11257098 (P.T.A.B. Feb. 20, 2014)

Ex Parte Sandoval

Patent Trial and Appeal BoardFeb 20, 2014

11257098 (P.T.A.B. Feb. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANCIS R. SANDOVAL ____________ Appeal 2011-004152 Application 11/257,098 Technology Center 2400 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-004152 Application 11/257,098 2 STATEMENT OF THE CASE Appellant filed a Request for Rehearing on November 25, 2013, under 37 C.F.R. § 41.52 from the Decision on Appeal of the Patent Trial and Appeal and Board (hereinafter “Board”) mailed September 25, 2013 (hereinafter “Opinion”). In the Opinion, we affirmed the Examiner’s rejection of claims 1-21. Appellant alleges that the Board erred by misapprehending or overlooking the arguments presented in the Brief. We summarize Appellant’s principal allegation of error as follows: Appellant argues that we erred by failing to consider the newly presented argument regarding claim 4 that was set forth in Appellant’s Reply Brief filed December 3, 2010. Req. Reh’g 1-2. Consequently, Appellant requests a rehearing of the Board’s Opinion affirming the rejection of claim 4. Req. Reh’g 1-2. We have carefully reviewed the Opinion in light of Appellant’s allegation of error. Appellant generally asserts that the Board did not consider the argument within the Reply Brief, in which Appellant argues that the recitation within claim 4 of “wherein the signaling streams are defined according to moving pictures expert group (MPEG) standards” addresses new conclusions set forth by the Examiner in the Answer by more particularly defining “the data types being combined into the single PES, i.e., whether the data types are ‘explain or differentiate’ and whether ‘any reference’ would anticipate.” Req. Reh’g 3. The “new conclusions” addressed by Appellant included the Examiner’s explanation that, as interpreted, claim 1 merely required that multiple data types be carried within a transport stream wherein at least a Appeal 2011-004152 Application 11/257,098 3 portion of the data types relate to “program association tables (PATs) . . . video, audio . . . ” (Reply Br. 4) and consequently, any reference which teaches a transport stream that carries video, audio, and data would meet that claim. Ans. 14. Additionally, the Examiner notes that the Suzuki reference discloses Java programs and control information, which the Examiner finds to be analogous to the claimed application resources, media timelines, and stream events, noting that the claim lacks any explanation or differentiation that would preclude such a finding. Id. at 15-16. We find the cited portions of the Examiner’s Answer are not “new conclusions” but mere restatements of the Examiner’s position set forth in the Final Rejection, dated March 30, 2010. The Examiner finds, in the Final Rejection, that the claimed data types are met by “for example, Audio type packets, Video type packets, and data type packets . . . ” and that consequently the claims were met by the cited references. Final Rej. 2-3. The Examiner also notes that the Suzuki reference discloses that the application information table (AIT), including that information, is transported by the TS (transport stream). Id. at 3. As we set forth in our Opinion, the various data types enumerated in Appellant’s claims are descriptive material which are not functionally related to the claimed embodiment, and as such do not sufficiently distinguish Appellant’s invention from the prior art. Opinion 5-6. “[O]ur reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art.” Ex parte Mathias, 84 USPQ2d 1276, Appeal 2011-004152 Application 11/257,098 4 1279 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). This is well-settled law and undoubtedly forms the basis for the Examiner’s statement that any reference which discloses multiple data types within a transport stream would anticipate the claimed invention, absent any explanation of how the particular data types are functionally related to the claimed embodiment. We found, and we continue to find, no basis for Appellant’s assertion that this restatement of the Examiner’s position altered Appellant’s understanding of the rejection of claim 4, which merely states that the various data types within the transport streams are defined “according to moving pictures expert group (MPEG) standards.” As we note above, the particular type of data will not patentably distinguish Appellant’s claims from the prior art. We are therefore satisfied that all arguments timely submitted by Appellant in the Briefs were adequately addressed in the original Opinion. We have consequently found that Appellant has not shown that the Board erred in misapprehending or overlooking those identified arguments previously raised in the Briefs. Therefore, we maintain our position as set forth in the Opinion that Appellant has not shown error in the Examiner’s rejection of claim 4. Appeal 2011-004152 Application 11/257,098 5 CONCLUSION In view of the foregoing discussion, we decline to modify our decision on Appeal. Consequently, we deny Appellant’s Request for Rehearing with respect to making any changes therein. DENIED bab