Ex Parte Hu et al

Board of Patent Appeals and Interferences

Sep 5, 2012

11403031 (B.P.A.I. Sep. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEHONG HU and ERIC YAM
____________________

Appeal 2010-005065
Application 11/403,031
Technology Center 2600
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and JUSTIN BUSCH,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
1

Introduction
Appellants seek review under 35 U.S.C. § 134(a) of a non-final
rejection of claims 10-17 and 21-28, the only claims pending in the
application on appeal. Claims 1-9 and 18-20 have been canceled. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 10, which is reproduced below:

10. A wireless telephone, comprising:

a housing;

at least one wireless DTV receiver in the housing and receiving,
from a source of DTV signals, DTV signals in at least one of the
protocols in the group consisting Of Integrated Services Digital
Broadcasting (ISDB), Digital Multimedia Broadcast (DMB), Digital
Video Broadcasting (DVB- H), and a CDMA-centric digital
broadcasting protocol;

a display supported on the housing for displaying the DTV
signals; and

at least one processor in the housing and receiving user input
signals pertaining to interactivity with an advertisement in a TV
program received by the DTV receiver, the user input signals
including a click into the advertisement to order a product represented
by the advertisement, the processor causing the user input signals to
be wirelessly transmitted to a server associated with the source of

1
Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed September 23, 2009) and Reply Brief (“Reply Br.,” filed January 4,
2009), and the Examiner’s Answer (“Ans.,” mailed December 21, 2009).
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DTV signals using at least one of the protocols in the group consisting
of Wireless Fidelity (WiFi), Worldwide Interoperability for
Microwave Access (WiMax), and wireless Ethernet.

Rejection
Claims 10-17 and 21-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roeding (US 2006/0230415 A1). Ans. 3-5.
Appellants’ Contentions
Appellants contend (App. Br. 5-12; Reply Br. 1-3) that the Examiner
erred in rejecting claims 10-17 and 21-28 under § 103(a) for numerous
reasons including:
2

(1) Roeding fails to suggest that two different connection types are
used in one DTV-user transaction, as recited in claim 10 (Reply Br. 1);
(2) with regard to claim 10, it is not obvious to try any of the protocols
listed in Roeding’s paragraph [0154] (Reply Br. 2);
(3) Roeding does not teach or suggest receiving DTV signals in ISDB
or DVB-H, receiving user input signals relating to interactivity, then sending
back user signals over WiFi, WiMax, or wireless Ethernet to a server, as
recited in claim 10 (Reply Br. 6);

2
Appellants only present arguments on the merits with regard to
independent claims 10 and 28, and dependent claims 11, 12, 17, 21-23, 25,
and 27 (see App. Br. 5-12). Independent claim 28 is broader than claim 10,
and both claims 10 and 28 recite “[a] wireless telephone” for “receiving”
over a wireless telephony network, “displaying” TV programming or DTV
signals, and wirelessly transmitting DTV signals over a non-telephony
wireless network “to a server” (claims 10 and 28). Separate patentability is
not argued for dependent claims 13-16, 24, 26, and 28 (see App. Br. 10-12;
Reply Br. 5). We select claim 10 as representative of the group of claims
10, 13-16, 24, 26, and 28. See 37 C.F.R. § 41.37(c)(1)(vii).
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(4) with regard to claim 10, Roeding’s paragraphs [0210] and [0211]
disclose that both the DTV signal being received and the user input being
transmitted out use the same type of link (App. Br. 5-6);
(5) Roeding discloses that the DTV signals from the source 42 are
sent along the same type of link as the user signals from the phone back to
the source 42 (App. Br. 8);
(6) with regard to claim 28, Roeding’s paragraphs [0210] and [0211]
disclose that the DTV signals from the source are sent along the same type
of link as the user signals from the phone back to the source (App. Br. 8);
(7) “nowhere does Roeding suggest that two different connection
types be used in one DTV-user click transaction,” as set forth in claim 28
(App. Br. 8);
(8) “[a]s clearly shown in figures 5 and 6 of Roeding, in contrast [to
claim 28], the user signals are always returned back to the same source
32/42 from which the DTV signals came” (App. Br. 8);
(9) Roeding does not mention ISDB for DTV signals as set forth in
claim 11, or DMB for DTV signals as set forth in claim 12, and fails to
explain why these features should be included in the device of Roeding
(App. Br. 10; Reply Br. 3);
(10) Roeding does not mention wireless Ethernet, as set forth in claim
17 (App. Br. 11; Reply Br. 3);
(11) Roeding does not mention gaming input or voting input, as set
forth in claims 21 and 22 (App. Br. 11; Reply Br. 3); and
(12) Roeding does not mention polling input, product
recommendations, or IM’ing, as set forth in claims 23, 25, and 27, the
Examiner admits Roeding’s failure to mention these features, and the
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Examiner fails to provide any explanation or support for why it would have
been obvious to include such features in the device of Roeding (App. Br. 11-
12; Reply Br. 3).

ISSUES
Based on Appellants’ arguments, the following issues are presented:
(1) Did the Examiner err in rejecting claims 10, 13-16, 24, 26, and 28
under 35 U.S.C. § 103(a) as unpatentable over Roeding because Roeding
fails to teach or suggest “[a] wireless telephone” for “receiving” over a
wireless telephony network, “displaying” TV programming or DTV signals,
and wirelessly transmitting user input signals over a non-telephony wireless
network “to a server,” as set forth in representative claim 10 and similarly
recited in remaining independent claim 28?
(2) Did the Examiner err in rejecting claims 11, 12, and 17 under 35
U.S.C. § 103(a) as unpatentable over Roeding because Roeding fails to teach
or suggest ISDB for DTV signals, DMB for DTV signals, and/or wireless
Ethernet, as set forth in claims 11, 12, and 17, respectively?
(3) Did the Examiner err in rejecting claims 21 and 22 under 35
U.S.C. § 103(a) as unpatentable over Roeding because Roeding fails to teach
or suggest gaming input as set forth in claim 21, and/or voting input as set
forth in claim 22?
(4) Did the Examiner err in rejecting claims 23, 25, and 27 under 35
U.S.C. § 103(a) as unpatentable over Roeding because Roeding fails to teach
or suggest polling input, product recommendations, and/or IM’ing, as set
forth in claims 23, 25, and 27, respectively?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 5-12) and the Reply Brief (Reply
Br. 1-3) that the Examiner has erred.
We disagree with Appellants’ conclusions. 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 Appellants’ Appeal Brief. Ans. 3-7.
We highlight and amplify certain teachings and suggestions of Roeding as
follows.
Issue 1: Claims 10 and 28
Roeding suggests protocols selected from the various protocols
disclosed in paragraph [0154].
In FIG. 5, all connections between different components can be
mobile- or land-line-based, and can use the Internet, private
VANs, LANs/WANs, (W)CDMA, EV-DO, DVB-H, GSM,
GPRS, UMTS, HSDPA, Wifi, WiMax, Bluetooth, infrared, any
other mobile networks or standards, broadband/television
cable, terrestrial/satellite broadcasting, or any other data
transmission systems or networks.

(Roeding ¶[0154] (emphases added)).
The various protocols are used by a wireless telephone (e.g., user and
mobile terminal 33/43) to (i) receive DTV signals (¶¶ [0174] and [205])
from a source (e.g., operator 32/42 server system 34/44) using a DVB-H or
CDMA protocol (¶¶ [0135], [0154], and [205]), (ii) display DTV signals (¶¶
[0175], [0205], and [0210]), and (iii) transmit user input signals or clicks in
response to advertisements (¶ [0212]) to order products by wirelessly
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transmitting the signals to a server 34/44 using a WiFi or WiMax protocol
(¶¶ [0154], [0196], [0211], and [0212]).
Although Roeding discloses using software applets to display
information (¶ [0210], and uses Java applets to transmit the user response or
input (¶ [0211]), Roeding is silent as to whether different protocols can be
used for sending and receiving signals (see ¶ [0212]). In addition, Roeding’s
paragraph [0154] strongly suggests using any one of many different
protocols for any and all of the connections (e.g., the reception of the DTV
signal and the transmission of the user inputs or clicks).
In light of the disclosures and suggestions of Roeding just discussed,
Appellants’ contentions (1)-(8) supra (e.g., that Roeding fails to suggest
using two different connection types or protocols being used for reception of
DTV signals and transmission of user inputs/clicks, as set forth in claims 10
and 28) are not persuasive.
In view of the foregoing, Appellants have not sufficiently shown that
Roeding fails to teach or suggest the contested subject matter recited in
representative claim 10. Accordingly, we will sustain the rejection of
representative claim 10. We will also sustain the rejection of (i) claims 13-
16, 24, and 26 which ultimately depend from claim 10, and (ii) remaining
independent claim 28 for the same reasons as representative claim 10.
Issue 2: Claims 11, 12, and 17
With regard to claims 11, 12, and 17, we agree with the Examiner
(Ans. 3-4 and 7) that it would have been obvious to use ISDB for DTV
signals, DMB for DTV signals, and/or wireless Ethernet in order to free up
mobile wireless network resources.
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In view of the foregoing, Appellants have not sufficiently shown that
Roeding fails to teach or suggest the contested subject matter recited in
claims 11, 12, and 17, and Appellants’ contentions (9) and (10) are not
persuasive. Accordingly, we will sustain the rejection of claims 11, 12, and
17.
Issue 3: Claims 21 and 22
Roeding discloses the gaming input of claim 21 in paragraph [0193].
Roeding discloses the voting input of claim 22 in paragraphs [0075]
and [0193].
In view of the foregoing, Appellants have not sufficiently shown that
Roeding fails to disclose the gaming and voting inputs recited in claims 21
and 22, and Appellants’ contention (11) is not persuasive. Accordingly, we
will sustain the rejection of claims 21 and 22.
Issue 4: Claims 23, 25, and 27
With regard to claims 23, 25, and 27, we agree with the Examiner
(Ans. 5) that it would have been obvious to provide mobile or content-
related content, in light of Roeding’s disclosures in paragraphs [0075] and
[0193] in order to enhance the functionality of the mobile telephone. In
addition, the “further information” disclosed by Roeding in paragraph
[0075] provides a suggestion to provide such mobile or content-related
content.
In view of the foregoing, Appellants have not sufficiently shown that
Roeding fails to teach or suggest the contested subject matter recited in
claims 23, 25, and 27, and Appellants’ contention (12) is not persuasive.
Accordingly, we will sustain the rejection of claims 23, 25, and 27.

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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 10, 13-16, 24, 26,
and 28 under 35 U.S.C. § 103(a) as unpatentable over Roeding because
Roeding teaches or suggests “[a] wireless telephone” for “receiving” over a
wireless telephony network, “displaying” TV programming or DTV signals,
and wirelessly transmitting user input signals over a non-telephony wireless
network “to a server,” as set forth in representative claim 10 and similarly
recited in remaining independent claim 28.
(2) The Examiner has not erred in rejecting claims 11, 12, and 17
under 35 U.S.C. § 103(a) as unpatentable over Roeding because Roeding
teaches or suggests ISDB for DTV signals, DMB for DTV signals, and/or
wireless Ethernet, as set forth in claims 11, 12, and 17, respectively.
(3) The Examiner has not erred in rejecting claims 21 and 22 under 35
U.S.C. § 103(a) as unpatentable over Roeding because Roeding discloses a
gaming input as set forth in claim 21, and/or voting input as set forth in
claim 22.
(4) The Examiner has not erred in rejecting claims 23, 25, and 27 under
35 U.S.C. § 103(a) as unpatentable over Roeding because Roeding teaches
or suggests polling input, product recommendations, and/or IM’ing, as set
forth in claims 23, 25, and 27, respectively.

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DECISION
The Examiner’s decision to reject claims 10-17 and 21-28 is affirmed.
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).

AFFIRMED

ELD