Ex Parte Boyce

Patent Trial and Appeal Board

Jul 10, 2014

11791243 (P.T.A.B. Jul. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JILL MacDONALD
_____________

Appeal 2012-000381
Application 11/791,243
Technology Center 2400
______________

Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and
BETH Z. SHAW Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 16.
We affirm in part.

INVENTION
The invention is directed to a set top box and corresponding methods
for enabling a channel change in a Digital Subscriber Line (DSL) system.
Appeal 2012-000381
Application 11/791,243
2

See Abstract of Appellant’s Specification. Claim 1 is representative of the
invention and reproduced below:
1. A set top box for enabling a channel change in a Digital
Subscriber Line (DSL) system, comprising a channel change
processing unit for sending a join request for both a normal
stream and channel change stream upon receiving a same
channel change request, the normal stream and the channel
change stream both corresponding to a same selected program.

REJECTIONS AT ISSUE

The Examiner has rejected claims 1, 2, 9 and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Farmer (US 2006/0075428 A1) and Cheng
(US 2005/0249281 A1). Answer 3-4.1
The Examiner has rejected claims 3, 4, 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Farmer and Kerofsky (US 2005/0117055 A1).
Answer 5-6.
The Examiner has rejected claims 5, 7, 13, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Farmer and Cooper (US 2004/0003399 A1).
Answer 6-8.
The Examiner has rejected claims 6 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Farmer and Ferguson (US 6,990,246 B1). Answer 8-9.
The Examiner has rejected claims 8 and 16 under 35 U.S.C. § 103(a)
as unpatentable over Cooper and Kerofsky. Answer 9-10.

1 Throughout this opinion, we refer to the Appeal Brief dated October 15,
2010, and the Examiner’s Answer mailed on June 29, 2011.
Appeal 2012-000381
Application 11/791,243
3

ANALYSIS
Rejection of Independent Claims 1 and 9 Based upon Farmer and
Cheng
Appellant presents several arguments on pages 16 through 22 of the
Appeal Brief directed to the Examiner’s rejection of independent claims 1
and 9. The dispositive issue raised by these arguments is whether the
combined teachings of Farmer and Cheng render obvious the claim
limitation of “a join request for both a normal stream and channel change
stream upon receiving a same channel change request, the normal stream
and the channel change stream both corresponding to a same selected
program.” Appellant argues the combined teachings do not teach two
requests for two separate streams, that Farmer teaches a join request of the
normal stream and a stream for the next most likely channel; and that Cheng
teaches only a single stream. Brief 14-15. The Examiner responds by
stating the claims does not recite two join requests but rather one join
request. Answer 11. We concur with this claim interpretation. Further, the
Examiner finds that Cheng teaches the claimed two streams as the stream
sent has some frames coded twice in the same stream. Thus, the Examiner
concludes Farmer’s system with the combined stream of Cheng meets the
limitation of a request for both streams. We disagree with the Examiner as
we do not consider Cheng to teach two streams as claimed. Accordingly, we
will not sustain the Examiner’s rejection of claims 1, 2, 9 and 10 based upon
Farmer and Cheng.

Appeal 2012-000381
Application 11/791,243
4

Rejection of Independent Claims 8 and 16 Based upon Cooper and
Kerofsky
Appellant presents several arguments directed to the rejection of
independent claims 8 and 16 on pages 38 through 48 of the Brief.
Initially, Appellant argues the Examiner erred as neither Farmer nor
Kerofsky teaches a set top box in a digital subscriber line system. Brief 42.
The Examiner in response to this argument finds that Cooper teaches a set
top box and is directed to all transmission mediums, which include DSL
systems. Answer 9, and 17. We concur with the Examiner’s findings and
are not persuaded of error. We note that the limitations in dispute are merely
intended use limitations recited in the preamble of the claim. Further, we
note that Cooper discusses applicability of the invention to set top boxes (see
Cooper ¶ 3) and Appellant’s Specification in the background of the
invention section acknowledges that use of set top boxes with DSL
transmission was known. Spec. p.1, ll. 15–20; p. 3, l. 27– p. 4, l. 7.
Appellant further argues that Cooper teaches the decoder B90 only
identifies I-frames for storing in memory. Brief 42–44. Thus, Appellant
argues that Cooper does not teach decoding either a normal stream picture
for display in the PIP mode or decode a low resolution picture of a parallel
coded stream for display in the PIP mode and as such teaches away from the
claimed invention. Id. We are not persuaded of error by this argument as it
addresses a different embodiment than relied upon by the Examiner. The
Examiner relies upon an embodiment of Cooper where there are normal and
low resolution decoders and that some are used for PIP mode. Answer 17.
Further, our reviewing Court has said:
[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
Appeal 2012-000381
Application 11/791,243
5

discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52 (1966)). Appellant’s assertion that Cooper teaches
away is unsupported by an evidentiary showing of discouragement or
divergent path associated with a teaching away.
Appellant further presents several reasons why the references are not
combinable. Brief 44–48. Appellant states that Cooper involves receiving
and storing compressed frames representing un-watched channels. Further,
Appellant states “Kerofsky discloses a relatively low-latency, low-resolution
stream 16 and relatively higher-latency, higher-resolution stream 18 derived
from a same source stream 12 (see, e.g., Kerofsky ¶ 15), where both streams
are multiplexed together for transmission to a user location.” Brief 44. We
concur with these characterizations of Cooper and Kerofsky. Appellant
concludes that combining the references would “eviscerate” the crux of
Cooper. Brief 45, 47. We disagree with Appellant’s conclusion. As the
Examiner finds Kerofsky merely teaches a transport for the streams of
frames, including I-frames, when combined with Cooper, the principle
operation of Cooper’s system of storing I-frames of un-watched channels is
not rendered unsatisfactory. Answer 18-19. We concur with the Examiner’s
analysis and conclusion. Accordingly, we sustain the Examiner’s rejection
of claims 8 and 16.

Appeal 2012-000381
Application 11/791,243
6

Rejection of Dependent Claims 3, 4, 11, and 12, and New Rejection of
Independent Claims 1 and 9 Based upon Farmer and Kerofsky
Appellant presents several arguments directed to the rejection of
dependent claims 3, 4, 11, and 12 on pages 25 through 28 of the Brief.
Initially we note that while we do not sustain the Examiner’s rejection of
independent claims 1 and 9, as discussed infra we find the teachings of
Kerofsky make up for the deficiency’s noted in the rejection of these
independent claims and as such will address the rejection of these depend
claims and enter a new rejection against independent claims 1 and 9.
Appellant argues the rejection of these claims is in error as the
rejection does not rely upon Cheng as used in the rejection of the
independent claims. We disagree. The Examiner, in the rejection of
independent claim 1, relied upon Cheng as teaching two streams, and as
discussed supra we agree with Appellant that this was erroneous. However,
in this rejection the Examiner also finds that Kerofsky teaches this feature.
Answer 5. We concur, as discussed supra with respect to claims 8 and 16,
with Appellant’s characterization of Kerofsky teaching two streams of the
same source (same program) being multiplexed together. This teaching
combined with Farmers’ teaching of a join request for a channel (i.e., joining
a stream of two streams multiplexed together), meets the limitation of “a join
request for both a normal stream and channel change stream upon receiving
a same channel change request, the normal stream and the channel change
stream both corresponding to a same selected program.” Further,
Appellant’s argument that the combined teachings do not teach two join
requests and as such teach away is not persuasive. Brief 26–27. As
discussed above with respect to claim 1 we do not consider the claims to
recite two join requests nor do we consider there to be evidence that would
Appeal 2012-000381
Application 11/791,243
7

discourage the skilled artisan to combine the teachings of the references.
Thus, we sustain the Examiner’s rejection of claims 3, 4, 11 and 12. Under
37 C.F.R. § 41.50(b), we enter a new ground in that we apply the
Examiner’s rationale to now reject independent clams 1 and 9.

Rejection of Dependent Claims 5, 7, 13, and 15 Based upon Farmer
and Cooper and Dependent Claims 6 and 14 Based upon Farmer and
Ferguson
Appellant argues that the rejection of these claims is in error as the
Examiner’s rejection does not rely upon Cheng as used in the rejection of the
independent claims. We agree. The Examiner has not shown that the
teachings of Cooper make up for the deficiency in the rejection of
independent claims 1 and 9. Accordingly, we will not sustain the
Examiner’s rejection of claims 5, 6, 7, 13, 14, and 15 as the Examiner has
not shown the combined reference teach all of the limitations of the claims.
However, as discussed above regarding the new rejection of claims 1 and 9,
Kerofsky addresses this deficiency, and we leave it to the Examiner to
determine whether these claims are obvious in light Kerofsky.

DECISION
We do not sustain the Examiner’s rejection of claims 1, 2, 9 and 10
based upon Farmer and Cheng.
We do not sustain the Examiner’s rejection of claims 5, 7, 13, and 15
based upon Farmer and Cooper.
We do not sustain the Examiner’s rejection of claims 6 and 14 based
upon Farmer and Ferguson.
Appeal 2012-000381
Application 11/791,243
8

We sustain the Examiner’s rejection of claims 8 and 16 based upon
Cooper and Kerofsky.
We sustain the Examiner’s rejection of claims 3, 4, 11 and 12 based
upon Farmer and Kerofsky.
We enter a new rejection of claims 1 and 9 based upon Farmer and
Kerofsky.
The decision of the Examiner to reject claims 1 through 16 is affirmed
in part.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so
rejected or new evidence relating to the claims
so rejected, or both, and have the matter
reconsidered by the examiner, in which event
the proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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).

Appeal 2012-000381
Application 11/791,243
9

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

tj