Ex Parte Haque et al

Patent Trial and Appeal Board

Apr 28, 2017

10537175 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/537,175 06/15/2006 Shaheedur Reza Haque LUTZ 200778US01 7997
48116 7590 05/02/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor GARNER, WERNER G
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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 @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAHEEDUR REZA HAQUE,
GERARD ANTHONY BRIAN KEATING,
DAVID CECIL ROBINSON, and RICHARD ANDREW MORRELL
Appeal 2015-003946
Application 10/537,175
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1—6, 8—13, 15—17, 19—21, 26—28, and 31—34. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 “The real party in interest for this appeal and the present application is
Alcatel Lucent of Paris.” (Appeal Br. 1.)
Appeal 2015-003946
Application 10/537,175
STATEMENT OF THE CASE
The Appellants’ invention “relates to an adapter unit for use with a
games console.” (Spec. 1,11. 3^4.)
Illustrative Claim2
1. A games system comprising
a games console and
an adaptor unit,
wherein the games console comprises a console housing; a
game interface within said console housing configured to
receive a game product; a display interface within said console
housing configured to interface said games console to a
display; a user interface within said console housing
configured to receive a user input; a game controller within
said console housing configured to receive game data from
said game interface to receive said user input from said user
interface, and to generate therefrom game video data for
output to said display interface; an adaptor interface within
said console housing configured to couple the games console
with said adaptor unit; a memory within the console housing
configured to store software modules; and a console processor
within the console housing configured to execute the software
modules stored in the memory;
wherein said adaptor unit comprises an adaptor housing; a
memory within the adaptor housing configured to store a
video player software module; a video data receiver within
said adaptor housing configured to receive encoded video data
from a remote video provider; a games console interface
within said adaptor housing configured to interface said
adaptor unit to said adaptor interface of said games console; a
communications controller within said adaptor housing
configured to control communications between the adaptor
unit and said games console via said games console interface
2 This illustrative claim is quoted from the Claims Appendix set forth on
pages 22—34 of the Appeal Brief, with edited paragraphing.
2
Appeal 2015-003946
Application 10/537,175
and said adaptor interface; and a large capacity storage device
configured to store at least one of the encoded video data,
game video data, and game data;
wherein the game controller is responsive to the user input
from the user interface and configured to transmit game
history data to the communications controller of the adaptor
unit via the games console interface and the adaptor interface,
wherein the communications controller is configured to store
the game history data in the large capacity storage device;
wherein the communications controller is configured to output
the video player software module and the encoded video data
to the games console;
wherein the games console is configured to receive the video
player software module from the adaptor unit, store the video
player software module in the memory of the games console,
use the console processor to execute the video player software
module, receive the encoded video data from the adaptor unit,
and use the video player software module to generate decoded
video data from the received encoded video data for output to
the display via the display interface.
Wong
References
US 2002/0007357 A1 Jan. 17, 2002
Miyaki US 2002/0086724 A1 July 4, 2002
Kim US 2002/0169973 A1 Nov. 14, 2002
Smith US 6,599,194 B1 July 29, 2003
Marsh US 7,124,938 B1 Oct. 24, 2006
Rejections
I. The Examiner rejects claims 1, 2, 8—12, 15—17, 19-21, 26—28,
and 31—34 under 35 U.S.C. § 103(a) as unpatentable over Smith, Miyaki,
and Wong. (Final Action 2—3.)
II. The Examiner rejects claims 3, 4, 6, and 13 under
35 U.S.C. § 103(a) as unpatentable over Smith, Miyaki, Wong, and Marsh.
(Final Action 31.)
3
Appeal 2015-003946
Application 10/537,175
III. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Smith, Miyaki, Wong, and Marsh. (Final Action 34.)
ANALYSIS
Claims 1, 11, 17, and 21 are the independent claims on appeal, with
the rest of the claims on appeal (i.e., claims 2—6, 8—10, 12, 13, 15, 16, 26—28,
and 31—34) depending therefrom. (Appeal Br., Claims App.) Independent
claim 1 recites “[a] games system” comprising “a games console” and “an
adaptor unit,” independent claim 11 recites “[a]n adaptor unit for use with a
games console,” independent claim 17 recites “[a] games console for use
with an adaptor unit,” and independent claim 21 recites “[a] method”
comprising “interfacing an adaptor unit with a games console.” (Id.)
Independent Claim 1
Independent claim 1 recites that the adapter unit comprises “a video
data receiver” that is “configured to receive encoded video data from a
remote video provider.” (Appeal Br., Claims App.) The Examiner finds
that Smith discloses a video game system 50 having an expansion device 95
that receives data from the internet. (See Final Action 4.) The Examiner
explains that “[tjhose of ordinary skill in the art are aware that video on a
network, including the internet, is often encoded.” (Answer 8.) In other
words, the Examiner finds that one of ordinary skill in the art would have
understood that Smith’s expansion device 95 could receive encoded video
data from a remote video provider.
Independent claim 1 recites that the adapter unit also comprises a
communications controller which is configured “to control communications
between the adaptor unit and [the] games console via [a] games console
4
Appeal 2015-003946
Application 10/537,175
interface and [an] adaptor interface.” (Appeal Br., Claims App.) The
Examiner finds that Smith discloses a “bus interface 179 [that] controls
communication with video game console 52,” and “video circuitry 176 [that]
receives SVIDEO signal from video game console 52.” (Final Action 5.)
Independent claim 1 requires the communication controller to be
configured to “output... the encoded video data to the games console,” and
requires the game console to be configured to “receive the encoded video
data from the adapter unit.” (Appeal Br., Claims App., emphases added.)
As discussed above, the Examiner finds that one of ordinary skill in the art
would have understood that Smith’s expansion device 95 could receive
encoded video data from a remote video provider; and the Examiner find
that Smith’s bus interface 179 controls communication with the video game
console 52. The Examiner finds that when Smith’s video game system 50 is
modified in view of the teachings of Wong, Smith’s communication
controller (i.e., bus interface 179) would output encoded video data to its
game console 52, which would receive this encoded data. (See Final
Action 5—6.)
The Appellants argue that the Examiner’s proposed combination of
the prior art does not show or suggest that the communication controller
and/or the game console recited in independent claim 1. (See Appeal
Br. 11—12.) We are persuaded by this argument because the Examiner’s
findings do not adequately address why the incorporation of Wong’s
teachings into Smith’s video game system 50 would result in the
communication controller (i.e., bus interface 179) outputting encoded video
data to the game console 52 and/or the game console 52 receiving encoded
data from the adapter unit (i.e., expansion device 95).
5
Appeal 2015-003946
Application 10/537,175
The Examiner finds that “Wong teaches a method apparatus for
providing the plug-in decoders (codecs) to a user,” and the Examiner finds
that “[w]hen Smith is combined with Wong, the result is a video game
console that accesses video content and the appropriate video codec from an
external server via a network accessed by way of an expansion device.”
(Final Action 13—14.) The Examiner explains that, in the proposed
combination of the prior art, Smith’s game system 50 “requests video data
from a server via the expansion device,” and “[t]he server responds by
providing the video data along with the JPEG decoder.” (Answer 37.)
According to the Examiner, this would be done “in order to ensure easy
access to video content on a network without requiring excessive
bandwidth.” (Final Action 21.)
The Examiner’s findings establish that it would have been obvious to
provide Smith’s expansion device 95 with decoding features for decoding
the encoded internet data received thereby. However, this does not
adequately address why Smith’s communication controller (i.e., bus
interface 179) would output encoded data, as opposed to the decoded data, to
the game console 52. Although the Examiner maintains that Wong shows an
execution space in which data files are transient copies of data files
downloaded from the server (see Answer 24), the Examiner does not explain
how this “execution space” correlates to Smith’s game console 52.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Smith, Miyaki, and
Wong (Rejection I).
6
Appeal 2015-003946
Application 10/537,175
Independent Claim 11
Independent claim 11, like independent claim 1, recites “a video data
receiver” configured to “receive encoded video data from a remote video
provider,” and “a communications controller” that is configured to “output
encoded video data to the games console.” (Appeal Br., Claims App.,
emphasis added.) The Examiner’s findings mirror those made with respect
to the adapter unit in connection with independent claim 1 (see Final
Action 10-14), and the Appellants advance similar arguments (see Appeal
Br. 13—14). As discussed above, we are persuaded by the Appellants’
position that the Examiner’s proposed combination of the prior art does not
show or suggest a communication controller that outputs encoded video data
to a games console.
Thus, we do not sustain the Examiner’s rejection of independent
claim 11 under 35 U.S.C. § 103(a) as unpatentable over Smith, Miyaki, and
Wong (Rejection I).
Independent Claim 17
Independent claim 17, like independent claim 1, recites that the games
console is configured to “receive encoded video data from the adapter unit.”
(Appeal Br., Claims App., emphasis added.) The Examiner’s findings
mirror those made with respect to the games console in connection with
independent claim 1 (see Final Action 42—47), and the Appellants advance
similar arguments (see Appeal Br. 14—17). For the reasons discussed above,
we are persuaded by the Appellants’ position that the Examiner’s proposed
combination of the prior art does not show or suggest a games console that
receives encoded video data from an adapter unit.
7
Appeal 2015-003946
Application 10/537,175
Thus, we do not sustain the Examiner’s rejection of independent
claim 17 under 35 U.S.C. § 103(a) as unpatentable over Smith, Miyaki, and
Wong (Rejection I).
Independent Claim 21
Independent claim 21 recites the step of “outputting the encoded
video data from said adaptor unit to said games console.” (Appeal Br.,
Claims App., emphasis added.) The Examiner’s findings mirror those made
with respect to the encoded-data outputting limitation in independent claim 1
(see Final Action 22—26), and the Appellants advance similar arguments (see
Appeal Br. 18—21). As discussed above, we are persuaded by the
Appellants’ position that the Examiner’s proposed combination of the prior
art does not show or suggest outputting encoded video data from an adaptor
unit to a games console.
Thus, we do not sustain the Examiner’s rejection of independent
claim 17 under 35 U.S.C. § 103(a) as unpatentable over Smith, Miyaki, and
Wong (Rejection I).
Dependent Claims
The Examiner’s further findings and determinations with respect to
the dependent claims (see Final Action 9—10, 14—15, 21, 28—35) do not
establish that the prior art shows or suggests a communication controller that
outputs encoded video data to a games console and/or a games console that
receives encoded video data from an adapter unit.
Thus, we do not sustain the Examiner’s rejection of claims 2, 8—10,
12, 15, 16, 19-21, 26—28, and 31—34 (Rejection I); we do not sustain the
Examiner’s rejection of claims 3, 4, 6, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Smith, Miyaki, Wong, and Marsh (Rejection II); and we
8
Appeal 2015-003946
Application 10/537,175
do not sustain the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a)
as unpatentable over Smith, Miyaki, Wong, and Marsh (Rejection III).
DECISION
We REVERSE the Examiner’s rejections of claims 1—6, 8—13, 15—17,
19-21,26-28, and 31-34.
REVERSED
9