Ex Parte Kisel et al

Patent Trial and Appeal Board

Mar 21, 2016

12566090 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/566,090 0912412009
48116 7590 03/23/2016
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Andrey Kise!
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.
LUTZ 201069US01 1740
EXAMINER
FLYNN, RANDY A
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREY KISEL, DA VE CECIL ROBINSON and
PETER BEECROFT
Appeal2014-006072
Application 12/566,090
Technology Center 2400
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-19, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed invention on appeal is directed to "client configuration
and management for fast channel change (FCC) and reliable delivery of
IPTV, Internet TV, cable TV and similar services." (Spec. i-f 1 ).
Appeal2014-006072
Application 12/566,090
Representative Claim
1. User equipment (UE) of an IPTV, cable or Internet TV
data network, the UE comprising equipment that provides self-
discovery and management of a personalised [Brit. Sp.] service
profile including [LI] Fast Channel Change/Retransmission
(FCC/Retr) service configuration data available to the UE by
virtue of at least its location and/or capabilities and/or line
capabilities and for storing and using this profile for IPTV
service. 1
1 Regarding the "equipment that provides" all of the intended functions
recited in claim 1, our reviewing court recently articulated a new standard
for review of claim language that relies on "nonce" words, and does not
expressly recite the word "means":
The standard is whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure. Greenberg, 91 F.3d
at 1583. When a claim term lacks the word "means," the
presumption can be overcome and§ 112, para. 6 \vill apply if the
challenger demonstrates that the claim term fails to "recite
sufficiently definite structure" or else recites "function without
reciting sufficient structure for performing that function." Watts,
232 F.3d at 880.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
Here, Appellants appear to have replaced the term "means for " with
the "nonce" word "equipment that provides" thereby connoting a single
generic "black box" for performing all of the intended functions recited in
claim 1. In the event of further prosecution, and to the extent that
"equipment" is a nonce word that fails to have a sufficiently definite meaning
as the name for a particular structure capable of performing the recited
functions, we leave it to the Examiner to consider whether claim 1 should be
rejected under 35 U.S.C. § 112, first paragraph, as a single means which is
nonenablingfor the scope of the claim. See MPEP § 2164.08(a). See also
2
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Application 12/566,090
(Emphasis added regarding the contested limitation, labeled as "L 1 ",
underline added regarding single means "nonce" word). See n. l.
Rejections
A. Claims 1-16 and 18-19 are rejected under 35 U.S.C. 103(a) as being
obvious over the combined teachings of Xiong et al. (US 2008/0192751
Al; published August 14, 2008), and Joshi et al. (US 2008/0109557 Al;
published May 8, 2008).
B. Claim 17 is rejected under 35 U.S.C. 103(a) as being obvious over the
combined teachings of Xiong et al. , Joshi et al., and Droms et al. (US
7,941,512 B2; issued May 10, 2011).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. See 37
C.F.R. § 4L37(c)(l)(iv). We address rejection B of claim 17 separately;
infra.
In re Hyatt, 708 F.2d 712, 714--15 (Fed. Cir. 1983) (A single means claim
which covered every conceivable means for achieving the stated purpose
was held nonenabling for the scope of the claim because the specification
disclosed at most only those means known to the inventor.). Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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Application 12/566,090
Contentions
Regarding the obviousness rejection of claim 1, Appellants contest the
Examiner's rejection of limitation LI. (Br. 5---6). Appellants particularly
contend, inter alia:
Further, in the final Office Action, the Examiner takes the
position that "Retr service configuration data" is not defined in
the claims and therefore the phase is being broadly interpreted as
"information that is used to connect to various servers/services."
See page 2 of the final Office Action. This interpretation is
erroneous and overly broad. It is well accepted that even under
a broadest reasonable interpretation standard, claim terms must
in general still be given their plain meaning, i.e., the ordinary
and customary meaning given to the terms by one of ordinary
skill in the art (provided such a meaning is not inconsistent with
the specification). See MPEP §2111.01. Accordingly to MPEP
§2111.01 (Ill), "[i]t is the use of the words in the context of the
written description and customarily by those skilled in the
relevant art that accurately reflects both the 'ordinary' and the
'customary' meaning of the terms in the claims." Under this
interpretation, "Retr service configuration data" is clearly data
used to configure a retransmission service. In other words, iiRetr
service configuration data" as used in the claims is NOT data
used to configure or connect to some generic or un-named
service as the Examiner suggests, but rather, as expressly recited
in the claim language itself, "Retr service configuration data" is
data employed to configure a specific service, namely, a
retransmission service. One of ordinary skill in the art would
clearly understand what a retransmission service is in the field of
IPTV and/or Internet television, especially as that phase is used
in the context of the present specification and/or in view of the
present specification. Further, one of ordinary skill in the art
would understand "Retr service configuration data" to mean data
employed to configure a retransmission service.
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Application 12/566,090
Indeed, it is improper to import claim limitations from the
specification, however, that is not what is being proposed here.
Rather, the claim language itself expressly identifies the
configuration data as "Retr service" configuration data and not
merely configuration data for some generic or un-named service.
(Br. 5---6).
The Examiner adopts a broader alternative language interpretation of
the contested LI data terms: "Fast Channel Change/Retransmission
(FCC/Retr) service configuration data" (claim 1 ):
It is noted that Appellants current claim language does not
explicitly require "Retr service configuration data" (which is the
focus of the argument). The current claim language states" ... a
personalised service profile including Fast Channel
Change/Retransmission (FCC/Retr) service configuration data ...
", which is in the alternative and allows for either FCC or Retr
service configuration data to be included, similarly to
Appellant's usage of the language "and/or". As was shown in the
previous rejections, the secondary reference of Joshi was brought
in to disclose FCC elements (see Joshi; Fig. 2, element 105, and
pages 5-6, paragraph 55). Furthermore, Joshi discloses data
being sent from an FCC server to a client in order to set up a
connection (see Joshi; pages 6-7, paragraph 62), and FCC
configuration data/information (see Joshi; page 7, paragraph 65,
and page 9, paragraphs 102-103). The primary reference of
Xiong was already shown to disclose receiving a profile, i.e.
configuration file, with configuration parameters (see Xiong;
page 5, paragraph 96, and page 6, paragraph 105). This
combination of references, when viewed as a whole, discloses the
FCC elements of Appellant's current claim language.
(Ans. 11-12, emphasis added).
ISSUE
Issue: Under§ 103, did the Examiner err by finding the cited
combination of prior art would have taught or suggested contested limitation
LI:
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Appeal2014-006072
Application 12/566,090
User equipment (UE) of an IPTV, cao1e or internet TV data
network, the UE comprising equipment that provides self-discovery
and management of a personalised service profile including Fast
Channel Change/Retransmission (FCC/Retr) service configuration
data available to the UE by virtue of at least its location and/or
capabilities and/or line capabilities and for storing and using this
profile for IPTV service,
within the meaning of representative claim 1? (Emphasis added).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and 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 and rebuttals set forth in
the Answer in response to Appellants' arguments. (Ans. 11-12). However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
Appellants refer in their argument to a quoted term ("Retr service
configuration data") and argue that the term should be given its plain
meaning under a broadest reasonable interpretation standard. (Br. 5---6).
Additionally, Appellants argue (Br. 6):
One of ordinary skill in the art would clearly understand what a
retransmission service is in the field of IPTV and/or Internet
television, especially as that phase is used in the context of the
present specification and/or in view of the present specification.
Further, one of ordinary skill in the art would understand 'Retr
service configuration data' to mean data employed to configure
a retransmission service.
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Application 12/566,090
In response, the Examiner concludes contested L 1 limitation broadly
but reasonably covers "FCC service configuration data" and/or "Retr service
configuration data," either as conjunctive terms that are used together, or as
alternative (disjunctive) terms. (Ans. 11 ).
This appeal turns on claim construction. We first note claim 1
specifically recites "(FCC/Retr) service configuration data," and not merely
"Retr service configuration data" as represented by the Appellants. (Br. 4:
"Neither Xiong nor Joshi disclose the foregoing personalized service profile
including Retr service configuration data as claimed."). The "Fast Channel
Change/Retransmission FCC/Retr configuration data" terms are not
otherwise defined in claim 1.
We next look to the Specification for context and particularly note
page 3, lines 8-9: "When we say FCC/Retr unit (or server) we imply that
the server can provide either FCC service or Retr service or both."
(Emphasis added). Therefore, we conclude the Examiner's broad but
reasonable interpretation of the contested LI data terms ("Fast Channel
Change/Retransmission (FCC/Retr) service configuration data"), as
covering alternative language (i.e., FCC or Retr data), is fully consistent
with the Specification. 2 Moreover, because "applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
2 Our reviewing court guides: "[A ]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. . . . [C]laims may
embrace 'different subject matter than is illustrated in the specific
embodiments in the specification."' Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en bane) (citations omitted).
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Application 12/566,090
unfairness to the applicant or patentee." In re IC01V Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
Furthermore, Appellants offer no rebuttal evidence to support their
assertion that "[ o ]ne of ordinary skill in the art would clearly understand
what a retransmission service is in the field of IPTV and/ or Internet
television, especially as that phase is used in the context of the present
specification and/or in view of the present specification" (Br. 6). (See "VI.
EVIDENCE APPENDIX NONE" Br. 13).
Nor did Appellants file a Reply Brief challenging the Examiner's
explanation of the interpretation of the contested L 1 data terms in the
alternative. Finally, as found by the Examiner (Ans. 12), the Joshi reference
discloses a literal teaching of FCC data (see Joshi; page 7, paragraph 65,
and page 9, paragraphs 102-103).
Paragraph 65 of Joshi, in pertinent part:
The duration and/or the amount of data the FCC Server sends at
a higher rate are configurable, thus allowing the tuning of
throttling to provide an optimal reduction in channel change
delay. 3 The configuration may be either predetermined,
dynamically determined, or determined in any other way to
achieve an optimum or a desired and achievable reduction in
channel change delay.
(Emphasis added).
3 We note Appellants' Specification similarly describes the problem of
"relatively slow channel change times in IPTV systems ... [and] to improve
the channel changing experience .... " (Spec. 2, 11. 8-11). For example,
"Fast Channel Change (FCC) functionality is an extension of 'channel
change' ability aimed at reducing channel change times because, as
described above, switching between two broadcast channels (multicast
flows) is typically slow." (Spec. 10, 11. 3-5).
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Therefore, on this record, and by a preponderance of the evidence, we
are not persuaded the Examiner's broader alternative interpretation of
contested limitation L 1 is overly broad, unreasonable, or inconsistent with
the Specification.
To the extent the scope of the recited "UE comprising equipment"
may cover a particular structure, we additionally note the patentability of an
apparatus claim "depends on the claimed structure, not on the use or purpose
of that structure." Catalina Marketing Int'!. Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 809 (Fed. Cir. 2002).
Here, Appellants' arguments do not persuade us that the structure of
the recited "UE comprising equipment" changes according to the
informational content of the "Fast Channel Change/Retransmission
(FCC/Retr) service configuration data" that is made "available to the UE,"
as recited in representative claim 1. Nor does claim 1 require the "UE
comprising equipment" apparatus to be "configured to" (i.e., arranged or
structured) so as to be capable of performing the recited functions.
Therefore, on this record, and by a preponderance of the evidence, we
are not persuaded the Examiner erred. Accordingly, we sustain the
Examiner's rejection A of representative claim 1. Independent method
claim 7 is not separately argued and therefore falls with claim 1. The
remaining dependent claims which were rejected under rejection A fall with
representative claim 1. See "Grouping of Claims" supra.
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Appeal2014-006072
Application 12/566,090
Rejection B of Claim j/ under §j03
Appellants do not advance substantive separate arguments and/or
supporting evidence demonstrating error regarding the Examiner's rejection
B of claim 1 7. Arguments not made are considered waived. See 3 7 C.F .R.
§ 41.37(c)(l)(iv). Therefore, we sustainrejectionB ofclaim 17.
DECISION
We affirm the Examiner's rejections of claims 1-19.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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