Marcel MampaeyDownload PDFPatent Trials and Appeals BoardApr 16, 20212020000353 (P.T.A.B. Apr. 16, 2021) Copy Citation 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. 13/381,217 03/15/2012 Marcel Mampaey LUTZ 201357US01 5487 48116 7590 04/16/2021 FAY SHARPE/NOKIA 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115-1843 EXAMINER LE, RONG ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 04/16/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@faysharpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARCEL MAMPAEY ____________________ Appeal 2020-000353 Application 13/381,217 Technology Center 2400 ____________________ Before JOHN A. JEFFERY, ERIC S. FRAHM, and KIMBERLY McGRAW, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-9, 12, and 13, which constitute all pending claims on appeal. Claims 10 and 11 have been canceled (see Final Act. 2). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Alcatel Lucent (Appeal Br. 1). Appeal 2020-000353 Application 13/381,217 2 DISCLOSED AND CLAIMED INVENTION According to Appellant, the disclosed invention “relates to a method for provisioning a multimedia service to a multimedia rendering device” (Spec. 1:3-4). According to Appellant, “[s]uch a rendering device typically consists of a set-top box and a coupled television or screen” (Spec. 1:10-11; see Fig. 1, RD including TV and STB), and is connected to a multimedia application server (see Fig. 1, IPTV-AS) via a communication network (see Fig. 1, CN-1) in order to obtain Internet Protocol Television (IPTV) via a subscription for multimedia services (see Spec. 3:8-15). Appellant’s disclosed and claimed invention allows other plural communication devices (see Fig. 1, CD, CD1, CD2 which can be mobile devices) of the subscriber to receive multimedia services through a different communication network (see Fig. 1, CN-2, wireless phone network). Claims 1 (method), 6 (multimedia system), 8 (application server), and 12 (communication device) are independent and recite commensurate limitations. Claim 1 is illustrative of the claimed subject matter: 1. Method for provisioning a multimedia service to a multimedia rendering device by a multimedia application server, said multimedia application server, being coupled to said rendering device over a core communication network, wherein said method further comprises: a. determining, by said multimedia application server, at least one additional multimedia service associated with said multimedia service provisioned by said multimedia application server, to said rendering device; b. selecting an additional multimedia service of said at least one additional multimedia service [b1] by a communications device associated with said multimedia service provisioned to said rendering device or by said rendering device, [b2] said communications device being associated with said Appeal 2020-000353 Application 13/381,217 3 multimedia service via registration at said multimedia application server; presenting the additional multimedia service on the communication device; and personalizing the additional multimedia service according to a user's preferences. Appeal Br. 19 (Claims App.) (bracketed lettering and emphasis added). Notably, a similar version of claim 1 of the instant application was the subject of a prior decision on appeal (Appeal No. 2016-005929 mailed March 10, 2017) (hereinafter, “Prior Decision”), in which the Board affirmed the Examiner’s obviousness rejection of claim 1 over the combination of the same three applied prior art references at issue in this appeal. The underlined portions of claim 1 reproduced above represent the subject matter added by amendment since the time from the Prior Decision leading up to the instant appeal. REJECTION The Examiner rejected claims 1-9, 12, and 13 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Robotham (US 2009/0019474 Al; published Jan. 15, 2009), Krikorian (US 7,877,776 B2; issued Jan. 25, 2011, filed June 7, 2005), and Matsubayashi (US 2010/0242070 Al; published Sept. 23, 2010, filed Mar. 18, 2009). Final Act. 5-18. Appeal 2020-000353 Application 13/381,217 4 ISSUE Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 5- 18) and the Reply Brief (Reply Br. 2-6),2 the following principal issue is presented on appeal: Did the Examiner err in rejecting claims 1-9, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Robotham, Krikorian, and Matsubayashi because the combination of Robotham and Krikorian fails to teach or suggest limitations b, b1, and/or b2, as set forth in representative claim 1? ANALYSIS We have reviewed the Examiner’s rejection (Final Act. 5-18) in light of Appellant’s arguments (Appeal Br. 5-18; Reply Br. 2-6) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 3-7). With regard to representative claim 1, we agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Final Office Action (Final Act. 5-8), Advisory Action mailed January 14, 2019 (Advisory Act. 2), and Answer (Ans. 3-7). We provide the following explanation for emphasis only. We emphasize that the Examiner’s ultimate legal conclusion of obviousness is based upon the combined teachings of the cited references. Moreover, “‘the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of 2 Appellant argues claim 6, 8, and 12 on similar bases as claim 1 (see Appeal Br. 5-17; Reply Br. 2-5). Based on Appellant’s arguments, and because claims 1, 6, 8, and 12 contain commensurate limitations, we select claim 1 as representative of claims 1-9, 12, and 13. Appeal 2020-000353 Application 13/381,217 5 ordinary skill in the art at the time the invention was made.’” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); see also MPEP § 2123 (9th ed., Rev. 10.2019, June 2020). In this light, we agree with the Examiner that the combined teachings and suggestions of Robotham, Krikorian, and Matsubayashi support the legal conclusion of obviousness as to claim 1. It is also well settled that, as part of the obviousness analysis, the prior art must be viewed in the context of what was generally known in the art at the time of the invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he [KSR] Court required an analysis that reads the prior art in context, taking account of ‘demands known to the design community,’ ‘the background knowledge possessed by a person having ordinary skill in the art,’ and ‘the inferences and creative steps that a person of ordinary skill in the art would employ.’” (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007))); In re Taylor Made Golf Co., Inc., 589 F. App’x 967 (Fed. Cir. 2014) (non-precedential) (noting the Board erred in failing to consider the prior art in the context of the background knowledge that a person of ordinary skill in the art would have had). Here, one of ordinary skill in the art at the time of Appellant’s claimed invention would understand that subscribing to a multimedia service involves registering an agreement and/or contract between a user/subscriber and a multimedia service provider. Here, the Examiner relies upon Robotham as teaching the majority of claim 1, including the preamble, limitations a and b, parts of limitations b1 and b2, and the presenting step (see Final Act. 5-7). The Examiner then Appeal 2020-000353 Application 13/381,217 6 relies upon Krikorian for parts of limitations b1 and b2 (see Final Act. 7), and relies upon Matsubayashi for the personalization step (see Final Act. 8). In addition, art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness. Randall, 733 F.3d at 1362-63. In this case, the Examiner finds (see Final Act. 7-8; Ans. 4), and we agree, that (i) Krikorian teaches the associated communication device recited in limitations b1 and b2 (Krikorian Fig. 1; col. 1, ll. 40-55; col. 2, ll. 23-43; col. 3, ll. 38-56; col. 5, ll. 7-18; col. 24, ll. 44-55); and (ii) Matsubayashi teaches personalizing additional multimedia services as recited in the last clause of claim 1 (Matsubayashi Figs. 2, 4; ¶¶ 12, 13, 37). In general, Appellant’s arguments (see Appeal Br. 5-8; Reply Br. 2- 5) improperly address the individual shortcomings of Robotham and Krikorian without addressing the collective teachings and suggestions of the references. See Merck, 800 F.2d at 1097 (finding one cannot show non- obviousness by attacking references individually where the rejections are based on combinations of references). We also disagree with Appellant’s argument that Robotham fails to teach that registration is involved during some point of the process of subscription creation, and therefore Robotham cannot teach a communication device associated with said multimedia service via registration at said multimedia application server as recited in limitation b2. Appeal Br. 5. Therefore, Appellant has not shown that the Examiner erred in finding the combination of Robotham and Krikorian teaches the subject of limitations b, b1, and b2 or in rejecting claim 1 over the combination of Robotham, Krikorian, and Matsubayashi. Appeal 2020-000353 Application 13/381,217 7 Here, Appellant generally argues that both Robotham and Krikorian individually fail to teach limitations b, b13, and b2 recited in claim 1 (see, e.g., Appeal Br. 5-8; Reply Br. 2-5). However, the Examiner relies upon the combination of Robotham and Krikorian for the communication device set forth in limitations b1 and b2. Thus, Appellant’s arguments are not persuasive to show the Examiner erred in relying on the combination of references in teaching or suggesting the disputed limitations. For example, Appellant’s contentions that Krikorian fails to discuss (i) “a communication device being associated with said multimedia service via registration at said multimedia application server” (Appeal Br. 6) (addressing claim 1, limitation b1); and/or a “communication device being registered with a multimedia service via registration” (Reply Br. 3) (addressing claim 1, limitation b2), are unpersuasive. These arguments address Krikorian individually, and not the Examiner’s reliance on the combination of Robotham and Krikorian to meet the communication device association and registration limitations b1 and b2. However, 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) (finding one cannot show non- obviousness by attacking references individually where the rejections are based on combinations of references). Here, the Examiner properly modifies Robotham’s consumer terminals 5-2 and 5-3, which are registered via subscription, and thus 3 In our Prior Decision, we determined that Robotham and Kirkorian teaches the subject matter recited in claim element b and b1. Prior Decision, [insert page #s]. Appellant did not appeal this decision and may not challenge this finding in the present appeal. Appeal 2020-000353 Application 13/381,217 8 associated, with the multimedia center 25 (see Robotham Fig. 1), with Krikorian’s mobile devices, such as notebook computers and mobile phones (i.e., the recited communication device) connected over a wireless network (see Final Act. 6-7; Robotham Fig. 1; Krikorian col. 1, ll. 39-57). Thus, we agree with the Examiner that the combined teachings of Robotham and Krikorian teaches said communications device being associated with said multimedia service via registration at said multimedia application server. We are also not persuaded by Appellant’s argument that “there is no mention of any registration step in Robotham” and therefore Robotham does not disclose limitation b2. See, e.g., App. Br. 6. We agree with the Examiner (see Ans. 3-5) that Robotham’s teaching of multimedia content delivery to “subscribers/consumers” over a network (Robotham ¶ 34) suggests a registration or subscription to a multimedia service. For example, we agree with the Examiner that, in order to be a subscriber at the consumer terminals to the local server 20, there must be registration involved at some point during the process of subscription creation (Ans. 4 citing Robotham ¶ 34). As noted by the Examiner (Ans. 3), this finding is further supported by Appellant’s Specification, which describes provisioning multimedia services to users by registering the user’s set-top box at the application server using a multimedia service-subscription (see Spec. 3:8-11). Thus, the Examiner has provided sufficient support for the determination that the recited “registration” is suggested by Robotham’s disclosure of a consumer of services being a subscriber. See Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 n.4 (Fed. Cir. 1995) (minor deviations from the strict disclosure of the prior art are accepted, as long as one of skill in the art Appeal 2020-000353 Application 13/381,217 9 would understand that those minor deviations are consistent with the prior art’s teachings); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom” (citation omitted).). Appellant’s unsupported contentions to the contrary are not persuasive. Given all of the above, the Examiner reasonably inferred that Robotham necessarily performs a registration process for registering devices of user/subscribers at a multimedia application server as set forth in claim 1. See Preda, 401 F.2d at 826. Furthermore, subscription and registration of services at the server teaches or suggests the provisioning recited in limitation b1 of claim 1. The Examiner finds (see Final Act. 6; Advisory Act. (p. 2)) (citing Robotham ¶¶ 34-41), and we agree, that Robotham teaches provisioning a multimedia service to a rendering device (e.g., TV or set-top box). The term “provisioning,” is not explicitly defined in the Specification. Appellant’s Specification describes the act of provisioning in terms of the provision, association, assignment, registration, or subscription of services set up between the consumer/subscriber and the media provider having the multimedia server (see Spec. 2:31-3:16; 6:26-29). In this light, Appellant’s contention (see Appeal Br. 6-7) that Robotham fails to disclose the provisioning of limitation b1, is not persuasive. In this light, Appellant’s arguments (see Appeal Br. 6; Reply Br. 2-3) that the Examiner has erred because Robotham fails to mention any “registration” step because registration is not inherent in Robotham’s process, are unpersuasive. In short, Appellant’s inherency-based arguments Appeal 2020-000353 Application 13/381,217 10 are more germane to anticipation - not obviousness as is the case here. See Trintec Indus., Inc. v. Top-US.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (“[O]bviousness is not inherent anticipation.”). It is well settled that the test for obviousness is what the cited references' collective teachings would have suggested to ordinarily skilled artisans. See In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). To that end, we considered not only the explicit teachings of the cited references in our decision, but also the inferences that ordinarily skilled artisans would reasonably be expected to draw from those teachings, e.g., that subscribers subscribe by registering themselves with a provider. See Preda, 401 F.2d at 826. In view of the foregoing, Appellant has not overcome the Examiner’s prima facie case of obviousness with respect to claim 1. We are not persuaded the Examiner erred in rejecting claim 1. Accordingly, we sustain the Examiner’s rejection of independent claim 1, as well as claims 2-9, 12, and 13 grouped therewith. CONCLUSION4 For the reasons explained above, we sustain the rejection of claims 1- 9, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Robotham, Krikorian, and Matsubayashi. In summary, we hold as follows: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 4 Should there be further prosecution of the instant case on appeal, the Examiner may wish to consider whether a rejection under 35 U.S.C. § 112, second paragraph, may be appropriate in view of the plethora of antecedent basis issues throughout pending claims 6, 8, 9, and 12. Appeal 2020-000353 Application 13/381,217 11 1-9, 12, 13 103(a) Robotham, Krikorian, Matsubayashi 1-9, 12, 13 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 Copy with citationCopy as parenthetical citation