Ex Parte Sibley

Board of Patent Appeals and Interferences

Jul 5, 2012

09844923 (B.P.A.I. Jul. 5, 2012)

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.
09/844,923 04/26/2001 Erin H. Sibley PD-201008A 2070
20991 7590 07/05/2012
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
07/05/2012 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 ERIN H. SIBLEY
____________________

Appeal 2010-001003
Application 09/844,923
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT and
ALLEN R. MacDONALD, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001003
Application 09/844,923

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-12 and 18-21. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 2-4, 18, and 20 under appeal read as follows:
1. A system of broadcasting comprising:
a satellite;
a network operations center up linking electronic content to said
satellite;
a terrestrial over-the-air digital broadcast center receiving said
electronic content from said satellite, allocating a frequency spectrum
for a digital television channel having a total bandwidth, generating an
over-the-air digital television channel signal over a first portion of the
allocated frequency spectrum so that the first portion is less than the
total bandwidth to form an excess bandwidth portion and inserting
digital over-the-air electronic content corresponding to the electronic
content into the excess bandwidth portion; and
a user appliance receiving said over-the-air electronic content
using conditional access software.
2. A system as recited in claim 1 wherein said over-the-air
broadcast center is coupled to a stratospheric platform.
3. A system as recited in claim 1 wherein said over-the-air
broadcast center is coupled to a cell tower.
4. A system as recited in claim 1 wherein said over-the-air
broadcast center is coupled to a TV broadcast tower.
18. A system as recited in claim 1 wherein the user appliance
receives the electronic content without receiving the digital television
channel sign.
20. A system as recited in claim 1 wherein the user appliance
disregards the digital television channel.

Appeal 2010-001003
Application 09/844,923

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Rejections on Appeal 1
1. The Examiner rejected claims 1-7, 9-12, and 18-21 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Hendricks
(US 6,160,989), Eldering (US 6,704,930 B1), and Breslauer (US 6,637,027
B1).
2. The Examiner rejected claim 8 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Hendricks, Eldering, Breslauer,
and Owa (US 6,711,379 B1).
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a), because the Examiner’s prior art evidence does
not teach “allocating a particular portion for a first type of service such as
digital television signals and then providing a second type of service such as
electronic content through an excess bandwidth portion.” (App. Br. 5).
2. Appellant contends that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 103(a), because “there is no teaching of a stratospheric
platform which is substantially different than a satellite.” (App. Br. 7).
3. Appellant contends that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 103(a), because “[n]o specific teaching is provided for a
cell tower.” (App. Br. 8).

1 Separate patentability is not argued for claims 5-12, 19, and 21. “A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R. §
41.37(c)(1)(vii)(last sentence). Except for our ultimate decision, these claims
are not discussed further herein.
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Application 09/844,923

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4. Appellant contends that the Examiner erred in rejecting claim 4
under 35 U.S.C. § 103(a), because “no teaching or suggestion is provided for
the broadcast tower.” (App. Br. 8).
5. Appellant contends that the Examiner erred in rejecting claim
20 under 35 U.S.C. § 103(a), because “the Hendricks reference provides no
teaching for disregarding other signals while receiving the electronic content
packages through the user appliance.” (App. Br. 9).
6. Appellant contends that the Examiner erred in rejecting claim
18 under 35 U.S.C. § 103(a), because:
Appellant respectfully submit that the Examiner has
misunderstood this claim. The electronic content is received
without receiving the digital television channel signal. It is clear
that the Hendricks reference can receive the various
transmissions.
(App. Br. 9).
7. Appellant contends that the Examiner erred in rejecting claims
18 and 20 under 35 U.S.C. § 103(a), because as to claims 20 and 21:
The Examiner essentially uses the same argument provided
above with respect to Claims 18 and 19. However, the
difference is the use of the word disregard and that the digital
television channel is disregarded rather than not being received
as set forth in Claim 18.
(App. Br. 9). Appellant reiterates this argument at length in the Reply Brief.

Issues on Appeal
Did the Examiner err in rejecting the claims as being obvious because
the references fail to teach or suggest the argued limitations?

Appeal 2010-001003
Application 09/844,923

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ANALYSIS
We agree with Appellant’s above contention 1. We find no evidence
in the record to support the Examiner’s position that it was within the
knowledge of the ordinary artisan to perform the claim 1 functions of:
allocating a frequency spectrum for a digital television channel
having a total bandwidth, generating an over-the-air digital
television channel signal over a first portion of the allocated
frequency spectrum so that the first portion is less than the total
bandwidth to form an excess bandwidth portion and inserting
digital over-the-air electronic content corresponding to the
electronic content into the excess bandwidth portion
(Claim 1)(emphases added). However, we now provide that evidence.
Welles (US 6,532,495 B1) filed April 27, 1999, at column 4, lines 31-57,
teaches that these steps were within the knowledge of the ordinary artisan.
As to above contention 2, we agree with the Examiner’s analysis
(Ans. 11:1-9) in response to Appellant’s argument.2
As to above contention 3, we agree with the Examiner’s analysis
(Ans. 11:10-14) in response to Appellant’s argument.
As to above contention 4, we agree with the Examiner’s analysis
(Ans. 11:15-21) in response to Appellant’s argument.
As to above contention 5, we agree with the Examiner’s analysis
(Ans. 12:13-13:2) in response to Appellant’s argument.
As to above contentions 6 and 7, we disagree with Appellant’s
construction of claim 18. Appellant argues that claims 18 and 20 differ, yet
Appellant cites the same portion of the Specification to support both claims

2 Separately, we note that the Glenn et al. reference (Wireless Information
Technology for the 21st Century) submitted by Appellant on January 30,
2006, teaches that it was well within the knowledge of the ordinary artisan to
use a stratospheric platform in a communication system. (Glenn 18-19).
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which were added by amendment. At page 4 of the Appeal Brief, Appellant
points to paragraph 58, lines 10-17, of the Specification to support both the
“the user appliance disregards the digital television channel” of claim 20 and
“the user appliance receives the electronic content without receiving the
digital television channel signal” of claim 18. Paragraph 58, lines 10-17, of
the Specification reads (emphasis added):
The electronic content packages are received in a user appliance
or device where either the analog signal or the HDTV signal
are preferably disregarded except for the electronic content
packages. Purchasers of the service are granted access by
purchasing the conditional access software either directly
(e.g. in a format card) or indirectly (e.g. purchasing an enabled
device). Thus, the electronic content packages are granted
access to, decompressed and displayed on the display device
and any audio signals are heard through any speaker device
incorporated within the user device.
This portion of Appellant’s Specification describes an embodiment
disregarding a signal, but no other alternative embodiment. Given
Appellant’s statement that this portion of Appellant’s Specification supports
both claims 18 and 20, we can only conclude that the subject matter of
claims 18 and 20 are different ways of saying the same thing. Our review of
Appellant’s Specification in its entirety finds no support for reading these
claims as being different.3
Therefore, as to claim 18, we agree with the Examiner’s analysis
(Ans. 12:1-12) in response to Appellant’s argument.
Given the Examiner’s § 103 analysis and our analysis above, claims
1-7, 9-12, and 18-21 are unpatentable under 35 U.S.C. § 103(a) over the

3 If we were to agree with Appellant’s construction of claim 18, then we
would be obliged to reject claims 18 and 19 as being without written
description in the Specification as originally filed.
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combination of Hendricks, Eldering, Breslauer, and Welles; and claim 8 is
unpatentable under 35 U.S.C. § 103(a) over the combination of Hendricks,
Eldering, Breslauer, Welles, and Owa. We designate these as new ground of
rejection.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
Appellant has established that the Examiner erred in rejecting claims
1-12 and 18-21 as being unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1-12 and 18-21 are reversed.
Appeal 2010-001003
Application 09/844,923

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Claims 1-7, 9-12, and 18-21 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Hendricks, Eldering, Breslauer, and Welles.
Claim 8 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over the combination of English, Hendricks, Eldering, Breslauer, Welles,
and Owa.

REVERSED
37 C.F.R. § 41.50(b)

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