Ex Parte van Rooyen

Board of Patent Appeals and Interferences

Feb 24, 2012

11237547 (B.P.A.I. Feb. 24, 2012)

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

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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.

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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.

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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.
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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
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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).
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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
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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
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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).
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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.
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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
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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,
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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).

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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).

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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

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