen, second
interactive content synchronized to the television program on
the first screen, or to indicate a two-screen static web mode to
display, on the second screen, static content related but not
synchronized to the television program on the first screen by
the processor; and

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providing the predefined unique symbol in association
with the listing in the program schedule.
(Appeal Brief, Claims Appendix1 14.)

THE REJECTIONS
I. The Examiner rejected claims 1, 4, 6-7, 17, 20, and 22-23
under 35 U.S.C. § 103(a) as unpatentable over Stautner
(US 6,172,677 B1, issued January 9, 2001) in view of
Farwell (US 5,650,831, issued July 22, 1997).
(Examiner’s Answer, dated January 5, 2010, “Ans.” 3-8.)

II. The Examiner rejected claims 8-12, 14, 16, and 24-25
under 35 U.S.C. § 103(a) as unpatentable over Stautner
in view of Farwell and further in view of Boyer et al.
(US 6,268,849 B1, issued July 31, 2001). (Ans. 9-15.)

The Examiner also relies on IEEE 100: The Authoritative
Dictionary of IEEE Standards Terms, Standards
Information Network IEEE Press, Seventh edition
(December 2000) (“IEEE Dictionary”), pp. 1009-1010.

ISSUE
Initially, we observe that Appellants’ arguments concerning each of
the independent claims subject to Rejection I raise the same or similar
issues. (App. Br. 3.) Thus, pursuant to 37 C.F.R. § 41.37(c)(1)(viii), our
analysis will focus on representative claim 1 (Rejection I). Appellants’
arguments for Rejection II are similar to those advanced for Rejection I.
(Ans. 3-4.) Accordingly, our analysis for Rejection I applies equally to
Rejection II.
The dispositive issue on appeal is:

1 Appeal Brief filed September 1, 2009 and amended on October 16, 2009,
hereinafter “App. Br.” and “Claims App’x,” respectively.
Appeal 2010-006090
Application 10/074,484

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Whether the Examiner erred in concluding that Stautner in view of
Farwell renders claim 1 obvious, including whether the prior art teaches or
suggests:
(a) associating a second predefined unique symbol with a second type
of the supplementary content; and
(b) a two-screen interactivity mode to display, on a second screen,
second interactive content synchronized to the television program on the
first screen?

DISCUSSION
Rejection I
The Examiner found that Stautner discloses associating multiple types
of supplementary content with unique symbols in a television program
listing. (Ans. 5.) The Examiner found also that Stautner discloses a
television that displays television content on one screen and chat content on
another screen. (Ans. 5.) Thus, according to the Examiner, Stautner
discloses displaying second interactive content on a second screen
synchronized to the television program on the first screen. (Ans. 5.)
The Examiner found that Stautner’s only deficiency with respect to
claim 1, the representative claim on appeal, is in indicating a two-screen
interactivity mode by a second predefined unique symbol. (Ans. 6.) To
address this deficiency, the Examiner found that Farwell discloses a picture-
in-picture (“PIP”) symbol that corresponds to the unique symbol to indicate
a two-screen mode recited in the claims. (Ans. 6.) The Examiner concluded
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to modify Stautner as taught by Farwell as that combination
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would yield predictable results, such as allowing the user to display content
in a desired mode quickly. (Ans. 6.)
Appellants do not specifically refute the Examiner’s findings with
respect to Stautner. Instead, Appellants contend that Farwell does not
disclose associating a second predefined unique symbol with a second type
of supplementary content to indicate a two-screen interactivity mode
because the PIP symbol taught in Farwell is related to original content and
not related to supplementary content. (App. Br. 3.) Appellants also argue
that Farwell does not disclose a predefined unique symbol in association
with the listing in the program schedule because Farwell does not disclose a
television guide. (App. Br. 3-4.) Appellants further contend that Farwell
does not disclose a two-screen interactivity mode because Farwell does not
teach that two different devices are required. (App. Br. 3.)
(a) Second Predefined Unique Symbol
We are not persuaded by Appellants’ arguments. The Examiner relies
on Farwell for disclosing a particular predefined unique symbol to indicate a
two-screen mode. The Examiner relies on Stautner, not Farwell, for
disclosure of a predefined unique symbol associated with a listing. Thus,
Appellants’ arguments focus on what Farewell individually teaches, rather
than what the prior art as a whole would convey to one of ordinary skill in
the art. In responding to a prima facie case of obviousness, one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)).

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(b) Two-Screen Interactivity Mode
Similarly, the Examiner relies on Stautner, not Farwell, for disclosing
a two-screen interactivity mode. In this regard, we observe that the present
claims do not require two separate display devices for a two-screen
interactivity mode. Rather, we agree with the Examiner that one of ordinary
skill in the art would have understood the term “screen” to encompass a
portion of a display.
As the Examiner noted (Ans. 15-16), “screen” is commonly defined
as:
(3) . . . A screen may be a portion of a physical device or may
occupy the entire physical area of the display device.
(4) The portion of a display that is visible on the display device.
A screen may show part of a page, an entire page, or several
pages.

IEEE Dictionary at 1010.
Thus, one of ordinary skill in the art would have understood “screen”
to include, inter alia, a display device or a portion of a display device.
Appellants have not pointed to any language in the Specification or any
other persuasive evidence indicating that the skilled artisan would have
limited “screen” to a display device. “[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” Id. at 1379.
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DECISION
We affirm the Examiner’s rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED
ak/cu