Ex Parte KimDownload PDFPatent Trial and Appeal BoardMay 28, 201410733579 (P.T.A.B. May. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KYUNG-AH KIM1 ____________________ Appeal 2011-009095 Application 10/733,579 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-15, 17-19, 21, 23, and 24. Appellant has previously canceled claims 16, 20, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is Samsung Electronics, Co., Ltd. App. Br. 2. Appeal 2011-009095 Application 10/733,579 2 STATEMENT OF THE CASE2 The Invention Appellant’s invention relates to “a broadcast program information search system and a method thereof, and more particularly, to a broadcast program information search system and a method displaying search terms . . . of high search frequency out of detailed information [from received] broadcast programs so that a user can easily search for [desired] broadcast programs.” Spec. ¶ [02]. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added): 1. A content program information search system comprising: a server logically connected to a first database configured to store a plurality of search terms inputted from external devices; and a digital signal receiver configured to detect and to display for a selected search term of the plurality of search terms at least one of a content signal and detailed content information from a digital signal transmitted from a transmitter, wherein said server is configured to extract from the first database based on an order of priority based on search frequency and to transmit to the transmitter at least one transmission search term of the plurality of search terms, and 2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed Oct. 7, 2010); Reply Brief (“Reply Br.,” filed Mar. 7, 2011); Examiner’s Answer (“Ans.,” mailed Jan. 6, 2011); Final Office Action (“FOA,” mailed Mar. 3, 2010); and the original Specification (“Spec.,” filed Dec. 12, 2003). Appeal 2011-009095 Application 10/733,579 3 said digital signal receiver is configured to display in the order of priority the at least one transmission search term transmitted from the transmitter, wherein the search frequency corresponds to a frequency at which the search terms are input from the external input device. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Lee US 6,463,428 B1 Oct. 8, 2002 Dagtas US 2003/0093260 A1 May 15, 2003 Robarts US 2005/0278741 A1 Dec. 15, 2005 Hori US 7,209,942 B1 Apr. 24, 2007 Kikinis US 7,213,256 B1 May 1, 2007 Rejections on Appeal 1. Claims 1-4, 7, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Robarts, Lee, and Dagtas. Ans. 4. 2. Claims 8-15, 17-19, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Robarts, Lee, Kikinis, and Dagtas. Ans. 8. 3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Robarts, Lee, Dagtas, and Hori. Ans. 13. Appeal 2011-009095 Application 10/733,579 4 ISSUE Appellant argues (App. Br. 13-18; Reply Br. 4-5) the Examiner’s rejection of claims 1-4, 7, 23, and 24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Robarts, Lee, and Dagtas is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a content program information search system “wherein the search frequency corresponds to a frequency at which the search terms are input from the external input device,” as recited in claim 1? ANALYSIS We only consider those arguments actually made by Appellant in reaching this decision, and we do not consider arguments which Appellant could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We disagree with Appellant’s arguments with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Arguments. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellant contends the Examiner’s cited combination of prior art does not teach or suggest a search frequency that “corresponds to a frequency at which the search terms are input from the external input device.” App. Br. 16. Appellant further contends, Appeal 2011-009095 Application 10/733,579 5 [T]he issue here is not merely whether the search terms are input from an external device or determining how frequently the search word appears in a search result. Instead, the claimed feature requires that the search frequency correspond to the frequency at which the search terms are input by the external device. That is, the input frequency of the search terms (how frequently a particular search term was input) are used to determine the order of priority. App. Br. 16-17. With respect to the cited prior art, Appellant contends, “Robarts at most teaches a quick search using numeric key pads that produces a list with elements that match the query, but does not teach or suggest ‘a frequency at which the search terms are input.’” App. Br. 17. In Lee, “the keywords in the list could each be ranked based on the frequency in which the keyword appeared in the search result.” Id. Finally, “[Dagtas] does not teach or suggest inputting search terms from an external device . . . [and even] assuming arguendo, Dagtas discloses input from an external device, it does not teach or suggest a frequency at which the search terms are input from the external input device.” App. Br. 18. In response to Appellant’s arguments in the Appeal Brief, the Examiner finds, and we agree, Lee teaches . . . the keywords in the list could each be ranked based on frequency or frequency weighted by the context in which the keyword appeared." This clearly teaches the search frequency corresponds to a frequency of which the search terms are used. Furthermore, Lee teaches . . . extracting keywords from records based on frequency of occurrence or a variation. This keyword extraction must be generated from some source. There must be a user inputting keywords at some point in time to be able to record data in a system. Hence, there must be Appeal 2011-009095 Application 10/733,579 6 external input for the system. In addition, Dagtas teaches the search term can be inputted externally. Ans. 15-16 (citing Lee col. 5, ll. 1-5 and 14-15). The Examiner also correctly points out, “[t]he search frequency at which the search terms are input is not specified in the claim. Almost any frequency of search meets this limitation, once a day, weekly, monthly[,] yearly, etc.” Ans. 16. We agree with the Examiner because claim 1 merely requires that “the search frequency corresponds to a frequency at which the search terms are input from the external input device.” Claim 1 (emphasis added). We note the disputed “wherein” clause of claim 1 was added during prosecution, and Appellant’s Specification does not provide any special definition or meaning of the phrase “the search frequency corresponds to.” In the Reply, Appellant reiterates, [T]he frequency of appearance in the description does not teach or suggest frequency at which the search terms are input from the external input device . . . [i.e.], the claimed feature is directed to the input frequency of the search terms, whereas Lee is directed to determining the number of times a search term appears in a description. Reply Br. 4 (emphasis omitted). Appellant also disagrees with the Examiner’s finding cited above that the search frequency at which the search terms are input is not specified in the claim. We disagree with Appellant, as discussed below. Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In agreement with the Examiner, we Appeal 2011-009095 Application 10/733,579 7 find Appellant has not provided a definition of “corresponds to” in the Specification that would preclude the Examiner’s broader interpretation.3 In further support of the Examiner’s position, we note Lee column 5, lines 14-15 teaches or at least suggests that the search frequency corresponds to a frequency of which the search terms are used, and that Lee extracts keywords from records based on the frequency of occurrence or a variation. Lee col. 5, ll. 1-5. We conclude it would have been obvious to a person of ordinary skill in the art at the time of the invention that the disclosed keyword extraction results from some positive action, e.g., a user inputting keyword search terms which are recorded in a database and thereafter prioritized based upon their frequency of occurrence, a situation which Lee at least suggests. Lee, col. 5, ll. 1-5. Indeed, the Supreme Court has indicated: [It is an error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. . . . Common 3 Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”) (citation omitted). See also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”) (citations omitted). Appeal 2011-009095 Application 10/733,579 8 sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (citation omitted). An obviousness analysis is not confined to the explicit disclosure of the references and can consider the inferences a skilled person would make, see KSR, 550 U.S. at 418-19; the test is what the combined teaching of the references would suggest to one of ordinary skill in the art, see In re Keller, 642 F.2d 413, 425 (CCPA 1981). Additionally, Appellant has presented no evidence that determining the search term priority order based on a search frequency that “corresponds to a frequency at which the search terms are input from the external input device” (claim 1) was “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19), or “represented an unobvious step over the prior art.” Id. We also note Appellant’s claim 1 is directed to a system. As a matter of claim construction, we conclude the contested limitation of “the search frequency corresponds to a frequency at which the search terms are input from the external input device” is directed to mere data and/or functional language, i.e., how the search term priority is determined. Thus, we conclude the contested limitation does not further limit the structure of the claimed system. Our reviewing court guides that the patentability of an apparatus [or system] claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see Appeal 2011-009095 Application 10/733,579 9 also Superior Industries v. Masaba, 2013-1302, 2014 WL 163046 at *5 (Fed. Cir. Jan. 16, 2014) (Rader, J., concurring) (“[A] system claim generally covers what the system is, not what the system does. Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).4 We find this reasoning applicable here, as Appellant urges the claimed system (structure) patentably distinguishes over the prior art structure (Lee, col. 5, ll. 1-15) based solely on a non-structural abstract and/or functional limitation. See Claim 1; App. Br. 17; Reply Br. 4. Accordingly, based upon the findings above, on this record, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s reading of the contested limitations on the cited prior art, or error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1. As Appellant has not provided separate arguments with respect to dependent claims 2-4, 7, 23, and 24, rejected on the same basis as claim 1, 4 Superior Industries v. Masaba is a non-precedential opinion of the Court of Appeals for the Federal Circuit. However, we consider the concurring opinion by Chief Judge Rader as guiding because it cites precedential authority in support. Appeal 2011-009095 Application 10/733,579 10 we similarly sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a). § 103(a) Rejections of Claims 5, 6, 8-15, and 17-21 In view of the lack of any substantive or separate arguments directed to the unpatentability rejection of claims 5 and 6 under § 103 over the combination of Robarts, Lee, Dagtas, and Hori (see App. Br. 21), or the unpatentability rejection of claims 8-15, 17-19, and 21 under § 103 over the combination of Robarts, Lee, Kikinis, and Dagtas (see App. Br. 20), we sustain the Examiner’s unpatentability rejection of these claims. Appellant merely argues, “since claims 5 and 6 depend from claim 1 and since Hori does not cure the deficiencies of Robarts, Dagtas ad [sic] Lee noted above with regard to claim 1, claims 5 and 6 are patentable at least by virtue of their dependency and the additional features recited therein.” App. Br. 21. When Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Therefore, lacking separate, substantive arguments, we sustain the Examiner’s unpatentability rejection of claims 5 and 6. Further, Appellant merely argues independent claims 8, 11, 15, and 19 recite subject matter analogous to claim 1, and “since Kikinis does not teach or suggest the features of claim 1 missing in Robarts, Lee and Dagtas, claims 8, 11, 15 and 19 are patentable for at least the analogous reasons claim 1 is patentable and the additional features recited therein.” App. Br. 20. Appeal 2011-009095 Application 10/733,579 11 Arguments not made are considered waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection . . . . [T]he Board may treat any argument with respect to that ground of rejection as waived.”). Accordingly, we sustain the Examiner’s rejection of claims 5, 6, 8-15, 17-19, and 21. CONCLUSION The Examiner did not err with respect to the unpatentability rejections of claims 1-15, 17-19, 21, 23, and 24 under 35 U.S.C. § 103(a) over the various combinations of cited prior art, and we sustain the rejections. DECISION We affirm the Examiner’s decision rejecting claims 1-15, 17-19, 21, 23, and 24. 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). AFFIRMED msc Copy with citationCopy as parenthetical citation