QUALCOMM Incorporated

Patent Trials and Appeals Board

Jul 22, 2020

2019001206 (P.T.A.B. Jul. 22, 2020)

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.
14/796,949 07/10/2015 Richard Doil LANE 030284.10237/
030068C1D1
6378
15142 7590 07/22/2020
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
NGUYEN, TU X
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
07/22/2020 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):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD DOIL LANE
and WILLIAM ROBERT GARDNER

Appeal 2019-001206
Application 14/796,949
Technology Center 2600
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
SCOTT E. BAIN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Claims 19–24, 26–36, 38–48, and 50–54 are pending, stand rejected,
are appealed by Appellant, and are the subject of our decision under 35
U.S.C. § 134(a).1 See Final Act. 1; Appeal Br. 4.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Qualcomm, Inc.
See Appeal Br. 4.
2 We refer to Appellant’s Specification (“Spec.”), filed July 10, 2015
(claiming benefit of US 60/442,007, filed Jan. 22, 2003); Appeal Brief
(“Appeal Br.”), filed July 16, 2018; and Reply Brief (“Reply Br.”), filed
Appeal 2019-001206
Application 14/796,949

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CLAIMED SUBJECT MATTER
The invention, according to Appellant, “relates generally to computer-
based communication systems.” Spec. ¶ 2. More specifically, Appellant’s
invention relates to apparatuses and methods of receiving a multimedia
stream at a wireless client station and control data, received on a
bidirectional wireless link at the wireless client station, that includes an
application (software instructions) for the presentation of the digital
multimedia stream at the wireless client station. See Spec. ¶¶ 6–12;
Abstract. Claims 19 (directed to a wireless client station), 31 (directed to an
apparatus), and 43 (directed to a method) are independent. Claim 19,
reproduced below, is illustrative of the claimed subject matter:
19. A wireless client station capable of communicating
using at least two communication links, comprising:
at least one processor configured to receive a digital
multimedia stream on a broadcast channel and control data on a
bidirectional wireless link, wherein the control data supports
provisioning of the digital multimedia stream for authorized
access on the broadcast channel;
wherein the control data enables presentation of the digital
multimedia stream on a display and the control data received on
the bidirectional wireless link includes at least one key for
decrypting the digital multimedia stream, data for decompressing
the digital multimedia stream, and at least one application for
the presentation of the digital multimedia stream at the wireless
client station.
Appeal Br. 13 (Claims App.) (emphasis added).

Nov. 19, 2018. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Feb. 9, 2018; and Answer (“Ans.”) mailed Sept. 19, 2018.
Appeal 2019-001206
Application 14/796,949

3
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Sprague et al.
(“Sprague”)
US 5,247,575 Sept. 21, 1993
Salo et al.
(“Salo”)
US 7,283,817 B2 Oct. 16, 20073
Hendricks US 7,336,788 B1 Feb. 26, 20084

REJECTIONS5
1. The Examiner rejects claims 19–24, 26, 27, 30–36, 38, 39, 42–
48, 50, 51, and 54 under 35 U.S.C. § 103(a) as being unpatentable over Salo
and Sprague. See Final Act. 2–5.
2. The Examiner rejects claims 28, 29, 40, 41, 52, and 53 under 35
U.S.C. § 103(a) as being unpatentable over Salo, Sprague, and Hendricks.
See Final Act. 5–6.
ANALYSIS
Obviousness Rejection of Claims 19–24, 26, 27,
30–36, 38, 39, 42–48, 50, 51, and 54
The Examiner rejects independent claim 19 (as well as independent
claims 31 and 43, and dependent claims 20–24, 26, 27, 30, 32–36, 38, 39,

3 The instant Salo application was filed on June 29, 2002.
4 The instant Hendricks application was filed on Nov. 28, 2000.
5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date (Jan. 22, 2003) prior to the AIA’s effective date
for applications (March 16, 2013), this decision refers 35 U.S.C. § 103(a).
Appeal 2019-001206
Application 14/796,949

4
42, 44–48, 50, 51, and 54) as being obvious over Salo and Sprague. See
Final Act. 2–5; Ans. 2–5. Appellant contends that Salo and Sprague do not
teach the disputed limitations of claim 19. See Appeal Br. 7–11; Reply Br.
2–5.6 Specifically, Appellant contends, inter alia, that the Examiner adopted
a definition of “application” that is unreasonably broad (see Reply Br. 3–4)
and neither Salo nor Sprague teach a multimedia stream on a broadcast
channel and control data received over a bidirectional wireless link that
includes an application for the presentation of the multimedia stream (see
Appeal Br. 9–11; Reply Br. 2–5).
We agree with Appellant that the Examiner adopts an unreasonable
interpretation of “application,” as recited in Appellant’s claim 19 (and the
other pending claims), and the Examiner-cited portions of Salo and Sprague
do not teach or suggest “control data received on the bidirectional wireless
link [that] includes . . . at least one application for the presentation of the
digital multimedia stream at the wireless client station.” Appeal Br. 13
(Claims App.). See Appeal Br. 9–11; Reply Br. 2–5; see also Salo, col. 2, ll.
40–41; col. 3, l. 44–col. 4, l. 9; Fig. 2; and Sprague, Abstract; col. 13, ll. 49–
50; col. 16, ll. 6–12; col. 20, ll. 66–67.
The Examiner adopts a definition of the term “application” from an
undated on-line dictionary as “[t]he act of putting to a special use or
purpose.” Ans. 3 (citing Dictionary.com). We find error in the Examiner’s
claim construction because the Examiner uses improper extrinsic evidence
(an undated dictionary) and the Examiner’s construction fails to reference
Appellant’s Specification. “[T]he ordinary and customary meaning of a

6 Appellant’s Reply Brief omits page numbering after page 1, we reference
the Reply Brief as if it was consecutively numbered after page 1.
Appeal 2019-001206
Application 14/796,949

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claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective
filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc), cert. denied 126 S.Ct. 1332 (2006). The
“[S]pecification is ‘the single best guide to the meaning of a disputed term,’
and . . . ‘acts as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication.’” Phillips, 415 F.3d at 1321
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). “Even under the broadest reasonable interpretation, the Board’s
construction cannot be divorced from the [S]pecification and the record
evidence.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
Cir. 2015) (citations omitted).
Appellant, contends “[i]n the field of wireless communication,
[]‘application’ . . . would be readily understood to correspond to a program,
e.g., a software program, for presentation, e.g., display, of the digital
multimedia stream at the wireless client station.” Reply Br. 3–4. We agree
with Appellant’s interpretation of “application.” The Specification explains
that “the control data may include software applications, such as BREW
[(Binary Runtime Environment for Wireless)] applications or BREW-
supplied applications that are useful in playing the multimedia data or in
viewing available titles.” Spec. ¶ 26.
The Examiner fails to provide a reason why Appellant’s disclosure
fails to define the claimed term even by implication. “Even when guidance
is not provided in explicit definitional format, the [S]pecification may define
claim terms by implication such that the meaning may be found in or
ascertained by a reading of the patent documents.” In re Abbott Diabetes
Appeal 2019-001206
Application 14/796,949

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Care Inc., 696 F.3d 1142, 1150 (Fed. Cir. 2012) (quoting Irdeto Access, Inc.
v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)).
Further, the Examiner-cited portions of Salo and Sprague, at best,
vaguely describe the ability to display information or displaying certain
control information. See Final Act. 3–4; Ans. 4; see also Sprague, Abstract;
col. 20, ll. 66–67; and Salo, col. 2, ll. 40–41; col. 4, ll. 1–5. In particular, the
cited portions of Salo do not describe any software instructions for
displaying streaming multimedia, much less such software instructions
included in the control data accompanying the multimedia stream. Ans. 4
(citing Salo, col. 2, ll. 40–41; col. 4, ll. 1–5). The Examiner does not explain
sufficiently how the cited portions of Salo and Sprague at least suggest the
disputed features of “control data received on the bidirectional wireless link
[that] includes . . . at least one application for the presentation of the digital
multimedia stream at the wireless client station” (Appeal Br. 13 (Claims
App.). See Appeal Br. 9–11; Reply Br. 2–5.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Salo and Sprague
renders obvious Appellant’s claim 19. Independent claims 31 and 43
include limitations of commensurate scope. Claims 20–24, 26, 27, 30, 32–
36, 38, 39, 42, 44–48, 50, 51, and 54 depend from and stand with their
respective base claims.
Obviousness Rejection of Claims 28, 29, 40, 41, 52, and 53
The Examiner rejects dependent claims 28, 29, 40, 41, 52, and 53
under 35 U.S.C. § 103(a) as being obvious over Salo, Sprague, and
Hendricks. See Final Act. 5–6.
Appeal 2019-001206
Application 14/796,949

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The Examiner does not suggest, and we do not find, that the additional
cited reference, Hendricks, cures the deficiencies of the Salo and Sprague
combination (supra). Therefore, we reverse the Examiner’s obviousness
rejection of dependent claims 28, 29, 40, 41, 52, and 53 for the same reasons
set forth for claim 19 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 19–
24, 26–36, 38–48, and 50–54 under 35 U.S.C. § 103(a). We, therefore, do
not sustain the Examiner’s rejection of claims 19–24, 26–36, 38–48, and 50–
54.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19–24, 26, 27,
30–36, 38, 39,
42–48, 50, 51,
54
103(a) Salo, Sprague 19–24, 26, 27,
30–36, 38, 39,
42–48, 50, 51,
54
28, 29, 40, 41,
52, 53
103(a) Salo, Sprague,
Hendricks
28, 29, 40, 41,
52, 53
Overall
Outcome
19–24, 26–36,
38–48, 50–54

REVERSED