Ex Parte van RooyenDownload PDFPatent Trial and Appeal BoardMay 28, 201412268917 (P.T.A.B. May. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/268,917 11/11/2008 Pieter Gert Wessel van Rooyen 3875.0650001 9205 26111 7590 05/28/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER SHARMA, SUJATHA R ART UNIT PAPER NUMBER 2648 MAIL DATE DELIVERY MODE 05/28/2014 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 PIETER GERT WESSEL VAN ROOYEN ____________ Appeal 2011-012669 Application 12/268,917 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 37-126. App. Br. 1; Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-012669 Application 12/268,917 2 REJECTIONS The Examiner rejected claims 37-42, 44-50, 52-57, 59-65, 67-72, 74- 80, 82-87, 89-95, 97-102, 104, 110, 112-117, and 119-125 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 7,103,374 B2 to Yla-Jaaski, U.S. Pub. No. 2006/0193295 A1 to White, and U.S. Pub. No. 2004/0114605 A1 to Karaoguz (cited in Appellant’s IDS Oct. 14, 2010). Ans. 4-11. The Examiner rejected claims 51, 66, 81, 96, 111, and 126 under § 103(a) as unpatentable over Yla-Jaaski, White, Karaoguz, and U.S. Pub. No. 2002/0002708 A1 to Arye. Id. at 11-12. OBVIOUSNESS REJECTION OF CLAIMS 37-42, 44-50, 52-57, 59-65, 67-72, 74-80, 82-87, 89-95, 97-102, 104, 110, 112-117, AND 119-125 OVER YLA-JAASKI, WHITE, AND KARAOGUZ We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to the Appellant’s arguments. The contentions can be distilled to a principle issue of whether Karaoguz is 35 U.S.C. § 102(a) prior art and, thus, outside the purview of 35 U.S.C. § 103(c)(1).1 Under § 103(c)(1): Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the 1 Being filed before enactment of the Americans Invents Act (AIA), the application is adjudged under the pre-AIA provisions of §§ 102(a) and 103(c)(1). 35 U.S.C. § 100 (note). Appeal 2011-012669 Application 12/268,917 3 same person or subject to an obligation of assignment to the same person. 35 U.S.C. § 103(c)(1). Thus, §§ 102(e), (f), and (g) prior art cannot support a § 103(a) rejection if the art and claimed invention are under common ownership. See 35 U.S.C. § 103(c)(2) (defining common ownership). Conversely, all other prior art – such as § 102(a) prior art – can support a § 103(a) rejection regardless of common ownership. The Examiner and Appellant disagree as to whether Karaoguz is § 102(a) prior art and, thus, can support the present § 103(a) rejection regardless of common ownership. App. Br. 13-14; Reply Br. 4. Karaoguz qualifies as § 102(a) prior art if Appellant’s “invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” 35 U.S.C. § 102(a). In response to the Examiner applying Karaoguz as § 102(a) prior art, Appellant argues: In alleging that “the Karaoguz reference is a 102(a) reference”, in effect, the Examiner is alleging that the publication date of Karaoguz (October 20, 2005) preceded Appellant’s claimed invention priority filing date on 12/13/2004. As clearly seen, contrary to the Examiner’s above allegation, the Karaoguz reference’s publication date (October 20, 2005) was after Appellant’s claimed invention priority filing date (12/13/2004). Reply Br. 4. For comparison with Appellant’s argument, a portion of Karaoguz’s cover page is reproduced below. App App inven Kara not a conf misu repe abov Reje eal 2011-0 lication 12 Repr Appellan tion has a oguz has a later publ usion as to nderstand atedly iden e. Ans. 3 ction”) an 12669 /268,917 oduced ab t’s argum priority f n earlier p ication da Karaoguz ing of Kar tified Kar (Sections d 7; Final R ove is a po ent is not p iling date o ublication te of Octob ’s publica aoguz’s pu aoguz as U “(8) Evide ej. 2, 5. 4 rtion of K ersuasive f Decemb date of Ju er 20, 200 tion date m blication n .S. Pub. N nce Relied Appellant’ araoguz’s because, t er 13, 200 ne 17, 200 5 as argue ay have r umber. T o. 2004/0 Upon” an s argumen cover pag hough the 4 as argue 4 as show d. Appel esulted fro he Exami 114605 A d “(9) Gro t, on the o e. claimed d, n above; lant’s m a ner has 1, shown unds of ther hand, Appeal 2011-012669 Application 12/268,917 5 incorrectly identifies Karaoguz as U.S. Pub. No. “2005/02233728.” App. Br. 10; see also Response Under 37 C.F.R. § 1.111, Aug. 5, 2010, p. 21.2 In sum, § 103(c) does not apply to § 102(a) prior art. Contrary to Appellant’s argument, Karaoguz’s publication antedates the claimed invention’s priority filing date and Karaoguz thus qualifies as § 102(a) prior art. Appellant also argues that the rejection does not address a claimed receiving of media content having a specified information content service and via cellular and broadcast frequency bands. App. Br. 13; Reply Br. 8. The argument is not persuasive. In the grounds of rejection, the Examiner finds that: Yla-Jaaski teaches receiving of media content via cellular and broadcast frequency bands; White teaches receiving of media content having a specified media content service; and Karaoguz teaches receiving of media content in portions. Ans. 4. In turn, the Examiner finds that the above teachings, in combination, suggest the claimed receiving of media content portions (Karaoguz) having a specified information content service (White) and via cellular and broadcast frequency bands (Yla-Jaaski). Id. Accordingly, for the foregoing reasons, the obviousness rejection of claims 37-42, 44-50, 52-57, 59-65, 67-72, 74-80, 82-87, 89-95, 97-102, 104, 110, 112-117, and 119-125 over Yla-Jaaski, White, and Karaoguz, is sustained. 2 Appellant at times correctly identifies Karaoguz as U.S. Pub. No. “2004/0114605.” App. Br. 41; see also Information Disclosure Statement, Aug. 27, 2010. Appeal 2011-012669 Application 12/268,917 6 OBVIOUSNESS REJECTION OF CLAIMS 51, 66, 81, 96, 111 AND 126 OVER YLA-JAASKI, WHITE, KARAOGUZ, AND ARYE In traversing this rejection, Appellant addresses claim 51 and argues that claims 66, 81, 96, 111, and 126 are similarly allowable. App. Br. 23. Claim 51 depends from independent claim 37 and adds a step of “communicating RF channel condition from said mobile terminal to a service provider providing said cellular frequency band service and said broadcast frequency band service.” Note the language “providing said cellular frequency band service and said broadcast frequency band service” is merely restated from base claim 37; i.e., not added subject matter of dependent claim 57. The Examiner relies on Arye as teaching the added subject matter of dependent claim 51; that is, as teaching only communication of an RF channel condition from a mobile terminal to a service provider. Ans. 10. In doing so, the Examiner finds that the claimed RF condition is unrestricted (i.e., unspecified) and therefore broad enough to encompass Arye’s condition of video reception. Id. (citing Arye ¶ [0006]). The Examiner states: [T]he examiner relies on Ayre reference for the teaching of the channel condition from the terminal to the service/content provider. The term “RF condition” in the claim is given a broad interpretation and hence the data rate which affects the reception at the terminal broadly reads on the claimed limitation. Therefore Ayre teaches a method where the channel condition is communicated from the mobile terminal to the service provider. See paragraph 6. Appeal 2011-012669 Application 12/268,917 7 Ans. 10. As found by the Examiner, Arye indeed teaches a mobile terminal “transmitting the condition of video reception back to the content provider.” Arye ¶ [0006]. Appellant argues: The Examiner, in effect, equates Arye’s user’s “video reception condition” to Appellant’s [claimed] “RF channel condition”. … The Appellant points out that Arye[‘s paragraphs [0005- 6] disclose] … that the “video reception condition” is a function of the data rate or bit rate of the transmitted content, which is different from Appellant’s “RF condition”, such as the strength of the received RF signal. In addition, Arye is silent on delivering services via cellular frequency band. App. Br. 22-23. The argument is not persuasive, merely contending (i.e., without presenting a supporting explanation or evidence) that Arye’s condition of video reception represents only a data rate and is therefore not an RF condition “such as the strength of the received RF signal.” App. Br. 22-23. Appellant has simply not provided any reason why, much less a persuasive reason, that Arye’s condition of video reception falls outside the scope of the claimed RF condition; e.g., has not provided specific evidence of what an “RF condition” is or represents. In short, there is no presented reason why the claimed RF condition has a scope excluding the data rate of an RF communication. Appellant also argues: [D]ependent claim [51] ultimately depends on independent claim 37, which specifically recites “cellular frequency band” and “broadcast frequency” bands service. In this regard, Appeal 2011-012669 Application 12/268,917 8 Appellant’s “RF channel condition” refers to the same limitation of “cellular frequency band” and “broadcast frequency” bands service. In addition, the Examiner, by her own admission, agrees with the Appellant that “Ayre is silent about delivering services via cellular frequency band”. In this regard, the Examiner’s argument that Appellant’s “RF channel condition” in the claim is given a broad interpretation is moot. Reply Br. 11-12. Appellant appears to contend that, in light of base claim 37, the RF condition of claim 51 must represent the quality of service for at least one of the claimed cellular and broadcast frequency bands. Cf., claim 37 (“content service provided via … said cellular frequency band service and/or said broadcast frequency band service”). However, claims 37 and 51 do not specify the RF condition as a representation of the cellular and broadcast frequency bands. Rather, claims 37 and 51 merely specify that the service provider delivers cellular and broadcast frequency bands. Further, even assuming arguendo that the claimed RF condition must represent the quality of service for at least one of the claimed cellular and broadcast frequency bands, Arye’s condition of video reception represents the quality of video reception over a dedicated wireless channel for reception. Arye ¶ [0005-6]. Appellant has not presented any evidence that neither of the claimed frequency bands is broad enough to encompass (i.e., to read on) such a dedicated wireless channel. Accordingly, for the foregoing reasons, the obviousness rejection of claims 51, 66, 81, 96, 111, and 126 over Yla-Jaaski, White, Karaoguz, and Arye is sustained. Appeal 2011-012669 Application 12/268,917 9 DECISION The Examiner’s decision rejecting claims 37-126 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)(v). AFFIRMED kmm Copy with citationCopy as parenthetical citation