11782565 (P.T.A.B. Jun. 30, 2014)

Ex Parte Riley et al

Patent Trial and Appeal BoardJun 30, 2014

11782565 (P.T.A.B. Jun. 30, 2014)

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. 11/782,565 07/24/2007 Xavier D. Riley PD-207038 7790 20991 7590 06/30/2014 THE DIRECTV GROUP, INC. PATENT DOCKET ADMINISTRATION CA / LA1 / A109 2230 E. IMPERIAL HIGHWAY EL SEGUNDO, CA 90245 EXAMINER TELAN, MICHAEL R ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 06/30/2014 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 XAVIER D. RILEY and RANNY Q. SUE ____________ Appeal 2011-008050 Application 11/782,565 Technology Center 2400 ____________ Before ELENI MANTIS MERCADER, JASON V. MORGAN, and MICHAEL J. STRAUSS, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-008050 Application 11/782,565 2 In our Decision dated February 27, 2014, we reversed the Examiner’s decision rejecting claims 1-24 (Dec. 10). Pursuant to 37 C.F.R. § 41.50(b), we also entered a new ground of rejection for claim 1 under 35 U.S.C. § 103(a) over Dillon1 in view of Rodriguez2 (Dec. 7-9). In response, Appellants argue the Board erred in the manner in which Dillon and Rodriguez are applied in the new ground of rejection (Amend. and Args. after PTAB Dec. 8-10 (April 28, 2014) (“Req.”)). While Appellants request the Examiner re-open prosecution under 37 C.F.R. § 41.50(b)(1), the Examiner notes Appellants’ arguments are “not accompanied by an appropriate amendment or new evidence” and treats Appellants’ arguments “as a request for rehearing” (Misc. Comm. to App. 1 (Apr. 30, 2014) (citing MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 1214.01 and 37 C.F.R. §§ 41.50(b)(1)-(2))). The only amendment submitted by Appellants is the correction of a typographical error in dependent claim 3 (Req. 10) and Appellants do not submit any new evidence to support their arguments with respect to the new rejection of claim 1 (Req. 8-10). Therefore, Appellants’ arguments are treated as a request for rehearing under 37 C.F.R. § 41.50(b)(2) (MPEP § 1214.01.I (“If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 CFR 41.50(b)(2).”). Appellants argue that Dillon does not teach a header for terrestrial communication (Req. 8). Appellants further argue that Dillon does not teach 1 U.S. Patent No. 5,852,721 (issued Dec. 22, 1998). 2 U.S. Patent Application Pub. No. 2004/0133907 A1 (pub. July 8, 2004). Appeal 2011-008050 Application 11/782,565 3 or suggest changing a header, but merely teaches routing packets from a satellite to a terrestrial source (Req. 8). As we stated in our Opinion, Dillon explicitly teaches that the hybrid gateway may detect a streaming application for routing over the terrestrial link “by examining the header on the data packet” (Decision 7 (emphasis added) (citing col. 17, ll. 20-25)). Thus, contrary to Appellants’ assertion, Dillon teaches headers for terrestrial communication. Furthermore, as we previously stated (Decision 8), Dillon also teaches switching between satellite to terrestrial systems due to overload or congestion (col. 14, ll. 53-59). In particular Dillon teaches: “[s]elected data packets received by the hybrid gateway for transmission over the satellite link could be modified and returned to the Internet for re-routing over the terrestrial link” (col. 14, ll. 56-59 (emphasis added)) when there is detection of satellite link congestion (col. 14, ll. 51-53). Dillon further teaches that similarly, if there is detection of satellite link failure then there is a switch to the terrestrial link (col. 14, ll. 51-53). Thus, Dillon clearly teaches modifying the data packets in order to re-route them from satellite to terrestrial communication. To the extent that Appellants counter what is well known in the art, which is, appending headers depending on routing preferences, Dillon also teaches that the way packets get modified for routing to the desired destination is by appending headers (see, e.g., col. 10, ll. 50-51; Decision 5). Accordingly, in order to route packets through satellite or a terrestrial source, there would necessarily have been an appending of the headers as to the desired destination. Furthermore, with respect to Appellants’ argument (Req. 9) that there is a different motivation for combining references than what is recited in Appeal 2011-008050 Application 11/782,565 4 their Specification is not persuasive, as the motivation in the instant case was found in the Dillon reference itself (col. 17, ll. 12-15; Decision 8). The reason or motivation to modify a reference may suggest the inventor’s device, but for a different purpose or to solve a different problem than what the inventor solved. In re Lintner, 458 F.2d 1013, 1015, (CCPA 1972); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). Appellants’ request for rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision. 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). REHEARING DENIED msc