Ex Parte D et al

Patent Trial and Appeal Board

Oct 13, 2016

09969212 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/969,212 10/02/2001
121312 7590 10/17/2016
Foley & Lardner LLP/ Broadcom Corporation
3000 K Street N.W
Suite 600
Washington, DC 20007-5109
FIRST NAMED INVENTOR
Lionel D'Luna
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106861-0565 9313
EXAMINER
SMITH, CHENEA
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
10/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocketing@foley.com
cmckenna@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL D'LUNA and FRANCIS CHEUNG
Appeal2015-004861
Application 09/969,212
Technology Center 2400
Before CATHERINE SHIANG, MATTHEW R. CLEMENTS, and
NATHAN A. ENGELS, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 38-52, 54--58, 60-62, 65-77, 79-101, 103-107,
109-111, 114--126, 128, and 131-135, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Introduction
The present invention relates to integrated circuits. See generally
Spec. 1. Claim 1 is exemplary:
Appeal2015-004861
Application 09/969,212
1. A single chip set-top box system comprising:
a transceiver operable to receive a digitally modulated
compressed video signal from an in-band media stream and to
demodulate the digitally modulated compressed video signal to
generate a compressed video signal, wherein the compressed
video signal carries a plurality of programs;
the transceiver further operable to receive an out-of-band
media stream comprising graphics;
a transport processor operable to receive the compressed
video signal and the graphics from the transceiver, wherein the
transport processor comprises a filter for filtering a portion of
the compressed video signal corresponding to a particular one
of the plurality of programs;
a video decoder operable to receive the portion of the
compressed video signal from the transport processor and to
decompress the portion of the compressed video signal; and
a graphics processor operable to blend the decompressed
portion of the video signal from the in-band media stream with
the graphics from the out-of-band media stream to generate a
blended video image, the graphics processor further being
configured to adjust a pixel aspect ratio of the graphics to match
a pixel aspect ratio of the video signal without affecting the
pixel aspect ratio of the video signal,
wherein the transceiver, the transport processor, the video
decoder, and the graphics processor are integrated on a single
integrated circuit chip.
Ro stoker
Fujimoto
V ainsencher
Thacker
Aharoni
Cottle
Agarwal
Eyer
References and Rejections
us 5,856,975
us 5,912,710
us 5,977 ,997
us 6,011,548
us 6,014,694
US 6,263,396 Bl
US 2002/0029284 Al
US 2002/0107909 Al
2
Jan. 5, 1999
June 15, 1999
Nov. 2, 1999
Jan.4,2000
Jan. 11, 2000
July 17, 2001
Mar. 7, 2002
Aug. 8,2002
Appeal2015-004861
Application 09/969,212
Auld
Segal et al.
Herrington
Rodriguez
Perlman
US 6,526,583 B 1
US 6,647,069 Bl
US 6,865,746 Bl
US 2005/0071882 Al
US 7 ,200,859 B 1
Feb.25,2003
Nov. 11, 2003
Mar. 8, 2005
Mar. 31, 2005
Apr. 3, 2007
Claims 1 and 3-5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Cottle, Fujimoto, and Herrington.
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rostoker, Cottle, Fujimoto, Herrington, and Rodriguez.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rostoker, Cottle, Fujimoto, Herrington, and Perlman.
Claims 38, 39, 41, 42, 44, 46-48, 49-51, 54, 55, 57, 58, 60-62, 65,
67-77,84-88,90,91,93,95-100, 103, 104, 106, 107, 109-111, 114,and
116-126 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Rostoker, Fujimoto, Auld, Vainsencher, and Herrington.
Claims 40 and 89 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Fujimoto, Auld, Vainsencher, Herrington, and
Thacker.
Claims 43 and 92 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Fujimoto, Auld, Vainsencher, Herrington, and
Segal.
Claims 45 and 94 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Fujimoto, Auld, Vainsencher, Herrington, and
Agarwal.
Claims 52 and 101 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Fujimoto, Auld, Vainsencher, Herrington, and
Aharoni.
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Claims 56 and 105 are rejected under. 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Fujimoto, Auld, Vainsencher, Herrington, and
Perlman.
Claims 66 and 115 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rostoker, Fujimoto, Auld, Vainsencher, Herrington, and
Eyer.
Claims 79-83, 128, and 131-35 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rostoker, Fujimoto, Auld, Vainsencher,
Herrington, and Rodriguez.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer (excluding claims 6, 56, and 105) to the
extent they are consistent with our analysis below. 1
On this record, we find the Examiner did not err in rejecting claim 1.
Issue A
Appellants contend the cited references do not collectively teach "the
transceiver, the transport processor, the video decoder, and the graphics
processor are integrated on a single integrated circuit chip," as recited in
claim 1 (emphases added). See App. Br. 11-17; Reply Br. 3-5. In
particular, Appellants assert that neither Cottle nor Rostoker teaches a
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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transceiver integrated on a single integrated circuit chip. See App. Br. 11-
17; Reply Br. 3-5.
Appellants have not persuaded us of error. The Examiner finds-and
Appellants do not offer persuasive substantive arguments to dispute-
Rostoker and Cottle collectively teach "the transport processor, the video
decoder, and the graphics processor are integrated on a single integrated
circuit chip." See Final Act. 3-5.
In response to Appellants' arguments, the Examiner provides findings
showing Rostoker and Cottle collectively teach "the transceiver ...
integrated on a single integrated circuit chip." See Ans. 6-7. Appellants fail
to persuasively respond to such findings and therefore fail to show error in
the Examiner's findings. See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) ("It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art."). In particular, Appellants fail to
persuasively show the Examiner's specific findings based on Cottle are
incorrect.
Further, we have examined the Examiner's findings, and such
findings are reasonable. The Examiner finds, and we agree:
[G]iven the broadest reasonable interpretation of a
transceiver, which is commonly and well known in the art as a
device that both transmits and receives analog or digital signals
[], Cottle also discloses a transceiver (as a digital video signal is
received at Cottle's circuit 200 and a digital video signal is
transmitted from the circuit 200, see Cottle, col 7, lines 16-35
and Figs. lA-lB). In addition, Cottle discloses that his Fig. lB
shows the circuit 200 being interconnected to external blocks,
and that ""the incorporation of any or all of these external
blocks and/or all or portions of the external memories onto the
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chip is contemplated by and within the scope of the present
invention". This, then, reasonably includes the boxes 20, 30
and 40 of Fig. IA, interconnected to the circuit 200 such that the
transport data signal is input to the circuit 200 as shown in Fig.
lB from those external boxes. Therefore, Cottle reasonably
discloses the limitation of "wherein the transceiver . . .
integrated on a single integrated circuit chip["] (see Cottle, col
7, lines 16-35, lines 44--51, col 8, lines 21-28 and Fig. lB).
Ans. 6-7; see also Cottle 8 :21-24 ("The consolidation of all these functions
onto a single chip with a large number of inputs and outputs allows for
removal of excess circuitry and/or logic needed for control and/or
communications") (emphasis added).
Issue B
Appellants contend the cited references do not collectively teach "a
transceiver operable to receive a digitally modulated compressed video
signal from an in-band media stream ... the transceiver further operable to
receive an out-of-band media stream comprising graphics," as recited in
claim 1 (emphases added). See App. Br. 17-19; Reply Br. 4--5. In
particular, Appellants assert Rostoker receives compressed video data, not
digitally modulated, compressed video signals. See App. Br. 17-19; Reply
Br. 4--5. Appellants contend:
the general mention of the modem circuits and examples
of such suitable modem circuits fail to establish a prima facie
case of obviousness that the signal received by the digital video
network apparatus in Rostoker is digitally modulated. There is
no clear and explicit disclosure in Rostoker that the digital
video network apparatus receives "digitally modulated
compressed video signals." To the contrary, as clearly stated,
the data streams received by the digital video network apparatus
300 of Rostoker are "compressed video data." Indeed, as set
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forth above with respect to FIG. 45 of Rostoker, before the data
is received by the digital video network apparatus, the data
must first be processed by the transceiver 701 in Rostoker.
Thus, the data received by the digital video network apparatus
is not "digitally modulated compressed video signals."
Moreover, such a general mention of modem circuits and
example suitable circuits in Rostoker does not render obvious
the specfied features[.]
App. Br. 18-19.
Appellants have not persuaded us of error. The Examiner provides
specific findings showing Rostoker teaches "a transceiver operable to
receive a digitally modulated compressed video signal." See Ans. 8. In
particular, the Examiner cites Rostoker's teachings from columns 6-7 and
9-10 and Figure 2, and explains why Ro stoker teaches that claim limitation.
See Ans. 8. In contrast, Appellants advance general assertion about modem
circuits (App. Br. 18-19), but do not analyze the Examiner's specific
findings and all the Rostoker portions cited by the Examiner. Further,
Appellants have not persuasively shown why Rostoker does not teach a
digitally modulated signal, as the Examiner finds. In addition, Appellants'
assertions about Rostoker' s Figure 45 are insufficient for showing Examiner
error because they do not show the Examiner's findings based on Rostoker' s
Figure 2 and other excerpts are incorrect. Even assuming it is true that "the
data must first be processed by the transceiver 701" in Figure 45 (App. Br.
19), Appellants have not not show it leads to the argued conclusion that data
received by the digital video network apparatus is not digitally modulated
(App. Br. 18-19). Because Appellants fail to persuasively respond to the
Examiner's findings, Appellants fail to show error in the Examiner's
findings. See Baxter Travenol Labs., 952 F.2d at 391.
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Appellants also argue the Examiner's citing Herrington for teaching
only "an in-band media stream" and "an out-of-band media stream
comprising graphics" is improper, and "the Examiner has not provided any
credible suggestion as to why one of ordinary skill in the art would be
motivated to combine Rostoker and Herrington." App. Br. 19; see also
Reply Br. 12-14.
We disagree. The U.S. Supreme Court has held "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007).
Contrary to Appellants' argument, the Examiner has evaluated the
claim has a whole, and provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Rostoker, Cottle, Fujimoto, and Herrington. See
Final Act. 5---6. Appellants assert that "dissecting the required part from the
element ... ignores the recited metes and bounds of the claim (App. Br. 19),
but do not explain why the Examiner's reasoning is incorrect.
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21. Appellants do not present adequate
evidence that the resulting arrangements would have been "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Moreover, Appellants' argument that "if a person having ordinary skill in
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Application 09/969,212
the art would have found it so obvious ... the Examiner would not have to
combine several references to reject each limitation" (Reply Br. 14) is not
persuasive. See In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) ("The
large number of cited references does not negate the obviousness of the
combination, for the prior art uses the various elements for the same
purposes as they are used by appellants, making the claimed invention as a
whole obvious in terms of 35 U.S.C. § 103.").
Accordingly, we agree with the Examiner that applying Herrington's
techniques in the Rostoker (and Cottle and Fujimoto) method would have
predictably used prior art elements according to their established functions-
an obvious improvement. See KSR, 550 U.S. at 417.
Issue C
Appellants contend the cited references do not collectively teach "a
transport processor operable to receive the compressed video signal and the
graphics from the transceiver," as recited in claim 1 (emphases added). See
App. Br. 19-21. In particular, Appellants assert Cottle does not teach
receiving graphics from the transceiver. See App. Br. 19-21.
Appellants have not persuaded us of error. The Examiner provides
specific findings showing Rostoker and Cottle collectively teach the
disputed claim limitation. See Ans. 12. In particular, the Examiner cites
Cottle' s teachings from columns 7 and 10, and explains why Rostoker and
Cottle collectively teach the limitation. See Ans. 12. For example, the
Examiner relies on Cottle's teaching that "[t]he OSD data can be represented
in ... graphics" and "[t]he OSD data may come from the user data in the
bitstream." Ans. 12 (citing Cottle 7:26-27, 7:15-16). Appellants have not
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Application 09/969,212
shown their argument that Cottle's "user data ... are not graphics" (App. Br.
21) is supported by the record. For example, Cottle teaches "the PTS
[Presentation Time Stamps] is transmitted as picture user data in the video
bitstream" and "Closed Caption (CC) and Extended Data Services (EDS) are
transmitted as picture layer user data." Cottle 9:46-48, 10:5---6. Because
Appellants fail to persuasively respond to the Examiner's findings and fail to
analyze all the reference portions cited by the Examiner, Appellants fail to
show error in the Examiner's findings. See Baxter Travenol Labs., 952 F.2d
at 391.
Issue D
In the Reply Brief and for the first time, Appellants belatedly argue
Rostoker teaches away from the claimed invention. See Reply Br. 5---6, 14.
Appellants have waived such argument because it is untimely, and
Appellants have not demonstrated any "good cause" for the belated
presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claim 1, and corresponding dependent
claims that Appellants do not argue separately with substantive contentions.
Regarding independent claim 38, Appellants argue Rostoker does not
teach "a single integrated circuit comprising ... a processor for coordinating
interfaces and activities of the transceiver, the video decoder, and the
graphics processor." See App. Br. 27. In response, the Examiner provides
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Application 09/969,212
specific findings showing Rostoker teaches the disputed claim limitation.
See Ans. 16-17. Because Appellants fail to persuasively respond to the
Examiner's findings and fail to analyze all the reference portions cited by
the Examiner, Appellants fail to show error in the Examiner's findings. See
Baxter Travenol Labs., 952 F.2d at 391.
Further, Appellants' many arguments (App. Br. 26-30) are
unpersuasive for similar reasons discussed above with respect to claim 1. In
particular, contrary to Appellants' argument that the Examiner improperly
dissects the claim (App. Br. 29-30), the Examiner has evaluated the claim
has a whole, and provided articulated reasoning with a rational underpinning
as to why one skilled in the art would have found it obvious to combine the
teachings of Rostoker, Fujimoto, Auld, Vainsencher, and Herrington. See
Final Act. 10-12. Appellants do not persuasively show why such reasoning
is incorrect.
Contrary to Appellants' argument (App. Br. 30), the Examiner does
not modify Auld itself. Instead, the Examiner cites Rostoker as the primary
reference, and modifies Rostoker's teachings to incorporate features from
other references (such as Auld and Vainsencher). See Final Act. 8-12.
Further, the Examiner finds-and Appellants do not offer any substantive
argument to dispute-this invention, Rostoker, Fujimoto, Auld,
Vainsencher, and Herrington are analogous art. See Final Act. 8-12.
Finally, Appellants argue that Auld's memory controller 460 is not for
"'arbitrating memory accesses' of the transceiver, the video decoder, and the
graphics processor," because it does not teach the transceiver, video decoder,
or graphics processor. App. Br. 30. Appellants' argument is unpersuasive
because the Examiner does not rely on Auld to teach the transceiver, video
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decoder, or graphics processor. See Jn re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (One cannot show nonobviousness by attacking references
individually where the rejections are based on a combination of references).
Further, Appellants have not explained why one skilled in the art would not
have found it obvious to use Auld's memory controller 460 to arbitrate
memory accesses for a transceiver, video decoder, and graphics processor.
Regarding claim 87, Appellants advance arguments similar to those
discussed above with respect to claims 1 and 38. See App. Br. 30-33.
Appellants' arguments are unpersuasive for similar reasons discussed above
with respect to claims 1 and 3 8.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claims 38 and 87, and
corresponding dependent claims that Appellants do not argue separately with
substantive contentions.
Separately Argued Dependent Claims
Claims 6, 5 6, and 105
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in finding Rostoker and Cottle
collectively teach "the analog video decoder being operable to ... transmit
the digitized analog video signal to the graphics processor to be blended
with the decompressed portion of the video signal and the graphics," as
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recited in independent claim 6 (emphasis added).2 See App. Br. 22-25;
Reply Br. 10-11.
The Examiner initially cites Cottle's column 10, lines 16-20. See
Final Act. 8. Appellants argue, and we agree, the cited Cottle portion does
not teach the italicized claim limitation. See App. Br. 24. In the Answer,
the Examiner finds:
OSD [on screen display] data may be of the form CCIR
601 (see Cottle, col 10, lines 26-28), and as CCIR 601 is a
standard for encoding interlaced analog video signals in digital
video form, the blending of a digitized analog signal with a
decompressed portion of the video signal and graphics is
reasonably suggested.
Ans. 14.
The cited Cottle portion merely states: "The OSD data can be
represented in one of the following forms: ... CCIR 601 4:2:2 component ..
. . " Cottle 10:26-28. We agree with Appellants that Cottle's general
disclosures are insufficient to show Cottle teaches "transmit[ting] the
digitized analog video signal to the graphics processor to be blended with
the decompressed portion of the video signal and the graphics," as required
by claim 6 (emphasis added). See App. Br. 23-25; Reply Br. 10-11.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of dependent claim 6, and dependent claims
56 and 105, which recite substantively similar limitations.
2 Appellants raise additional arguments about claim 6. Because the
identified issue is dispositive of the appeal with respect to claim 6, we do not
reach the additional arguments.
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Claims 55 and 104
Appellants argue Auld does not teach "the single integrated circuit
further comprises an analog video decoder," as recited in claim 55
(emphasis), and similarly recited in claim 104. See App. Br. 33-34.
Appellants' argument is unpersuasive because the Examiner finds
Rostoker teaches "the single integrated circuit." See Ans. 13-14, 17. Auld
does not need to separately teach that claim element.
Because Appellants have not persuaded us the Examiner erred, and
for similar reasons discussed above with respect to claims 38 and 87, we
sustain the Examiner's rejection of dependent claim 55, and dependent claim
104.
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 38-52, 54,
55,57,58,60-62,65-77, 79-101, 103, 104, 106, 107, 109-111, 114--126,
128, and 131-135.
We reverse the Examiner's decision rejecting claims 6, 56, and 105.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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