Ex Parte Paavola et alDownload PDFPatent Trial and Appeal BoardMar 31, 201712602591 (P.T.A.B. Mar. 31, 2017) Copy Citation 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. 12/602,591 06/30/2010 Petri Paavola P3373US00 6217 11764 7590 Ditthavong & Steiner, P.C. 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 EXAMINER GEE, ALEXANDER ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 04/04/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@dcpatent.com Nokia. IPR @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETRI PAAVOLA, MARTIN JANSKY, and TOPI-OSKARI POHJOLAINEN Appeal 2016-005369 Application 12/602,5911 Technology Center 2400 Before DEBRA K. STEPHENS, DAVID J. CUTITTAII, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 28-47, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION. 1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as Nokia Corporation. App. Br. 1. Appeal 2016-005369 Application 12/602,591 CLAIMED SUBJECT MATTER The claims are directed to a system and method for “providing Electronic Service Guide (ESG) information to one or more terminals.” Spec. Abstract. Claim 28, reproduced below, is illustrative of the claimed subject matter: 28. A method comprising: causing, at least in part, creating a plurality of electronic service guide sessions; associating each of a plurality of electronic service guide fragments with one of the plurality of electronic service guide sessions, each representing a specified time frame for providing program information, wherein the electronic service guide fragments are grouped into subsets for presentation; determining whether a first one of the electronic service guide session is in a past time period; based on the determination, causing, at least in part, merging the first electronic service guide session with a second one of the electronic service guide sessions that occurs in a next time period. App. Br. 20 (Claims Appendix). REFERENCES The Examiner relies upon the following prior art in rejecting the claims on appeal: Durden et al. US 2005/0278744 A1 Dec. 15, 2005 Seppala US 2006/0019618 Al Jan. 26, 2006 Kim US 2008/0201739 Al Aug. 21,2008 REJECTIONS Claims 28, 29, 35, 36, 42, and 43 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Kim. Final Act. 3. 2 Appeal 2016-005369 Application 12/602,591 Claims 30-32, 37—39, 44, and 45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kim and Durden. Final Act. 9. Claims 33, 34, 40, 41, and 46 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kim, Durden, and Seppala. Final Act. 12. ISSUE Has the Examiner erred in finding Kim discloses “merging the first electronic service guide session with a second one of the electronic service guide sessions that occurs in a next time period,” as recited in claim 1? ANALYSIS The Examiner rejects claim 28 as anticipated by Kim, finding Kim’s event information tables (“EITs”) are electronic service guide sessions, and the use of shifting EITs discloses “merging the first electronic service guide session with a second one of the electronic service guide sessions that occurs in a next time period.” Final Act. 2—3 (citing Kim Fig. 2 and 20—27). Appellants’ argue the Examiner erred in finding Kim’s shifting of EITs discloses the recited “merging” of electronic service guide sessions as set forth in independent claim 28. App. Br. 11—12. We agree with Appellants that the Examiner has erred in finding Kim discloses this limitation. The Examiner finds “the process called out for creating the new EITs in Kim is directly analogous to the present application because Kim teaches that the contents of EITs are merged with the new time frame as time progresses.” Ans. 19 (citing Kim || 23—24) (emphasis added). Being “directly analogous” is not enough to meet the strict identity requirement for anticipation. Kim discloses a system in which the system maintains 128 3 Appeal 2016-005369 Application 12/602,591 EITs (EIT-0 through EIT-127) which each store three hours of programming, where EIT-0 contains the programming for the current three hour interval. The process of shifting EITs described in Kim, which occurs with the expiration of each three hour interval, involves discarding entirely the contents of EIT-0, and then replacing the contents of EIT-0 with those of EIT-1. The contents of EIT-1 are replaced with those of EIT-2; the contents of EIT-2 are replaced with those of EIT-3; and this process continues until the contents of EIT-126 are replaced with those of EIT-127, and entirely new program content is placed in EIT-127. See Kim || 23—24. Appellants’ claims require “merging” of electronic service guide sessions. As we explained above, Kim’s shifting of data from a first EIT to a second EIT does not combine the contents of the EITs. Rather, the shifting results in the replacement of the data in the first EIT with that of the second. We see no disclosure in Kim of the combining of data necessary to meet the “merging” limitation recited in Appellants’ claim. Accordingly, we do not sustain the rejection of claim 28 under 35 U.S.C. § 102(e).2 For the same reasons, we also do not sustain the rejection of independent claims 35 and 42 which recite substantially similar limitations. NEW GROUND OF REJECTION Claims 28-47 are newly rejected under 35 U.S.C. § 112, second paragraph as being indefinite. Claim 28 recites: 2 Although we reverse the rejection under Section 102, in the event of further prosecution, the Examiner may wish to consider whether the recited “merging” limitation is rendered obvious by Kim, or if it is rendered obvious by Kim in combination with other prior art. 4 Appeal 2016-005369 Application 12/602,591 associating each of a plurality of electronic service guide fragments with one of the plurality of electronic service guide sessions, each representing a specified time frame for providing program information, wherein the electronic service guide fragments are grouped into subsets for presentation. App. Br. 20 (Claims Appendix) (emphasis added). Independent claims 35 and 42 also recite a similar limitation. App Br. 22 (claim 35), 24 (claim 42). The recitation of “each” in the limitation “each representing a specified time frame ...” is indefinite because it is not clear whether “each” is referring to the preceding “plurality of electronic service guide fragments” or the “one of the plurality of electronic service guide sessions.” The claim is plausibly interpreted such that the “plurality of electronic service guide fragments . . . each represents] a specific time frame for providing program information,” but is also plausibly interpreted such that the “plurality of electronic service guide sessions, each represents] a specified time frame for providing program information.” The portions of Appellants’ disclosure identified as supporting this limitation (see App. Br. 3) support both interpretations. See, e.g., Spec. 138 (describing both ESG fragments and ESG sessions as indicative of a time interval). Under our precedent, “if 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.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). In this case, we conclude each of the interpretations 5 Appeal 2016-005369 Application 12/602,591 discussed above is plausible, and therefore we enter a new ground of rejection under 35 U.S.C. § 112, second paragraph.3 DECISION The Examiner’s rejection of claims 28—47 is REVERSED. Claims 28-47 are newly rejected under 35 U.S.C. § 112, second paragraph. NEW GROUND OF REJECTION This decision contains a new ground 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: (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, 3 Appellants also offer arguments for patentability based on this indefinite limitation. Because we agree with the “merging” argument advanced by Appellants, and because these additional arguments are based on speculative assumptions as to the meaning of the claims, we need not and do not reach the merits of Appellants’ arguments that Kim does not disclose the “associating” limitation. In re Steele, 305 F.2d 859, 862—63 (CCPA 1962). 6 Appeal 2016-005369 Application 12/602,591 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 Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R, $ 41.50(b) 7 Copy with citationCopy as parenthetical citation