Ex Parte Garriga

Patent Trial and Appeal Board

Jun 22, 2016

13436208 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/436,208 03/30/2012
29973 7590 06/24/2016
CRGOLAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Humberto Garriga
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.
1257-003U 1552
EXAMINER
FLYNN,NATHANJ
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUMBERTO GARRIGA
Appeal2015-001647
Application 13/436,208
Technology Center 2400
Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
A. "1"1 ,1 "1 "1 ,..,,,-TT#'I~ 1\1,..,,Al/'-r'" ,"1 T"""i • ., Appeuant' appeals unaer j) u.~.L. s U4~aJ rrom me bxammer s
rejection of claims 1, 3-6, 8-11, 13, and 14.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is DTVCast Development
LLC. App. Br. 2.
2 Claims 2, 7, and 12 have been canceled. App. Br. 14, 16, 17.
Appeal2015-001647
Application 13/436,208
STATEMENT OF THE CASE
Introduction
Appellant's application relates to bi-directional Internet Protocol data
transport through a broadcast TV signal. Abstract. Claim 1 is illustrative of
the subject matter on appeal and reads as follows:
1. A method for bi-directional Internet protocol (IP) data
transport through a broadcast television (TV) signal, comprising:
establishing an asymmetric communication path between
a customer premise equipment (CPE) device and a router of a
headend system, the asymmetric communication path consisting
of two different unidirectional flows of data, one unidirectional
flow of data being via a unidirectional downstream TV broadcast
path and a different unidirectional flow of data being via a
unidirectional upstream return path, the unidirectional upstream
return path is a tunnel configured to wirelessly transport
upstream data between the CPE device and the router of the
headend system;
receiving an Internet data request from a computing device
of an end user at the CPE device;
communicating the request to the headend system over the
asymmetric communication path via the unidirectional upstream
return path;
listening for motion picture expert group (MPEG) packets
broadcasted from a TV transmission facility through the headend
system in response to the request;
extracting Internet protocol (IP) data packets from the
MPEG packets; and,
returning the extracted IP data packets to the computing
device as a response to the Internet data request.
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Appeal2015-001647
Application 13/436,208
The Examiner's Rejections
Claims 1, 3-5, 8-11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hundemer (US 6,987,734 B2; Jan. 17, 2006),
Rajakarunanayake (US 6,810,413 Bl; Oct. 26, 2004), and Dolgonos (US
2006/0117361 Al; June 1, 2006). See Final Act. 3-12.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hundemer, Rajakarunanayake, Dolgonos, and Blackketter (US
2005/0240982 Al; Oct. 27, 2005). See Final Act. 12.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. We disagree with Appellant's
conclusions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Action from which this appeal
is taken and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Appellant argues the Examiner erred in rejecting claim 1 because an
ordinarily skilled artisan would not have been motivated to combine
Hundemer, Rajakarunanayake, and Dolgonos. App. Br. 7, fnl. In
particular, Appellant argues Dolgonos teaches a wired downstream
connection and an over-the-air upstream connection, Rajakarunanayake
teaches both wired and wireless Internet content delivery, and Hundemer
teaches wireless broadcasting of digital content. Id. According to
Appellant, "[t]he technical expertise is [sic] these areas is not so simple as
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Appeal2015-001647
Application 13/436,208
one in the wireless arts would just look at broadcast technologies for ideas
and be able to apply those." Id.
Appellant has not persuaded us that the Examiner erred in finding an
ordinarily skilled artisan would have been motivated to combine the cited
references. The Examiner finds, and we agree, that an ordinarily skilled
artisan would have been motivated to combine Hundemer and
Rajakarunanayake to deliver Internet content to networked computers using
hybrid wireless and wire technologies. Final Act. 5. Appellant argues such
a combination would be difficult, but identifies no evidence to support these
arguments. Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
In addition, consistent with the guidelines stated in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), the Examiner identifies improvements
made by the combination to the method of Hundemer for delivering Internet
content using a broadcast signal. See Final Act. 5, 7; Ans. 2-3. Although
Hundemer, Dolgonos, and Rajakarunanayake involve varied transmission
technologies, the Supreme Court has indicated that:
[It is error to] assum[ e] that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem .... Common sense teaches
. . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.
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Appeal2015-001647
Application 13/436,208
KSR, 550 U.S. at 420 (citation omitted). Therefore, the Examiner has
articulated some rational underpinning regarding how the claimed features
are suggested by the proposed combination of the reference teachings. See
KSR, 550 U.S. at 418.
Appellant also argues the Examiner erred because Dolgonos does not
teach or suggest "the unidirectional upstream return path is a tunnel
configured to wirelessly transport upstream data between the CPE device
and the router of the headend system." App. Br. 8-11, Reply Br. 3-6.
Appellant argues Dolgonos does not teach a tunnel configured to "wirelessly
transport" because the connection in Dolgonos "is not completely wireless."
App. Br. 8-9. Appellant acknowledges that Dolgonos teaches the upstream
transmission of data from the transmitter to the hub is wireless, but argues
that because other portions of the transmission occur over a wired
connection, Dolgonos does not teach the disputed limitation. App. Br. 9.
Claim l recites the upstream retuTI1 path is a tunnel "configured to
wirelessly transport upstream data between the CPE device and the router of
the headend system." Because claim 1 does not require that the upstream
transmission is completely wireless, Appellant's argument is not
commensurate with the scope of the claims. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied
upon for patentability). Dolgonos teaches the upstream path between the
CPE and the router of the headend system includes a wireless transmission,
thus the path is a tunnel configured to wirelessly transport upstream data.
Ans. 4 (citing Dolgonos iii! 17, 19). Accordingly, Appellant's argument is
not persuasive of Examiner error.
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Appeal2015-001647
Application 13/436,208
Appellant also argues Dolgonos "suggest[ s] the lack of a
unidirectional flow of data." App. Br. 9. However, Appellant also
acknowledges that "Dolgonos describes a communication path with a wired
downstream portion in the form of a cable TV plant and an over-the-air
wireless upstream portion." App. Br. 7, fnl. The two separate paths that
Appellant acknowledges are present are each unidirectional communication
paths, including the over-the-air wireless upstream portion.
Appellant also argues the Examiner erred because Dolgonos teaches a
headend includes a router, and "there is no need for the Examiner to look to
another mapping." Reply Br. 6. The Examiner is not required to map the
prior art teachings to the claim such that the same words are used in each.
Standard Havens Prods. V. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir.
1991) (the prior art "need not duplicate word for word what is in the
claims"). In the Final Action, the Examiner identified the portions of the
cited references that correspond to each of the claim limitations. .LA:..ppellant
has not identified error in the Examiner's findings and reasoning.
Finally, Appellant argues for the first time in the Reply Brief that
Dolgonos "makes no references to a 'tunnel' nor does Dolgonos describe a
tunnel in technical terms." Reply Br. 5. This argument is waived because it
was presented for the first time in the Reply Brief, without a showing of
good cause. See 37 C.F.R. § 41.4l(b)(2) (2012);; accord Ex parte Borden,
93 USPQ2d 1473, 1473-74 (BPAI 2010 (informative opinion) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not."). Accordingly, Appellant has not persuaded us that the Examiner erred
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Appeal2015-001647
Application 13/436,208
in finding Dolgonos teaches an upstream path comprises a tunnel, as recited
in claim 1.
CONCLUSIONS
On the record before us and in view of the analysis above, Appellant
has not persuaded us that the Examiner erred in rejecting claim 1 as
unpatentable over Hundemer, Rajakarunanayake, and Dolgonos. Therefore,
we sustain the rejection of claim 1. We also sustain the rejection of claims
3-5, 8-11, 13, and 14, which Appellant has not argued separately. See App.
Br. 6-11. Appellant argues the patentability of claim 6 based on the same
reasons set forth for claim 1. See App. Br. 12. We, therefore, sustain the
rejection of claim 6 for the same reasons set forth above.
DECISION
\Ve affirm the decision of the Examiner to reject claims 1, 3-6, 8-11,
13, and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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