Ex Parte Liebhold et al

Patent Trial and Appeal Board

Nov 20, 2012

10512332 (P.T.A.B. Nov. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VALERIE SACREZ LIEBHOLD
and ANTHONY EDWARD STUART1
____________

Appeal 2010-007348
Application 10/512,332
Technology Center 2400
____________

Before BRUCE R. WINSOR, JAMES B. ARPIN, and
TRENTON A. WARD, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Thomson Licensing S.A. is the real party in interest.
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STATEMENT OF THE CASE
Appellants’ invention is directed to a television signal receiver which
provides visual feedback in response to the receipt of a direct entry digit,
e.g., a first digit, for a television channel change request that indicates (1) the
channel number entered by a user and (2) the television signal tuning device
to which the channel pertains. Spec. 2:16-25. The television signal receiver
also may implement default tuning in which the channel entry is by default
tuned on a particular tuning device. Id. In an embodiment, the invention is
a method of processing a television channel change request. This method
includes: (a) receiving a first digit of a television channel and (b) providing
an on-screen display showing television channel digit entered and a current
tuning device to which the entered television channel digit pertains. Id.
Claim 1 is illustrative and is reproduced below with the key disputed
limitation emphasized:
1. In a television signal receiver, a method of processing a television
channel change request comprising:
receiving a first digit of a television channel;
providing, upon receipt of the first digit of the television
channel, an on-screen display showing the received television channel
digit, a tuning device by which the received television channel digit is
being processed, available auxiliary tuning devices, and a tuning
device change button; and
changing the tuning device to a selected one of the available
auxiliary tuning devices in response to activation of said tuning device
change button.

THE REJECTIONS
1. The Examiner rejected claims 1-4 and 11-14 under 35 U.S.C. §
103(a) as unpatentable over Ellis (US 6,766,526 B1; issued Jul. 20, 2004;
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filed Dec. 3, 1999) and Bates (US 2002/0152459 A1; published Oct. 17,
2002; filed Apr. 17, 2001). Ans. 3-6.2
2. The Examiner rejected claims 5-10 and 15 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Bates, and Morrison (WO 98/42128 A1;
published Sep. 24, 1998). Ans. 6-9.

OBVIOUSNESS REJECTION OVER ELLIS AND BATES
The Examiner finds that Ellis teaches or suggests all of the limitations
of illustrative claim 1, except for “providing, upon receipt of the first digit of
the television channel, an on-screen display showing . . . available auxiliary
tuning devices . . . ,” but cites Bates as teaching or suggesting this limitation
in concluding that the claim would have been obvious. Ans. 3-4. In
particular, the Examiner finds that, in addition to the disclosure in Ellis that
its system is compatible with multiple sources and that the system displays
those sources (Ans. 4 (citing Ellis, Figs. 13, 14)), Bates discloses a tuning
device and an “available” auxiliary tuning device connected to the television
signal receiver (Id. (citing Bates, Figs. 1, 2)). Further, the Examiner finds
that Ellis and Bates teach or suggest all of the limitations of claims 2-4 and
claims 11-14. Ans. 4-6.
With respect to dependent claims 5 and 15,3 the Examiner finds that
Ellis and Bates teach or suggest all of the limitations of claims 1 and 2 and

2 Throughout this opinion, we refer to (1) the Appeal Brief (“Br.”) filed
December 15, 2009; and (2) the Examiner’s Answer (“Ans.”) mailed
February 2, 2010.
3 Claim 5 depends from independent claim 1 via intervening claim 2, and
claim 15 depends from independent claim 11 via intervening claim 12. Br.
15-16, 18.
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of claims 11 and 12, respectively, except for defaulting to one of the tuner of
the television signal receiver and a tuner of an auxiliary tuning device as a
tuning device to which a last television channel was tuned and to which the
received channel digit pertains. The Examiner, however, cites Morrison as
teaching or suggesting this limitation in concluding that these claims would
have been obvious. Ans. 6-7.
With respect to independent claim 6, the Examiner finds that Ellis and
Bates teach or suggest all of the limitations of claim 6, except for a
processing circuitry, a tuner coupled to the processing circuitry, a television
signal input, an on-screen display generator, and a memory coupled to the
processing circuitry and containing instructions to cause the television signal
receiver to perform the same steps described in the method of claim 1, but
cites Morrison as teaching or suggesting these limitations in concluding that
this claim would have been obvious. Ans. 7-8. Further, the Examiner finds
that Ellis, Bates, and Morrison teach or suggest all of the limitations of
claims 7-10, which depend from independent claim 6. Ans. 8-9.
Appellants argue that Ellis and Bates do not show the disputed
limitation of claim 1 and the corresponding limitations of claims 6 and 11.4
Br. 10-13. In particular, Appellants raise three arguments with respect to the
combination of Ellis and Bates. Br. 10-11. First, Appellants argue that,
because Ellis’s Figure 1 depicts only a single signal source, which uses only
a single tuning device, Ellis’s Figure 1 does not teach or suggest an on-
screen display of a tuning device. Br. 10; see Ans. 3. Second, Appellants

4 Claim 6 recites the identical, disputed limitation of claim 1 (Br. 16), and
claim 11 recites a “means for” performing the identical, disputed limitation
of claim 1 (Br. 17-18).
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argue that, although Ellis’s Figure 12 depicts multiple sources, which may
use multiple tuning devices, with respect to the depicted system, Ellis’s
describes the user entering two digits of the television channel. Br. 10
(citing Ellis, col. 1, ll. 22-25); see Ans. 3. Thus, although Ellis’s Figure 4
depicts entry of a single digit of a television channel, Appellants argue that
neither Ellis’s Figure 1 nor Figure 12 teaches or suggests displaying multiple
sources in an on-screen display “upon receipt of the first digit of the
television channel.” Br. 10-11. Third, Appellants argue that Bates also does
not teach or suggest providing, “upon receipt of the first digit of the
television channel, a display of the digit, a tuning device which is processing
the digit, and a tuning device change button,”5 which, Appellants allege, also
is missing from Ellis. Br. 11.

ISSUE
Under § 103, has the Examiner erred in rejecting claims 1-4 and 11-14
by finding that Ellis and Bates, collectively, would have taught or suggested
“providing, upon receipt of the first digit of the television channel, an on-
screen display showing the received television channel digit, a tuning device
by which the received television channel digit is being processed, available
auxiliary tuning devices, and a tuning device change button?”

5 As noted above, the Examiner finds that Bates teaches or suggests the
“available auxiliary tuning devices,” which are missing from Ellis. Ans. 4.
Appellants do not contest this finding. Br. 10-11.
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ANALYSIS
1. Claims 1-4.
On this record, we find no error in the Examiner’s obviousness
rejection of illustrative claim 1, which recites, in pertinent part, the disputed
limitation. In particular, we have considered each of Appellants’ arguments
regarding the alleged deficiencies in the combination of Ellis and Bates, but
we are not persuaded of error in the Examiner’s conclusion of obviousness.
First, as noted above, Appellants argue that, because Ellis’s Figure 1
depicts only a single signal source, which uses only a single tuning device,
Ellis’s Figure 1 does not teach or suggest an on-screen display of a tuning
device. Br. 10. Referring to Ellis’s Figure 1, Ellis describes that
“[c]ommunications paths 18 may be any suitable communications paths,
such as satellite links, telephone network links, cable or fiber optic links,
microwave links, Internet links, or combinations of such paths.” Ellis, col.
3, ll. 23-27 (emphasis added). Although Ellis only depicts a single,
television distribution facility 16, Ellis explains that “[o]nly one television
distribution facility 16 is illustrated in FIG. 1 to avoid over-complicating the
drawing.” Id. at ll. 27-28; see also id. at ll. 34-37 (describing
communication paths 18 associated with “each” television distribution
facility 16). Further, in Ellis’s Figure 1, Ellis depicts an ellipsis adjacent to
communication paths 20 indicating the presence of other communication
paths 20. As with communication paths 18, Ellis describes
“[c]ommunications paths 20 may include, for example, a satellite link, a
telephone network link, a cable or fiber optic link, a microwave link, an
Internet link, . . . [or] a combination of such links . . . .” Id. at ll. 54-58
(emphasis added). Thus, Appellants incorrectly interpret the disclosure
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associated with Ellis’s Figure 1 as describing only a single signal source
which uses a single tuning device.
Second, although Ellis’s Figure 12 depicts multiple sources which
may use multiple tuning devices, Appellants argue that Ellis describes the
user entering two digits, rather than a single digit, of the television channel.
Br. 10. Like Ellis’s Figure 1, however, Ellis’s Figure 12 is merely an
alternative system implementing an interactive channel entry system. Ellis,
col. 2, ll. 26-28; 60-62. Nevertheless, the Examiner does not rely on Ellis’s
Figure 1 or 12 alone to teach or suggest an on-screen display by which a
tuning device is shown in response to a received first digit. Ans. 3; see Br.
10. Instead, the Examiner finds that Ellis’s Figure 14 depicts that, upon
receipt of the first digit, e.g., four (4), of the television channel, the tuning
device processing the television channel, i.e., “46C HN” enclosed in a
display box, is displayed. Ans. 9-10. Moreover, Ellis depicts that available
auxiliary tuning devices, i.e., “C” for cable, “S” for satellite, and “B” for
broadcast, are displayed on on-screen display 85. Id.; see Ellis, Fig. 13.
Ellis’s Figure 15 depicts the steps involved in channel number
selection when locating an entry in a table. Ellis, col. 11, l. 53–col. 12, l. 2.
Ellis explains that
[a]t step 510, in response to each entered digit, the system may
display a list of numbers associated with the entered digit or
digits, information associated with the entered digit or digits, or
a notification that the entered digit or digits have related
channel numbers or any combination of these.
Ellis, col. 11, ll. 57-62 (emphases added). Further, Ellis states that step 510
may display any of the types of information and numbers that may be
displayed using the arrangements of Figures 4 and 14. Id. at ll. 62-65. Thus,
the Examiner further finds that “Ellis clearly discloses that in response to
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each entered digit the system will display a list associated with the entered
digit.” Ans. 10 (citing Ellis, col. 11, ll. 57-65; Fig. 15 (step 510)).
Therefore, Appellants do not persuade us that Ellis requires that two digits of
the channel are displayed in order for a tuning device to be displayed. See
Ans. 9-10.
Third, Appellants argue that Bates does not teach or suggest
providing, “upon receipt of the first digit of the television channel, a display
of the digit, a tuning device which is processing the digit, and a tuning
device change button.” Br. 11. The Examiner, however, does not rely on
Bates to teach or suggest this limitation. Ans. 4, 9-10. Moreover, as noted
above, we find that the Examiner demonstrates that Ellis discloses this
limitation.
The Examiner only relies on Bates to teach or suggest the “available”
tuning devices. Ans. 4. Appellants do not argue that Bates does not teach or
suggest the “available” tuning devices, nor do Appellants argue that Ellis
and Bates do not teach or suggest providing an on-screen display of the
“available” tuning devices, as recited in Appellants’ claim 1. See supra note
5.
For the reasons set forth above, we find that the Examiner
demonstrates that Ellis and Bates teach or suggest all of the limitations of
Appellants’ claim 1. Therefore, we sustain the Examiner’s obviousness
rejection of claim 1 over Ellis and Bates and of claims 2-4, which depend
from claim 1 and are not argued separately therefrom. Br. 11.
2. Claims 11-14.
Claims 12-14 depend, directly or indirectly, from independent claim
11. Br. 17-18. As we noted above, claim 11 contains a limitation identical
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to the disputed limitation in claim 1. Id. Although Appellants argue claims
11-14 separately, Appellants argue again that Ellis and Bates fail to teach or
suggest this limitation of independent claim 11. Br. 13. For the reasons set
forth above with respect to claim 1, we find that Appellants’ arguments are
not persuasive and that the Examiner demonstrates that Ellis and Bates teach
or suggest all of the limitations of Appellants’ claim 11. Therefore, we
sustain the Examiner’s obviousness rejection of claim 11 over Ellis and
Bates and of claims 12-14, which depend from claim 11 and are not argued
separately therefrom. Ans. 3-6; see Br. 13.

OBVIOUSNESS REJECTION OVER ELLIS, BATES, AND MORRISION
We sustain the Examiner’s obviousness rejections of claims 5-10 and
15 over Ellis, Bates, and Morrison. Ans. 6-9, 10. Claim 5 depends from
independent claim 1 via intervening claim 2; each of claims 7-10 depends,
directly or indirectly, from independent claim 6; and claim 15 depends from
independent claim 11 via intervening claim 12. Because the Examiner has
demonstrated that Ellis and Bates teach or suggest the disputed limitation of
independent claims 1 and 11, the Examiner need not demonstrate that
Morrison also teaches or suggests this limitation. Thus, we sustain the
obviousness rejection of dependent claims 5 and 15, for the reasons set forth
above. Similarly, with respect to independent claim 6, we find that the
Examiner demonstrates that Ellis and Bates teach or suggest the disputed
limitation and that Appellants do not argue that Morrison does not teach or
suggest the limitations of claim 6 that are not taught or suggested by Ellis
and Bates. See supra note 4. Therefore, we sustain the obviousness
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rejection of independent claim 6 over Ellis, Bates, and Morrison, as well as
of dependent claims 7-10, which Appellants do not argue separately.

CONCLUSION
The Examiner did not err in rejecting claims 1-15 under § 103(a).

ORDER
The Examiner’s decision rejecting claims 1-15 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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