Ex Parte Seo et al

Patent Trial and Appeal Board

Mar 25, 2013

11302352 (P.T.A.B. Mar. 25, 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.
11/302,352 12/13/2005 Jeong-Wook Seo 678-2384 2034
66547 7590 03/25/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
03/25/2013 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 JEONG-WOOK SEO, JONG-KERL LEE,
and WEI-JIN PARK
____________________

Appeal 2010-006689
Application 11/302,352
Technology Center 2400
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8-14, and 16-28. Claims 7 and 15 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Disclosed Invention
Appellants disclose a device and method of displaying broadcasting
information on a wireless terminal having a digital broadcasting receiver
(Abs.; Spec. 2: 20-31; claims 1 and 8).
Exemplary Claims
Exemplary independent claims 1 and 8 under appeal, with emphases
added to the disputed portions of the claims, read as follows:
1. An apparatus for displaying channel information in a digital
broadcasting receiver of a mobile terminal, the apparatus comprising:
a broadcasting receiver for receiving and demodulating a digital
broadcasting signal of a selected channel;
a data processor for demultiplexing the demodulated broadcasting
signal, separating Electronic Program Guide (EPG) data and broadcasting
data, and decoding the broadcasting data;
a controller for controlling an operation for analyzing the EPG data,
generating summary information on a service channel-by-service channel
basis, generating summary information of programs of respective service
channels, generating structured EPG data from the analyzed EPG data, and,
upon request for displaying channel information, displaying the structured
EPG data;
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a memory for storing the EPG data and the structured EPG data under
control of the controller; and
a display unit for displaying the structured EPG data as the channel
information,
wherein the structured EPG data is structured corresponding to a size
of the display unit.

8. An apparatus for displaying channel information in a digital
broadcasting receiver of a mobile terminal, the apparatus comprising:

a broadcasting receiver for receiving and demodulating a digital
broadcasting signal of a selected channel, and outputting Internet Protocol
(IP) datagram data;

a data processor for decapsulating IP data of the IP datagram data,
separating a service data packet stream or an Electronic Service Guide
(ESG) data packet stream, and demultiplexing and decoding the service data
packet stream into audio and video data;

a controller for controlling an operation for parsing the ESG data
packet stream, generating structured ESG data from the ESG data, analyzing
the structured ESG data, generating summary information on a service
channel-by-service channel basis, generating summary information of
programs of respective service channels, generating structured Electronic
Program Guide (EPG) data from the analyzed structured ESG data, and,
upon request for displaying the channel information, displaying the
structured ESG data or the structured EPG data by user selection;

a memory for storing the structured ESG data and the structured EPG
data by the controller; and

a display unit for displaying the selected structured ESG data or
structured EPG data as the channel information,

wherein structured ESG data and the structured EPG data are
structured corresponding to a size of the display unit.

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Examiner’s Rejections
(1) The Examiner rejected claims 1, 2, 5, 6, 16, 17, 20, and 21 as
being unpatentable under 35 U.S.C. § 103(a) over LaJoie (US 5,850,218),
Shiga (US 6,005,562), and Saarikivi (US 2006/0053450 A1). Ans. 3-10.
(2) The Examiner rejected claims 3, 4, 18, and 19 as being
unpatentable under 35 U.S.C. § 103(a) over LaJoie, Shiga, Saarikivi, and
Digital Video Broadcasting (DVB); Specification for Service Information
(SI) in DVB systems, EUROPEAN TELECOMMUNICATIONS STANDARD
INSTITUTE, ETSI EN 300468 V1.5.1 (May 2003) (hereinafter “ETSI”). Ans.
10-13.
(3) The Examiner rejected claims 8, 9, 22, 23, 27, and 28 as being
unpatentable under 35 U.S.C. § 103(a) over Khan (US 7,369,660), Saarikivi,
and Shiga. Ans. 13-21.
(4) The Examiner rejected claims 10-14 and 24-26 as being
unpatentable under 35 U.S.C. § 103(a) over Khan, Saarikivi, Shiga, ETSI,
and Dalal (US 5,594,898). Ans. 21-30.
Appellants’ Contentions
(1) Appellants contend that the Examiner erred in rejecting
independent claims 1, 2, 5, 6, 16, 17, 20, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of LaJoie, Shiga and Saarikivi
since none of the references teach the broadcast EPG data converted to
structured EPG data, which is structured based on the size of the display, as
set forth in independent claims 1 and 16 (App. Br. 9-13; Reply Br. 1-4).
With regard to the rejections of claims 2-6 (depending from claim 1)
and 17-21 (depending from claim 16) under 35 U.S.C. § 103(a) over various
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combinations of LaJoie, Shiga, Saarikivi, and ETSI, Appellants rely on the
arguments made with respect to their respective independent claims 1 and 16
(App. Br. 14). In view of the foregoing, our analysis will only address the
merits of claims 1 and 16 from which claims 2-6 and 17-21 respectively
depend;
(2) Appellants contend that the Examiner erred in rejecting
independent claims 8, 9, 22, 23, 27, and 28 under 35 U.S.C. § 103(a) as
being unpatentable over Khan, Saarikivi, and Shiga since Khan in view of
Saarikivi, and Shiga does not teach, suggest, or disclose that the structured
EPG data is structured corresponding to a size of the display unit, as set
forth in independent claims 8 and 22 (App. Br. 14-19; Reply Br. 4-6).
With regard to the rejections of claims 9-14 (depending from claim 8)
and 23-28 (depending from claim 22) under 35 U.S.C. § 103(a) over various
combinations of Khan, Shiga, Saarikivi, and ETSI, Appellants rely on the
arguments made with respect to their respective independent claims 8 and 22
(App. Br. 19). In view of the foregoing, our analysis will only address the
merits of claims 8 and 22 from which claims 9-14 and 23-28 respectively
depend.
Issues on Appeal
Based on Appellants’ arguments in the Briefs, the following two
issues are presented on appeal:
Independent Claims 1 and 16
(1) Did the Examiner err in rejecting independent claims 1, 2, 5, 6, 16,
17, 20, and 21 as being obvious over the combination of LaJoie, Shiga and
Saarikivi because the combination of LaJoie, Shiga and Saarikivi fails to
teach or suggest the broadcast EPG data converted to structured EPG data,
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which is structured based on the size of the display, as set forth in
independent claims 1 and 16?
Independent Claims 8 and 22
(2) Did the Examiner err in rejecting independent claims 8, 9, 22, 23,
27, and 28 as being obvious over the combination of Khan, Saarikivi, and
Shiga since the combination of Khan, Saarikivi, and Shiga does not teach,
suggest, or disclose that the structured EPG data is structured
corresponding to a size of the display unit, as set forth in independent claims
8 and 22?

PRINCIPLES OF LAW
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)(quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
While the Specification can be examined for proper context of a claim
term, limitations from the Specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005)
(citations omitted).

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief (App. Br. 9-19) and the Reply Brief (Reply
Br. 1-6) that the Examiner has erred.
We disagree with Appellants’ conclusions. We concur with the
conclusions reached by the Examiner, 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 (Ans. 3-18), and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans.
30-37). We highlight and amplify certain teachings and suggestions of the
references, as well as certain ones of Appellants’ arguments as follows.
Claims 1, 2-6, and 16-21
Regarding independent claims 1 and 16, we agree with the
Examiner’s findings with respect to the individual references, and with the
Examiner’s determination that it would have been obvious to combine the
references based on the rationale set forth by the Examiner (Ans. 3-7),
including using the Interactive Program Guide (IPG) 338 (i.e., structured
EPG data) of LaJoie, structured to fit on a screen of a display unit (LaJoie,
Fig. 16; col. 23, l. 44 - col. 24, l. 25), with a mobile terminal of Saarikivi that
displays channel information (Saarikivi, Abs.; ¶ [0024]; Fig. 1), to display
program and channel information in a mobile terminal in order to allow
users to view program scheduling while away from set-top boxes in their
homes (Ans. 7). Under the broadest reasonable interpretation of independent
claims 1 and 16, in light of the Specification, the claimed “wherein the
structured EPG data is structured corresponding to a size of the display unit”
encompasses the condition where the structured EPG data is structured to fit
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on the screen of the display unit. Am. Acad. of Sci.Tech Ctr., 367 F.3d at
1364.
We agree with the Examiner (Ans. 6 and 31-32) that the broadest
reasonable interpretation of “wherein the structured EPG data is structured
corresponding to a size of the display unit” recited in independent claims 1
and 16 encompasses what is taught by LaJoie, because LaJoie teaches the
Interactive Program Guide (IPG) 338 (i.e., structured EPG data) structured
to fit on the screen of a display unit (LaJoie, Fig. 16; col. 23, l. 44 - col. 24, l.
25).
Appellants argue (App. Br. 13; Reply Br. 3) that the size of the
display is not even considered in LaJoie. We agree with the Examiner (Ans.
31-32) that LaJoie considers the size of the display since LaJoie considers
reduced size of the program viewing window 340 from that of the normal
size on the television display while in the IPG 338 of figure 16 so that the
IPG can be displayed on the television display (LaJoie, col. 23, ll. 56-59).
Appellants argue (App. Br. 13; Reply Br. 3-4) that LaJoie does not
structure IPG based on the size of the display. We agree with the Examiner
(Ans. 32) that the independent claims 1 and 16 only require that the IPG
(i.e., structured EPG data) corresponds to the size of the display, and not that
the structured EPG data be directly based on the size of the display. Given
the lack of specificity in the independent claims 1 and 16 as to how a size of
the display unit is used to structure the EPG data, as admitted by Appellants
(Reply Br. 4), we concur with the Examiner’s findings (Ans. 6 and 32) that
the IPG (i.e., structured EPG data) of LaJoie corresponds to the size of the
display (LaJoie, Fig. 16), since LaJoie’s IPG is structured considering the
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size of the normal television display (LaJoie, col. 23, ll. 56-59). See
CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d at 1231.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references) (citation omitted).
Appellants contend (App. Br. 13) that applying the teachings of
LaJoie to a mobile terminal as recited in independent claims 1 and 16 results
in displaying a program guide that is unsuitable for a small sized screen, as
is found in a mobile terminal; when the Examiner relied (Ans. 7) upon the
combination of LaJoie and Saarikivi (along with Shiga) to teach displaying
IPG corresponding to a mobile terminal. We agree with the reasons
provided by the Examiner to combine the teachings of LaJoie (and Shiga)
with Saarikivi, namely, to display IPG of LaJoie on the mobile terminal of
Saarikivi helps the user view program and channel information while away
from their set-top boxes at home (Ans. 7).
Appellants argue (App. Br. 13) that applying the teachings of LaJoie
to a mobile terminal would result in a displayed program guide with text that
is too small for the screen; when the Examiner relied (Ans. 3-7) upon the
combination of LaJoie and Saarikivi (along with Shiga) to teach displaying
IPG corresponding to a mobile terminal (see discussion supra.).
Appellants argue (Reply Br. 2) that the invention recited in claim 1 is
directed to a digital broadcasting receiver in a wireless terminal, whereas the
claim is directed to a digital broadcasting receiver in a mobile terminal (See
claim 1).
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In view of the foregoing, we will sustain the Examiner’s obviousness
rejection of claims 1, 2, 5, 6, 16, 17, 20, and 21 over the combination of
LaJoie, Shiga, and Saarikivi. We will also sustain the Examiner’s
obviousness rejection of claims 3 and 4 (depending from claim 1) and 18
and 19 (depending from claim 16) since Appellants make no separate
arguments for claims 3, 4, 18, and 19, and rely on the arguments made with
respect to their respective independent claims 1 and 16 (App. Br. 14).
Claims 8-14, 22, and 24-26
Regarding independent claims 8 and 22, we agree with the
Examiner’s findings with respect to the individual references, and with the
Examiner’s determination that it would have been obvious to combine the
references based on the rationale set forth by the Examiner (Ans. 13-19),
including using the Electronic Service Guide (ESG) and Program data
structured for display on a mobile terminal of Saarikivi (Saarikivi, Fig. 1A; ¶
[0024]), with the broadcasting receiver, data processor, and controller of
Khan (Khan, Fig. 2), in order to supply the user with program information
while away from set-top boxes at home (Ans. 18).
Under the broadest reasonable interpretation of independent claims 8
and 22, in light of the Specification, the claimed “the structured EPG data
are structured corresponding to a size of the display unit” encompasses the
condition where the structured EPG data is structured to fit on the screen of
the display unit. See Am. Acad. of Sci.Tech Ctr., 367 F.3d at 1364.
We agree with the Examiner (Ans. 18 and 34-36) that the broadest
reasonable interpretation of “the structured EPG data are structured
corresponding to a size of the display unit” recited in independent claims 8
and 22 encompasses what is taught by Saarikivi, because Saarikivi teaches
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the program #1, 2 etc., (i.e., structured EPG data) structured to fit on the
screen of a mobile terminal (Saarikivi, Fig. 1A; ¶ [0024]).
Appellants argue (App. Br. 18; Reply Br. 5) that Saarikivi fails to
teach the structured EPG data is structured corresponding to a size of the
display unit since Saarikivi displays the EPG data without any concern for
the size of the display. We concur with the Examiner’s findings (Ans. 18)
that Saarikivi considers the size of the mobile terminal display for presenting
ESG and Program data (Saarikivi, Fig. 1A; [0024]) wherein display of the
guide corresponds to the size of the display, since the guide fits on the screen
of the mobile terminal.
Appellants contend (App. Br. 18; Reply Br. 5) that applying the
teachings of Saarikivi to a mobile terminal as recited in independent claims
8 and 22 results in displaying a program guide with text that is too small for
the screen. We agree with the Examiner’s rebuttal (Ans. 35-36) that the
sizes of mobile terminals vary greatly and statements by Appellants that
applying the teachings of Saarikivi to a mobile terminal would result in a
displayed program guide with text that is too small for the screen is
conclusory.
Appellants argue (App. Br. 18; Reply Br. 5) that Saarikivi does not
structure EPG based on the size of the display. Given the lack of specificity
in the independent claims 8 and 22 as to how a size of the display unit is
used to structure the EPG data, as admitted by Appellants (Reply Br. 5), we
concur with the Examiner’s findings (Ans. 18 and 35) that the Program # 1,
2 etc., (i.e., structured EPG data) of Saarikivi corresponds to the size of the
display, since Saarikivi’s Program # 1, 2 etc., are structured considering the
size of the mobile terminal display (Saarikivi, Fig. 1A; [0024]).
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Appellants argue (App. Br. 18; Reply. Br. 5) that Saarikivi is only
directed to updating EPG information, but not to changing conventional
EPG to a structured EPG suitable for display on the mobile terminal. As
noted by the Examiner (Ans. 36), the independent claims 8 and 22 only
require generating structured EPG data from the analyzed structured ESG
data, which was shown by the Examiner (Ans. 17) as being taught by
Saarikivi, where Program # 1, 2 etc., are generated as a part of the television
channels TV1-TV3 shown in figure 1A, but makes no mention of changing
conventional EPG to a structured EPG as argued by the Appellants. See
CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d at 1231.
In view of the foregoing, we will sustain the Examiner’s obviousness
rejection of 8, 9, 22, 23, 27, and 28 over the combination of Khan, Saarikivi,
and Shiga. We will also sustain the Examiner’s obviousness rejection of
claims 10-14 (depending from claim 8) and 24-26 (depending from claim
22) since Appellants make no separate arguments for claims 10-14 and
24-26, and rely on the arguments made with respect to their respective
independent claims 8 and 22 (App. Br. 19).

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 2, 5, 6, 16, 17,
20, and 21 because the combination of LaJoie, Shiga and Saarikivi teaches
the broadcast EPG data converted to structured EPG data, which is
structured based on the size of the display, as set forth in independent claims
1 and 16. For the same reasons provided as to independent claims 1 and 16
rejected over LaJoie, Shiga, and Saarikivi, the Examiner has also not erred in
rejecting claims 3 and 4 (depending from claim 1), and claims 18 and 19
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(depending from claim 16) as being unpatentable under 35 U.S.C. § 103(a)
over LaJoie, Shiga, Saarikivi, and ETSI.
(2) The Examiner has not erred in rejecting claims 8, 9, 22, 23, 27,
and 28 because the combination of Khan, Saarikivi, and Shiga teaches that
the structured EPG data is structured corresponding to a size of the display
unit, as set forth in independent claims 8 and 22. For the same reasons
provided as to independent claims 8 and 22 rejected over Kahn, Saarikivi,
and Shiga, the Examiner has also not erred in rejecting claims 10-14
(depending from claim 8) and 24-26 (depending from claim 22) as being
unpatentable under 35 U.S.C. § 103(a) over Khan, Saarikivi, Shiga, ETSI,
and Dalal.

DECISION
The Examiner’s rejections of claims 1-6, 8-14, and 16-28 under
35 U.S.C. § 103(a) 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).

AFFIRMED

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