Ex Parte Paavola et al

Patent Trial and Appeal Board

Mar 31, 2017

12602591 (P.T.A.B. Mar. 31, 2017)

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.
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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
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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.
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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
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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).
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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)
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