Ex Parte Munsell et al

Patent Trial and Appeal Board

Sep 20, 2013

11728501 (P.T.A.B. Sep. 20, 2013)

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.
11/728,501 03/26/2007 Michael R. Munsell PD-206063 1586
20991 7590 09/20/2013
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
ALCON, FERNANDO
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
09/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL R. MUNSELL, CARL OSTROM, and
MITCHELL B. WASDEN
___________

Appeal 2012-011967
Application 11/728,501
Technology Center 2400
____________

Before JEAN R. HOMERE, JOHN A. JEFFERY, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-011967
Application 11/728,501

2

This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1-8, 10-15, 17-20, and 22-25. App. Br. 2. Claims 9, 16, and 21 were
previously cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to inserting a digital video effect into a
signal. See generally Abstract.
Claim 1, reproduced below, is illustrative:
1. A method of forming an output signal comprising:
receiving a plurality of signals having a first format;
routing at least a first signal of the plurality of signals to
a digital video effects module;
after routing, inserting a digital video effect into the first
signal of the plurality of signals to form a modified first signal,
wherein said digital video effect changes a visual display of the
first signal;
encoding the modified first signal and the plurality of
signals into a plurality of transport streams;
routing the plurality of transport streams through a local
area network to a multiplexer to form a combined signal;
modulating the combined signal to form a modulated
signal; and
forming the output signal from the modulated signal.

Appeal 2012-011967
Application 11/728,501

3

THE REJECTIONS
Claims 1, 2, 10, and 12-14
1
are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swart (U.S. Patent Publication No. 2003/0028890 A1;
published Feb. 6, 2003) and Cleary (U.S. Patent Publication No.
2002/0174438 A1; published Nov. 21, 2002). Ans. 7-11.
Claims 3 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Swart, Cleary, and Werner (U.S. Patent Publication No. 2002/0069107
A1; published June 6, 2002). Ans. 11.
Claims 4, 5, 8, 17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swart, Cleary, and Ducharme (U.S. Patent Publication
No. 2002/0178278 A1; published Nov. 28, 2002). Ans. 12-14.
Claims 6 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Swart, Cleary, and Blahut (U.S. Patent No. 5,570,126; issued Oct. 29,
1996). Ans. 14.
Claims 7 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Swart, Cleary, and Baran (U.S. Patent Publication No. 2003/0200548
A1; published Oct. 23, 2003). Ans. 14-15.
Claims 10 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swart, Cleary, and Simyon (U.S. Patent Publication No.
2005/0060754 A1; published Mar. 17, 2005). Ans. 15-16.

1
Although the Examiner indicates that claim 22 is rejected over Swart and
Cleary, the Examiner nonetheless omits this claim from this rejection in the
Status of the Claims section. Compare Ans. 7 with Ans. 3. In view of this
omission, and because claim 22 is also rejected over Swart, Cleary, and
Simyon (Ans. 15), we presume that the Examiner intended to omit claim 22
from the rejection over Swart and Cleary. Accordingly, we present the
correct claim listing here for clarity.

Appeal 2012-011967
Application 11/728,501

4

Claims 11 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swart, Cleary, Simyon, and Butte (U.S. Patent No.
6,397,039 B1; issued May 28, 2002). Ans. 16.
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swart, Cleary, Simyon, and Wright (U.S. Patent
Publication No. 2004/0244036 A1; published Dec. 2, 2004). Ans. 17-18.
REJECTION OVER SWART AND CLEARY
CLAIM 1
In rejecting claim 1, the Examiner finds that Swart discloses all steps
including the “encoding” step but does not teach that the encoding of Swart
generates a “plurality of transport streams.” Ans. 7-8. The Examiner then
finds that Cleary discloses encoding a plurality of signals into a plurality of
transport streams. Ans. 8-9. Appellants argue that Swart does not disclose
inserting a digital video effect, but rather substitutes an advertisement for a
signal. App. Br. 7-8, 11; Reply Br. 2-3. Appellants further argue that the
timing or sequencing (i.e., the ordering) of the steps recited in claim 1 is not
shown in the combination of Swart and Cleary. App. Br. 8-11; Reply Br. 3-
4.
Issues
Appellants’ arguments present us with the following issues:
1. Has the Examiner erred in finding that Swart discloses “inserting a
digital video effect into the first signal of the plurality of signals to
form a modified first signal, wherein said digital video effect
changes a visual display of the first signal” as recited in claim 1?
Appeal 2012-011967
Application 11/728,501

5

2. Has the Examiner erred in finding that the combination of Swart
and Cleary discloses the steps as recited in claim 1 in the order
required by the claim?
Analysis
Issue #1
We are unpersuaded by Appellants’ arguments. The Examiner cites
content delivery server 450 of Swart as disclosing the insertion of an
advertisement. Ans. 7 (citing Swart ¶ 0105). Appellants contend that “it
appears that substitution is implied within the context of paragraph 105.”
App. Br 11. Appellants further contend that the advertising in Swart is a
separate file and concludes “[c]learly this process is a ‘substitution’ process
which Appellants respectfully submit is not recited in claim 1.” Id. We
disagree that Swart is necessarily a substitution process as asserted by
Appellants. Even assuming, arguendo, that Appellants are correct that Swart
discloses only substitution of an advertisement for a signal, we find that such
a substitution of an advertisement is encompassed by the inserting step
recitations of claim 1 in that such a substitution would generate a modified
first signal. Appellants’ claims and Specification do not limit the
interpretation of a digital effect or the step of inserting such a digital effect
so as to preclude substitution of an advertisement to generate the modified
first signal. The Examiner explains that Appellants’ Specification (see, e.g.,
Spec. ¶ 0051
2
) provides only non-limiting examples of digital video effects
that change a visual display of the first signal. Ans. 18. The Examiner
therefore finds that the step of inserting a digital video effect as recited in

2
Throughout this decision we refer to Appellants’ Specification as amended
on Apr. 26, 2007 and again on Aug. 24, 2009.
Appeal 2012-011967
Application 11/728,501

6

claim 1 is “broad enough to encompass an advertisement being added to the
content stream [e.g., substitution of an advertisement for the first signal] as
an insertion event which changes the visual display of the first signal.” Id.
We agree.
Appellants further argue that Cleary “does not teach or suggest the
elements of inserting a digital video effect into a first signal and encoding a
modified first signal and the plurality of signals into a plurality of transport
streams.” App. Br. 9-10. We are unpersuaded because the Examiner does not
rely on Cleary for disclosing the step of inserting and thus this argument is
not commensurate with the rejection.
In view of the above discussion, we find that the Examiner has not
erred in finding that Swart discloses “inserting a digital video effect into the
first signal of the plurality of signals to form a modified first signal, wherein
said digital video effect changes a visual display of the first signal” as
recited in claim 1.
Issue #2
We are unpersuaded by Appellants’ arguments that the combination
of Swart and Cleary fails to teach the steps of the method in the order recited
in claim 1. Specifically, Appellants argue:
Further, even when the references are combined, there is
no teaching for encoding a modified first signal and a plurality
of signals into a transport stream then routing the plurality of
transport streams through a local area network to a multiplexer
that forms a combined signal. First, a transport stream is formed
with a modified first signal. Then, the transport stream that
includes the modified first signal is routed through a local area
network to a multiplexer to form a combined signal.
App. Br. 10-11. The Examiner explains that Swart paragraph 0105 discloses
that content (including advertisement data) is routed by routers 461 to
Appeal 2012-011967
Application 11/728,501

7

content delivery server 450 (interpreted as the recited digital video effects
module) the output of which is then routed to communication systems 280
that include encoders, multiplexers and modulators. Ans. 19 (citing Swart
Figs. 15, 16). The Examiner further explains that encoded streams resulting
from Swart’s server 450 are further routed by router 281 and that router 281
is distributed and thus “may be capable of routing content data and transport
stream between one or more of the components and/or subsystems of the
content transmission systems 283.” Ans. 19 (quoting Swart ¶ 0112). The
Examiner therefore finds that Swart discloses that content is routed
ultimately to a content transmission system where the content is encoded,
multiplexed, and modulated. Id (citing Swart ¶ 0113). The Examiner thus
finds that the relative timing (ordering) of the steps of claim 1 is met by the
teachings of Swart. Id. We agree.
Appellants respond that Swart fails to disclose a plurality of transport
streams routed to a multiplexer because “[i]t appears that the Swart reference
operates on merely one signal.” Reply Br. 3. This issue was not argued in the
Appeal Brief. Absent good cause, arguments raised in a Reply Brief that
could have been raised in an Appeal Brief need not be considered and are
treated as waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (“informative”). Regardless, Appellants point to no persuasive factual
evidence to support this argument. Mere lawyer’s 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).
Appellants further respond that Cleary fails to disclose the entire step
of encoding because Cleary does not show a modified first signal is encoded.
Appeal 2012-011967
Application 11/728,501

8

We are unpersuaded because Cleary is relied only for teaching encoded data
to generate multiple MPEG transport streams, while Swart is relied upon to
show the remainder of the recited encoding step of claim 1. Appellants
cannot establish nonobviousness by attacking references individually when
the rejection is based on a combination of references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
In view of the above discussion, we find that the Examiner has not
erred in finding that that the combination of Swart and Cleary discloses the
steps of claim 1 in the order required by the claim.
CLAIM 2
Appellants argue that the Examiner erred in rejecting claim 1 for
essentially the same reasons as claim 1. App. Br. 12. We are unpersuaded of
error for the same reasons as claim 1.
CLAIM 10
Appellants argue that the Examiner erred in relying on Swart
paragraph 0133 as teaching forming an output signal as an uplink signal
from a diverse site. App. Br. 12. We are unpersuaded because we find no
such reliance in the Examiner’s rejection of claim 10.
Appellants further argue Simyon’s slave remote fails to disclose the
recited diverse site because the slave remote “uplinks different signals than
other parts of the system.” App. Br. 14. We are unpersuaded. The Examiner
finds that Simyon discloses a standard uplink and a remote slave uplink that
both have access to the same content and thus Simyon’s slave remote is
capable of uplink transmission of the same content as the standard uplink.
Ans. 21. We agree and Appellants have not rebutted the Examiner’s finding.
Appeal 2012-011967
Application 11/728,501

9

In view of the above discussion, we find no error in the Examiner’s
rejection of claim 10.
CLAIMS 12-14 AND 22
Appellants assert that: claim 12 falls with claim 1; claim 13 falls with
claim 12; claim 14 falls with claim 2; and claim 22 falls with claim 10. App.
Br. 12-13. We are unpersuaded of error for the same reasons as claims 1 and
10.
REMAINING REJECTIONS
Claims 3-8, 11, 15, 17-20, and 23-25 depend variously, directly or
indirectly, from claims 1 and 12. Appellants assert that these claims all stand
or fall with their respective base claims. App. Br. 13-15. For the same
reasons as claims 1 and 12 we find no error in the Examiner’s rejections of
these claims.

DECISION
For the reasons discussed above, the rejections of claims 1-8, 10-15,
17-20, and 22-25 under § 103 are 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) (2010).

AFFIRMED

kis