Ex Parte van RooyenDownload PDFBoard of Patent Appeals and InterferencesFeb 24, 201211237547 (B.P.A.I. Feb. 24, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte PIETER VAN ROOYEN ____________________ Appeal 2010-001176 Application 11/237,547 Technology Center 2400 ____________________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and ANDREW J. DILLON, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001176 Application 11/237,547 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm-in-part. INVENTION Appellant’s invention is directed to a method and system for concurrent communicating of High Definition Television (HDTV) and Standard Definition Television (SDTV) information in a multi-standard wireless communication system. (Spec. 1). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for communicating information in a network, the method comprising: receiving, at a mobile terminal, high definition television (HDTV) signal via a DVB-H downlink communication path; simultaneously receiving, at said mobile terminal, standard definition television (SDTV) signal via a cellular downlink communication path, wherein said SDTV signal and said HDTV signal comprise the same media content; and selecting, in said mobile terminal, one of the following: said HDTV signal received via said DVB-H downlink communication path and said SDTV signal received via said cellular downlink communication path, for processing. Appeal 2010-001176 Application 11/237,547 3 PRIOR ART REFERENCES Fazel Stinebruner Dunn US 5,467,132 US 6,133,910 US 6,163,683 Nov. 14, 1995 Oct. 17, 2000 Dec. 19, 2000 Kaylani Saarikivi US 2004/0230997 A1 US 2006/0053450 A1 Nov. 18, 2004 Mar. 9, 2006 REJECTIONS 1 1. Claims 1-3, 5-7, 9-13, 15-17, 19-23, 25-27, 29, and 30 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Dunn, Stinebruner, and Saarikivi. 2. Claims 4, 14, and 24 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Dunn, Saarikivi, Stinebruner, and Fazel. 3. Claims 8, 18, and 28 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Dunn, Saarikivi, Stinebruner, and Kaylani. 1 The Examiner has also objected to claim 11. (Ans. 13). The proper procedure under M.P.E.P. § 1002.02(c)(4) is to file a petition with the Technology Center Director under 37 C.F.R. § 1.113(a) regarding an objection made by the Examiner (“Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim.”). Accordingly, since the Examiner’s objection to claim 11 is a petitionable, rather than appealable matter, this issue is not before us and we express no opinion as to its propriety. Appeal 2010-001176 Application 11/237,547 4 GROUPING OF CLAIMS 1. Appellant argues claims 1, 11, and 21 as a group (App. Br. 7, et seq.). We select representative claim 1 to decide the appeal for this group. See 37 C.F.R. § 41.37(c)(1)(vii). 2. Appellant argues claims 2, 12, and 22 as a group (App. Br. 13, et seq.). We select representative claim 2 to decide the appeal for this group. 3. Appellant argues claims 3, 13, and 23 as a group (App. Br. 14, et seq.). We select representative claim 3 to decide the appeal for this group. 4. Appellant argues claims 5, 15, and 25 as a group (App. Br. 16, et seq.). We select representative claim 5 to decide the appeal for this group. 5. Appellant argues claims 6, 16, and 26 as a group (App. Br. 18, et seq.). We select representative claim 6 to decide the appeal for this group. 6. Appellant argues claims 7, 17, and 27 as a group (App. Br. 19). We select representative claim 7 to decide the appeal for this group. 7. Appellant argues claims 9, 19, and 29 as a group (App. Br. 19, et seq.). We select representative claim 9 to decide the appeal for this group. 8. Appellant argues claims 10, 20, and 30 as a group (App. Br. 21, et seq.). We address these claims infra. 9. Appellant argues claims 4, 14, and 24 as a group (App. Br. 23). We select representative claim 4 to decide the appeal for this group. 10. Appellant argues claims 8, 18, and 28 as a group (App. Br. 24). We select representative claim 8 to decide the appeal for this group. ANALYSIS We consider Appellant’s arguments seriatim as presented in the principal Brief at page 6 et seq. Appeal 2010-001176 Application 11/237,547 5 Representative Claim 1 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: “receiving, at a mobile terminal, [a] HDTV] signal . . . and . . . [a] SDTV] signal via a cellular downlink communication path” within the meaning of representative claim 1? Appellant contends that “Dunn does not even disclose any processing of HDTV] signal[s] or SDTV] signals. In fact, ‘HDTV’ and ‘SDTV’ are not even mentioned in the entire Dunn reference.” (App. Br. 7). We disagree. As pointed out by the Examiner (Ans. 13-14), Dunn expressly teaches “switch[ing] video reception tuning, in a television type receiver, between modes conductive to reception of high definition and low definition type signals.” (Dunn, col. 7, ll. 42-48). Appellant additionally avers that “Stinebruner does not even relate to reception of any signals by a mobile terminal.” (App. Br. 10). However, we observe that the Examiner relies on Dunn at column 7, lines 23-32 for teaching that transmissions received by the mobile receiver are from cell towers (i.e., a cellular downlink communication path as claimed). (Ans. 14). The Examiner looks to the secondary Stinebruner reference for its teaching of simultaneously receiving multiple video signals (SDTV and HDTV) (Stinebruner, col. 5, lines 30-44 and Figs. 1 and 5). (Ans. 15). In considering the general form of Appellant’s arguments, we note that one cannot show nonobviousness by attacking the references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Appeal 2010-001176 Application 11/237,547 6 respective references relied on by the Examiner must be read, not in isolation, but for what would have been taught or suggested by the combination when considered as a whole. Because Appellant attacks the cited references separately, we find Appellant’s arguments unpersuasive of Examiner error. Moreover, based upon our review of the record, we agree with and adopt the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding claim 1. For essentially the same reasons articulated by the Examiner (Ans. 13-16), as discussed above, we sustain the Examiner’s rejection of representative claim 1. Claims 11 and 21 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 2 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: “wherein said selection is based on a preference indicated via said mobile terminal,” within the meaning of representative claim 2? Appellant contends, inter alia: Not only is Stinebruner silent with regard to reception of HDTV/SDTV in a mobile terminal, but Stinebruner also does not disclose that selection between reception of HDTV and SDTV is based on a preference indicated via the mobile terminal. On the contrary, Stinebruner specifically discloses that the selection of the HDTV tuner is done automatically, upon detection that the signal is in HDTV format. (App. Br. 13-14). Appeal 2010-001176 Application 11/237,547 7 We disagree with Appellant’s contentions. We find Appellant’s arguments unpersuasive because Appellant is again arguing the cited references separately. We note that the Examiner’s rejection is based on the combination of Dunn, Stinebruner, and Saarikivi. See Merck, 800 F.2d at 1097. Here, we find the evidence supports the Examiner’s position: “The HDTV-capable receiver/mobile terminal maintains a preference that automatically selects the HDTV format of a program when the HDTV format is available (Col. 2, Lines 30-39). The fact that the preference is executed automatically does not exclude [the disputed claim limitation from reading on the cited combination of references].” (Ans. 17). Therefore, for essentially the same reasons articulated by the Examiner (Ans. 17), we sustain the Examiner’s rejection of representative claim 2. Claims 12 and 22 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 3 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: wherein said selection is based on at least one downlink channel condition indicator corresponding to said HDTV signal communicated via said DVB-H downlink communication path and said SDTV signal communicated via said cellular downlink communication path, within the meaning of representative claim 3? Appellant contends, inter alia: Not only is Stinebruner silent with regard to reception of HDTV/SDTV in a mobile terminal, but Stinebruner also does Appeal 2010-001176 Application 11/237,547 8 not disclose that selection between reception of HDTV and SDTV is based on a downlink channel condition indicator corresponding to the DVB-H and the cellular downlink communication paths. On the contrary, Stinebruner specifically discloses that the selection of the HDTV tuner is done automatically, upon detection that the signal is in HDTV format. (App. Br. 15). We find Appellant’s arguments unpersuasive of Examiner error because Appellant is again attacking the cited references in isolation. See Merck, 800 F.2d at 1097. We find the weight of the evidence supports the Examiner’s position: “the television signals must contain downlink channel condition indicators that indicate that they are in HDTV format or not in HDTV format in order for the receiver to detect that the signal is either HDTV or SDTV format. The fact that the selection is executed automatically does not exclude [the disputed claim limitation from reading on the cited combination of references].” (Ans. 18) (emphasis added). For essentially the same reasons articulated by the Examiner, we sustain the Examiner’s rejection of representative claim 3. Claims 13 and 23 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 5 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: “receiving a user input that indicates whether to select said received HDTV signal or said received SDTV signal,” within the meaning of representative claim 5? Appellant contends, inter alia, “that Stinebruner (at col. 5, lines 29- 44) specifically discloses that the selection of the HDTV tuner is done Appeal 2010-001176 Application 11/237,547 9 automatically, upon detection that the signal is in HDTV format.” (App. Br. 17). However, as pointed out by the Examiner: Stinebruner discloses that a user input (such as a key depression) indicates whether to select a virtual channel, the virtual channel interpreted as an HDTV signal or a SDTV signal. The virtual channel has a video source and channel associated with it (Col. 2, Lines 27-39). (Ans. 18-19). Therefore, for essentially the same reasons articulated by the Examiner (Ans. 18-19) , we sustain the Examiner’s rejection of representative claim 5. Claims 15 and 25 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 6 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: “configuring said mobile terminal to display said received HDTV signal,” within the meaning of representative claim 6. Appellant contends, inter alia: Dunn discloses that such mobile receiver can only receive radio signals. In this regard, Dunn’s mobile receiver does not receive any HDTV and/or SDTV video signals. Therefore, the combination of Dunn-Saarikivi-Stinebruner does not disclose or suggest at least the limitation of “configuring said mobile terminal to display said received HDTV signal,” as recited by the Appellant in claims 6, 16, and 26. (App. Br. 18-19). Appeal 2010-001176 Application 11/237,547 10 We disagree with Appellant that Dunn’s mobile receiver can only receive radio signals for the same reasons discussed above regarding claim 1, as also pointed to by the Examiner in the Answer. (Ans. 19-20). For essentially the same reasons articulated by the Examiner (Ans. 19- 20), we sustain the Examiner’s rejection of representative claim 6. Claims 16 and 26 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 7 Appellant urges the patentability of representative claim 7 for “at least for the same reasons stated . . . with regard to claim 1.” (App. Br. 19). Because we do not find Appellant’s arguments persuasive regarding claim 1, we sustain the Examiner’s rejection of representative claim 7 for the same reasons discussed above regarding claim 1. Claims 17 and 27 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 9 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: “comprising displaying, in said mobile terminal, an indication of content that may be available via said DVB-H downlink communication path and said cellular downlink communication path,” within the meaning of representative claim 9? Regarding representative claim 9, Appellant urges patentability “at least for the reasons stated . . . with regard to claim 1.” (App. Br. 20). However, we do not find Appellant’s arguments persuasive regarding claim 1, for the reasons discussed above. Appeal 2010-001176 Application 11/237,547 11 Appellant additionally contends: Dunn’s mobile receiver does not receive any HDTV and/or SDTV (video) signals, as alleged by the Examiner. Furthermore, Stinebruner does not disclose displaying an indication as to what content is available in DVB-H and cellular downlink paths. In fact, none of the references disclose displaying of an indication of content available in both the DVB-H and cellular downlink communication paths, as recited by the Appellant in claims 9, 19, and 29. (App. Br. 20). The Examiner disagrees: [T]he Examiner reiterates that Stinebruner is not relied upon to disclose the DVB-H and cellular downlink communication paths, rather Saarikivi discloses the DVB-H path and Dunn discloses the cellular downlink communication path. Stinebruner discloses displaying in the receiving terminal an indication of content that may be available via the various downlink communication paths as seen in Col. 7, Lines 8-15 and Lines 63-64, and Col. 13, Lines 17-21. (Ans. 20-21). We find Appellant’s arguments unpersuasive because Appellant is again attacking the cited references in isolation. See Merck, 800 F.2d at 1097. For essentially the same reasons articulated by the Examiner (Ans. 20-21), as discussed above, we sustain the Examiner’s rejection of representative claim 9. Claims 19 and 29 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 10 ISSUE: Did the Examiner err by finding that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested: “comprising generating, in said mobile terminal, a signal that instructs a Appeal 2010-001176 Application 11/237,547 12 service provider to deliver HDTV content via said DVB-H downlink communication path,” within the meaning of representative claim 10? (emphasis added). We reproduce the Examiner’s rejection of claim 10 here: Referring to claim 10, Saarikivi et al discloses delivering, to a mobile terminal, television (broad casted audio, video, and data) via a DVB-H downlink. Stinebruner further discloses (see Col. 2, Lines 27-39 for disclosing the user[’]s ability to select a virtual channel (generating a signal), the virtual channels corresponding to the same program but one virtual channel being HDTV and the other virtual channel being non-HDTV as described in Col. 5, Lines 29-44, that instructs the service provider to deliver the content of the virtual channel to the receiving terminal). (Ans. 6-7) (emphasis added). Appellant contends, inter alia: Stinebruner, at col. 2, lines 27-39, discloses that one of a plurality of virtual channels can be selected, where each virtual channel has a corresponding video source the channel originates from. However, as explained above, Stinebruner (at col. 5, lines 29-44) specifically discloses that the selection of the HDTV tuner is done automatically, upon detection that the signal is in HDTV format. In this regard, even if a specific virtual channel is selected where HDTV and SDTV programming may be available, HDTV programming will be automatically selected for viewing upon detection of the HDTV format. (App. Br. 22 ). The Examiner disagrees: Stinebruner discloses a user input, such as a key depression, signals for the reception (or delivery from the service provider/video source) of a virtual channel/content (Col. 2, Lines 27-39), further noting the content can be HDTV (Col. 5, Appeal 2010-001176 Application 11/237,547 13 Lines 23-29, further noting that cable and satellite sources can represent a single source, yet have separate transmission paths, as seen in Figs. 1 and 5). The fact that the selection of HDTV is executed automatically when delivered does not exclude this concept from reading on the limitations as claimed, and is irrelevant. Appellant’s arguments regarding the selection between HDTV and SDTV signals (Page 22, Para. 2) is also deemed to be irrelevant since the claim does not deal with that subject matter. (Ans. 21-22). Based upon our review of the record, we agree with Appellant that the Examiner has not established that the combination of Dunn, Stinebruner, and Saarikivi would have taught or suggested “generating, in said mobile terminal, a signal that instructs a service provider to deliver HDTV content via said DVB-H downlink communication path” (claim 10) (emphasis added). (See also Reply Brief 14-15). Therefore, we reverse the Examiner’s rejection of dependent claim 10, and dependent claims 20 and 30 which recite commensurate limitations. Representative Claim 4 Appellant urges the patentability of representative claim 4 for the same reasons previously argued with regard to claim 1. (App. Br. 23). Regarding the additional Fazel reference, Appellant contends: Since the additional cited reference (Fazel) does not overcome the deficiencies of Dunn, Saarikivi and Stinebruner, claims 4, 14, and 24 depend from independent claims 1, 11, and 21, respectively, and are, consequently, also respectfully submitted to be allowable. (App. Br. 23). Appeal 2010-001176 Application 11/237,547 14 However, for the reasons discussed above (claim 1), we find no deficiencies regarding the teachings and suggestions of the Examiner’s proffered combination of Dunn, Stinebruner, and Saarikivi. Therefore, for essentially the same reasons articulated by the Examiner (Ans. 7-8, 22), we sustain the Examiner’s rejection of representative claim 4. Claims 14 and 24 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Representative Claim 8 Appellant urges the patentability of representative claim 8 for the same reasons previously argued with regard to claim 1. (App. Br. 24). Appellant additionally contends that the cited Kaylani reference “does not overcome the deficiencies of Dunn, Saarikivi, and Stinebruner.” (Id.). However, for the reasons discussed above (claim 1), we find no deficiencies regarding the teachings and suggestions of the Examiner’s proffered combination of Dunn, Stinebruner, and Saarikivi. Therefore, for essentially the same reasons articulated by the Examiner (Ans. 8-9, 24), we sustain the Examiner’s rejection of representative claim 8. Claims 18 and 28 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-001176 Application 11/237,547 15 DECISION We affirm the Examiner’s obviousness rejections of claims 1-9, 11- 19, and 21-29. We reverse the Examiner’s obviousness rejection of claims 10, 20, and 30. 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)(iv). AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation