Ex Parte Hagemeier et al

Patent Trial and Appeal Board

Nov 30, 2016

12332140 (P.T.A.B. Nov. 30, 2016)

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.
03086.500400. 3938
EXAMINER
BEDNASH, JOSEPH A
ART UNIT PAPER NUMBER
2461
MAIL DATE DELIVERY MODE
12/332,140 12/10/2008 Denis Hagemeier
5514 7590 12/01/2016
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
12/01/2016 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 DENIS HAGEMEIER and TORSTEN GOERIG
Appeal 2015-000183
Application 12/332,140
Technology Center 2400
Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 8, 13—17, 23, and 28—30, which constitute of
all the claims pending in this application.2 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was conducted on November 10, 2016.
We reverse and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
1 According to Appellants, the real party in interest is Rohde & Schwarz
GmbH & Co. KG. App. Br. 4.
2 Claims 3—7, 9-12, 18—22, and 24—27 have been canceled. App. Br. 6.
Appeal 2015-000183
Application 12/332,140
INVENTION
Appellants’ invention relates to methods and devices for forming a
common datastream according to the ATSC standard. Abstract. Claim 1 is
illustrative and reads as follows:
1. A method for forming a common transport
datastream from a plurality of mobile-digital television signal
datastreams and from a common stationary-digital television
signal datastream, the method comprising:
determining, for each of the plurality of mobile-digital
television signal datastreams, a first respective number of data
units, the first respective number of data units being constant
across each successive time interval, and each successive time
interval including a plurality of sequences and having a constant
cycle duration;
determining, for the common stationary-digital television
signal datastream, a second number of data units, the second
number of data units being constant across each successive time
interval;
determining a number of first positions for data units of
the plurality of mobile-digital television signal datastreams for
each of the plurality of sequences by computing a greatest
common divisor for the first respective numbers of data units, the
number of first positions being constant across each of the
plurality of sequences;
determining a number of second positions for data units of
the common stationary-digital television signal datastream for
each of the plurality of sequences by dividing the second number
of data units by the greatest common divisor, the number of
second positions being constant across each of the plurality of
sequences;
determining a data structure for the common transport
datastream arranged to contain the plurality of sequences, each
of the plurality of sequences including the number of first
positions and the number of second positions,
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Application 12/332,140
wherein the first positions are successively arranged in
each of the plurality of sequences and identical across each
successive time interval and the second positions are
successively arranged in each of the plurality of sequences and
identical across each successive time interval; and
packing the first positions of the data structure of the
common transport datastream with the data units of the plurality
of mobile-digital television signal datastreams and the second
positions with the data units of the common stationary-digital
television signal datastream.
REJECTIONS
Claims 1,2, 8, and 13—15 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Doerr et al. (US 2009/0013356 Al; Jan. 8, 2009) (“Doerr”).
Claims 16, 17, 23 and 28—30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Doerr and Magee et al. (US
2006/0093045 Al; Nov. 10, 1998) (“Magee”).
ANALYSIS
With regard to claim 1, Appellants contend the cited portions of Doerr
do not disclose the recited limitation:
wherein the first positions are successively arranged in each of
the plurality of sequences and identical across each successive
time interval and the second positions are successively arranged
in each of the plurality of sequences and identical across each
successive time interval.
App. Br. 19 (emphasis omitted). In particular, Appellants argue that in
paragraph 263 of Doerr, relied on by the Examiner, the first positions are not
“successively arranged” because they do not follow one another, without
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interruption. Id. Appellants contend “successively” and “consecutively” are
synonymous. Id. n.3.
Appellants’ arguments persuade us of Examiner error. We give
contested claim limitations the broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). The Examiner concludes that, under the broadest reasonable
interpretation, the recited term “successively” should not be considered
identical to “consecutive.” Ans. 8. The Examiner interprets “successively”
to mean “[fallowing one another or following others.” Id?
However, we find the Examiner’s interpretation of “successively” is
inconsistent with Appellants’ Specification. Paragraph 52 of the
Specification describes that “successive arrangement” of the positions for
data units is distinguished from “intermittent” arrangement of the positions.
Spec. 1 52. In particular, paragraph 52 describes that the successive
arrangement of the positions for data units as shown in Figures 6—9 is not
compulsory and that the positions provided in every sequence for data units
of a mobile-digital television can be intermittently arranged relative to the
positions provided in every sequence for data units of a stationary-digital
television, as shown in Figures 10A and 10B. Id. Under the Examiner’s
interpretation of “successively,” however, the respective data units in
Figures 10A and 10B would also be arranged “successively,” which is
3 See Ans. 9 (“It is examiner’s position that the term successively
only connotes a manner of the data units being arranged such that data units
come after other data units and does not limit the claim to the feature
"wherein the first positions are" arranged following one another and without
interruption as asserted by Appellant.”).
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Application 12/332,140
inconsistent with the implied definition of “successive” in paragraph 52 of
Appellants’ Specification.
We decline to consider the undated Oxford Dictionaries definition
provided by the Examiner. A definition without a publication date does not
establish the meaning of the contested term to an artisan at the time of
Appellants’ invention. See Ans. 8.4 We find that the 2001 American
Heritage dictionary defines “successive” to mean “following in
uninterrupted order; consecutive,” which is consistent with the description in
Appellants’ Specification. See Successive, American Heritage Dictionary
(4th ed. 2001). Thus, on the record before us, we conclude the Examiner’s
interpretation of “successively” is overly broad.5
Appellants further argue that the Examiner erred in relying on Doerr’s
teaching of a “burst mode” under an alternative theory of anticipation that
does not depend on the Examiner’s overly broad interpretation of
“successively.” App. Br. 19; see also Final Act. 27; Ans. 9.
4 Our reviewing court guides that extrinsic evidence is unlikely to result in a
reliable interpretation of claim scope unless considered in the context of the
intrinsic evidence. Phillips v. AWHCorp., 415 F.3d 1303, 1319 (Fed. Cir.
2005) (en banc). The court in Phillips reaffirmed its view that the
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.” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996)).
5 See Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1250
(Fed. Cir. 1998) (emphasizing that “a common meaning, such as one
expressed in a relevant dictionary, that flies in the face of the patent
disclosure is undeserving of fealty”).
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Application 12/332,140
We agree with Appellants that the Examiner has not identified
sufficient teachings in Doerr to establish a prima facie case of anticipation
under the Examiner’s alternative “burst mode” analysis. See Final Act. 27;
Ans. 9. Moreover, the Answer makes clear that the Examiner “does not rely
on certain features found in Doerr as it relates to burst mode for the rejection
of the claims.” Ans. 9.
For these reasons, on the record before us, we are persuaded the
Examiner erred in finding that Doerr discloses the disputed limitations in
claim 1. Accordingly, we do not sustain the 35 U.S.C. § 102(e) rejection of
independent claim 1, or of dependent claims 2, 8, and 13—15, for which
Appellants make no additional arguments. App. Br. 20-21.
Independent claim 16 recites limitations similar to those disputed for
claim 1. App. Br. 29. Because the Examiner relied on the same overly
broad definition of “successively” and the same disclosure in Doerr in
rejecting claim 16, on the record before us, we are persuaded of Examiner
error with regard to claim 16 as well. See Final Act 21. Accordingly, we do
not sustain the 35 U.S.C. § 103(a) rejection of independent claim 16, or of
dependent claims 17, 23, and 28—30, for which Appellants make no
additional arguments. App. Br. 20-21.
New Ground of Rejection for Claims 1, 2, 8, and 13—15
Under 35 U.S.C. § 101
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 101 for claims 1, 2, 8, and 13—15 because they are drawn to the
abstract idea of organizing data into an abstract data structure. We therefore
reject claim 1,2, 8, and 13—15 under 35 U.S.C. § 101 as directed to a patent-
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Application 12/332,140
ineligible abstract idea under Alice Corp. Pty. Ltd. v. CLS BankInt'l, 134 S.
Ct. 2347 (2014).
Following the two-part Alice analysis, we first examine claim 1 to
determine if it is directed toward an abstract idea. Examples of abstract
ideas include mathematical relationships or formulas, algorithms,
fundamental economic practices, and methods for organizing human
activity. See Alice, 134 S. Ct. at 2355—56. Claim 1 is directed to forming a
common transport datastream from a plurality of mobile-digital television
signal datastreams and from a common stationary-digital television signal
datastream. Claim 1 describes a process “for forming a common transport
datastream,” which is described as a collection of information. Specifically,
claim 1 recites “determining a data structure for the common transport
datastream” and packing the positions of the data structure of the common
transport datastream with “data units.” In other words, claim 1 recites a
process of taking two existing data sets and combining them into a single
data set, the recited “data structure.” The data structure is generated by
taking existing information (i.e., the recited “data units”) and organizing this
information into a new form. The claims do not limit the data structure or
datastream to any particular physical form. The structure of the data
structure and datastream is determined purely by the logical relationships
between the data. Thus, we conclude claim 1 is directed to an abstract data
structure constituting mathematical and logical relationships between data,
and is therefore directed to an abstract idea. See Alice, 134 S. Ct. at 2355
(noting that a mathematical formula for computing alarm limits was patent-
ineligible); see also In re Warmerdam, 33 F.3d 1354, 1362 (Fed. Cir. 1994)
(holding that a claim directed to a data structure did not constitute patentable
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Application 12/332,140
subject matter because it was nothing more than a way of describing the
manipulation of ideas.) As the Federal Circuit has held, “[wjithout
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014).
The second part of the Alice analysis requires us to examine the claim
elements individually and as a whole to determine whether they provide an
“inventive concept” that is enough to transform the claim into something
significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2355.
With regard to claim 1, in addition to the data structure, the claim
requires determining a number of first and second data units that are
constant across time intervals, determining a number of first and second
positions for data units by computing greatest common divisors, and packing
the positons of the data structure with data units. Taken individually, the
“determining” steps are abstract mathematical constructs. Examining the
claim as a whole, the data units and positions are part of the data structure
itself and amount to nothing more than logical operations that allow the data
units to be organized by the packing step. As such, the “determining” and
“packing” steps are abstract and fail to transform the claim into something
sufficiently more than an abstract idea.
Claims 2, 8, and 13—15 depend from claim 1. Claim 2 further recites
a “transmitting” step, in which the first number of data units for each of a
plurality of datastreams in a predetermined number of sequences is
transmitted. Claim 8 further recites obtaining a plurality of sequences within
each time interval from a sum amount. Claim 13 further recites combining a
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constant number of the plurality of sequences with data units of a single
mobile-digital television signal datastream to form a combination of data
units. Claim 14 further recites combining a constant number of data units,
stored in certain positions, to form a combination of data units. Claim 15
further recites combining combinations of data units to form another
combination of data units. None of the additional recitations in claims 2, 8,
and 13—15 provides an “inventive concept” that is enough to transform the
recitations of claim 1 into something significantly more than an abstract
idea.
New Ground of Rejection for Claims 16, 17, 23, and 28—30
Under 35 U.S.C. § 112, second paragraph
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 112, second paragraph, for claims 16, 17, 23, and 28—30 because
we conclude the recited method steps are amenable to two or more plausible
claim constructions under a broad but reasonable interpretation consistent
with the Specification.
Independent claim 16 is an apparatus claim that also includes method
steps for forming a data structure for the common transport datastream.
Under the broadest reasonable interpretation of claim 16, it is unclear
whether the claimed device performs the functions under the wherein clause,
“wherein a data structure for the common transport datastream is formed
by,” recited in the claim. It is also unclear what structural element of the
device (apparatus) performs the recited steps. Thus, under a broad but
reasonable interpretation, we conclude claim 16 is amenable to two or more
plausible claim interpretations and does not apprise a person of ordinary skill
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in the art of its scope. 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 . . . indefinite.”). Claims 17, 23, and 28—30 depend from
claim 16.
Accordingly, we reject claims 16, 17, 23, and 28—30 under 35 U.S.C.
§112, second paragraph, as indefinite.
DECISION
We reverse the decision of the Examiner rejecting claims 1, 2, 8, 13—
17, 23, and 28—30.
We enter a new ground of rejection against claims 1, 2, 8, and 13—15
under 35 U.S.C. § 101.
We enter a new ground of rejection against claims 16, 17, 23, and 28—
30 under 35 U.S.C. § 112, second paragraph.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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Application 12/332,140
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01 (9th ed., rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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