Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Jan 29, 2013

10675904 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEYHAN KARAOGUZ and JAMES BENNETT
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Appeal 2011-001699
Application 10/675,904
Technology Center 2400
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Before: JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
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STATEMENT OF THE CASE
Appellants’ claimed invention relates to media interfaces.
Independent claim 1, reproduced below, is representative of the subject
matter on appeal:
1. A method for customizing a channel interface, the
method comprising:

determining one or both of personal media and/or
broadcast media that is to be presented in a media channel;

determining a schedule for presenting said one or both of
personal media and/or broadcast media in said media channel;
and

presenting for displaying, at a first geographic location,
said schedule comprising said one or both of personal media
and/or broadcast media in a media guide, wherein said media
channel may be pushed from said first geographic location to a
second geographic location, wherein said media guide
comprises a plurality of channels, and wherein one or more of
said plurality of channels may be selected and viewed at said
first geographic location prior to pushing said media channel
to said second geographic location.

(disputed limitations emphasized).

REJECTION
The Examiner rejected claims 1-31 under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Novak (U.S. Pat. Pub. No.
US 2002/0104099 A1) and Cooper (U.S. Patent No. US 6,754,904 B1).
(Ans. 4-9).

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GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the rejection
of claims 1-31 on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

CONTENTIONS
Appellants contend, inter alia, that:
Even though Novak's upload source 122 may utilize an STB
Set Top Box], the fact remains that the synthetic channel
media objects (uploaded at the source 122 and seen in Fig. 7)
are only accessed and displayed at the location of the STB 152,
and not from the location of the upload source 122 (see Novak
at paragraph 0063).
Even though Cooper discloses two separate locations
with two separate EPGs Electronic Program Guides] (602a and
602b in Fig. 6), none of Cooper's STBs (at either location
602a or 602b) can select and view a media channel (or
media), prior to pushing the same media channel (or media)
to the other location. The Appellants agree (as stated by the
Examiner in the above underlined citation) that Cooper
discloses the communication of information from the first
geographic location to the second geographic location.
However, such "communicated information" is in the form of a
message 600, which only includes links (e.g., 616 and 618) that
control the tuner of a set-top box (see Cooper at col. 4, lines 28-
49). The message 600 does not include media, which is
displayed at the first STB location (e.g., 602a), prior to the
same media being communicated for display at the second
STB location (e.g., 602b).
(App. Br. 7-8).
Appellants further contend that:
[E]ven though Cooper discloses that a user can receive and
view a TV signal 800, it is the outgoing message (and not the
received signal 800) that is sent to another location. In
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addition, as discussed above, the message 600 does not include
media, which is displayed at the first STB location (e.g., 602a),
prior to the same media being communicated for display at the
second STB location. In other words, Cooper receives a TV
signal 800 (which is displayed at the user location but it is
not pushed to another location). Cooper also generates a
message 600, which is sent to another location but it is not
"media" that is displayed at the user location. . . .
To summarize, Novak does not disclose or suggest that
the "media guide comprises a plurality of channels, where one
or more of the plurality of channels may be selected and viewed
at the first geographic location prior to pushing the selected
media channel to the second geographic location," as is
required by independent claims 1, 11 and 21. . . .
(App. Br. 9).

ISSUE
Under § 103, did the Examiner err in finding that the cited references,
either alone or in combination, would have taught or suggested the disputed
limitation of “wherein said media guide comprises a plurality of channels,
and wherein one or more of said plurality of channels may be selected and
viewed at said first geographic location prior to pushing said selected media
channel to the second geographic location,” within the meaning of
representative claim 1 (emphasis added), and of independent claims 11
and 21.

ANALYSIS
This appeal turns upon claim construction. Our reviewing court
guides that “[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
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claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
At the outset, we observe that the first-recited “wherein” clause and
the contested third-recited “wherein” clause each include “may be” language
that is expressly equivocal in scope (claim 1). We conclude that such
language makes optional the recited acts of pushing the media channel and
selecting and viewing “one or more of said plurality of channels,” as recited
in claim 1. Thus, we conclude the claim scope is not limited by such
language that suggests or makes optional but does not require the steps to be
performed.1
Moreover, because the act of selection is not positively recited as
actually being performed (because of the “wherein . . . may be selected”
language in claim 1), we accord no patentable weight to the informational
content of the recited displayed “schedule comprising said one or both of
personal media and/or broadcast media in a media guide” (claim 1). As
presently claimed, the displayed media guide and schedule are non-
functional descriptive material because the informational content of these

1 See MPEP § 2111.04 regarding "wherein" clauses:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP § 2111.04 Eighth Edition, Rev. 9, Aug. 2012).

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elements is not positively recited as actually being employed to affect or
change any machine or computer function.2 Therefore, the informational
content of the displayed media guide and schedule is not entitled to weight
in the patentability analysis.3 Thus, to the extent Appellants’ arguments are
premised on a narrow interpretation that claim 1 requires the acts following
the “may be” qualifiers to be performed, we find such arguments unavailing
for the (two) aforementioned reasons.4
Even assuming arguendo that the aforementioned limitations may be
accorded patentable weight, Appellants’ arguments are not persuasive
because we find the weight of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.
See Response to Argument (Ans. 11-15).

2 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
3 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. The Manual of
Patent Examining Procedure (MPEP) includes substantively the same
guidance. See MPEP, 8th edition (Rev. 9, Aug. 2012), § 2111.05.
4 In the event of further prosecution, the Examiner should consider a
rejection under 35 U.S.C. § 112 (b) (Sept. 16, 2012). See Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI 2008) (“Precedential”) (“[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.”).

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In particular, we agree with the Examiner’s claim construction
because it comports with the express language of claim 1: “it is the
Examiner’s position that a ‘plurality of channels’ and a ‘media channel’
have separate meaning as claimed, where one or more of the ‘plurality of
channels’ is ‘selected and viewed’, and the ‘media channel’ is pushed from a
first location to a second location.” (Ans. 11).
Regarding Appellants’ contention that Cooper’s communicated
information is in the form of a message 600, which only includes links (e.g.,
616 and 618) that control the tuner of a set-top box (see Cooper at col. 4,
lines 28-49), we particularly observe that Appellants’ arguments in both the
principal Brief, page 9 and the Reply Brief equate the claimed “media
channel” as being equivalent to media (see e.g., Reply Brief, p. 4, last line:
“the received information [in Cooper] is not media content.”). However, we
conclude that Appellants’ construction is inconsistent with the broader
description in the Specification, which states: “personal media and/or
broadcast media that is to be presented in a communication channel” (Spec.
32, Abstract) (emphasis added). Thus, we conclude that a reasonable
interpretation of the claimed “media channel” more broadly covers links to a
communication channel for viewing media, such as taught or suggested by
Cooper’s transmitted media links 616 and 618 (see col. 4, ll. 32-33, “Each
link 616 and 618 can include a reference to a television channel feature”).
Although Appellants urge that “Novak does not disclose that the
interface 702 or the [single] synthetic channel schedule comprise a
plurality of channels” (Reply Br. 4, ll. 1-2), we conclude that Appellants’
claim 1 only requires a single “media channel” to be “pushed from said first
geographic location to a second geographic location” as per the plain
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language of the claim (“wherein said media channel may be pushed”), and in
accordance with the Examiner’s claim construction discussed above.
We observe that Novak’s Figure 8 depicts an electronic program
guide (EPG 802) that includes a personal channel (Joe’s TV channel) as
shown in Novak’s Figure 7, along with other broadcast media channels (i.e.,
teaching a media guide comprising a plurality of channels). We
acknowledge that Novak’s Figure 8 appears to be located at a second
geographical location on the subscribing end user side (para. [0074]), which
the Examiner correlates with Novak’s STB 152 (Ans. 12 citing Novak, Fig.
1).
However, we find Novak’s Figure 8 teaches that the acts of selecting
and viewing a plurality of program guide channels were well known and thus
would have been obvious to an artisan when performed at any location,
including at the location of the author of Novak’s personal synthetic channel
corresponding to the claimed first geographical location. (See Novak, para.
[0063]; see also Ans. 12: “the Examiner has addressed the claimed ‘first
location’ with Novak’s Upload Source 122 [Fig. 1].”). We further observe
that Novak’s Figure 8 bears a striking similarity to Appellants’ exemplary
media channel guide 100, as shown in Figure 1B of Appellants’ drawings.
The Examiner admits that in Novak “it is unclear if one or more of the
plurality of channels may be selected and viewed at the first location prior to
pushing the media channel to the second geographic location.” (Ans. 12).
However, the Examiner relied upon the Cooper reference to teach or suggest
this limitation. We agree with the Examiner’s findings (Ans. 13) regarding
Cooper’s teaching of a first EPG located at a first geographic location (600a-
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DC), and a second EPG located at a second geographic location (600b–
Boston), as depicted in Cooper’s Figure 6.
We further agree with the Examiner that “Cooper’s teaching of
Message 600, which is communicated between the STBs, [] demonstrate[s]
that, in a similar fashion to Novak, Cooper teaches an act of communication
from a first location to a second location. In particular, Cooper establishes
that this communication is performed after the user has selected and viewed
a channel in the EPG (as described in Col. 6 Lines 19-57; with further
reference to Steps 1000 and 1006 of Fig. 10).” (Ans. 13). We note that the
Examiner’s rejection is based on the combined teachings and suggestions of
Novak and Cooper.
Regarding the disputed temporal “prior to” limitation (claim 1), absent
a showing of secondary considerations (e.g., unexpected results), we are not
persuaded that the Examiner’s ultimate legal conclusion of obviousness is in
error. We find at least Novak’s Figures 7, 8, and Cooper’s Figure 6 establish
that selecting and viewing electronic program guide channels are well known
regardless of when and where the acts are performed. Moreover, we find
that merely changing locations and sequence order would yield predictable
results.
Notwithstanding Appellants’ arguments (see also Reply Br. 2-7), the
Supreme Court guides that “when a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
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This reasoning is applicable here. Therefore, on this record, we are
not persuaded of error regarding the Examiner’s underlying factual findings
and ultimate legal conclusion of obviousness. Accordingly, we sustain the
rejection of claim 1. Claims 2-31 (not argued separately) fall therewith. See
37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s rejection under §103 of claims 1-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

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