Ex Parte Seo

Board of Patent Appeals and Interferences

Sep 29, 2010

10981533 (B.P.A.I. Sep. 29, 2010)

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.
10/981,533 11/05/2004 Young-joo Seo 102-1070 6826
38209 7590 09/30/2010
STANZIONE & KIM, LLP
919 18TH STREET, N.W.
SUITE 440
WASHINGTON, DC 20006
EXAMINER
YENKE, BRIAN P
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
09/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOUNG-JOO SEO
_____________

Appeal 2009-008170
Application 10/981,533
Technology Center 2600
____________

Before KENNETH W. HAIRSTON, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 to 17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellant’s invention is concerned with a digital broadcasting
receiver and channel searching method for a digital receiver that can process
channel searching in at least two channel searching elements in parallel (e.g.,
an analog signal and a digital signal, and/or two different channel ranges)
(Spec. paras. [0002], [0014], [0016], [0018], [0023]; Figs. 2, 4, 5; Abs.).
Appellant discloses and claims a digital broadcasting receiver and channel
searching method for a digital receiver including a radio frequency (RF)
switch to divide an entire channel range of an input signal into (i) at least
two channel ranges (claim 1), (ii) an air broadcasting signal and a cable
broadcasting signal (claim 9), and (iii) at least two channel ranges
corresponding to an air broadcasting signal and a cable broadcasting signal
(claim 12).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A digital broadcasting receiver comprising:
a[n] RF switch to divide an entire channel range of an input signal
having at least one of an air and a cable signals into at least two channel
ranges;
at least two channel searching parts to search each channel range
distributed from the RF switch for a valid channel by checking in sequence
from a lowest channel to a highest channel within the each channel range,
and to determine whether one of a digital signal and an analog signal is
received;

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a memory to record information on the valid channel through which
one of the digital signal and the analog signal is received in the entire
channel range of the input signal; and
a CPU to control the at least two channel searching parts in parallel to
search each distributed channel range, and to determine whether the channel
to receive the input signal is the valid channel if the channel searching parts
determine that one of the air, cable, digital, and analog signals is received
and to record the valid channel into the memory.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shintani US 6,721,018 B1 Apr. 13, 2004
(filed Oct. 22, 1999)
The following obviousness rejection is before us for review:
Claims 1 to 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shintani.
In the rejection, the Examiner relies upon Shintani as describing all of
the features recited in independent claims 1, 9, and 12 of a digital broadcast
receiver and a channel searching method for a digital receiver including (i)
an RF switch and method for dividing an entire channel range of an input
signal into two ranges/signals, and (ii) at least two channel searching parts
and a CPU that search the channel ranges for valid channels in parallel from
a lowest channel to a highest channel, except that Shintani discloses doing
one search from the lowest to the highest channel and another search from
highest to lowest (Ans. 3). The Examiner determines that it would have
been an obvious modification to one of ordinary skill in the art to perform
both channel searches in Shintani from lowest to highest channel (Ans. 3),
and further determines that since Shintani discloses the possibility of three or
more tuners (col. 3, ll. 58-60), two of the tuners would be required to search

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lowest to highest “in order to maintain the distinction between tuner
coverage” (Ans. 5).
The Examiner relies upon Shintani as describing the feature common
to each of independent claims 1, 9, and 12 of dividing an entire channel
range of an input signal into (i) at least two channel ranges (claim 1), (ii) an
air broadcasting signal and a cable broadcasting signal (claim 9), and (iii) at
least two channel ranges corresponding to an air broadcasting signal and a
cable broadcasting signal (claim 12). The Examiner finds that switching
circuit 103 in Figure 1 of Shintani meets the recited limitation of an RF
switch found in claims 1 and 9, and the limitation of dividing an entire
channel range of an input signal found in claim 12 (Ans. 3).
The Examiner concludes for the first time in the Response to
Argument section of the Answer that (i) Shintani discloses using a tuner 102
to split/divide a received digital signal into respective digital demodulators
116 and 117 (Ans. 5), and (ii)
in the event a received signal, includ[ing] both analog and
digital channels, the system of Shintani would require the signal
to be switched/divided accordingly, where the analog channels
would be routed/switched/divided to the analog tuner and the
digital channels to the digital tuner(s) in order to properly tune
such channels.
(Ans. 5-6).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational

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underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
On the record before us, we find no supportive evidence for the
Examiner’s assertion (Ans. 3, 5-6) that Shintani either discloses or suggests
the claimed RF switch in switching circuit 103 in Figure 1. To the contrary,
we agree with Appellant (App. Br. 4-11; Reply Br. 6-12) that Figure 1 (and
also Figure 2) shows, and column 4, lines 24 to 29, describes, three separate
signal sources 105, 106, and 107 being input to input switching circuit 103.
Thus, if there are three separate input signals, there is no reason to divide
these signals because each signal is simply passed through the switch to the
proper tuner.
We find that column 4, lines 24 to 29, of Shintani describes the
switching circuit 103 as follows:
The three signal sources (105, 106 and 107) may be
connected to the receiver (100) through an input switching
circuit (103). The purpose of the input switching circuit (103)
is to selectively provide an incoming television signal from one
of the three signal sources (105, 106 and 107) to either of the
two tuners A or B (101, 102).
(Col. 4, ll. 24-29 (italicized emphasis added)).
Appellant’s arguments in the Briefs (see, e.g., App. Br. 4), that the
input switching circuit 103 of Shintani selectively provides an input signal
from only one of three signal sources to either tuner A 101 or tuner B 102,
are very convincing in light of our findings as to Shintani. Accordingly,
Appellant’s following arguments with respect to claims 1, 6, and 9 are all
persuasive: Shintani fails to teach or suggest (i) one of the selected input
signals 105, 106, and 107 or their associated channel ranges is divided by

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input switching circuit 103 into at least two channel ranges as recited in
claim 1 (see App. Br. 7; Reply Br. 4-6); (ii) a switch to divide a received
broadcasting signal into an air broadcasting signal and a cable broadcasting
signal as recited in claim 9 (see App. Br. 9; Reply Br. 7, 9-10); and (iii)
dividing any of the input signals as recited in claim 12 (see App. Br. 12;
Reply Br. 11).
The Examiner’s interpretation (Ans. 5) that digital tuner 102
splits/divides a received digital signal into the two digital demodulators 116
and 117 (as shown in Figure 1A), and thus meets the claimed RF switch
limitation, is unreasonable in light of Shintani’s specific disclosure of a
switch 103 that selectively provides entire individual signals to tuners 101
and 102 (col. 4, ll. 8-65). Even if digital tuner 102 could be said to divide an
input signal, such an interpretation would mean that each demodulator (116
and 117) would have to be a channel searching part (which they are not,
because Shintani describes that processor 104 uses tuners 101 and 102 to
create a channel map by scanning the channel range in parallel (col. 4, ll. 45-
51)). Thus, such an interpretation would not satisfy the limitations in claim
1 that (i) the RF switch divide the digital cable signal “into at least two
channel ranges,” and (ii) two channel searching parts “determine whether
one of a digital signal and an analog signal is received” (claim 1). In
addition, this interpretation would not meet the limitations found in claims 9
and 12 that the RF switch (i.e., Shintani’s digital tuner 102) divides the
signal into at least air (analog) and cable (digital) signals.
Turning to the Examiner’s reasoning that if Shintani were to receive a
signal at switch 103 that the switch would then somehow need to be
modified to divide the mixed analog and digital signals to the separate tuners

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101 and 102 (Ans. 5-6), we find that the Examiner’s rational is nothing more
than unsubstantiated conclusions. Shintani clearly discloses (Figure 1A; col.
4, ll. 8-44) that three separate signals 105, 106, and 107 are received at
switch 103 and thus no division is necessary and no determination as to
which signal is analog or digital is necessary.
In the absence of evidence to support the conclusions reached by the
Examiner, and in view of our findings with respect to Shintani, we will not
sustain the obviousness rejection of claims 1 to 17. In summary, the
Examiner has not established a factual basis (i.e., that Shintani teaches or
suggests an RF switch or dividing step for dividing an entire channel range
of an input signal into two channel ranges or signals) to support the legal
conclusion of obviousness (see Fine, 837 F.2d at 1073), and (ii) the
Examiner’s articulated reasoning in the rejection (that if a received signal
contained both analog and digital channels Shintani would require a signal to
be divided, and thus Shintani would obviate the claims) does not possess a
rational underpinning to support the legal conclusion of obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The decision of the Examiner to reject claims 1 to 17 is reversed.

REVERSED

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