Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Sep 18, 2020

15102555 - (D) (P.T.A.B. Sep. 18, 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.
15/102,555 06/08/2016 Dennis Erik Bouwknegt 4015-9588 / P41448-US1 8066
24112 7590 09/18/2020
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
09/18/2020 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 DENNIS ERIK BOUWKNEGT and HENK DEN BOK

Appeal 2019-003958
Application 15/102,555
Technology Center 2400
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS,
and GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 24–27, 29, 35, 37, 45–50. 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
Telefonaktiebolaget L M Ericsson (publ). Appeal Br. 2.
Appeal 2019-003958
Application 15/102,555
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CLAIMED SUBJECT MATTER
The claims are directed to synchronizing two media streams during
playout. Spec.,2 1:10–11. For instance, two media streams may respectively
be a first stream for a cooking recipe and a second stream for a cooking
show to be displayed to a user simultaneously on different devices. Id. at
1:19–31. Other approaches to synchronization were not well suited for
coping with problems when the media streams were broadcast from different
sources. Id. at 3:10–27. For instance, broadcasting over different routes
could interrupt synchronization or there could be other interruptions to time
synchronization (e.g., if parts of a media stream were skipped or time
shifted). Id.
Method claim 24, reproduced below, is illustrative of the claimed
subject matter:
24. A method for synchronized provision to a first device of at
least two different media streams comprising a first media
stream and a second media stream, the method comprising:

generating a plurality of identifiers that each indicate different
sequence numbers to which respective action indicators are
allocable, wherein the different sequence numbers indicate
different respective locations in the second media stream,
wherein at least some of the different respective locations are
isochronous in the second media stream;

storing the plurality of identifiers in an identifier storage and
allocating an action indicator to each of at least some of the

2 We use “Spec.” to refer to the Specification filed June 8, 2016, “Final
Act.” to refer to the Final Action mailed June 14, 2018, “Appeal Br.” to refer
to the Appeal Brief filed December 7, 2018, “Ans.” to refer to the
Examiner’s Answer filed February 22, 2019, and “Reply Br.” to refer to the
Reply Brief filed April 22, 2019.
Appeal 2019-003958
Application 15/102,555
3
stored plurality of identifiers, wherein at least one action
indicator identifies the first media stream;

encoding a carrier with the plurality of identifiers and the second media
stream, wherein the plurality of identifiers are encoded at locations
in the second media stream that are indicated by the respective ones
of the plurality of identifiers;

decoding the plurality of identifiers and the second media stream
from the received carrier;

submitting the decoded plurality of identifiers to the first device;

providing the decoded second media stream to the first device;

retrieving, by the first device, any action indicators allocated to
the decoded identifiers;

requesting the first media stream identified by at least one
retrieved action indicator; and

providing the requested first media stream, such that the
provisions of the first media stream and the second media
stream to the first device are synchronized to each other
based on the retrieved action indicators.
REFERENCES
The Examiner relies upon the following references:
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Application 15/102,555
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Name3 Reference Date
Hwang US 2013/0074141 A1 Mar. 21, 2013
Schwartz US 2007/0199035 A1 Aug. 23, 2007
Gerken US 2007/0022437 Al Jan. 25, 2007
REJECTIONS
Claims 24–27, 29, 35, 37, 45, and 47–50 are rejected as unpatentable
under 35 U.S.C. § 102(a)(2) over Hwang. Final Act. 2–9, Ans. 3–9.
Claims 33, 36, and 38 are rejected as unpatentable under 35 U.S.C.
§ 103 over Hwang and Gerken. Ans. 9–11.
Claim 46 is rejected as unpatentable under 35 U.S.C. § 103 over
Hwang and Schwartz. Final Act. 9, Ans. 11–12.
OPINION
Issue: Does the Examiner improperly rely on multiple embodiments of
Hwang to find claim 24 is anticipated?

The Examiner finds Hwang discloses all of the limitations of claim
24, including “generating a plurality of identifiers that each indicate different
sequence numbers to which respective action indicators are allocable . . . .”
Final Act. 3 (citing Hwang Fig. 6,4 ¶¶ 68, 115, 124, 127, 137). For the
limitation “encoding a carrier with the plurality of identifiers and the second
media stream . . .” the Examiner relies on paragraph 68 of Hwang, which
references Figure 4.5 Id. at 4 (quoting Hwang ¶ 68 (“If the same source data
can be read from multiple locations, the AAT may include multiple
adjunct_asset_locators for an adjunct asset.”), Figs. 4, 6). Another example

3 All reference citations are to the first named inventor only.
4 Illustrating Media Transport (MMT) Processing Unit (MPU). Hwang ¶¶
60, 137–138.
5 Illustrating Adjunct Asset Table (AAT). Hwang ¶¶ 67–68.
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Application 15/102,555
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is the recitation “requesting the first media stream identified by at least one
retrieved action indicator,” for which the Examiner relies in part on
paragraph 137 of Hwang and its description of Figure 6. Id. at 5 (citing
Hwang ¶¶ 122, 137, Figs. 5, 6).
Appellant contends the Examiner relies on two separate
embodiments from Hwang, AAT and MPU, in order to meet all the
recitations of claim 24. Appeal Br. 8–9. Specifically, Appellant points to
Hwang’s AAT technique and MPU technique as the showing for “generating
and storing a plurality of identifiers indicating different sequence numbers.”
Id. at 9. Appellant argues the Examiner’s showing requires that at least
some of the stored identifiers relate to “different respective locations in one
media stream (second media stream), and then allocating an action indicator
that indicates a different media stream (first media stream).” Id. According
to Appellant, the AAT technique relates to a single stream, the “adjunct
stream,” and not the two media streams claimed. Id. at 10 (citing Hwang
¶ 68).
Appellant argues the MPU technique’s “sequence numbers are not
allocated an action indicator or even any identifier from an AAT.” Appeal
Br. 10. Appellant argues any MPU sequence number “is merely a reference
point in the regular media stream” in a “known timeline specific to the MPU
sequence number technique to execute a formula for determining the start
point of another asset relative to one of the sequence numbers (i.e.,
asset2_idbegin=asset1_Id.MPU(123)).” Id.; see Hwang Fig. 6 (including the
“asset2_idbegin=asset1_Id.MPU(123))”).
Appellant concludes by arguing the rejection of claim 24 fails because
each and every claim element is not found in a single embodiment of
Hwang. Appeal Br. 10–11 (citing MPEP § 2131 (citations omitted).
Appeal 2019-003958
Application 15/102,555
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Appellant points out that anticipation requires that “each and every element
as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference” and that if “different embodiments of a teaching
are combined an obviousness analysis is warranted.” Id. at 11 (citing
In re Arkley, 455 F.2d 586, 587 (Fed. Cir. 1972).
The Examiner does not specifically respond to this argument. See
generally Ans. 14–17. In the Answer, the Examiner arguably relies only on
the MPU embodiment. See id. at 16 (citing Hwang ¶¶ 22–23). Appellant
responds that that first embodiment described in paragraph 22 of Hwang
“relates to receiving and storing composition information (CI)” of Hwang’s
Figure 6, which illustrates CI in the MPU embodiment. Reply Br. 3 (citing
Hwang ¶¶ 21–23). According to Appellant, paragraph 23 also describes
“receiving and storing control information regarding adjunct media data”
which is the AAT embodiment. Id. (citing Hwang ¶¶ 21–23, 67–69, Fig. 4).
We agree with Appellant that the anticipation rejection relies on
multiple embodiments, AAT and MPU, of Hwang. We also find the
Examiner does not dispute that the rejection relies on two embodiments. We
also find the Examiner agrees that two embodiments are relied on for the
anticipation rejection. See, e.g., Ans. 16 (“Applicant’s invention is directed
to the first embodiment . . .” (citing Hwang ¶ 23)); see also Reply Br. 2
(arguing Examiner admits two embodiments are relied on).
It is not always the case that two embodiments of a single reference
prevent a claim from being anticipated. Chamberlain Group, Inc. v.
Techtronic Industries Co., 935 F.3d 1341, 1350 (Fed. Cir. 2019). “[T] the
relevant question is whether the reference is sufficiently clear in disclosing
the combinability of those elements such that a skilled artisan would ‘at once
envisage’ the claimed combination.” Id. (citing Kennametal, Inc. v.
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Application 15/102,555
7
Ingersoll Cutting tool Co., 780 F.3d 1376 (Fed. Cir. 2015)). That is not the
situation presented here. As noted above, there is no dispute that the
rejection relies on two separate embodiments. The Examiner does not allege
that a person of ordinary skill would “at once envisage” or otherwise
connect the embodiments to arrive at the claimed combination.
“Combining two embodiments disclosed adjacent or side by side to
each other” does not “require a leap of inventiveness” and may be a
predictable variation supporting an obviousness determination. Boston
Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
But there is no obviousness rejection for us to consider.
In an ex parte appeal, the Board “is basically a board of review—we
review . . . rejections made by patent examiners.” Ex parte Gambogi,
62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C.
Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard
to examine the application and resolve patentability in the first instance.” Ex
parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because we are a
board of review, and not a place of initial examination, we will not engage in
the de novo examination required to supplement the Examiner’s findings in
connection with the whether or not a person of ordinary skill would “at once
envisage” the claimed combination based on the two embodiments disclosed
in Hwang. We also express no opinion as to whether independent claim 24
would have been obvious over the two embodiments disclosed in Hwang if
supported by additional explanation and/or references. We leave any such
further consideration to the Examiner. Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02 (9th Ed., Mar.
2014).
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Furthermore, our decision is limited to the findings before us for
review. The Board does not “allow” claims of an application and cannot
direct an Examiner to pass an application to issuance. Rather, the Board’s
primary role is to review adverse decisions of examiners including the
findings and conclusions made by the Examiner. See 37 C.F.R.
§ 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner”).
We do not sustain the rejection to claim 24. The same reasons for the
rejection are asserted by the Examiner for the remaining independent claims
26, 35, and 37. See Final Act. 2–5. For the same reasons we do not sustain
the rejection to claim 24, we do not sustain the rejections under §102(a)(2)6
to claims 26, 35, and 37. Dependent claims 25, 27, 29, 45–50 depend from
claims where we have not sustained the rejection and we do not sustain the
rejections to claims 25, 27, 29, 45–50. Still further, we do not sustain the
rejections of claim 33, 36, 38, and 46 under 35 U.S.C. §103 as the
Examiner’s application of the Gerken and Schwartz references fail to cure
the deficiency in the base rejection addressed supra.

6 The argued rejection under § 102 is not rehabilitated merely by changing
the rejection to be under 103 absent the Examiner providing missing
reasoning for combining Hwang’s two embodiments.
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Application 15/102,555
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
24–27, 29,
35, 37, 45,
47–50
102(a)(2) Hwang 24–27, 29,
35, 37, 45,
47–50
33, 36, 38 103 Hwang, Gerken 33, 36, 38
46 103 Hwang, Schwartz 46
REVERSED