DISH NETWORK CORPORATION

Patent Trials and Appeals Board

Aug 6, 2020

15055874 - (D) (P.T.A.B. Aug. 6, 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.
15/055,874 02/29/2016 David Robert Zufall P00012.US.04 2285
143292 7590 08/06/2020
Wash Park IP Ltd. -- DISH
387 Corona Street, Suite 540
Denver, CO 80218
EXAMINER
TRAN, PAUL P
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
08/06/2020 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):
jkennedy@washparkip.com
jtkennedy.jk@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID ROBERT ZUFALL, GERARD DANIEL MULFORD,
STEFAN BERNARD RAAB, MARIAM AGHDASI SOROND, and
MARCUS JOHN LE MAITRE
____________________

Appeal 2019-005381
Application 15/055,874
Technology Center 2600
____________________

Before ROBERT E. NAPPI, JEAN R. HOMERE, and
JAMES B. ARPIN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 98 through 122 and 124 through 133. Oral
arguments were heard on July 30, 2020. A transcript of the hearing will be
added to the record in due course. 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(a). According to Appellant, DISH Network Corp. is the real party-in-
interest. Appeal Br. 2.
Appeal 2019-005381
Application 15/055,874

2
CLAIMED SUBJECT MATTER
The claimed mobile devices and methods relate generally to providing
mobile interactive satellite services including a satellite operable to
communicate with mobile units, a terrestrial base transceiver station
operable to communicate with mobile units, and a ground station in
communication with the satellite and the terrestrial base transceiver station
to provide mobile interactive satellite services. Abstract. Claim 98 is
reproduced below.
98. A mobile device for communicating with a mobile
interactive satellite service system, the mobile device
comprising:
an antenna;
a modem coupled to the antenna and operable to
communicate information using a multicast component and an
interactive component of a mobile interactive satellite service;
and a processor unit coupled to a user input device, an output
device, and the modem such that the processor unit is operable
to:
output received information from the modem using
the output device;
receive interactive information from the user input
device; and,
based on the received interactive information,
transmit multicast data directly to two or more second
mobile devices using the modem, the antenna, and the
multicast component of the mobile interactive satellite
service.
Appeal Br. 26 (Claims App.).2

2 Throughout this Decision we refer to the Appeal Brief filed February 14,
2019 (“Appeal Br.”); Reply Brief filed July 8, 2019 (“Reply Br.”); Final
Appeal 2019-005381
Application 15/055,874

3
REJECTIONS
The Examiner rejected claims 98 through 122 and 124 through 133
under 35 U.S.C. § 112, ¶ 1, for failing to comply with the written description
requirement. Final Act. 8–11.
The Examiner rejected claims 98, 99, 103, 105 through 108, 114
through 122, and 124 through 133 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Treyz (US 6,711,474 B1, issued March 23,
2004) and Nord (US 2008/0166963 Al, published July 10, 2008). Final Act.
12–21.
The Examiner rejected claim 100 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Hoffberg
(US 2007/0087756 A1, published April 19, 2007). Final Act. 21–22.
The Examiner rejected claims 101 and 102 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Lee
(US 2006/0150219 A1, published July 6, 2006). Final Act. 22–23.
The Examiner rejected claim 104 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Ying
(US 7,609,700 B1, signed October 27, 2009). Final Act. 23–24.
The Examiner rejected claims 109 and 112 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Schiff
(US 2005/0207375 A1, published September 22, 2005). Final Act. 24–26.
The Examiner rejected claim 110 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Kim
(US 2007/0058083 A1, published March 15, 2007). Final Act. 26–27.

Office Action mailed September 20, 2018 (“Final Act.”); and the
Examiner’s Answer mailed May 22, 2019 (“Ans.”).
Appeal 2019-005381
Application 15/055,874

4
The Examiner rejected claim 111 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Freeburg
(US 5,394,561, issued February 28, 1995). Final Act. 27–28.
The Examiner rejected claim 113 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Treyz, Nord, and Weill
(US 2006/0190981 A1, published August 24, 2006). Final Act. 28–29.
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all the claims under 35 U.S.C. § 112. However,
Appellant’s arguments have not persuaded us of error in the Examiner’s
rejections of all the claims under 35 U.S.C. § 103
Rejection based upon 35 U.S.C. § 112, ¶ 1, Written Description
The Examiner finds that the Specification does not discuss the mobile
device includes a multicast component as recited in claim 98 or a terrestrial
multicast component as recited in claim 124. Final Act 9. Further the
Examiner finds that the Specification does not discuss the mobile device
“transmits multicast data directly to two or more second mobile devices” as
recited in independent claims 98 and 124. Id. at 10–11.
Appellant argues that the Examiner’s 35 U.S.C. § § 112, ¶ 1rejection
is in error as the Specification satisfies the written description requirement.
Appeal Br. 13–18. Specifically, Appellant argues that claim 98, recites the
mobile interactive services (MISSI) includes a multicast component and an
interactive component and that the Examiner’s construction of the claims
Appeal 2019-005381
Application 15/055,874

5
which construes the term as associated only with the ground station is in
error. Id. at 13–14. Further, Appellant argues there is no haec verba
requirement and that the skilled artisan would understand that the terrestrial
multicast component refers to a multicast component communicated through
the terrestrial base transceiver stations. Id. at 14. Finally, with respect to the
limitation concerning the mobile device transmitting to two or more other
mobile devices, Appellant cites to page 26, lines 1–6, of the Specification as
expressly teaching the mobile devices communicate with other mobile units.
Id. at 16–17.
The Examiner responds to Appellant’s arguments agreeing that the
Specification teaches that the mobile stations can receive multicast data but
finds there is nothing in the Specification that identifies that the mobile
devices can broadcast multicast data directly to other mobile stations. Ans.
25–28.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. The written description requirement serves “to ensure that the
inventor had possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him; how the specification
accomplishes this is not material.” In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). We have reviewed Appellant’s originally-filed Specification
and concur with the Appellant that the Specification demonstrates that
Appellant possessed the disputed limitations of independent claims 98 and
124.
Claim 98 recites that the mobile device has a modem coupled with an
antenna and is operable to communicate information using a multicast and
an interactive component of the mobile interactive satellite service. Further,
Appeal 2019-005381
Application 15/055,874

6
the claim recites that the mobile unit is coupled to a modem and can transmit
multicast data directly to two or more second mobile devices using the
modem. Appellant’s Specification identifies that the MISS provides
communication and makes use of two components, a multicast component
and an interactive component. Spec., pg. 3. Thus, when construed in light
of the Specification, these components are not physical components of the
system, but types of communication. Appellant’s Specification discusses
multicast transmission in the paragraph bridging pages 15 and 16 of the
Specification and identifies that mobile stations may transmit information,
thus demonstrating possession of the claimed mobile station transmitting
multicast information. Because this paragraph also identifies that the mobile
devices can receive multicast information from a terrestrial base transceiver
station, the skilled artisan would understand that the claim term “terrestrial
multicast component” as referring to the information received in this
manner. Further, Appellant’s Specification on page 26 identifies that the
mobile units include applications that allow for transmitting content and data
to other mobile devices, thus demonstrating that the mobile stations can
transmit information to two or more other mobile units. Thus, we find that
the Specification supports that Appellant possessed the claim limitation that
the processor of a mobile device transmit multicast data directly to two or
more second mobile devices, and we do not sustain the Examiner’s rejection
of independent claims 98, 124 and dependent claims 99 through 122 and 125
through 133.3

3 Appellant’s footnote 15, on page 16 of the Appeal Brief, states that they do
not accept the interpretation of this limitation being peer to peer. We
Appeal 2019-005381
Application 15/055,874

7
Rejection of independent claims 98 and 124 based upon 35 U.S.C.
§ 103
Appellant argues that the combination of Treyz and Nord do not teach
the claim 98 and 124 limitation directed to the mobile device transmitting
multicast data directed to two or more second mobile devices. Appeal
Br. 19–25. Appellant argues that Nord upon which the Examiner relies
teaches broadcasting, not multicasting as claimed. Id. at 19–21. Appellant
argues that Nord teaches broadcasting as radio broadcasts (e.g., FM) and the
chat messages are communicated via a traditional network, which are
separate and distinct from each other and are not part of a system or an
MISS, as claimed. Id. at 21–23. Thus, Appellant argues, “Clearly, the RF
broadcast path is not a multicast component of any communications system
as Nord’s RF broadcasts do not facilitate duplex communications.” Id. at
22. Appellant asserts that communications, as claimed, inherently require
both transmission and reception capabilities by devices on the network. Id.
at 23. Further, Appellant asserts that claim 98 recites that the multicast data
transmission using the MISS is a single system that supports both multicast

disagree and, consider the claim to be limited to transmission directly from
one mobile station to other mobile stations, without transmitting to any of
the other elements (terrestrial base station, or satellite) of the MISS system.
The claim restates “a processor … operable to … transmit multicast data
directly to two or more second mobile devices.” While the claim recites that
transmission uses the multicast component of the MISS system, we do not
consider this to be reciting transmitting other mobile stations through the
other elements of the MISS. The mobile station is part of the MISS and the
multicast component is not a physical component of the system, but a type
of communication. Additionally, Appellant’s Specification compels the
interpretation of transmission directly from one mobile station to other
mobile stations, without transmitting to any of the other elements of the
MISS system as this is the only interpretation the Specification supports.
Appeal 2019-005381
Application 15/055,874

8
and interactive data, where Nord teaches different networks are used. Id.
The Examiner provides two interpretations of the disputed limitation.
First, the Examiner asserts that the mobile device transmits multicast data to
two of more second mobile devices using the multicast component of the
MISS. Ans. 28. Second, the Examiner asserts, alternatively, that the mobile
device is able to transmit multicast data directly to two or more second
mobile devices via multicast component of MISS. Id. The Examiner
provides an explanation of how the combination of Treyz and Nord teaches
the limitation given either interpretation. Id. at 28, 29.
We disagree with the Examiner’s first interpretation as it reads the
word “directly” out of the claim 98 limitation “transmit multicast data
directly to two or more second mobile devices.” We, nonetheless, concur
with the Examiner that the combination of Treyz and Nord teaches the
disputed limitation given the second interpretation. The Examiner finds, and
we agree, that Nord’s disclosure of a mobile unit broadcasting to two or
more devices using short range wireless links teaches the claimed multicast
to two or more selected mobile devices as claimed. Ans. 29 (citing Nord,
Fig 2–4, ¶¶ 41, 62–65). Appellant’s arguments discussed above, which
focus on Nord teaching broadcasting and not multicasting or two way
communication on the same network, are not commensurate with the scope
of the claim and are not persuasive of error in the Examiner’s rejection.
Appellant’s Specification identifies that the MISS provides communication
and makes use of two components, a multicast component and an interactive
component. Spec., pg. 3. The Specification identifies that:
Multicast data may include, for example, broadcast video feeds,
broadcast audio feeds, data feeds, or the like. Interactive data
may be received from a mobile unit through a satellite and/or
Appeal 2019-005381
Application 15/055,874

9
terrestrial communications link (e.g., through an ancillary
terrestrial component of a mobile interactive satellite service).
Spec., pg. 10. Thus, when construed in light of the Specification, contrary to
Appellant’s arguments, multicast data may be broadcast data and does not
require two way communication. See also Spec., pg. 18 (identifying that the
multicast may be delivered in only the forward direction, i.e. not two way
communication). Also, Appellant’s arguments that Nord uses a different
network for the broadcasting than for the texting is not persuasive of error.
Appellant’s Specification discusses using different communication
technologies for the multicast and interactive components. See id. at pg. 14
(“in some implementations, it is desirable to use a variety of communication
techniques. For example, in an interactive multicast video system, it may be
desirable to provide a multicast video downlink using multicast
technologies, such as Digital Video Broadcasting (‘DVB’), while using a
broadband technology, such as IEEE 802.20, to provide interactivity and/or
additional downlink services.”). Thus, when construed in light of the
Specification, we are not persuaded by Appellant’s arguments that Nord’s
teaching of broadcasting information between mobile units differs from the
claim 98 limitation of transmitting multicast information to two or more
mobile units. As Appellant’s arguments have not disputed the Examiner’s
findings regarding Treyz and Nord, because they relate to the other
limitations of the claim, we sustain the Examiner’s rejection of claim 98 and
claims 99, 103, 105 through 108, 114 through 122, and 124 through 133,
similarly rejected and grouped with claim 98.
Appellant has not presented separate arguments with respect to the
Examiner’s obviousness rejections of claims 100 through 102, 104, 109, and
110 through 113. Accordingly, we sustain the Examiner’s rejections of
Appeal 2019-005381
Application 15/055,874

10
these claims for the same reasons as claim 98.
CONCLUSION
We reverse the Examiner’s rejection of claims 98 through 122 and
124 through 133, under 35 U.S.C. § 112, and we affirm the Examiner’s
rejections of claims 98 through 122 and 124 through 133 under 35 U.S.C.
§ 103.
In summary:
Claim
Rejected
35
U.S.C. §
Basis/References Affirmed Reversed
98–122, 124–
133
112 Written
Description
98–122,
124–133
98, 99, 103,
105 –108, 114–
122, 124–133
103 Treyz, Nord 98, 99, 103, 105
–108, 114–122,
124–133

100 103 Treyz, Nord,
Hoffberg
100
101, 102 103 Treyz, Nord, Lee 101, 102
104 103 Treyz, Nord,
Ying
104
109, 112 103 Treyz, Nord,
Schiff
109, 112
110 103 Treyz, Nord, Kim 110
111 103 Treyz, Nord,
Freeburg
111
113 103 Treyz, Nord,
Weill
113
Overall
Outcome
98–122, 124–
133

Appeal 2019-005381
Application 15/055,874

11
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