Binder, Yehuda

Patent Trials and Appeals Board

Mar 23, 2021

2019004033 (P.T.A.B. Mar. 23, 2021)

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.
12/693,881 01/26/2010 Yehuda Binder BINDER-004-US11 4948
131926 7590 03/23/2021
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
WOO, STELLA L
ART UNIT PAPER NUMBER
2652
MAIL DATE DELIVERY MODE
03/23/2021 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 YEHUDA BINDER

Appeal 2019-004033
Application 12/693,881
Technology Center 2600
____________

Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–123, constituting all claims pending
in the current application. 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. Appellant identifies the real party in interest as May Patents
Ltd. Appeal Br. 2.
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STATEMENT OF THE CASE

Appellant’s invention generally relates to “a method, device and
system for obtaining information from a remote location to an information
device.” Spec. 2. Claims 1, 23, 46, 115, 116, and 117 are independent.
Appeal Br. 111, 115, 120–121, 132–134, Claims App. Independent claim 1,
reproduced below, is representative of the claimed subject matter:
1. A device for obtaining, storing and displaying digital data
carried over a wireless network from a first remote information
server that is identified by a Uniform Resource Locator (URL)
in the Internet, said device comprising:

an antenna for transmitting and receiving digital
data over the air;

a wireless transceiver coupled to said antenna for bi-
directional packet-based digital data communication over the
air via said antenna;

a non-volatile memory coupled to said wireless
transceiver for storing digital data received by said wireless
transceiver from the wireless network;

a first memory for storing the URL of the first remote
information server;

a display component coupled to said non-volatile
memory for displaying the digital data stored in said nonvolatile
memory; and

a single enclosure housing said antenna, said wireless
transceiver, said non-volatile memory, said first memory and
said display component,

wherein: said device is addressable in the Internet; and
said device is operative for automatically and periodically
communicating with the first remote information server at all
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times when said device is in operation for receiving digital data
from the first remote information server, and for storing and
displaying the received digital data.

Appeal Br. 111, Claims App.

REJECTIONS
Claims 1–123 stand rejected under 35 U.S.C. § 112 ¶ 1, as failing to
comply with the written description requirement.2 Non-Final Act. 6.
Claims 1–4, 6, 8–11, 16–18, 23, 25–34, 36–39, 45–51, 60, 61, 64, 65,
72–90, 95, 96, 101–103, and 113–123 stand rejected under pre-AIA 35
U.S.C. § 102(e) as being anticipated by Bell et al. (US 2004/0044785 A1;
published Mar. 4, 2004) (“Bell ’785”).3 Non-Final Act. 12.
Claims 5, 19, 24, and 52 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Bell ’785 and Fong
(US 2003/0095152 A1; published May 22, 2003). Non-Final Act. 24.
Claims 7, 12–15, 40–44, 53, 62, 63, 91–94, and 105 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Bell ’785 and Bell et al. (US 2004/0044723 A1; published
Mar. 4, 2004) (“Bell ’723”). Non-Final Act. 24.

2 Claims 2–5, 9–11, 16, 17, 19, 24–36, 38, 45, 48, 49, 51, 52, 56, 57, 59–64,
67, 73–90, 96, 98–100, and 111–113 are listed in the heading of the
rejection, but not in the body of the rejection. We understand these claims to
be rejected under 35 U.S.C. § 112 ¶ 1 based on their dependence on claims
1, 23, and 46.
3 The heading to the 35 U.S.C. § 102(e) rejection includes claims 66–70, but
these claims are addressed under the 35 U.S.C. § 103(a) rejection over Bell
’785 and Lawrence. See Non-Final Act. 12, 21, 25–26. Similarly, claim 97,
though listed in the heading of the § 102(e) rejection, is instead substantively
addressed in the § 103(a) rejection of Bell ’785 and Masterson. See id. at
12, 27–28.
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Claims 20–22, 54–59, and 66–70 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of Bell ’785 and
Lawrence et al. (US 2005/0155077 A1; July 14, 2005) (“Lawrence”). Non-
Final Act. 25.
Claim 35 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bell ’785 and Christodoulou et al. (US
2004/0225708 A1; published Nov. 11, 2004) (“Christodoulou”). Non-Final
Act. 26.
Claim 71 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bell ’785 and Zhang (US
2002/0080010 A1; published June 27, 2002). Non-Final Act. 26.
Claims 97–100 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bell ’785 and Masterson et al.
(US 2003/0018755 A1; Jan. 23, 2003) (“Masterson”). Non-Final Act. 27.
Claims 104 and 106–110 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Bell ’785 and Dickie
(US 2003/0041206 A1; published Feb. 27, 2003). Non-Final Act. 28.
Claims 111 and 112 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bell ’785 and Yamada et al.
(US 2004/0100460 A1; published May 27, 2004) (“Yamada”). Non-Final
Act. 29.
ANALYSIS

Related Appeals

The current application is related to and has the same Specification as
a number of applications previously appealed to the Board: (1) application
12/358,551, which was the subject of Appeal No. 2016-000622 (Decision
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mailed on February 2, 2017); (2) application 15/253,915, which was the
subject of Appeal No. 2019-002199 (Decision mailed on August 11, 2020);
(3) application 12/890,888, which was the subject of Appeal No. 2019-
003193 (Decision mailed on November 18, 2020; and (4) application
12/889,998, which was the subject of Appeal No. 2019-003425 (Decision
mailed on December 28, 2020) (collectively, “Related Appeals”). There is
substantial overlap in the rejections and corresponding arguments made by
Appellant in the current appeal and in the Related Appeals. Accordingly,
where appropriate, we rely on our analysis in those Decisions rather than
repeating the analysis again here.
Petitionable Matters
We begin by addressing three of Appellant’s arguments that relate to
PTO procedure. First, Appellant argues that the Examiner has shown bias
against Appellant in prosecuting this and related applications. Reply Br. 2.
Specifically, Appellant argues that the prosecution of this case has been a
“moving target,” and is a “non-ordinary and special case of improper
prosecution and the PTAB should not contribute to such improper handling
of applications.” Id. at 5. Second, Appellant makes several arguments that
the Examiner’s Answer improperly raises new issues or fact finding. E.g.,
id. at 4. Third, Appellant also argues, in support of various arguments, that
“[t]his rejection is raised for the first time in this Action, which is
prosecution re-opening after 6 office actions. Clearly this rejection is only in
response to the Appeal Brief filed, which is improper, and should not be
encouraged by the PTAB.” See, e.g., Appeal Br. 19, 21, 23, 25, 27, 29, 32,
37, 43, 44, 46 (emphasis omitted).
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The Board’s role is to hear appeals reviewing the rejections on the
record. See 35 U.S.C. § 6(b) (“The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review adverse decisions of examiners
upon applications for patents pursuant to section 134(a)”). Each of
Appellant’s three arguments above relates to petitionable matters, not
appealable matters, and we do not address them in our opinion. See 37
C.F.R. § 1.181(a) (“Petition may be taken to the Director: (1) From any
action or requirement of any examiner in the ex parte prosecution of an
application . . . which is not subject to appeal to the Patent Trial and Appeal
Board or to the court”); MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 1201 (“The line of demarcation between
appealable matters for the Board and petitionable matters for the Director of
the U.S. Patent and Trademark Office (Director) should be carefully
observed.”).
35 U.S.C. § 112 ¶ 1 Rejections
Appellant repeats the two general arguments it made in the Related
Appeals. See Decision 2019-002199, pp. 4–5; Decision 2019-003193, pp.
9–12; Decision 2019-003425, pp. 6–8. First, Appellant argues that the
Examiner did not make similar rejections in previous office actions in
different, co-pending applications having the same priority date and
Specification. See Appeal Br. 13–47; see generally Reply Br. Second,
Appellant argues the prior art rejections are inconsistent with the written
description rejections. See id.
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
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subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
[T]he test requires an objective inquiry into the four corners of
the specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id.; see also AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1298 (Fed. Cir. 2014) (“The essence of the written
description requirement is that a patent applicant, as part of the bargain with
the public, must describe his or her invention so that the public will know
what it is and that he or she has truly made the claimed invention.”);
Examining Computer-Implemented Functional Claim Limitations for
Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61, 62 (Jan. 7, 2019).
“[W]hile the description requirement does not demand any particular form
of disclosure, or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad, 598 F.3d at 1352 (citation omitted).
“Adequate written description means that, in the specification, the
applicant must ‘convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the [claimed]
invention.”’ Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
(alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991)). “When no such description can be found in the
specification, the only thing the PTO can reasonably be expected to do is to
point out its nonexistence.” Id. (citing In re Alton, 76 F.3d 1168, 1175 (Fed.
Cir. 1996)). “In the context of the written description requirement, an
adequate prima facie case must therefore sufficiently explain to the applicant
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what, in the examiner’s view, is missing from the written description.” Id.
The burden then shifts to the applicant to demonstrate where adequate
written description can be found. Id. at 1371.
Because the Examiner’s handling of different claims in different
applications has no bearing on the test for written description in the present
case,4 or on the disclosure in the references cited in the prior art rejections,
we do not find Appellant’s general arguments to be persuasive as to
Examiner error. For Appellant’s second argument, we further emphasize
that the tests for written description and obviousness are different, and “a
description that merely renders the invention obvious does not satisfy the
[written description] requirement.” Ariad, 598 F.3d at 1352. Thus, the prior
art might render a claim obvious even though identical wording in an
application’s specification failed to provide sufficient written description.
We now turn to each of Appellant’s specific arguments.
“packet-based” – Claims 1, 23, and 46
Claim 1 recites “a wireless transceiver coupled to said antenna for bi-
directional packet-based digital data communication over the air via said
antenna.” Appeal Br. 111, Claims App. Claims 23 and 46 recite
commensurate limitations. Id. at 115, 120. The Examiner finds “[t]here is
no description of wireless bi-directional packet-based digital data
communication with a remote server.” Non-Final Act. 7.
Appellant argues the Examiner admitted in a related application that
there is support in the Specification for a “LAN.” Appeal Br. 19–20.

4 We note Appellant has not identified, with specificity, the reasons why the
Examiner would be precluded from making a valid rejection herein, merely
based on previous Examiner decisions.
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Appellant also argues that the Examiner admits “that the specification
teaches ‘communication with a remote server,’ further describes Internet
communication, Local Area Network (LAN) / Ethernet, and other
technologies that are known in the art to use packet-based communication.”
Id. at 21.
Appellant’s arguments are not persuasive because they do not fully
address the Examiner’s rejection. Rather, we agree with the Examiner that
“the mention of a LAN in the specification does not provide descriptive
support for ‘a wireless transceiver coupled to said antenna for bi-directional
packet-based digital data communication over the air via said antenna,’ as
recited in claim 1.” Ans. 4. Appellant does not persuasively argue why the
mention of a “LAN” indicates that the inventor was in possession of the
foregoing limitation. See Reply Br. 9–11. The fact that packet-based
communication was known in the art does not mean that Appellant was in
possession of the recited device with packet-based digital communication as
claimed. For example, Appellant’s argument relies on a wired LAN when
the claims expressly require wireless or an analog modem when the claims
expressly require digital. See Appeal Br. 20.
Accordingly, on this record, we are not persuaded the Examiner erred.
“concurrently carrying a power signal and the digital data” – Claim 71
Claim 71 ultimately depends from independent claim 46, which
recites, in part, “communicating over the WLAN with the first remote
information server via the Internet for receiving digital data from the first
remote information server.” Appeal Br. 120, Claims App. Claim 71 recites
“wherein said second connector is operative for connecting to a cable
connected for concurrently carrying a power signal and the digital data, and
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said device is further operative to be at least in part powered from the power
signal.” Id. at 124. The Examiner finds the Specification “does not describe
the device as being connected to both cable wiring, which carries a power
signal and digital data, and a wireless LAN.” Non-Final Act. 10.
Appellant argues that the claimed device is not limited to a single
interface or connection. Appeal Br. 40 (citing Spec. 20:13–16, 20:20–23,
21:1–10, 22:25–28, 23:1–3, Fig. 15b).5 Appellant also argues that the
Specification teaches that the “invention embraces any combination of the
above embodiments.” Id. (citing Spec. 31:17) (emphasis omitted).
Appellant’s arguments are not persuasive. Appellant relies on an
embodiment where a cellular telephone is used as the communication means.
See generally Spec. 21–23. The Specification describes that “[i]n such
configuration, attaching a cellular telephone set 132 to an information device
supports two functions: charging and communication.” Spec. 22:5–7. This
embodiment is shown in Figure 14, reproduced below:

5 In various places in the Appeal Brief, the citations provided by Appellant
are not accurate. For example, Appellant cites to page 20, lines 22–23, but
the citation referred to and quoted is at page 22, lines 13–15. E.g., Appeal
Br. 40.
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Figure 14 depicts device 140, including power supply 12, charger 141,
and cellular adaptor 131, which is connected to cellular telephone 132.
Spec. 22:7–9. In this embodiment, the device is modified to act as a charger
for the cellular telephone. Id. at 22:4–5. Figure 15 depicts a pictorial view
of Figure 14. Id. at 22:11.
Appellant’s arguments focus on the number of interfaces and ports on
the device, but does not fully address the Examiner’s rejection, which is not
directed at the number of ports or interfaces, or the language in claim 71,
which recites that “said second connector is operative for connecting to a
cable connected for concurrently carrying a power signal and the digital data
and said device is further operative to be at least in part powered from the
power signal.” Appeal Br. 124, Claims App. The embodiments Appellant
relies upon do not disclose such a cable. Rather, as shown in Figure 14
above, the device has a power cable 19 which is connected to power supply
12 within device 140, and power plug 18. We see no indication in the
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Specification, and Appellant has not directed us to any indication, that power
cable 19 is “concurrently carrying . . . digital data.”
Accordingly, we are not persuaded the Examiner erred.
Additional Limitations
The Examiner finds other limitations lack written description support,
including “non-volatile memory” and “first memory” (claims 1, 37, 47, 95,
97), “WLAN” (claims 6, 7, 39, 40, 46, 50, 53, 85, 115–117), “firmware”
(claims 8, 23, 46, 72, 115–117), “wherein the communication with the first
remote information server is based on spread spectrum modulation” (claims
12, 13, 41, 42, 91, 92), “license-free radio band” (claims 14, 15, 43, 44, 93,
94), “store and play digital audio data” (claims 18, 101), “digital to analog
converter coupled to said non-volatile memory” (claims 20, 21, 54, 55),
“analog video signal” (claims 21, 22, 66), “video data” (claims 68, 69, 70,
118–123), “television set” (claim 23), “receive and display information from
a connected unit” and “receive digital data comprising information from the
[connected] unit” (claims 102–110, 115–117), “communication with the unit
via said connector is based on a standard serial digital data bus” (claim 104),
and “DVD” (claim 114). See Non-Final Act. 7–11.
Appellant has not persuaded us of reversible error in the Examiner’s
findings and conclusions as to these limitations. See Non-Final Act. 7–11;
Ans. 3–11. For certain limitations, Appellant does not present separate
substantive arguments aside from the two general arguments discussed
above, which we do not find persuasive. See Appeal Br. 43–44 (“connected
unit” or “digital data from connected unit”); 44–45 (“serial digital data”);
46–47 (“DVD”). Appellant, therefore, has not sufficiently challenged the
substance of the Examiner’s findings. Further, we have previously
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addressed similar limitations in the Related Appeals, and adopt that
reasoning herein as well. See Decision 2019-003425, pp. 11–12,
Decision 2019-002199, pp. 15–16, Decision 2019-003193, pp. 19–23
(“connected unit”); Decision 2019-003193, pp. 34–35 (“serial data”).
For certain other limitations, Appellant cites to portions of Bell ’785
or other prior art references in support of its argument that these limitations
do not lack written description. See, e.g., Appeal Br. 22–23 (“non-volatile
memory” and “first memory”); 28–29 (“firmware”); 29 (“spread spectrum”
and “license-free radio band”). However, as discussed above, the disclosure
in the cited prior art references has no bearing on whether inventor was in
possession of the claimed invention. Further, these types of arguments do
not persuasively challenge the Examiner’s findings by, for example,
providing specific citations to the alleged support in the Specification. See,
e.g., Appeal Br. 28 (stating, without citation or further argument that “[t]he
support in the present specification is far and beyond these paragraph and
references [in Bell ’785 for the ‘firmware’ limitation]”). Further, we have
previously addressed many of these or similar limitations in the Related
Appeals, and adopt that reasoning herein as well. See Decision 2019-
003193, pp. 28–29 (“second memory”); Decision 2016-000622, p. 12,
Decision 2019-002199, pp. 12–13 (“firmware”); Decision 2019-003193, pp.
33–34, Decision 2019-003425, pp. 14 (“spread spectrum modulation” and
“license-free radio bands”).
With respect to “WLAN,” Appellant contends page 25, line 5 of the
Specification “explicitly recites ‘IEEE802.11x wireless transceiver,’” which
Appellant argues the Examiner admits represents “wireless LAN.” Appeal
Br. 25. We are persuaded by these arguments for claims 6, 7, 39, 40, 46, 50,
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53, 85, 115–117, for the same reasons as set forth in Decision 2019-003425,
pp. 12–13. However, we are not persuaded by these arguments with respect
to claim 71 (“concurrently carrying a power signal and the digital data”),
which depends from claim 46, for the reasons set forth in Decision 2019-
003193, pp. 15–17.
Appellant cites to the same portion of the Specification, disclosing an
“IEEE802.11x wireless transceiver,” in support of its argument that “spread
spectrum” and “license-free radio band” (claims 12–15, 41–44, 91–94), do
not lack written description support in the Specification. Appeal Br. 30. On
this record, we are not persuaded that the mere disclosure of an
“IEEE802.11x wireless transceiver” reasonably conveys possession of
“spread spectrum” and “license-free radio band.” See also Decision 2019-
003193, pp. 33–34 and Decision 2019-003425, pp. 14 (addressing “spread
spectrum modulation” and “license-free radio bands”).
With respect to “store and play digital audio” and “video data,”
(claims 18, 68, 69, 70, 101, 118–123), we are not persuaded by Appellant’s
arguments (Appeal Br. 31–32, 34–37) for the same reasons as set forth in
Decision 2016-000622, pp. 12–13 and Decision 2019-002199, pp. 6, 7, 13–
15. We also agree with and adopt the Examiner’s findings as to these
limitations. See Non-Final Act. 9–10; Ans. 6–8.
Similarly, we are not persuaded by Appellant’s arguments that the
Specification discloses “digital to analog converter coupled to said non-
volatile memory,” (claims 20, 21, 54, 55), for the same reasons as set forth
in Decision 2016-000622, p. 15; see also Decision 2019-002199, pp. 8–9.
We also agree with and adopt the Examiner’s findings as to these
limitations. See Non-Final Act. 8; Ans. 7–8.
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We are likewise not persuaded by Appellant’s arguments regarding
“television set” (claim 23). See Appeal Br. 38–39. We agree with and adopt
the Examiner’s findings as to this limitation. See Non-Final Act. 9; Ans. 9.
Claim 23 recites a “television set for receiving and displaying . . . digital
data from a wireless network . . . comprising . . . an antenna for transmitting
and receiving digital data over the air.” Appeal Br. 115, Claims App. We
agree with the Examiner that the Specification “describes the television as an
externally connected display for the information device, which obtains and
stores the information.” See Non-Final Act. 9; see also Ans. 9. The
Specification provides that the “information device may be integrated within
a . . . television set” and “may share other appliances display or correction
means.” See Spec. 3:12–17. The embodiments provided in the
Specification, and cited by Appellant, describe using the television set as the
display, where the information device does not include any display means of
its own. See Spec. Figs. 11, 17; Spec. 18:13–29; 24:11–20. In these
embodiments, the television set is used to display the information received
by the information device. See Spec. 24:11–13. However, Appellant has
not sufficiently explained how the cited disclosure in the Specification more
specifically indicates that Appellant was in possession of a “television set for
receiving and displaying . . . digital data from a wireless network . . .
comprising . . . an antenna for transmitting and receiving digital data over
the air,” as claimed. We have also previously addressed a similar limitation
in the Related Appeals, and adopt that reasoning herein as well. See also
Decision 2019-003193, pp. 30, 31.
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Summary 35 U.S.C. § 112, ¶ 1 Rejections
Accordingly, for the foregoing reasons, we sustain the Examiner’s 35
U.S.C. § 112, ¶ 1 rejections of claims 1–5, 8–38, 41–49, 51, 52, 54–84, and
86–123. We do not sustain the Examiner’s 35 U.S.C. § 112, ¶ 1 rejection of
claims 6, 7, 39, 40, 50, 53, and 85, based on our determination that the
Examiner erred in finding that “WLAN” lacked sufficient written
description in those claims. Although claims 46, 115, 116, and 117 also
recite “WLAN,” we sustain the Examiner’s 35 U.S.C. § 112, ¶ 1 rejections
for those claims based upon our findings that other limitations in those
claims lack written description, as discussed above.
35 U.S.C. § 102(e) Rejections Over Bell ’785
Claims 1, 23, 46, 115, 116, and 117
We are not persuaded by Appellant’s arguments that the Examiner
improperly combined distinct embodiments in the Bell ’785 reference
(Appeal Br. 47–48; Reply Br. 19–20) for the reasons discussed in Decision
2019-002199, pp. 18–19. We also agree with and adopt the Examiner’s
findings as to this argument. See Ans. 11.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose “obtaining, storing and displaying digital data carried over a
wireless network from a first remote information server” and “obtaining,
storing and displaying information from a first remote information server via
the Internet over a Wireless Local Area Network (WLAN)” (Appeal Br. 48,
63–64; Reply Br. 20–21, 28–29), for the reasons discussed in Decision
2019-002199, pp. 19–20 and Decision 2019-003425, pp 34–35. We also
agree with and adopt the Examiner’s findings. See Non-Final Act. 12, 13,
15; Ans. 12, 16–17. In particular, we agree with the Examiner that Bell ’785
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discloses that a “source on the Internet (para. 0083, 0091) can be accessed to
retrieve digital picture data which is received across a LAN to a digital
picture frame device 66 (para. 0088).” Ans. 12; see also Non-Final Act. 12
(“LAN 64 can be wireless”); see also Ans. 17 (“the device uses physical
and/or logical connections to LAN 64 or WAN 65, including a wireless
connection”). For the same reasons as set forth in Decision 2019-002199
and Decision 2019-003425, Appellant has not persuasively challenged the
Examiner’s findings.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose “an antenna for transmitting and receiving digital data over the
air,” and “a Wireless Local Area Network (WLAN) antenna for over the air
digital wireless communication” (Appeal Br. 50–51, 58–59; Reply Br. 21–
22, 25–26), for the reasons discussed in Decision 2019-003425, p. 35. We
also agree with and adopt the Examiner’s findings. See Non-Final Act. 12,
14, 15; Ans. 13, 15. In particular, the Examiner has presented findings that
the device in Bell ’785 “uses physical and/or logical connections to LAN 64
or WAN 65, including a wireless connection which necessarily includes an
antenna.” See Ans. 13 (citing Bell ’785 ¶ 56); see also Bell ’785 ¶ 30. For
the same reasons as set forth in Decision 2019-003425, Appellant has not
persuasively challenged the Examiner’s findings.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose “a wireless transceiver coupled to said antenna for bi-directional
packet-based digital data communication over the air, via said antenna” and
“a WLAN transceiver coupled to said WLAN antenna for bi-directional
packet-based digital data communication over the air, via said WLAN
antenna” (Appeal Br. 52–53, 59–61; Reply Br. 26), for the reasons discussed
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in Decision 2019-003425, p 36. See also Decision 2019-002199, pp. 20–21
(discussing “LAN transceiver”). We also agree with and adopt the
Examiner’s findings. See Non-Final Act. 12, 14, 15; Ans. 13, 15–16. In
particular, the Examiner has presented findings that Bell ’785’s device “uses
physical and/or logical connections to a LAN 64, including a wireless
connection, which would necessitate a wireless LAN transceiver to retrieve
the HTML data, which inherently includes bi-directional packet-based
digital data communication.” Ans. 13 (citing Bell ’785 ¶ 30). For the same
reasons as set forth in Decision 2019-003425, Appellant has not persuasively
challenged the Examiner’s findings.
Appellant further argues that Bell ’785 does not disclose “a non-
volatile memory coupled to said wireless transceiver for storing digital data
received by said wireless transceiver.” Appeal Br. 53–55. Appellant argues
that although Bell ’785 discloses various types of memory, it is “silent
regarding such a memory being coupled to any transceiver in general, and to
any ‘said wireless transceiver’ as recited in the claim.” Id. at 54. Appellant
also contends Bell ’785 does not disclose that memory 50 is “storing digital
data received by said wireless transceiver,” as recited in the claim. Id.
(emphasis omitted); Reply Br. 23.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings. See Non-Final Act. 12; Ans. 14. Specifically, Bell
’785 teaches that web objects can be retrieved from a web server and stored
in any suitable type of memory 34/50 so that they may be displayed on
computing or processor-based device 20/40’s display. See Bell ’785 ¶ 44
(“in response to a search request 31 sent to network 30 by Web browser 33,
a desired Web object 32 satisfying the search request 31 is returned to Web
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browser 33”); ¶ 48 (“objects 35 can be stored in any suitable type of memory
34 (e.g. random access memory (RAM), a hard drive, and/or in a video
display memory) in order that they can be displayed on the computing
device’s display”); Fig. 2; ¶ 52 (“memory 50, which can include any suitable
memory device(s) like read only memory (ROM); random access memory
(RAM); hard drive . . . and other types of data storage; or the like”).
Appellant’s arguments are also not persuasive for the reasons discussed in
Decision 2019-002199, pp. 21–22.
Appellant further argues Bell ’785 does not disclose “a display
component coupled to said non-volatile memory for displaying the digital
data stored in said non-volatile memory.” Appeal Br. 55. Appellant argues
“the Bell ’785 reference and the Action are both silent regarding any
coupling to the display 46 . . . to the first memory . . . as recited in the
claim.” Appeal Br. 56. Appellant further argues that “the Bell ’785
reference and the Action are both silent regarding any coupling to any
component for displaying information therefrom.” Id.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings. Non-Final Act. 13; Ans. 14. As discussed above, Bell
’785 teaches that web objects can be retrieved from a web server and stored
in any suitable type of memory 34/50 so that they may be displayed on
computing or processor-based device 20/40’s display. See Bell ’785 ¶ 48
(“objects 35 can be stored in any suitable type of memory 34 (e.g. random
access memory (RAM), a hard drive, and/or in a video display memory) in
order that they can be displayed on the computing device’s display”).
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose “said device is addressable in the Internet” (Appeal Br. 57–58;
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Reply Br. 24–25), for the reasons discussed in Decision 2019-002199, pp.
22–25. See also Decision 2019-003193, pp. 38–40 (finding Bell ’785
discloses “addressable in a digital network” under 35 U.S.C. § 103). We
also agree with and adopt the Examiner’s findings. See Non-Final Act. 13,
16; Ans. 14–15. For the same reasons as in Decision 2019-002199 and
Decision 2019-003193, Appellant has not persuasively challenged the
Examiner’s findings.
With respect to claim 23, Appellant argues Bell ’785 does not disclose
“a television set for receiving and displaying an analog video carried over a
coaxial cable” and “a television apparatus operative for receiving and
displaying the analog video carried over the coaxial cable.” Appeal Br. 60–
61; see also Reply Br. 27–28. Appellant contends “the cited paragraph 0030
fails to disclose any television set” and the “mentioned set top box is . . .
distinct from any end device such as a television set.” Appeal Br. 61–62.
Appellant also argues that the devices mentioned in Bell ’785, such as the
“set top box or digital television, are only devices that communicate with the
equated device over the local network 64 . . . [and are not] part of, or
integrated with [the equated device].” Id. at 62.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings. See Non-Final Act. 13; Ans. 16; see also Decision
2019-002199, pp. 29–30. Bell ’785 broadly describes its processor-based
devices or computing devices as including “any devices that can access a
network, such as the Internet,” and “may take the form of . . . a personal
entertainment device (e.g. a radio)[ or] audio-visual equipment.” Bell ’785
¶ 30. Bell ’785 also describes that processor-based devices on the local
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network can include a “digital television” and describes a user scheduling a
favorite television show. Id. ¶¶ 57, 70.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose a “video display” (Appeal Br. 64–65), for the same reasons
discussed in Decision 2019-002199, pp. 25. We note that Bell ’785
describes examples of its objects as including “video.” Bell ’785 ¶ 26. We
also agree with and adopt the Examiner’s findings. See Non-Final Act. 14–
15; Ans. 17.
We are also not persuaded by Appellant’s arguments that Bell ’785
does not disclose a “single enclosure” (Appeal Br. 71), for the reasons stated
by the Examiner. See Non-Final Act. 13, 16; Ans. 19. Specifically, Bell
’785 discloses that its processor-based device may take the form of a laptop
computer, digital picture frame, or set-top box, for example, which comprise
a single enclosure. See Bell ’785 ¶¶ 30, 57.
Accordingly, for the foregoing reasons we are not persuaded the
Examiner erred. We, therefore, sustain the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claims 1, 23, 46, 115, 116, and 117.
Claims 65, 102, and 1036
Claim 65 depends from claim 46 and recites “wherein said device is
further operative for receiving second data from a second connector . . .
wherein said first connector is coupled to said second connector for passing
the second data between said first and second connectors for displaying the

6 Appellant also argues claims 65–67 and 193–195 at pages 65–67 of the
Appeal Brief, but argues and recites limitations that are not present in these
claims. We, therefore, do not find those arguments to be persuasive. In
addition, the current application does not include claims 193–195. See
Appeal Br. 135, Claims App.
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second data on the video display.” Appeal Br. 123, Claims App. Claim 102
depends from claim 46 and recites “said device further comprises a second
connector coupled to said first connector for connecting to the unit.” Id. at
129. Claim 103 depends from claim 102 and recites “wherein said device is
further operative to transmit digital data to the unit.” Id.
Appellant argues Bell ’785 does not teach these limitations. Appeal
Br. 84–86. Specifically, Appellant argues that Bell ’785 is “silent regarding
second connector, or regarding receiving information from such additional
connector.” Id. at 85.
We are not persuaded by Appellant’s arguments. The Examiner finds
that Bell ’785’s teaching that “processor-based device 20/40 can be a set-top
box which would connect to an external television display” discloses the
claimed limitation of “a first connector coupled to said WLAN transceiver
for connecting to the video display outside said device.” Non-Final Act. 16.
The Examiner finds “processor-based device 40 can receive second data
from DVDs, magnetic tape cartridges, etc. which can be displayed.” Id. at
21 (citing Bell ’785 ¶ 52) (emphasis added). For example, the Examiner
“points to the removable media drive as a connector to external memory
units including memory sticks.” Ans. 24 (citing Bell ’785 ¶ 52). We find
this disclosure sufficiently teaches the limitations in claims 65, 102, and 103.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(e) rejection of
claims 65, 102, and 103.
Claims 16, 30, and 54
Appellant contends Bell ’785 does not teach the limitations in claims
30 and 54. Appeal Br. 68. However, Appellant argues limitations that are
not recited in claims 30 and 54. Compare Appeal Br. 68, with Appeal Br.
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116, 122, Claims App. For example, Appellant argues claim 30 recites
“operative for communicating with only a single remote information server,”
but claim 30 actually recites “wherein said at least part of a graphical web
browser is based on Windows Internet Explorer.” Appeal Br. 116, Claims
App. We do not see a claim in the current application reciting the limitation
argued by Appellant as claim 30.
The Examiner states that Appellant’s arguments as to claim 30 might
instead address claim 16 (Ans. 17–18), which recites “wherein said device is
dedicated only for obtaining, storing and displaying information from the
first remote information server.” Appeal Br. 68. We agree. This is, indeed,
consistent with the language in dependent claim 54, which recites the same
limitation, but stands rejected under 35 U.S.C. § 103(a) over Bell ’785 and
Lawrence. See id. at 122, Claims App. Appellant’s arguments as to claims
16 and 54 are directed to a “single remote information server” (Appeal Br.
68) (emphasis added), which is not recited in claims 16, 54, or any other
claim in the application. Accordingly, Appellant’s arguments are not
persuasive. We, therefore, sustain the Examiner’s 35 U.S.C. § 102(e) and
§ 103(a) rejections of claims 16 and 54.
Claims 10, 11, 32, 33, 79, and 80
Appellant argues Bell ’785 does not disclose the limitations in claims
31, 32, 157, 158, 183, and 184. Appeal Br. 68–69; Reply Br. 31–33.
Appellant contends that claim 31 recites “communication with the first
remote information server is based on Internet protocol suite” and claim 32
recites “communication with the first remote information server is based on
TCP/IP.” Appeal Br. 69. Appellant again misidentifies the claims.
Appellant seems to be arguing claim 32 (Internet Protocol suite) and claim
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33 (TCP/IP). See Appeal Br. 117, Claims App. The current application
does not include claims 157, 158, 183, and 184. See Appeal Br. 123, Claims
App. Claims 10, 11, 79, and 80 recite limitations similar to those in claims
32 and 33, and Appellant presents similar arguments for those terms. See
Appeal Br. 113, 126, Claims App.; Appeal Br. 76–77. We are persuaded by
Appellant’s arguments (Appeal Br. 69, 76–77) for the same reasons as set
forth in Decision 2019-002199, pp. 30–31; see also pp. 28–29. Although
Bell ’785 may render obvious the use of TCP/IP, the rejection here is solely
for anticipation. Accordingly, we do not sustain the Examiner’s 35 U.S.C.
§ 102(e) rejection of claims 10, 11, 32, 33, 79, and 80.
Claims 34 and 81–84
Appellant purports to argue that Bell ’785 does not disclose the
limitation in claims 33 and 34. Appeal Br. 70. Yet Appellant seems to be
arguing the limitations in claims 34, 81, and 82. See Appeal Br. 126, Claims
App. Appellant also argues Bell ’785 does not disclose the limitations in
claims 83 and 84. Id. at 82. Claim 34 recites “operative to initiate a
communication with the first remote information server after a set period
following a prior communication session.” Appeal Br. 117, Claims App.
Claims 81 and 83 recites a similar limitation, and claims 82 and 84 depend
from claims 81 and 83. Id. at 126. We are persuaded by Appellant’s
arguments (Appeal Br. 70–71, 82) for the same reasons as discussed in
Decision 2019-003425, pp. 42–43. Accordingly, we do not sustain the
Examiner’s 35 U.S.C. § 102(e) rejection of claims 34 and 81–84.
Claims 3 and 45
Claim 3 depends from claim 1 and recites “wherein the wireless
network is a cellular network, said antenna is a wireless cellular antenna, and
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said wireless transceiver is a cellular wireless transceiver.” Appeal Br. 112,
Claims App. Claim 45 depends from claim 23 and recites similar
limitations. Id. at 119.
Appellant contends Bell ’785 does not teach the limitations in claims
3 and 45. Appeal Br. 72–73. Specifically, Appellant argues that although
Bell ’785 “mentions [a] cellular phone,” it “is silent regarding using the
cellular capabilities for receiving information as recited in the claims.” Id. at
73. Appellant also provides citations to case law on inherency. Id.
Appellant’s arguments are persuasive as to claim 45, but not as to
claim 3. The Examiner finds the processor-based device can be an Internet-
capable cellular phone. Non-Final Act. 17 (citing Bell ’785 ¶¶ 10, 30); Ans.
19–20. We agree with the Examiner’s findings as to claim 1, from which
claim 3 depends. Claim 1 recites a “device,” but independent claim 23, from
which claim 45 depends, instead recites a “television apparatus.” Appeal Br.
111, 115, Claims App. As discussed above, the Examiner relies on the
“digital television” disclosed as the processor-based device in Bell ’785 to
teach the limitations in claim 23, and has not sufficiently explained or shown
how the “digital television” can also be an “Internet-capable cellular phone.”
Accordingly, we are persuaded the Examiner erred, and we do not sustain
the Examiner’s 35 U.S.C. § 102(e) rejection of claim 45. We do sustain the
Examiner’s 35 U.S.C. § 102(e) rejection of claim 3.
Claims 6 and 39
Claim 6 depends from claim 1 and recites “the wireless network is a
Wireless Local Area Network (WLAN); said antenna is a WLAN antenna;
and said wireless transceiver is a WLAN transceiver.” Appeal Br. 112,
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Claims App. Claim 39 depends from claim 23 and recites a commensurate
limitation. Id. at 118.
Appellant’s arguments do not directly address the claim limitations or
the Examiner’s rejection, so as a result, Appellant’s argument is unclear.
Appeal Br. 73–76; Reply Br. 35. Appellant repeats arguments made in
connection with the independent claims. See, e.g., Appeal Br. 75 (“The Bell
reference is silent, and actually teaches away from, communication ‘via
Internet 65 over a LAN 64.’”) We do not find Appellant’s arguments
persuasive for the same reasons as discussed above and in Decision 2019-
002199, pp. 19–20 and Decision 2019-003425, pp 34–35. Therefore, on this
record, we sustain the Examiner’s 35 U.S.C. § 102(e) rejection of claims 6
and 39.
Claims 17 and 38
Claim 17 depends from claim 1 and recites “wherein the device is
addressable by a digital address that is a MAC address or an IP address.”
Appeal Br. 114, Claims App. Claim 38 recites a similar limitations. Id. at
118.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose these limitations. See Appeal Br. 77–78. As explained in
Decision 2019-002199, pp. 28–29, Decision 2019-003193, pp. 45–46, and
Decision 2019-003425, pp. 37–38, we are persuaded that the Examiner has
not sufficiently shown that Bell ’785 discloses an IP address, but we are
persuaded that the Examiner has sufficiently shown that Bell ’785 discloses
the alternatively claimed MAC address. Therefore, we sustain the
Examiner’s 35 U.S.C. § 102(e) rejection of claims 17 and 38.
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Claim 18 and 101
Claim 18 depends from claim 1 and recites “wherein said device is
further operative to store and play digital audio data.” Appeal Br. 114,
Claims App. Claim 101 recites a similar limitation. Id. at 120.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not disclose this limitation (Appeal Br. 78–79, 86–87; Reply Br. 42) for the
same reasons as explained in Decision 2019-002199, pp. 31–32. We also
agree with and adopt the Examiner’s findings. See Non-Final Act. 19; Ans.
21. Therefore, we sustain the Examiner’s 35 U.S.C. § 102(e) rejection of
claims 18 and 101.
Claims 25 and 47
Claim 25 depends from claim 23 and recites “wherein said television
set further comprises a non-volatile memory and is addressable in a digital
data network, and said television set is operative for communicating via the
wireless network with a first remote information server via the Internet for
receiving information from the first remote information server, and for
storing the received information in said non-volatile memory for displaying
the received information.” Appeal Br. 116. Claims App. Claim 47 recites
“a second memory coupled to said WLAN transceiver for storing at least
part of the digital data received by said WLAN transceiver.” Id. at 121.
Appellant contends Bell ’785 does not teach these limitations. Appeal
Br. 79–81. Specifically, Appellant argues that Bell ’785 does not teach
“using non-volatile memory for storing information received from the
WLAN as recited in these claims.” Id. at 79. Appellant contends Bell ’785
discloses two different types of memories: memory 50 and memory 34, but
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the Examiner improperly “seems to speculate that these memories are the
same.” Id.
We are not persuaded by Appellant’s arguments that Bell ’785 does
not teach these limitations for the same reasons as set forth in Decision
2019-003193, pp. 49–50. We also agree with and adopt the Examiner’s
findings. Non-Final Act. 19; Ans. 21. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 102(e) of claims 25 and 47.
Claims 4, 36–38, 50, 51, 95, and 96
Appellant contends that Bell ’785 does not disclose the “[a]ddressing
related limitations” of claims 4, 36, 37, 38, 50, 51, 95, and 96. Appeal Br.
83–84; Reply Br. 38–40. For example, claim 4 recites the “device is
addressable using a digital address,” claim 36 recites the “television set has a
digital address,” claim 37 recites “storing a digital address,” claim 38 recites
“the digital address is either a MAC address or an IP address,” and claims
50, 51, 95, and 96 recite similar limitations. Appeal Br. 112, 118, 121, 128,
Claims App.
We are not persuaded by Appellant’s arguments for the reasons
explained in Decision 2019-002199, pp. 22–25, 28–29; Decision 2019-
003193, pp. 38–40, 45–46; Decision 2019-003425, pp. 34, 37–38. We,
therefore, sustain the Examiner’s 35 U.S.C. § 102(e) rejection of claims 4,
36–38, 50, 51, 95, and 96.
Claim 118
Claim 118 recites “wherein the digital data comprises digital video
data and the display component comprises display video component.”
Appeal Br. 134, Claims App.
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Appellant contends that Bell ’785 is “silent regarding any video
display in general, and regarding any displaying of a video in particular.”
Appeal Br. 87.
We are not persuaded by Appellant’s arguments for the same reasons
discussed in Decision 2019-002199, pp. 25. We also note that Bell ’785
describes examples of its objects as including “video.” Bell ’785 ¶ 26. We
also agree with and adopt the Examiner’s findings. See Non-Final Act. 23;
Ans. 25. We, therefore, sustain the Examiner’s 35 U.S.C. § 102(e) rejection
of claim 118.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Fong
Claims 5, 19, and 52
Appellant argues that (1) Fong is not analogous art and (2) the
Examiner’s rationale for combining Bell ’785 with Fong is improper.
Appeal Br. 88–89. We do not find these arguments persuasive for the
reasons explained Decision 2019-002199, pp. 34–35 and Decision 2019-
003193, pp. 72–73. We also agree with and adopt the Examiner’s findings
and conclusions. See Ans. 25–27.
Appellant’s analogous art argument is also not persuasive because
Appellant simply provides conclusory argument that “Bell ’785 and Fong
references are in different fields, directed towards respectively different
purposes, and are based on respectively different structures, and thus are not
analogous and cannot logically be combined.” Appeal Br. 88. In that
section, Appellant does not provided any supportive evidence for these
arguments. Attorney arguments in a brief cannot take the place of evidence.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For example,
Appellant does not provide substantive argument as to what the fields,
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purposes, and structures of the claimed invention, Bell ’785, and Fong are,
and, therefore, how they differ so as to support its argument that they are not
analogous art. Further, although Appellant argues that “Bell ’785 and Fong
are non-analogous to one another,” Appeal Br. 88 (emphasis modified), the
test for analogous art is instead whether a reference is “analogous to the
claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(emphasis added).
In the Answer, the Examiner finds that “Bell ’785 and Fong are both
directed [to] processor-based devices which receive data from a remote
server over a network and are, thus, analogous.” Ans. 25. Appellant argues
that the Examiner has provided field definitions for other references that
differ from this, and Fong is not analogous art based on these other field
definitions. Reply Br. 44. Although the Examiner does not use identical
wording, we do not find that the field definitions outlined by Appellant
differ substantially than that provided by the Examiner as it relates to Fong.
We have previously addressed the field of the claimed invention. See, e.g.,
Decision 2019-002199, pp. 41–42 (“Appellant’s claimed invention . . . [is]
directed to retrieving, storing, and displaying information on a device
connected to a network.”). Based on the record before us, we find the
Examiner has sufficiently established that Fong is in the same field as the
claimed invention. We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 5, 19, and 52.
Claim 24
Claim 24 depends from claim 23 and recites “wherein said flat-screen
video display component is based on Liquid Crystal Display (LCD)
technology and said single enclosure having dimensions and an appearance
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of a conventional flat, wall-mountable framed picture.” Appeal Br. 115,
Claims App.
We do not find Appellant’s arguments that Bell ’785 and Fong do not
teach the limitations in claim 24 (Appeal Br. 89–91) persuasive for the same
reasons as set forth in Decision 2019-002199, pp. 37–38. We also agree
with and adopt the Examiner’s reasoning. Non-Final Act. 24; Ans. 27. We
are also not persuaded by Appellant’s arguments that the proposed
combination is improper because claim 23, from which claim 24 depends,
recites a television apparatus. Reply Br. 46. As relied upon by the
Examiner, Fong teaches a variety of display types, including LCD, CRT,
plasma, etc. Non-Final Act. 24 (citing Fong ¶ 35). We, therefore, sustain
the Examiner’s 35 U.S.C. § 103(a) rejection of claim 24.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Bell ’723
Claims 7, 12–15, 40–44, 53, and 91–94
The Examiner finds that Bell ’785 does not specifically disclose
“wherein said WLAN transceiver is operative to communicate substantially
according to IEEE802.11 standard or wherein the wireless communication is
based on spread spectrum modulation or uses a license-free radio frequency
band,” and therefore relies on Bell ’723 to teach these limitations. Non-
Final Act. 25.
Appellant contends that the combination of Bell ’785 and Bell ’723
“does not disclose any communication with a remote server in general, and
regarding receiving any information (or displaying) therefrom.” Appeal Br.
91. Appellant contends that Bell ’723 “explicitly teaches [IEEE 802.11]
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communication between the host 20 . . . and the appliance 10.” Id.7
Appellant argues that neither reference “disclose[s] any WLAN
communication WITH a SERVER.” Reply Br. 48.
Appellant’s arguments are not persuasive. We have addressed above
that Bell ’785 teaches wireless communication with a remote server. As the
Examiner finds, Bell ’723 “was relied upon to teach the well known use of
IEEE 802.11 wireless protocol for communication over a wireless LAN”
because Bell ’785 “does not explicitly teach the wireless LAN
communication as operating according to IEEE802.11 standard.” Ans. 28.
Appellant’s arguments do not persuasively address the Examiner’s findings.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims
7, 12–15, 40–44, 53, and 91–94.
Claims 62 and 63
Claim 62 depends from claim 46 and recites “an AC power plug for
connecting to an AC power outlet; and a power supply connected to said AC
power plug to be powered by power supplied from the AC power outlet, said
power supply comprising an AC to DC converter for DC powering at least
part of said device.” Appeal Br. 123, Claims App. Claim 63 also depends
from claim 46 and recites “a battery, wherein said device is operative to be
at least in part powered from said battery, and said battery is a primary or
rechargeable battery.” Id.
Because Bell ’785 does not explicitly teach how its processor-based
device is powered, the Examiner relies on Bell ’723 to explicitly teach that a

7 We believe Appellant incorrectly refers to Bell ’785 in this argument,
rather than Bell ’723, and have treated the argument accordingly. See
Appeal Br. 91 (“While the Bell ’785 reference may be teaching in paragraph
0044 communication using IEEE 802.11 standard . . . .”).
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processor-based device is powered by coupling to a suitable wall power
outlet or a battery. Non-Final Act. 25; Ans. 28.
Appellant contends the Examiner fails to provide rationale for
combining the features recited in claims 62 and 63. Appeal Br. 92.
Appellant also contends that adding the recited features “renders the device
described by the Bell reference improper for its intended use of being simple
and ‘low / reduced resources’.” Id.
In the Answer, the Examiner finds that it is “well known in the art” to
power a processor-based device, such as that disclosed in Bell ’785, by
coupling to a suitable wall power outlet or battery, and it would have been
obvious to one of skill in the art to do so. Ans. 28 (citing Bell ’723 ¶ 42).
Appellant responds that the stated rationale is “conclusory,” but aside
from that does not challenge the Examiner’s rationale on a substantive basis.
See Reply Br. 49. Appellant’s argument fails to persuade us that the
Examiner’s rationale is not sufficient pursuant to the guidelines in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Nor has Appellant shown
that combining Bell ’785 and Bell ’723 was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). We also
are not persuaded that the combination – which involves providing power to
Bell ’785’s processor-based device – renders it improper for its intended
purpose. To the contrary, the device in Bell ’785 needs power from some
source and the wall power outlet and battery of Bell ’723 that the Examiner
relies on are the two most likely candidates, as evidenced by the types of
devices discussed in Bell ’785. E.g., Bell ’785 ¶¶ 30 (“desktop, laptop,
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handheld”; “cellular phone”; “a digital picture frame, a personal
entertainment device (e.g. a radio), audio-visual equipment, a personal
digital assistant, Internet appliance, electronic book”), 57 (“set-top boxes”;
“digital televisions”).
Accordingly, on this record, we are not persuaded the Examiner erred.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims
62 and 63.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Lawrence
Claims 20–22, 54–59, and 66–70
The Examiner finds that Bell ’785 does not explicitly disclose a
digital to analog converter, an analog video signal for connecting to an
analog video display, the analog video signal is an S-Video signal, or a
composite video signal in a PAL or NTSC format. Non-Final Act. 25. The
Examiner finds that Lawrence teaches a set-top box “which formats media
received from a local network interface in a form suitable for transmission to
a television by converting the received data into analog form, including S-
Video, NTSC or PAL signals (para. 0025, 0034).” Id. at 25–26. The
Examiner further finds, “Since Bell ’785 discloses that the digital processor-
based device can be a set-top box . . . it would have been obvious to one of
ordinary skill in the art at the time of the invention to incorporate the above
teaching of Lawrence in order to use an analog television as a display for the
set-top box of Bell ’785.” Id. at 26. For claims 57–59 and 68–70, the
Examiner finds “Lawrence teaches connecting to a digital television display
such as an HDTV display (para. 0034).” Id.
We are not persuaded by Appellant’s arguments that Bell ’785 and
Lawrence do not teach the limitations in claims 20–22, 54–59, and 66–70
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(Appeal Br. 93–94) for the reasons set forth by the Examiner. See Ans. 29;
Non-Final Act. 25. However, we are persuaded by Appellant’s arguments
that the Examiner has not yet provided sufficient rationale for modifying
Bell ’785 with a digital HD display from Lawrence for claims 57–59 and
68–70. See Appeal Br. 94–95.
Appellant also raises, for the first time in the Reply Brief, argument
that Lawrence is not analogous art. See Reply Br. 50. We find that this
argument is not responsive to any new findings of fact or grounds of
rejection in the Examiner’s Answer. As a result, Appellant has waived this
untimely argument because Appellant has not shown any good cause for the
belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (Unless good cause is shown, the Board is not required
to address arguments in the Reply Brief that could have been presented in
the Appeal Brief.).
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 20–22, 54–56, 66, and 67. We do not sustain the Examiner’s 35
U.S.C. § 103(a) rejection of claims 57–59 and 68–70.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Christodoulou
Claim 35
Claim 35 ultimately depends from claim 23, and recites “further
operative to communicate with a second remote information server, different
from the first remote information server, via the Internet, when
communication with the first remote information server cannot be properly
executed within a selected time period or after a set delay.” Appeal Br. 117,
Claims App.
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The Examiner relies on Christodoulou to teach this limitation, and
finds that it would have been obvious to one of ordinary skill in the art to
incorporate this teaching into Bell ’785 “in order to provide an alternative
means of retrieving content in the event of server failure.” Non-Final Act.
26 (citing Christodoulou ¶ 41).
Appellant contends the Examiner improperly relies on hindsight in
combining Bell ’785 with Christodoulou because the Examiner’s rationale
for combining the references “is exactly what the application defines, and
further is clearly specified in the claim.” Appeal Br. 95–96. Appellant
further argues that Christodoulou “explicitly teaches using a different URL
for accessing the other server.” Id. at 96.
Appellant’s arguments are not persuasive for the reasons stated by the
Examiner. See Ans. 29. In particular, we agree with the Examiner that “all
claimed elements were known in the prior art and one skilled in the art could
have combined the elements as claimed by known methods with no change
in their respective functions, and the combination yields nothing more than
predictable results to one of ordinary skill in the art.” Ans. 29; see KSR, 550
U.S. at 416–417. We also find Appellant’s hindsight arguments
unpersuasive because Christodoulou, as cited by the Examiner (Ans. 29),
provides rationale for the combination. Christodoulou ¶ 46 (e.g., “[t]he
sequential use of alternate links in the manners described above provides
tolerance at the client side of faults at the server side”).
Appellant also raises, for the first time in the Reply Brief, an argument
that Christodoulou is not analogous art. See Reply Br. 51–52.8 We find that

8 The Reply Brief asserts that “[t]he Appeal Brief alleged that the Answer
does not explain WHY the Christodoulou and Bell ’785 are analogous and
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this argument is not responsive to any new findings of fact or grounds of
rejection in the Examiner’s Answer. As a result, Appellant has waived this
untimely argument.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 35.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Zhang
Claim 71
Claim 71 ultimately depends from claim 46, and recites “wherein said
second connector is operative for connecting to a cable connected for
concurrently carrying a power signal and the digital data, and said device is
further operative to be at least in part powered from the power signal.”
Appeal Br. 124, Claims App.
The Examiner relies on Zhang to teach this limitation, finding “Zhang
teaches the well known use of existing AC power lines as a medium for data
communication using any of the many commercially available power line
data transceiver modules.” Non-Final Act. 27 (citing Zhang, Abstract, ¶¶ 4,
16, 17, 21, 22). The Examiner further finds that it would have been obvious
to one of ordinary skill in the art to incorporate Zhang’s teachings into Bell
’785 “in order to minimize component size and simplify network
connections by making use of the power lines already conveniently present
for delivering power.” Id. (citing Zhang ¶¶ 4, 7).
Appellant makes the following arguments against the combination of
Bell ’785 and Zhang: (1) Bell ’785 focuses “on mobile and wireless-

thus may be combined.” Reply Br. 51. However, no citation to the Appeal
Brief is provided, and we do not see any analogous art argument regarding
Christodoulou in the Appeal Brief. See Appeal Br. 95–96.
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connected devices,” so it “teaches away from any device limited ONLY to a
cable connection”; (2) the combination “renders the device disclosed by Bell
[’785] inoperative to the intended use in general WAN networking, and in
particular in local or LAN applications”; (3) Bell ’785 “discloses a powering
scheme that is separate from any networking functionality,” so “[c]ombining
these power and data functionalities . . . clearly changes the principle of
operation of the D[P]F to make it a PC-like device”; (4) the Examiner
provides no evidence for the stated rationale, and such a configuration would
require “additional components, such as power / data splitter, and further
requires additional safety features to avoid electrification from the AC
power line”; and (5) adding hardware and the powering mechanism to Bell
’785 renders it improper for its intended use of being “simple and ‘low /
reduced resources’.” Appeal Br. 97–98; see also Reply Br. 53–54.
Appellant’s arguments are not persuasive. Bell ’785 relates to
processor-based devices, and, more specifically, “to apparatus and methods
to select and subsequently access information from a network.” Bell ’785
¶ 6. Bell ’785 discloses that such processor-based devices take the form of
“any” processor-based device, which includes “any devices that can access a
network.” Id. ¶¶ 29–30. Bell ’785 also describes that “connections to [the]
networks can be wired and/or wireless.” Id. ¶ 56. Bell ’785 explains the
“need for better and more user-friendly ways to retrieve network
information, such as Internet Web objects.” Id. ¶ 12.
Zhang generally describes a “networking system for transmitting data
over power lines [that] is built into an external AC adapter that powers a
computer device or peripheral.” Zhang Abstract. Zhang describes various
advantages to transmitting data along an existing power line, such as
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convenience, minimizing component size, and simplifying network
connections. Id. ¶¶ 4, 7.
Appellant’s teaching away argument is not persuasive. A teaching
away requires a reference to “criticize, discredit, or otherwise discourage”
modifying the reference to arrive at the claimed invention. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has not identified any
disclosure in Bell ’785 that criticizes, discredits, or otherwise discourages
using a wired connection. To the contrary, Bell ’785 explicitly discloses that
“connections to [the] networks can be wired and/or wireless.” Bell ’785
¶ 56; see Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir.
2013) (“A reference does not teach away, . . . if it merely expresses a general
preference for an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention claimed.”).
We also are not persuaded that the modification (e.g., incorporating
Zhang’s powering and transmitting data over power lines) renders Bell ’785
improper for its intended use. Although Bell ’785 acknowledges that some
types of processor-based devices have “relatively limited capabilities” and
“relatively limited processing and/or memory capabilities,” we do not agree
with Appellant that this represents the full scope of Bell ’785’s intended use,
rather than merely some disclosed embodiments. E.g., Bell ’785 ¶¶ 9, 11,
114 (“in an embodiment . . . for display on a processor-based device with
minimal or reduced resources”). Rather, Bell ’785 is more broadly directed
to selecting and accessing information over a network. See, e.g., id. at
Abstract, ¶¶ 6, 12, 24. In fact, Bell ’785 explicitly states that its processor-
based devices may include devices that do not generally have relatively
limited processing or resource capabilities, such as a “computer (e.g.,
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desktop, laptop, handheld, etc.).” Bell ’785 ¶ 30; see also id. ¶ 29
(“Computing device 20 may be or include a personal computer 24 or any
other processor-based device.”). Moreover, Bell ’785 explicitly states that
its processor-based device “can operate in a networked environment using
physical and/or logical connections to local network 64 and/or wide area
network (WAN) 65. The connections to these networks can be wired and/or
wireless.” Bell ’785 ¶ 56 (emphasis added). For the same reasons, we are
not persuaded that the modification changes Bell ’785’s principle of
operation.
Accordingly, we are not persuaded by Appellant’s arguments that the
Examiner has failed to provide sufficient rationale for combining Bell ’785
and Zhang. Rather, we find the Examiner has provided sufficient rationale
to combine the references pursuant to the guidelines in KSR. See Non-Final
Act. 27; Ans. 30.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 71.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Masterson
Claims 97–100
Claim 97 depends from claim 46 and recites “a second memory, and
wherein said second memory is operative for storing personalized
information.” Appeal Br. 128, Claims App. Claim 98 depends from claim
97 and recites “wherein the personalized information is a user name or a
password.” Id. Claim 99 depends from claim 97 and recites “wherein the
personalized information is set by the user.” Id. The Examiner relies on
Masterson to teach these limitations. Non-Final Act. 97–98.
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Appellant contends that Masterson does not teach a “second
memory.” Appeal Br. 99. Appellant also presents a number of arguments
against the combination of Bell ’785 and Masterson, and the Examiner’s
rationale for combining the two references. Id. at 99–100, 105–106.
Appellant also contends Masterson is not analogous art. Id. at 101–105.
Appellant’s arguments are not persuasive. We agree with the
Examiner that Bell ’785’s processor-based device has a “plurality of
memories,” and Masterson teaches storing personalized information in a file.
See Ans. 30. Therefore, we find the Examiner has sufficiently shown the
combination of references teaches the recited “second memory.”
We are not persuaded by Appellant’s arguments as to Masterson’s
status as analogous art and the Examiner’s rationale for combining the
references for the reasons explained in Decision 2019-003193, pp. 73–77.
In addition, we note that the Examiner finds that Masterson is directed to
“electronic devices which access a remote server over the Internet,” which,
as discussed above, is consistent with the field of the invention. See, e.g.,
Decision 2019-002199, pp. 41–42 (“Appellant’s claimed invention . . . [is]
directed to retrieving, storing, and displaying information on a device
connected to a network.”). We also agree with and adopt the Examiner’s
findings and conclusions. See Non-Final Act. 97–98; Ans. 31. We find the
Examiner has articulated how the claimed features are met by the proposed
combination of Bell ’785 and Masterson with some rational underpinning
(e.g., additional security and personalization) consistent with the guidelines
stated in KSR. See Ans. 30–31.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 97–100.
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35 U.S.C. § 103(a) Rejections Over Bell ’785 and Dickie
Claims 104 and 106–110
We are not persuaded by Appellant’s arguments that (1) Dickie is not
analogous art; and (2) the Examiner has not provided sufficient motivation
to combine Bell ’785 with Dickie (Appeal Br. 107; Reply Br. 59–62) for the
reasons set forth by the Examiner. See Non-Final Act. 28; Ans. 31–32. In
addition, we are not persuaded by Appellant’s arguments that Dickie is not
analogous art because as the Examiner explains, Dickie discloses a “battery
operated handheld unit to a portable computer with an integrated docking
cradle for charging and communication.” Non-Final Act. 28. Dickie
describes interfacing a PDA with a portable computer allowing the PDA to
communicate with the portable computer so that they can, among other
things, exchange data. Dickie ¶ 20. “For instance, any new appointments,
contacts, emails, etc., that have been received by either device since they
were last synchronized are exchanged between the two devices.” Id. ¶ 30.
We find this disclosure by Dickie indicates that it is in the same field as the
invention, e.g., retrieving, storing, and displaying information on a device
connected to a network. We note that Bell ’785 expressly mentions a
“personal digitial assistant” (i.e., a PDA) as one possible processor-based
device. See Bell ’785 ¶ 30.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 104 and 106–110.
35 U.S.C. § 103(a) Rejections Over Bell ’785 and Yamada
Claims 111 and 112
We are not persuaded by Appellant’s arguments that the Examiner has
not provided sufficient rationale to combine Bell ’785 and Yamada (Appeal
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Br. 107–109; Reply Br. 63–66), for the reasons set forth in Decision 2019-
002199, pp. 40–42 and Decision 2019-003193, pp. 59–62. We also agree
with and adopt the Examiner’s findings and conclusions. Non-Final Act. 29;
Ans. 32. We find the Examiner has articulated how the claimed features are
met by the proposed combination of Bell ’785 and Yamada with some
rational underpinning (e.g., improved functionality by indicating current date
and time) consistent with the guidelines stated in KSR. See Non-Final Act.
29; Ans. 32.
We, therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 111 and 112.
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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–123 112 ¶ 1 Written Description 1–5, 8–38, 41–
49, 51, 52, 54–
84, 86–123
6, 7, 39,
40, 50,
53, 85
1–4, 6, 8–11,
16–18, 23,
25–34, 36–39,
45–51, 60, 61,
64, 65, 72–90,
95, 96, 101–
103, 113–123
102(e) Bell ’785 1–4, 6, 8, 9,
16–18, 23, 25–
31, 36–39, 46–
51, 60, 61, 64,
65, 72–78, 85–
90, 95, 96,
101–103, 113–
123
10, 11,
32–34,
45, 79–
84,
5, 19, 24, 52 103(a) Bell ’785, Fong 5, 19, 24, 52
7, 12–15, 40–
44, 53, 62, 63,
91–94, 105
103(a) Bell ’785, Bell ’723 7, 12–15, 40–
44, 53, 62, 63,
91–94, 105

20–22, 54–59,
66–70
103(a) Bell ’785, Lawrence 20–22, 54–56,
66, 67
57–59,
68–70
35 103(a) Bell ’785,
Christodoulou
35
71 103(a) Bell ’785, Zhang 71
97–100 103(a) Bell ’785, Masterson 97–100
104, 106–110 103(a) Bell ’785, Dickie 104, 106–110
111, 112 103(a) Bell ’785, Yamada 111, 112
Overall
Outcome
1–123

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED