Ex Parte 5335277 et al

Board of Patent Appeals and Interferences

Sep 24, 2010

90006563 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte PERSONALIZED MEDIA COMMUNICATIONS, LLC,
Appellant and Patent Owner
____________________
Appeal 2009-006825
Reexamination Control Nos. 90/006,563 & 90/006,698
Patent 5,335,277
Technology Center 3900
____________________

Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for commencing a civil action, as recited in 37
C.F.R. § 1.304 begins to run from the “MAIL DATE” (paper delivery mode)
or the “NOTIFICATION DATE” (electronic delivery mode) shown on the
PTOL-90A cover letter attached to this decision.

Appeal 2009-6825
Reexamination Control Nos. 90/006,563 & 90/006,698
Patent 5,335,277

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STATEMENT OF THE CASE
Appellant requests that we reconsider the Panel’s Decision of January
19, 2010 (hereinafter “Decision”), in Appellant’s Request for Rehearing
(hereinafter “Req. for Reh’g”), filed March 19, 20102, wherein we affirmed
and reversed rejections by the Examiner as provided in the Decision
(Decision 102-105).
Specifically, Appellant argues that the rejections of claims 6, 7, and
12 were incorrectly affirmed in the Decision because of improper
constructions applied to terms in those claims (Req. for Reh’g 1-2). In
addition, with respect to claims 6 and 7, Appellant argues that we have
misinterpreted the recitation “separately defined transmission,” by failing to
credit how the term was used in the Specification or how that term would
have been defined in the art at the time of filing (Req. for Reh’g 2).
Additionally, Appellant argues that the terms “reprogrammable system” and
“operating instructions” in claim 12 were misconstrued, by not taking into
account how they were defined in the preamble and claims body, and how
those terms were known and defined in the art (id.).
We have reconsidered the Panel’s Decision in light of Appellant’s
arguments in the Request for Rehearing, and as such grant Appellant’s
Request to the extent enumerated below.

2 The original filing was supplemented with a “Supplemental Authority in
Support of Request for Rehearing,” filed April 16, 2010, and followed by a
“Petition Under 37 C.F.R. §§ 1.137(b) & 1.550(e)(2) to Accept
Unintentionally Delayed Request for Rehearing,” filed May 5, 2010, where
that Petition was granted as provided in the Chief Judge’s Decision on
Petition, mailed June 9, 2010.
Appeal 2009-6825
Reexamination Control Nos. 90/006,563 & 90/006,698
Patent 5,335,277

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ANALYSIS
Claims 6 & 7
Appellant argues that we have misinterpreted the recitation
“separately defined transmission,” by failing to credit how the term was used
in the Specification or how that term would have been defined in the art at
the time of filing (Req. for Reh’g 2). Appellant finds error in our finding
that the term encompasses a standard analog signal transmission containing
embedded digital data (id.). Appellant finds that digital data, embedded in
an analog signal, is still a standard analog signal and thus not separately
defined (Req. for Reh’g 3). To buttress that point, Appellant addresses at
length what constituted “standard analog television transmissions” and the
standards which governed their structure (Req. for Reh’g 3-5), and includes
as an appendix federal telecommunications standards at the time of filing
(Req. for Reh’g App’x). Appellant makes similar arguments with respect to
the disclosure of the Specification affecting the interpretation of “separately
defined transmission” (Req. for Reh’g 5-7), and argues that under the proper
construction of that term, Summers, Shutterly, Marti-1, and Marti-2, could
not be found to anticipate or render obvious claims 6 and 7 (Req. for Reh’g
7-10). As discussed below, we do not find Appellant’s arguments to be
compelling.
First, we note that while Appellant draws our attention to the proper
construction of the “transmission being separately defined,” the arguments
raised are more directed to what is “standard analog video and audio
television.” We find this to be a proper focus, since we can only determine
if something is separately defined from something else if we know what that
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something else is. Appellant would have us accept that what is defined as
“standard analog video and audio television” is based on a Federal or FCC
standard, but we find no support in the Specification for such an
interpretation.
The Specification uses the term “standard” in approximately 70
instances outside of its use in the claims. There is no discussion of analog
television standards, but rather “standard” is used in its generally understood
sense, for example, “standard digital information decryptor” (col. 19, ll. 14),
“standard controller” (col. 19, l. 21), or “standard broadcast and cablecast
practices” (col. 139, l. 58). As such, we find the use of the word “standard”
in the Specification to be its customary meaning: equivalent to “known,”
“expected,” or “usual.” In addition, while Appellant points to specific
figures in the '277 Patent as supporting Appellant’s definition of “separately
defined transmission” (Req. for Reh’g 6), we do not find that the drawings
provide any support for Appellant’s implied meaning of “standard analog
video and audio television.”
Therefore, examining the entire excerpt from claims 6 and 7, it recites
the “transmission being separately defined from standard analog video and
audio television,” which we interpret to mean a transmission separately
defined from the normal, known, expected or usual analog video and audio
television. This further comports with our analysis of these claim terms
discussed in the Decision (Decision 55-59, 89-90). We still find that the
addition of a digital signal to a normal analog signal would separately define
the combined signal from that analog signal before the signals were
combined. If adding an additional signal to a normal signal does not alter
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the normal signal in some fashion, then that implies that the additional signal
is nothing, or amounts to nothing. Rather, we find that the addition of a
digital signal can be used to separately define the original signal from the
combined signal.
Thus, we do not find Appellant’s arguments to be compelling and we
find no error in the Examiner’s interpretation of the contested claim terms in
claims 6 and 7. Further, we do not find the application of that interpretation
to the disclosures of Summers, Shutterly, Marti-1, and Marti-2 to be in error
and continue to affirm the rejections of claims 6 and 7 over those references.

Claim 12
With respect to claim 12, Appellant argues that the language of claim
12 explicitly requires a reprogrammable system and new operating
instructions (Req. for Reh’g 12). Appellant also notes that the claim
requires the existence of prior operating instructions which are
reprogrammed and not merely programmed (id.). We agree with Appellant,
based on the language of claim 12, that “[s]ystems that simply program an
empty device are therefore outside the purview of claim 12” (Req. for Reh’g
12). We further agree that “reprogram” would have been understood by one
of ordinary skill in the art as Appellant has suggested (Req. for Reh’g 12-
13). To the extent that our prior analysis did not take this into account, our
analysis was in error.
As Appellant notes, this claim construction does not allow for
Fletcher, Hedger, or Zaboklicki to anticipate claim 12 (Req. for Reh’g 2).
As Appellant argues, Fletcher provides that its operating system is stored in
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read-only memory (Req. for Reh’g 15), Hedger provides that programs
received are erased as soon as the system is turned off (Req. for Reh’g 17),
and Zaboklicki does not disclose a reprogramming function (Req. for Reh’g
18). The adopted definition, in the Decision, of “requiring that the operating
instructions change some function of the processor, not necessarily its
overall function,” does not fully meet the limitation of “[a] reprogrammable
system,” as understood by one of ordinary skill in the art and as specifically
recited in claim 12. As such, we find that the Examiner erred in rejecting
claim 12 as being anticipated by Fletcher, Hedger, or Zaboklicki.

CONCLUSION
As indicated supra, Appellant’s request for a rehearing of our
Decision has been granted-in-part, and our Decision should be modified to
reflect our agreement with Appellant’s arguments concerning claim 12. We
do not find Appellant’s arguments with respect to claims 6 and 7 to be
compelling and we make no modification of our prior Decision with respect
to those claims. Thus, our affirmance of the Examiner’s anticipation
rejections of claim 12, (i.e., ground 1) with respect to claim 12, ground 9),
and ground 10) (see Decision 104)), is hereby withdrawn and those grounds
are reversed.
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).

REHEARING
GRANTED-IN-PART

Appeal 2009-6825
Reexamination Control Nos. 90/006,563 & 90/006,698
Patent 5,335,277

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ack

cc:

Counsel for Patent Owner:

Thomas J. Scott, Jr.
Goodwin Procter LLP
901 New York Avenue, N.W.
Washington, DC 20001

Counsel for Third Party Requester:

A.J. Usher, IV
Law Office of A.J. Usher
P.O. Box 44126
Indianapolis, IN 46244