Ex Parte RE 35952 et al

Patent Trials and Appeals BoardApr 19, 2013

90009400 - (D) (P.T.A.B. Apr. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 90/009,400 02/09/2009 RE 35952 4219 7590 04/19/2013 NIRO, SCAVONE, HALLER & NIRO 181 W. MADISON - SUITE 4600 CHICAGO, IL 60602 EXAMINER POKRZYWA, JOSEPH R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/19/2013 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 TECHNOLOGY DEVELOPMENT AND LICENSING, LLC Appellant and Patent Owner ____________ Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent RE35,952 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and JUSTIN ARBES, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL Technology Development and Licensing, LLC appeals under 35 U.S.C. § 134 and 306 from a final rejection of claims 1, 2, and 6-53. Appellant does not appeal the final rejection of claim 5. App. Br. 14. We have jurisdiction under 35 U.S.C. § 134 and 306. We heard oral arguments on January 9, 2013. Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 2 STATEMENT OF THE CASE This proceeding arose from three separate third party requests for ex parte reexamination of U.S. Patent No. RE35,952 („952 patent). The Office granted and merged the three proceedings (i.e., Reexamination Control Nos. 90/009,400; 90/009,456; and 90/010,726 – see Decision Sua Sponte Merging Reexamination Proceedings dated May 4, 2010). Presently, claims 1, 2, and 5-53 stand rejected and claims 3 and 4 are deemed patentable. The invention relates to a television control system for selecting a television channel corresponding to a preassigned channel tuning designation (see Abstract). Claim 1 reads as follows: 1. In a television control system apparatus for selecting a television channel corresponding to a preassigned channel tuning designation, the system apparatus comprising: tuner means for receiving a processor signal and a multi- channel input signal, and in response to said processor signal, tuning out all but one channel corresponding to a selected one of said preassigned channel tuning designations; memory mean for storing at least one operator-assigned channel select designation for at least one of said channel tuning designations; first operator-actuated control means for generating a first control output signal comprising a first data set representative of a desired channel select designation for one of said channel tuning designations; second operator-actuated control means for generating a second control output signal comprising a second data set Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 3 representative of a desired viewing channel identified by an operator selected one of said channel select designations; processor means for receiving said first and second control output signals from said first and second operator- actuated control means, and upon receipt of said first data set, causing said memory means to store said desired channel select designation as corresponding to said one channel tuning designation, and upon receipt of said second data set, retrieving from said memory means the one of said channel tuning designations corresponding to said operator selected channel select designation, and generating said processor signal to correspond to said one channel tuning designation; said first control output signal comprising a first one of said channels of said multi-channel input signal; said processor means including means for generating said processor signal to cause said tuner means to tune out all but said first one of said channels, and for receiving from said tuner means said first control output signal comprising said first one of said channels. The Examiner rejected claims on the following bases: (1) claims 1, 2, and 5-53 under 35 U.S.C. § 102(b) as anticipated by Houston Tracker Systems, “Tracker System VIII – Installation and Operation Manual,” 1986 (“Tracker”); and (2) claims 1, 2, 5, 12, 13, 23, 24, and 48 under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 4.796,032 (“Sakurai”). ISSUE Did the Examiner err in rejecting claims 1, 2, and 6-53? Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 4 PRINCIPLES OF LAW The „952 patent term expired during the reexamination proceedings. Under these circumstances, the “broadest reasonable” rule of claim construction does not apply. Rather, claim construction rules employed in infringement suits serve as appropriate guides. Conversely, “construing express claim language” “narrowly” in light of the specification contrasts with reading improper “inferential limitations” into a claim. Ex parte Papst- Motoren, 1 USPQ2d 1655, 1656-57 (BPAI 1986) (citation omitted). In all cases, claims “must be read in view of the specification. . . . [T]he specification „is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”‟ Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). Prosecution history may shed light on the claim scope and should be used if available. Id. at 1317. Anticipation is established when a single prior art reference discloses, expressly or under the principles of inherency, each and every limitation of the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 5 ANALYSIS Claims 1 and 2 Appellant argues claim 1 “requires a first control output signal at the origin of the signal (e.g., at a cable or satellite broadcast center)” (App. Br. 136) and contends that Tracker fails to disclose this feature. We disagree with Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans. 13-14). For example, as the Examiner points out, claim 1 does not recite “a first control output signal at the origin of the signal.” In fact, claim 1 does not recite an “origin of the signal” at all. Instead, claim 1 merely recites a “first control output signal” as “comprising a first data set representative of a desired channel select designation” and “comprising a first one of said channels of said multi-channel input signal.” Appellant does not appear to dispute the Examiner‟s finding that Tracker discloses these features. Thus, we disagree with Appellant‟s argument pertaining to an “origin” of a first control output signal. Appellant also argues that claim 1 recites a “system apparatus” and that “[n]othing precludes the „system apparatus‟ from having a component . . . at a remote location” (App. Br. 137). Hence, Appellant appears to argue that Tracker fails to disclose a system apparatus containing a component located at a remote location. We disagree with Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans. 14-16). Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 6 We agree with Appellant that claim 1 recites a “system apparatus” (i.e., a “television control system apparatus”) and that claim 1 does not preclude components of the claimed “system apparatus” from being located at a remote location. However, Appellant has not demonstrated that claim 1 requires a specific location for any of the components of the claimed “system apparatus,” much less that a component of the system apparatus be specifically located at a remote location. Thus, even assuming Appellant‟s contention to be true that Tracker fails to disclose a component of the system at a remote location, we disagree with Appellant that whether Tracker discloses a component located at a remote location or not is relevant to claim 1. Appellant also argues that Tracker fails to disclose “a first control output signal comprising (i.e., using) one of the first channels of the multi- channel input signal, i.e., . . . generating a first control output signal which comes from anywhere other than a first operator actuated control means at the source of the multi-channel signal” (App. Br. 140). Claim 1 recites the “first control output signal comprising a first one of said channels of said multi-channel input signal.” We disagree with Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans. 17-18). For example, we agree with the Examiner that claim 1 does not require “generating a first control output signal which comes from anywhere other than a first operator actuated control means at Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 7 the source of the multi-channel signal” as Appellant argues. Claim 1 also does not recite a first control output signal using one of the first channels of the multi-channel input signal as Appellant argues. Instead, claim 1 merely recites a first control output signal comprising a first one of said channels of said multi-channel input signal. We agree with the Examiner that Tracker discloses this feature. As the Examiner points out (see, e.g., Ans. 18), Tracker discloses “generating a first control output signal” (e.g., upon moving “to the desired channel and satellite using the remote or front panel controls” – p. 9, col. 1, bottom – and depression of a “FAVORITE PROGRAM” button – p. 9, col. 2, top) “comprising a first one of said channels of said multi-channel input signal” (e.g., indicating one of the channels of the multi-channel input signal as by moving “to the desired channel” – p. 9, col. 1, bottom). The signal of Tracker also comprises “a first data set representative of a desired channel select designation” (e.g., a “desired number (01-99) under which this program is to be stored” – p. 9, col. 2). Claims 7-10, 15, 19, 20, 21, 26, 28-30, 34, and 45 Claim 7 recites “an ordered cue.” Appellant argues that Tracker fails to disclose the claimed “cue” because, according to Appellant, a “cue” must include a “display code” (as disclosed in the Specification) and a “display code” is “defined in the „952 Patent as „a series of alpha-/numeric characters Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 8 chosen by the viewer for subsequent display on the television screen or a display panel as a channel is chosen using the select code‟” (App. Br. 144- 45). Appellant states that Tracker discloses displaying “Galaxy G1” but that such a display is not the same as a “display code” as part of the claimed “cue” because the display “Galaxy G1” “cannot be altered by a viewer” (App. Br. 145), and “[t]here is no disclosure anywhere in the Tracker VIII Manual showing how a viewer can rename a satellite” (App. Br. 146). We disagree with Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans. 21-25). Even assuming that a “cue” as recited in claim 7, for example, requires a “display code” and that a “display code” is a series of characters chosen by a viewer, as Appellant contends, Appellant has not demonstrated that the “cue” must also include a “display code” that must be “altered by a viewer.” While Appellant states that the Specification defines a “display code” as something “chosen by the viewer,” Appellant does not demonstrate that the Specification also defines the “display code” to be “altered by a viewer.” As the Examiner indicates and as Appellant states, Tracker discloses a user selecting a favorite program from a list (or “cue”) of selections (p. 45). Appellant does not demonstrate a difference between a viewer selecting a favorite program from a list (or “cue”) as disclosed by Tracker and a viewer choosing a series of alphanumeric characters as Appellant asserts is required by the disputed claims. Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 9 Claims 8, 9, 37, and 38 Regarding claims 8 and 9, Appellant argues that Tracker fails to disclose a “plurality of ordered cues” (App. Br. 160). The Examiner states that Tracker discloses a “„Favorite Programs‟ list, . . . as well as the „Favorite Audio‟ list” (Ans. 25). Hence, the Examiner equates the claimed “plurality of ordered cues” with a list of favorite television programs and a list of favorite audio programs of Tracker. We disagree with the Examiner. Claim 8 recites “selecting a television channel” corresponding to a “channel tuning designation” including storing a value “for at least one of said channel tuning designations” and “retaining said channel tuning designations in a plurality of ordered cues.” Claim 8 first recites “a preassigned channel tuning designation” and subsequently recites “channel tuning designations,” resulting in an ambiguity in the claim since the plural term “channel tuning designations” appears to lack antecedent basis. Since the „952 patent term has expired, however, “a policy of liberal claim construction may properly and should be applied . . . [to favor] a construction of a patent claim that will render it valid, i.e., a narrow construction, over a broad construction that would render it invalid” (Papst- Motoren, 1 USPQ2d at 1656). The maxim that claims are construed, if possible, to sustain their validity is limited “to cases in which „the court Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 10 concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.‟ [quoting] Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)).” Ex parte Katz, 2010 WL 1259722 at *7 (BPAI 2010). Based on the foregoing, we construe claim 8 as requiring an apparatus for selecting a television channel corresponding to any one of a plurality of preassigned channel tuning designations and retaining the (plurality of) channel tuning designations in a plurality of ordered cues. Under this construction, we agree with the Examiner that a list of “favorite” television programs of Tracker constitutes an “ordered cue” of television programs but we disagree with the Examiner that a list of audio programs also constitutes an “ordered cue” of television channels. Hence, Tracker appears to disclose one list of television programs (i.e., one “ordered cue”) rather than a plurality of ordered cues of television channels. Claim 9 depends from claim 8. Claims 37 and 38 recite a similar feature as claim 8 (i.e., “plurality of scroll sequences”). Appellant provides similar arguments in support of claims 37 and 38 (App. Br. 160-163). We agree with Appellant for reasons similar to those discussed above. Thus, we do not sustain the rejection of claims 8, 9, 37, and 38 as anticipated by Tracker, and need not address Appellant‟s remaining arguments regarding claims 8, 9, 37, and 38. Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 11 Claims 12, 13, 23, and 24 Appellant argues that Tracker “does not disclose two distinct control means, each remotely located with respect to the other” (App. Br. 171). Claim 12 recites the second operator-actuated control means distinct and remotely located from the first operator-actuated control means. Claims 13, 23, and 24 recite a similar feature. We disagree with Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans. 47-50). For example, as the Examiner points out, Tracker discloses “a main unit as well as a remote control” (Ans. 50; see also Tracker, p. 6 – remote control unit vs. console). We agree with the Examiner that the two separate components of Tracker (i.e., the remote control unit as one component and the console as another component) are “distinct” (i.e., are separate and recognizable as different) and are “remotely located with respect to the other” (i.e., not co- located within the same space). Appellant argues that “those controls are exclusively local” and that the Specification of the „952 patent indicates that “the first control output signal is from the origin of the multi-channel signal” (App. Br. 171, citing Declaration of Thomas A. Gafford, Ex. F (“Gafford Dec”) ¶¶ 19 and 20)). However, we agree with the Examiner that none of claim 12, 13, 23, or 24 requires that the controls not be exclusively local and that the first control output signal is from the origin of the multi-channel signal. While Mr. Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 12 Gafford states that the Specification discloses an embodiment in which “programming occurs from the origin of the signal, and not at the TV” (Gafford Dec. ¶ 19), Mr. Gafford does not demonstrate that Tracker fails to disclose the disputed claim feature (i.e., a second operator-actuated control means distinct and remotely located from the first operator-actuated control means). Claims 52 and 53 Appellant argues that Tracker fails to disclose “generating” a second control output signal, “retrieving” channel tuning designations, and “generating said channel tuning control signal,” as recited in claim 5, from which claims 52 and 53 depend (App. Br. 172-173). We disagree with Appellant for at least the reasons set forth by the Examiner (see, e.g., Ans. 50-52). For example, Tracker discloses that “all of the FAVORITE PROGRAMS . . . have been pre-programmed at the factory” (p. 45, col. 1). Hence, Tracker discloses a “first person” generating the first control output signal (i.e., a factory generating a signal that contains a “first data set” that is stored and is representative of a desired channel) and a “second person” generating the second control output signal (i.e., a user generating a signal that contains a second data set that is representative of a desired viewing channel – the user/viewer selects a desired channel). Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 13 Appellant also argues that Tracker only discloses “an Arabic numeral” and not “a combination of letters and numerals, or a preset key” (App. Br. 173). However, as the Examiner points out, claims 52 and 53 do not require “a combination of letters and numerals, or a preset key” as Appellant argues. Instead, the disputed claims merely require that a first person generate a first signal (claims 52 and 53) and a second person generate a second signal (claim 52) or desired channel select designation (claim 53). Affirmance of the rejection for claims 1, 2, 5, 12, 13, 23, 24, and 48 based on Tracker renders it unnecessary to reach the propriety of the Examiner‟s decision to reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after finding an anticipation rejection to be upheld). As such, we need not reach the propriety of the rejection of those claims over Sakurai. CONCLUSION The Examiner erred in rejecting claims 8, 9, 37, and 38 under 35 U.S.C. § 102(b) as anticipated by Tracker. The Examiner did not err in rejecting claims 1, 2, 5-7, 10-36, and 39- 53 under 35 U.S.C. § 102(b) as anticipated by Tracker. SUMMARY We reverse the rejection of claims 8, 9, 37, and 38 under 35 U.S.C. Appeal 2012-012562 Reexamination Control Nos. 90/010,726; 90/009,400; and 90/009,456 Patent No. RE35,952 14 § 102(b) as anticipated by Tracker. We affirm the rejection of claims 1, 2, 5-7, 10-36, and 39-53 under 35 U.S.C. § 102(b) as anticipated by Tracker. AFFIRMED-IN-PART PATENT OWNER: NIRO, SCAVONE, HALLER & NIRO 181 W. Madison-Suite 4600 Chicago, IL 60602 THIRD PARTY REQUESTER: MEHRAN ARJOMAND MORRISON & FOERSTER LLP 555 WEST FIFTH STREET LOS ANGELES, CA 90013 alw