Ex Parte van Rooyen

Patent Trial and Appeal Board

May 28, 2014

12268917 (P.T.A.B. May. 28, 2014)

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
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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

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