Ex Parte ISHIGURO

Patent Trials and Appeals BoardAug 5, 2013

11928064 - (D) (P.T.A.B. Aug. 5, 2013)

1 UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte SATOSHI ISHIGURO __________ Appeal 2011-007894 Application 11/928,064 Technology Center 2100 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This appeal1 under 35 U.S.C. § 134 involves claims directed to a TV system with TV tuner. The Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellant identifies the Real Party in Interest as Sony Corp. and Sony Electronics, Inc. (App. Br. 2). Appeal 2011-007894 Application 11/928,064 2 STATEMENT OF THE CASE Appellant’s invention relates to a TV where “an unused item is removed from the menu when the processor determines that the unused item has not been selected for at least a threshold time period.” (Specification 2, ll. 1-3). “The thresholds may vary from menu item to menu item if desired.” (Specification 5, ll. 16-17). Claims 1-10 and 13-19 are on appeal. Claim 1 is representative and reads as follows (emphasis added): 1. A TV system with TV tuner and comprising: a TV display; and a processor executing logic to cause a TV menu to be presented on the display, the menu listing items representative at least of audio video categories, all unused item being removed from the menu when the processor determines that the unused item has not been selected for at least a threshold time period, a first threshold time period being used to test a first item on the TV menu and a second threshold time period being used to test a second item on the TV menu, the first threshold time period being different from the second threshold time period. 9. A TV comprising: a display; and a processor presenting a menu on the display, the menu containing at least icons representing entertainment content categories, the menu being dynamically updated by the processor to reflect the non-use of at least one icon; the processor periodically determining whether a timer associated with an icon indicates that a threshold period has elapsed since a most recent selection of the icon, and if so, incrementing a counter; and the processor determining whether the counter has reached a threshold and if so, removing the associated icon from the menu. Appeal 2011-007894 Application 11/928,064 3 14. A method comprising: displaying a menu on a TV display, the menu listing categories of entertainment available for presentation on the TV; providing category selection information to the TV, the information including at least a time period since at least a first category on the menu was selected; based at least in part on the time period, selectively removing the at least first category from the menu; based on a time period, removing at least a second category from the menu; and responsive to a “menu reset” command input using a user interface selector element presented on the TV display, replacing onto the menu both the first and second categories that had been removed and resetting timers associated with the first and second categories. The claims stand rejected as follows: I. Claims 1-5 and 8 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth2 and Grossman.3 II. Claims 14-18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Grossman. III. Claims 6 and 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth, Grossman and Kumagai.4 IV. Claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth, Grossman and Tsai.5 2 Hochmuth, US 6,377,286 B1, Apr. 23, 2002. 3 Grossman et al., USPN 5,682,486, Oct. 28, 1997. 4 Kumagai et al., US 7,631,274 B2, Dec. 8, 2009. 5 Tsai et al., US 2006/0166700 A1, Jul. 27, 2006. Appeal 2011-007894 Application 11/928,064 4 V. Claims 9-10 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Tsai. VI. Claim 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth, Tsai and Kumagai. I. – CLAIM 1 Issue The Examiner rejected claims 1-5 and 8 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Grossman. The Examiner finds that Hochmuth discloses “a default threshold is set and user can specify a specific threshold for a[n] individual file, therefore a first item and a second item can have different threshold time period” (Ans. 5, citing Hochmuth at col. 4, ll. 50-65). The Examiner thus concludes that the combined references teach a first and second threshold time periods where the first threshold time period being different from the second threshold time period. With regard to claim 1, Appellant contends that “the relied upon portion of Hochmuth teaches that a universal time period may be set, either by default or by the user, but default or not, only a single time period is used in the test in the relied-upon portion of Hochmuth” (App. Br. 5.) The issue presented is: Does the evidence of record support the Examiner’s finding that the combined prior art teaches or suggests all elements of claim 1? Appeal 2011-007894 Application 11/928,064 5 Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. FF1. Hochmuth discloses that “If a particular icon residing on the computer desktop has not been used more than a specified number of times is more than a specified period of time, that icon may be removed from the computer desktop” (Hochmuth, abstract). FF2. Hochmuth discloses that The specified period, and the specified threshold number of times a file must occur in the desktop event log within that specified period before it is considered for the creation of a shortcut may both be initially set to a default values. However, it is desirable to let the user adjust those values through a variety of means that are well known in the art. (Id. at col. 4, ll. 58-63.) Principles of Law In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). When determining whether a claim is obvious, an examiner must make “a searching comparison of the claimed invention — including all its limitations — with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Analysis We agree with Appellant that the cited references do not support a prima facie case of obviousness. As Appellant argues, Hochmuth discloses that a user may adjust one specified time period, not adjust both a first and second threshold time period such that the first and second threshold time Appeal 2011-007894 Application 11/928,064 6 period would be different (Ans. 5 and FF2). As the Examiner does not provide any persuasive rationale as to why a person of ordinary skill in the art would have modified the teachings of Hochmuth to arrive at the subject matter now claimed, we find the Examiner has failed to establish a prima facie case for with regard to claim 1. Conclusion of Law We conclude that the preponderance of the evidence of record does not support the Examiner’s conclusion that the combination of Hochmuth and Grossman discloses a TV having all limitations of independent claim 1 and dependent claims thereto (claims 2-5 and 8). II. – CLAIM 14 Issue The Examiner rejected claims 14-18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Grossman. The Examiner finds that Hochmuth does not expressly show responsive to a ‘menu reset’ command input using a user interface selector element presented on the display, replacing onto the menu both the first and second categories that had been removed and resetting timers associated with the first and second categories. However, it would have been obvious for a person of ordinary skill in the art to include a ‘menu reset’ command input for the stack icon to quickly restore the deleted items (see col. 7 lines 1-10 - user can simply select the icon that represent the stack of removed icons and put them back). (Ans. 11.) Appeal 2011-007894 Application 11/928,064 7 Appellant contends that “[m]ultiple items cannot be replaced in Hochmuth responsive to a single universal ‘menu reset’ command” (App. Br. 6). The issue presented is: Does the evidence of record support the Examiner’s finding that the combined prior art teaches or suggests all elements of claim 14? Additional Findings of Fact FF3. Hochmuth discloses that An appropriate icon representing the stack may be displayed on the computer desktop to allow the user to easily access these items that have been removed from the computer desktop and to retrieve items from the stack and place them back on the computer desktop. (Hochmuth col. 7, ll. 5-10.) Analysis We find that Appellant has the better position. Hochmuth discloses that a “stack” icon is created so that the user can retrieve items stored in the “stack” and put them back on the computer desktop (FF2). There is no evidential finding on this record demonstrating that a person of ordinary skill in the art would have found this manual restore operation to be equivalent of a “menu reset” function (Reply Br. 2-3). The Examiner does not provide any persuasive rationale as to why a person of ordinary skill in the art would have modified the teachings of Hochmuth to arrive at the subject matter of claim 14. Conclusion of Law We conclude that the preponderance of the evidence of record does not support the Examiner’s conclusion that the combination of Hochmuth Appeal 2011-007894 Application 11/928,064 8 and Grossman discloses a TV having all limitations of independent claim 14 and dependent claims thereto (claims 15-18). III. – CLAIMS 6 AND 19 The rejections of dependent claims 6 and 9 rely upon the underlying obviousness rejection of claim 1 over the combination of Hochmuth and Grossman. Having reversed the rejections of claim 1 and 14 over Hochmuth and Grossman, we necessarily reverse the rejection of claims 6 and 19 further including Kumagai, since Kumagai does not cure the deficiencies of Hochmuth and Grossman. III. – CLAIM 7 The rejection of dependent claim 7 relies upon the underlying obviousness rejection of claim 1 over the combination of Hochmuth and Grossman. Having reversed the rejection of claim 1 over Hochmuth and Grossman, we necessarily reverse the rejection of claim 7 further including Tsai, since Tsai does not cure the deficiencies of Hochmuth and Grossman. V. – CLAIM 9 Issue The Examiner rejected claims 9-10 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Tsai. The Examiner finds that “Hochmuth expressly specifies that icons ‘not used for a specified time or not used frequently enough over a specified period of time,’ may be removed from the desktop (see Col. 2 lines 25-27)” (Ans. 15). Appeal 2011-007894 Application 11/928,064 9 Appellant contends as follows: Note that trying to shoehorn Hochmuth into Claim 9, the examiner on page 7 must resort to speculation that “if” the threshold period is specified as a number of boot-ups, something might result. A number of boot-ups, however, is not a time period. It is a number that might take a few minutes to reach or forever. For being based on dearly flawed logic - that a number of events is the same thing as a time period - the rejection of Claim 9 further merits reversal. (App. Br. 7.) The issue presented is: Does the evidence of record support the Examiner’s finding that the combined prior art teaches or suggests all elements of claim 9? Additional Findings of Fact FF4. Hochmuth discloses that “[w]hen a particular object is not used for a specified amount of time, or not used frequently enough over a specified period of time, that object is removed from the computer desktop” (Hochmuth col. 2, ll. 25-28; emphasis added.) FF5. Hochmuth discloses as follows: step 610 checks the desktop event log, or some other usage information, to see if the last usage of that item was more than a specified threshold amount of time ago. This threshold amount of time may be measured in time units, as a predetermined number of GUI commands, or as a predetermined number of boot-ups or logins. If the item has been used more recently than the specified threshold amount of time, then the process proceeds to step 608. If the item has not been used more recently than the threshold amount of time, then the process proceeds to step 612 where the user is asked if that item should be removed from the computer desktop completely, or removed Appeal 2011-007894 Application 11/928,064 10 from the computer desktop and placed in the stack. This step is optional. (Id. at col. 6, ll. 50-62; emphasis added.) Analysis Hochmuth clearly teaches that a specified amount of time may be used as the threshold for triggering the removal of items (FF4 and FF5). We are thus not persuaded by Appellant’s arguments to the contrary (App. Br. 7 and Reply Br. 3). Conclusion of Law We conclude that the preponderance of the evidence of record supports the Examiner’s conclusion that the combination of Hochmuth and Tsai teaches or suggests all limitations of independent claim 9. Claim 10 falls with claim 9. 37 C.F.R. § 41.37(c)(1)(vii). VII. – CLAIM 13 Regarding the rejection of claim 13, Appellant argues that “[t]his claim inherits the patentability of its base claim” and do not provide additional argument or evidence (App. Br. 7). Thus, for the same reasons discussed above, Appellant’s arguments do not persuade us that the Examiner has erred in concluding that claim 13 is obvious. SUMMARY We reverse the rejection of claims 1-5 and 8 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Grossman. We reverse the rejection of claims 14-18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Grossman. Appeal 2011-007894 Application 11/928,064 11 We reverse the rejection of claims 6 and 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth, Grossman and Kumagai. We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth, Grossman and Tsai. We affirm the rejection of claims 9-10 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth and Tsai. We affirm the rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hochmuth, Tsai and Kumagai. 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). AFFIRMED-IN-PART lp