Ex Parte Swart et al

Board of Patent Appeals and Interferences

Jul 18, 2012

09973081 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/973,081 10/10/2001 William D. Swart 007412.00259 5256
71867 7590 07/18/2012
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
07/18/2012 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 WILLIAM D. SWART, JOHN S. McCOSKEY and
MICHAEL L. ASMUSSEN
________________

Appeal 2010-003976
Application 09/973,081
Technology Center 2400
________________

Before DEBRA K. STEPHENS, ERIC S. FRAHM, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of independent claim 11 and dependent claims 12 and 13 which
stand rejected as unpatentable under 35 U.S.C. § 103(a) over Hendricks
(US 5,600,573), Kenner (US 5,956,716), Campanella (US 5,864,546), Farry
(US 5,608,447), and Hoarty (US 5,485,197).
Claims 12 and 13 stand further rejected as unpatentable under 35
U.S.C. § 103(a) over Wilkins (US 5,446,919). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Independent claim 11 is representative of the invention1:

11. A method for acquiring and delivering content, comprising:

receiving a content search request from a user terminal;

providing a plurality of content associated with said
content search request to a user via a numeric television
channel selectable by a user;

receiving a content download request from said user
terminal, wherein a content of said content download request is
one of said plurality of content found in response to said
content search request;

1 Because Appellants argue that the Examiner erred in rejecting dependent
claims 12 and 13, which depend from independent claim 11, for the same
reasons with respect to claim 11; therefore, we choose claim 11 as
representative.

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determining if the request is a local download request or
a remote download request;

if the request is a remote download request, determining
if the content is to be delivered directly or indirectly, wherein
directly delivering content comprises providing the content to
the user terminal without traversing any modules between a
remote content server and the user terminal, thereby bypassing
an aggregator; and

if the content is to be delivered directly:

establishing a communications link from the
remote content server to the user terminal, thereby bypassing an
aggregator,

forwarding the requested content toward the user
terminal via said television channel,

validating the delivery of the content to the user
terminal, and

logging the validated delivery in one of a local
server database and a remote server database.

Br. 7.

GROUPING OF CLAIMS
Based on Appellants’ arguments, we select claim 11 as the
representative claim of claims 11-13, rejected under 35 U.S.C. § 103(a)
over Hendricks, Kenner, Campanella, Farry, and Hoarty.
Based on Appellants’ arguments, we address claims 12 and 13 as a
group rejected under 35 U.S.C. § 103(a) over Hendricks, Kenner,
Campanella, Farry, Hoarty, and Wilkins.
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ISSUE 1
Appellants argue that the Examiner erred in finding that their claimed
invention is unpatentable under 35 U.S.C. § 103(a) in that the combination
of Campanella with Farry and Hoarty is improper. Br. 4.
Appellants argue that the Examiner erred in combining prior art
references Campanella with Farry and Hoarty because the technologies
disclosed by Farry and Hoarty are incompatible with that disclosed in
Campanella, and combination of either Farry or Hoarty with Campanella
would render Farry and Hoarty inoperable. Br. 4. Appellants contend that
Campanella discloses a system for formatting broadcast data for satellite
transmission and radio reception that employs frequency division multiple
access (FDMA) modulation in transmission of uplink signals from
broadcast stations. Id. However, according to Appellants, Hoarty discloses
the use of time division multiplexing (TDM) in communications between a
node and a subscriber’s home. Id. Moreover, whereas Campanella
discloses that broadcast stations may be configured to use the frequency
band between 1467-1492 MHz and uplink frequencies between 7050-7075
MHz, Hoarty discloses channel operations within the 72-76 MHz band and
uplink channels operating between 15-18 MHz. Br. 5.
Furthermore, Appellants maintain that Farry also teaches the use of
TDM in communications between an information service provider and a
particular subscriber end device via a virtual circuit through asynchronous
transfer mode (ATM) switches. Id. Consequently, Appellants argue, the
combination of Campanella with either Farry or Hoarty would render the
combination inoperable because the FDMA disclosed by Campanella,
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which multiplexes the broadcast signal across frequencies, is incompatible
with the time division-based multiplexing of the signal disclosed by Farry
and Hoarty.
The Examiner responds that the Appellants’ argument concerning the
nature of signal multiplexing in Campanella, Farry, and Hoarty is irrelevant.
Ans. 11. The Examiner found that the primary reference, Hendricks, which
discloses a functioning distribution system which, when viewed in
combination with the remaining references by an artisan of ordinary skill,
would suggest no motivation for altering either the multiplexing methods or
frequency ranges disclosed by Hendricks. Ans. 12. The Examiner
therefore answers that the proposed combinations of the references for
which there is a need or benefit are unrelated to the manner of multiplexing
or the frequency ranges employed.
Appellants reply that because prior art references must be considered as a
whole, the combination of Campanella with Farry or Hoarty is not obvious
because different multiplexing technologies are disclosed, which would
render the combination inoperable and impermissibly change the principle
of Campanella’s communications. Reply Br. 2-3. The issue before us,
then, is whether the Examiner improperly combined Hendricks, Kenner,
Campanella, Farry, and Hoarty.

ANALYSIS
We find the Examiner’s reasoning to be persuasive. Campanella
discloses “validating the delivery of content for the benefit of accurate
billing for the delivery of said content” such that it would have been
obvious at the time to a person of ordinary skill in the art to modify the
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method disclosed by Hendricks to include validating the delivery of
content, as taught by Campanella, for the benefit of accurate billing for the
delivery of said content. Ans. 6 (internal citations omitted).
Farry discloses “a video distribution network wherein the
establishment of a direct link between a requesting subscriber and an
information source is through a permanent virtual circuit through a digital
cross-connect switch providing the benefit of lowered routing.” Ans. 6-7
(internal citations omitted). The Examiner found that it would have been
obvious at the time to a person of ordinary skill in the art to modify the
method disclosed by Hendricks and Campanella to establish direct links in
the manner disclosed by Farry (thereby bypassing the aggregator), for the
benefit of lowering the routing delay in fulfilling a subscriber's request.
Ans. 7. We agree.
Finally, the Examiner found that Hoarty teaches “a method for
delivering content wherein users send search requests upstream to locate
content of interest by interacting with a search interface which returns
search results via a numeric channel selectable by a user over which the
content is forwarded, providing the benefit of a search feature which allows
users to locate content of interest without necessarily knowing the specific
title or identifier of the content ahead of time.” Ans. 7 (internal citations
omitted). The Examiner therefore found, and we agree, that it would have
been obvious to one of ordinary skill in the art to combine Hoarty with the
prior references to provide the benefit of a search feature which allows
users to locate content of interest without necessarily knowing the specific
title or identifier of the content ahead of time. Ans. 8.
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In summary, Campanella is combined with the other prior art
references because it discloses validating the delivery of content for the
benefit of accurate billing. Farry is combined with the other references
because it teaches direct links between a requesting subscriber and an
information source for the benefit of lowering the routing delay in fulfilling
a subscriber's request. Hoarty is combined because it provides the benefit
of a search feature which allows users to locate content of interest. We
agree with the Examiner’s finding that the method of transmission
multiplexing taught in Campanella, Farry, and Hoarty is not relevant to any
of these features nor is the particular method of transmission multiplexing
relevant to the invention recited in the claims. (See Br. 7).
We agree with Appellants that the MPEP requires the Examiner to
consider prior art references in their entirety. MPEP § 2141.02(VI) (citing
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed.
Cir. 1983)). However, that does not require that all elements of each prior
art reference read on the claimed invention. Rather, the proper test for
obviousness is what the combined teachings would have suggested to a
person of ordinary skill in the art. See In re Kotzab, 217 F.3d 1365, 1370
(Fed. Cir. 2000) (citing In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)
(and cases cited therein)).
We agree with the Examiner’s finding with regard to claim 11 that
the multiplexing techniques and frequency ranges taught by the references
are irrelevant to the elements that combine to render the claimed invention
obvious. Moreover, Appellants have not provided any persuasive evidence
or argument showing the combination of the techniques taught or suggested
by Campanella, Farry, and Hoarty, would have rendered the resulting
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combination inoperable. We find no evidence in the record before us that
the combination of Hendricks’, Kenner’s, and Campanella’s techniques
would no longer operate if modified to include Farry’s establishment of a
direct link between subscriber and information source (thereby bypassing
the aggregator) and/or Hoarty’s method for delivering content wherein
users send search requests upstream to locate content of interest by
interacting with a search interface which returns search results via a
numeric channel selectable by a user over which the content is forwarded
providing the benefit of a search feature which allows users to locate
content of interest without necessarily knowing the specific title or
identifier of the content ahead of time.. Accordingly, we find that the
Examiner’s proposed modification would not change Campanella’s
principle of operation or otherwise render Campanella inoperable for its
intended purpose.
Accordingly, Appellants have not persuaded us of error by the
Examiner in combining the techniques taught or suggested by Campanella,
Farry, and Hoarty. Consequently, we agree with the Examiner’s finding
that claim 11 is unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Hendricks, Kenner, Campanella, Farry, and Hoarty.

ISSUE 2
Appellants presented no additional arguments regarding the rejection
of claims 12 and 13 under 35 U.S.C. § 103(a) as obvious over the
combination of Hendricks, Kenner, Campanella, Farry, Hoarty, and
Wilkins, instead relying on the arguments set forth with respect to claim 11.
For the reasons set forth in ISSUE 1, we find no error in the Examiner’s
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rejection of claim 11. Accordingly, we find no error in the Examiner’s
rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as obvious over the
combination of Hendricks, Kenner, Campanella, Farry, Hoarty, and
Wilkins.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claim
11-13 under § 103(a).
DECISION

The Examiner’s rejection of claims 11-13 under §103(a) as being
unpatentable over Hendricks, Kenner, Campanella, Farry, and Hoarty is
affirmed.
The Examiner’s rejection of claims 12 and 13 under §103(a) as being
unpatentable over Hendricks, Kenner, Campanella, Farry, Hoarty, and
Wilkins is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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