Ex Parte 6115074 et alDownload PDFBoard of Patent Appeals and InterferencesOct 29, 201090010075 (B.P.A.I. Oct. 29, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/010,075 12/27/2007 6115074 230.1-US-RX 1819 20872 7590 10/29/2010 MORRISON & FOERSTER LLP 425 MARKET STREET SAN FRANCISCO, CA 94105-2482 EXAMINER FERRIS III, FRED O ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/29/2010 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 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. 90/008,828 08/31/2007 6115074 4671-4672-001 2830 20872 7590 10/29/2010 MORRISON & FOERSTER LLP 425 MARKET STREET SAN FRANCISCO, CA 94105-2482 EXAMINER FERRIS III, FRED O ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/29/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FUNAI ELECTRIC CO., LTD. ____________ Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 United States Patent 6,115,074 Technology Center 3900 ____________ Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 2 Patent owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-24.2 Claims 25-44 have been confirmed. (See App. Br. 4.) We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. STATEMENT OF THE CASE This proceeding arose from two separate third party requests for ex parte reexamination of U.S. 6,115,074. The Office granted and merged the two proceedings (i.e., Reexamination Control 90/010,075 & 90/008,828). Appellant’s Brief describes five related litigations and investigations involving the ‘074 patent. Three separate litigation actions in the Central District Court of California were stayed pending the resolution of a separate investigation by The International Trade Commission which also instituted an enforcement proceeding. Pursuant to the investigation, an Administrative Law Judge at the ITC conducted a hearing and rendered an Initial Determination finding that claims 1, 5, and 23 of the ‘074 patent were infringed, and not invalid based on a combination of U.S. Patent 5,982,411 to Eyer and the ATSC (Advanced Television Systems Committee) A/55, and A/56 standards.3 The Commission declined to review the ALJ’s findings, except some aspects with respect to the infringement of claim 23, on 2 Patent owner, Appellant, Funai Electric Co. Ltd., is the real party in interest for this appeal and assignee of record of U.S. Patent 6,115,074 “System for Forming and Processing Program Map Information Suitable For Terrestrial, Cable or Satellite Broadcast” (issued Sept. 5, 2000 with listed inventors Mehmet Kemal Ozkan, Chia-Yuan Teng, and Edwin Arturo Heredia). 3 This combination is also involved here with the prior art reference and standards more particularly identified below. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 3 February 11, 2009. Respondents in the ITC investigation have appealed to the Federal Circuit Court of Appeals. Appellant states that the ‘074 patent and EPO Patent Application No. 98931718 claim priority to the same U.S. patent application that issued as the ‘074 patent. On January 29, 2001, the EPO Board of Appeals affirmed the rejection of the ‘718 application. (See App. Br. 2-3.) An oral hearing before the USPTO panel listed above involving the ‘074 patent and another patent assigned to the same assignee, US 5,329,369 (Appeal 2010-003274), was conducted at the USPTO on August 18, 2010. The ‘074 Patent4 The ‘074 patent describes a channel stream decoder for identifying channel map information encoded in an MPEG (Moving Pictures Expert Group) packetized data stream. The map information includes four separate items of information replicating the same four items of information transmitted in another portion of, or maps within, a normal MPEG data stream. The replicated map information associates a broadcast channel with packet identifiers used to identify packetized data streams that constitute a program transmitted on said broadcast channel. (See Col. 2, ll. 6-16; Fig. 4.) The Exemplary Claim, References, and Rejection Exemplary claim 1 on appeal reads as follows: Claim 1: Apparatus for decoding a datastream of MPEG compatible packetized program information containing program map information to provide decoded program data, comprising: 4 The ensuing description constitutes findings of fact referenced herein as “D1”. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 4 means for identifying channel map information conveyed within said packetized program information; and means for assembling said identified information to form a channel map for identifying said individual packetized datastreams constituting said program, wherein said channel map information replicates information conveyed in said MPEG compatible program map information and said replicated information associates a broadcast channel with packet identifiers used to identify individual packetized datastreams that constitute a program transmitted on said broadcast channel. (App. Br. Claims App’x.) The Examiner listed and employed the following prior art references: Eyer US 5,982,411 Nov. 9, 1999 Advanced Television Systems Committee, Program Guide for Digital Television, ATSC Standard, Document A/55 (Jan. 3, 1996) [hereinafter the A/55 standard]. Advanced Television Systems Committee, System Information for Digital Television, ATSC Standard, Document A/56 (Jan. 3, 1996) [hereinafter the A/56 standard]. International Organisation for Standardisation, Information Technology – Generic Coding of Moving Pictures and Associated Audio: Systems, Recommendation H.222.0, ISO/IEC 13818-1 (Nov. 13, 1994) [hereinafter the MPEG standard]. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 5 Claims 1-24 are rejected under 35 U.S.C. § 103 (a) as being unpatentable based on the combination of Eyer, the A/55 standard, the A/56 standard, and the MPEG standard.5, 6 Issue Appellant’s arguments and the Examiner’s responses primarily present the issue of whether the Examiner erred in finding and determining that it would have been obvious, based on a combination of Eyer, the A/55, the A/56, and the MPEG standards, to transfer a program map replicating map information already replicated in MPEG streams? Appellant’s arguments present further additional issues as addressed below. Eyer E 1. Eyer discloses a virtual channel map which allows a viewer to easily navigate channels grouped according to a common service provider. (Col. 12, ll. 1-6.) “Table 2 . . . is a virtual table map since it relates a virtual channel designator such as a channel number with a particular programming service provider’s signal.” (Col. 10, ll. 54-56.) The system allows a viewer to “immediately switch from channel 10 in the 192-198 MHz band to channel ABC-1 in the 506-512 MHz band.” (Col. 9, ll. 47-49.) Eyer teaches 5 The Examiner lists and relies on the A/56 and MPEG standards in the statement of rejection though not in the rejection heading. (See e.g., Ans. 3- 5, 12, 13.) Additionally, the A/56 standard is incorporated into and used in the system of Eyer (col. 10, ll. 59-63), while the MPEG standard is prominently referenced in opening remarks of the A/55 and A/56 standards (A/55 § 1; A/56 § 1.1 (citing the use of bit or transport streams constructed according to ISO/IEC 13818-1)). 6 The Examiner withdrew a rejection of claims 1-5, 11-19, 23, and 24 under 35 U.S.C. § 102(e) based on Eyer “in the interest of simplifying issues before the Board of Appeals.” (Ans. 3.) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 6 that a channel group can be maintained even if a particular affiliate changes its number because a channel number designation in Eyer’s system is “virtual” and does not necessarily correspond to an FCC designation. (Col. 10, ll. 8-15.) E 2. Eyer’s method employs a syntax for a virtual channel record as defined in a table map. (Col. 10, ll. 52-58.) “The syntax is compatible with standards of the Advanced Television Systems Committee (ATSC) described in ‘System Information for Digital Television – ATSC Standard,’ Document A/56, Jan. 3, 1996, Advanced Television Systems Committee.” (Col. 10, ll. 59-63.) The MPEG Standard MP 1. A transport stream consists of one or more programs. Transport streams begin with a 4 byte prefix, which contains a 13 bit Packet ID (PID). The PID identifies, via Program Specific Information (PSI) tables also carried in the transport stream, the contents of the data contained in the transport stream packet. The transport stream carries the following four PSI tables: Program Association Table (PAT), Program Map Table (PMT), Conditional Access Table, and Network Information Table. The tables contain the necessary and sufficient information to demultiplex and present programs. (The Conditional Access Table is present if scrambling is employed and the Network Information Table is optional.) (§ 2.4.1.) MP 2. The PMT specifies, inter alia, “which PIDs, and therefore which elementary streams are associated to form each program. This table also indicates the PID of the Transport Stream packets which carry the PCR for each program.” Id. The program elements of a particular program Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 7 typically share a common PCR (program clock reference) and program number. The PCR PID designates the location of the PCR. (Annex C.5, C.6.) “The Program Map Table [(PMT)] provides the mapping between a program number and the program elements that comprise it.” (Annex C.8.2.) MP 3. “ITU-T Rec. H.222.0│ISO/IEC 13818-1 requires a minimum of program information: program number, PCR PID, stream types and program elements PIDs.” (Id.) MP 4. The PSI tables are repeatedly transmitted at various frequencies. “This frequency will be a key determinant of the component of signal acquisition time due to PSI structures.” (Annex C.9 at p. 104.) “Higher transmission rates (than 25Hz) for the PSI data may be used to decrease the impact on channel acquisition time with only modest bitrate demand increases.” (Annex C.9 at p. 105.) Coordinating PAT and PMT packets can reduce acquisition time. (Id. at 104-105.) “Any implementation of [the standard] must make reasonable bandwidth demands for PSI information and, in applications where random access is a consideration, should promote fast signal acquisition.” (Annex C.9 at p. 103.) MP 5. “The packet-based nature of the Transport Stream allows for the interspersing of PSI information . . . . [which] provides significant flexibility in the construction and transmission of PSI.” (Id.) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 8 The A/55 Standard A/55 1. The A/55 standard describes a “Program Guide for Digital Television ATSC Standard.” (Title.) The standard “specifies a compact, easily acquired, and easily updated program guide data base” in “a standardized format for transmitting data about current and future programs . . . . This data can be acquired and processed by suitably equipped receivers to provide the user with an interactive program guide.” (§ 1.) “This Program Guide consists of all the data necessary to tune channels and display available program information. The Program Guide data is conveyed using the . . . [MPEG standard] system level transport.” (§ 4.) The Program Guide consists of a Master Program Guide (MPG) and several other guides. (Id.) The MPG “is defined in four major tables: Master Guide Table (MGT), Additional Guide Data Table (AGDT), Channel Information Table (CIT); and Event Information Table (EIT).” (§ 5.) For a closed network, “a common master program guide is provided on all physical transmission channels, and it contains the program guide map that directs the receivers to the physical transmission channels and packet identifiers (PIDs) that carry additional program guide information.” (§ 1.) A/55 2. “The MPG CIT shall contain the information needed to determine the video, audio, and data PIDs, physical transmission channel number, and channel information of all available channels within the time span of the MPG.” (§5.3 at p. 18.) A/55 3. The Program Guides “make data acquisition . . . easy [by employing] the concept of Channel Groupings.” (§5.1 at p. 6.) The different MPG tables employ this channel grouping by mapping such groups Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 9 to the CIT. (§5.3, Fig. 6.) In general, “[t]he data structures and transmission requirements of the Program Guide . . . are specified to optimize both the transmission bandwidth requirements, as well as the complexity of implementation at the receiver.” (§4 at p. 3.) Analysis Claims 1, 3, 4, 10, 11, 13, 14, 16, 18, 22-24 Appellant argues that “claim 1 is exemplary of the limitations of independent claims 11, 13, 14, 16, 23, and 24.” (App. Br. 53.) Appellant also argues that claims 3, 4, 10, 18, and 22 are allowable based on their dependency on one of the aforementioned independent claims. (App. Br. 63.) Accordingly, claim 1 is selected to represent claims 1, 3, 4, 10, 11, 13, 14, 16, 18, and 22-24. After initial disagreement over the scope of the independent claims, the Examiner now agrees with Appellant and Appellant’s expert, Dr. Bove, such that “in order to ‘constitute a program’ from an MPEG-2 [i.e., according to the MPEG standard] data stream as claimed, a minimally required amount of information consisting of at least [1)] MPEG program number, [2)] PCR PID, [3)] elementary PIDs and [4)] stream type information is required in order to identify individual packetized datastreams that form a program transmitted on a broadcast channel.” (Ans. 41 (citing Bove Decl. at ¶¶ 48-53).)7 In other words, claim 1 requires at least the four items of information listed. 7 Declaration of Dr. V. Michael Bove under 37 C.F.R. §1.132 in Support of Response to Final Office Action (filed May 11, 2009) (attached as Exhibit G, App. Br. App’x). Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 10 In making this determination, the Examiner found that the MPEG standard defines the same four types of necessary and sufficient information as required by claim 1 to identify a program – i.e., the program number, PCR PID, elementary PIDs, and stream type. (Ans. 41; accord MP 3.) The Examiner noted that the “Patent owner has not argued that the requirements of the claimed channel map information goes beyond anything other than the standard formats required by [the MPEG standard].” (Ans. 47.) The Examiner further noted that Dr. Bove’s declaration and Appellant’s arguments make it clear that skilled artisans understood at the time of the invention, that according to the then-current MPEG scheme, the four listed types of information were necessary to acquire a program. (Ans. 51 (citing App. Br. at 31, and Bove Decl. at ¶ 35 and generally at ¶¶ 31-40).) Appellant defines the Examiner’s position as follows: · Eyer teaches replication of some information from the MPEG PMT, i.e., program number, in a different table. · A/55 also teaches replication of some information from the MPEG PMT, i.e., elementary PIDs and data stream type, in a different table. · The MPEG standard, as interpreted by the skilled artisan, requires four items of information to acquire a program. From these, the Examiner concludes that it would have been obvious to make the technological leap to replicating all four items of necessary program map information in redundant channel map information, which would produce the benefit of avoiding the latency due to obtaining that information from the MPEG PMT. (Reply. Br. 19.) In response to the Examiner’s position as just outlined, Appellant argues that the Examiner fails to provide evidence that a skilled artisan Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 11 recognized “the advantage of replicating all the minimally required program map information in a channel map or even the resulting benefit of obviating the need to reference the MPEG PMT to acquire a program.” Id. On one hand, Appellant argues that the idea of replicating redundant program map information went against conventional wisdom and was counterintuitive, and as such, the Examiner’s finding that skilled artisans would have recognized a reduction in latency by transmitting redundant tables is not supported. (Reply Br. 20-21, 25.) On the other hand, Appellant acknowledges that “the only information that Eyer suggests to replicate is the program number.” (Reply Br. 20 (relying on Bove Decl. at ¶82).) Appellant further explains that “[t]he ‘redundant table’ suggested in each of A/55 and the Eyer reference would not have reduced latency, since neither cited table included all of the necessary information from the MPEG PMT to ‘constitute a program,’ as recited in the claims of the ‘074 patent.” (Reply Br. 18.) The Examiner explains that “[a]t the heart of the claimed invention . . . is the inclusion of ‘replicated information’ from the MPEG Program Map Table within channel map information.” The Examiner found that “it was already well known in the art of digital television broadcasts to replicate information from the MPEG Program Map Table in a different table also carried within the MPEG transport stream.” (Ans. 6.) For example, the Examiner found that “[t]he A/55 standard defines a Channel Information Table (CIT) that ‘contain[s] the information needed to determine the video, audio, and data PIDs, physical transmission number, and channel information of all available channels.” (Ans. 7; accord A/55 2.) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 12 The Examiner reasoned in part that “‘[m]otivation to combine the A/55 standard and the Eyer patent is reflected in the Eyer patent itself.’” (Ans. 56 (quoting the Request for Ex Parte Reexaminaton at 43 (Reexam. Cont. 90/010075).) The Examiner explains that Eyer points to a similar standard, the A/56 standard, for a more complete understanding of possible virtual channel tables. The Examiner also explains that the A/55 and A/56 standards define the requirements for digital television and that both define channel information tables. (Ans. 4, 5, 56; accord supra note 5; A/55 1.) The Examiner also points to the A/55 standard as describing optimization for faster program acquisition and using a CIT. (Ans. 9 (citing inter alia A/55 §5.3).) The Examiner further explains that the known minimally required information transmitted in the MPEG program stream and necessary for decoding is “transmitted repeatedly to avoid latencies at the receiver” and that it was therefore “known that the receiver would switch faster between programs if certain data was present at the receiver.” (Ans. 48, citing MPEG standard at § .1-.4, 2.4.4.8.)8 The Examiner then set forth a conclusion of obviousness, which Appellant quotes and responds to as follows: 8 Despite the Examiner’s citation to these particular MPEG standard sections, certain portions of the Examiner’s rationale appear to be derived partly from rationale found in the Decision of the Technical Board of Appeals 7 ¶ 4, Case No. T 1050/02-3.51 (European Patent Office March 8, 2006) (Exhibit U, App. Br. App’x) (reasoning in part that the MPEG standard requires that “important data . . . are transmitted repeatedly to avoid latencies at the receiver” and holding that supplying redundant data with bandwidth as a trade-off is not inventive). It would seem that this repeated transmission of the same data (i.e., apparent repeated transmission of the same MPEG PMT) would satisfy the disputed claim elements. However, Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 13 The Examiner refers to MPEG at .1-.4, 2.4.4.8 to find it obvious that “providing the same information in a redundant table (as suggested by A/55 and Eyer), would avoid further latencies at the receiver and provide faster switching between programs by simply accepting some loss of bandwidth.” Based upon a reading of those sections, however, Patent Owner sees no support for this proposition. (Reply Br. 18 (quoting Ans. 48).) While Appellant appears to be correct in that the MPEG standard sections cited by the Examiner do not appear to provide sole support for the factual premises concerning latency (slow acquisition) upon which the Examiner relies, in addition to Eyer and the A/55 standard as discussed further below, other sections of the MPEG standard do support the Examiner. (See MP 4 (showing repeated transmissions (i.e., at higher frequencies) to reduce latency (time of acquisition), “promot[ing] fast signal acquisition,” and also showing bandwidth/acquisition (which includes bit- rate) trade-offs).) And of course, a minimum of four data types must be present to allow program acquisition as the Examiner found. (MP 1- MP 3.) This support and similar findings by another tribunal (see supra note 8) suggests that the Examiner’s citations amount to a typographical error or similar harmless oversight.9 Appellant argues that the claimed invention creates a replicated map from the PMT and thus cannot be the PMT (App. Br. 34). As noted supra, the Examiner agreed with Appellant’s claim construction after protracted disagreement. 9 The Examiner further explains that the first and second office actions relied in part on the MPEG standards by incorporation of the third party request for reexamination. (See Ans. 56 (discussing motivation including “look[ing] to the most prominent standards (e.g. MPEG-2).”) The Examiner appears to Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 14 Moreover, apart from at most a general denial and an assertion related to (what appears to be) a faulty cite, Appellant does not challenge persuasively the Examiner’s underlying factual premise that skilled artisans knew that, in general, redundant tables reduce latency. Rather, Appellant appears to focus on the Examiner’s conclusion that it would have been obvious to employ a table having all the minimally required information to reduce latency in a program map. (See Reply Br. 21-22.) For example, as noted supra, Appellant explains that the cited sections of the MPEG standard do not support the conceptual leap to using redundant tables and even if they did, latencies would not have been reduced since the cited tables (in A/55 and Eyer) lack all the requisite information. (Reply Br. 18.) This last explanation amounts to an unpersuasive attack on the references individually. As the Examiner explains, the evidence shows that skilled artisans were aware of redundant tables as shown in Eyer, the A/55 standard, and the A/56 standard. In Eyer, the replication of the program number allows a user to “immediately switch” from one desired channel to another. (E 1.) Eyer’s redundant channel table implements the A/56 standard. (E.2; supra note 5.) have relied more heavily on suggestions from the MPEG standards after considering Dr. Bove’s declaration and other evidence (i.e., the EPO decision, etc.) (See e.g. Ans. 40-42, 56-57.) In any event, Appellant does not object to the Examiner’s reliance on the MPEG standard and employs the standard to support Appellant’s claim interpretation as discussed above (see also, e.g., Bove Decl. ¶¶ 26, 35), thereby waiving any arguments against such reliance. It is further noted that Dr. Bove’s declaration does not address the Examiner’s reliance on the MPEG standard as providing part of the suggestion or motivation for including the required information in redundant tables. (See Bove Decl. ¶¶ 95-100.) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 15 The A/55 standard provides a redundant table which provides a viewer with an interactive electronic program guide (while optimizing transmission bandwidth and receiver complexity). (A/55 1.) The tables transfer the “data necessary to tune channels and display available program information” (A/55 1) and “make data acquisition . . . easy” (A/55 3). Such easy acquisition and tuning by the transfer of necessary redundant map data for interaction at least suggests reduced latency in these redundant maps, because, for example, delayed interaction implies latency. Optimization of bandwidth suggests a tradeoff. (Accord MP 4.) In any event, these known redundant tables suggest some benefit in their use. One apparent reason for the tables as identified by the Examiner is to reduce latency (i.e., provide a faster response). Certain minimal information is required at the receiver to process a desired command, e.g., a command for a grouped channel according to Eyer and the A/56 standard, a command for an electronic program guide according to the A/55 standard, and a command for a program according to the MPEG standard. The record also shows that this information can be obtained from replicated tables (or maps) in the MPEG stream, such as the MPEG PMT. Replicating information from MPEG tables which are themselves replicated as repeated transmissions, constitutes a mere rearrangement or reduction of data in the replicated table. Moreover, replicating only the minimal amount of data required to process a desired command (i.e., for particular programs), while not required by claim 1 (because claim 1 does not preclude extra data in addition to the minimally required program data), would have been a matter of common sense to skilled artisans because such a command requires no Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 16 other data to process that command – i.e., any extra data amounts to unneeded information as it relates to such a specific command. In addition and under an alternative claim interpretation and rationale, not transmitting the normal MPEG stream after forming the replicated map does not increase the bandwidth contrary to Appellant’s arguments alleging teaching away (see Reply Br. 23-24 and further discussion below). Apparatus claim 1 reads on such a mere means for forming a program map (i.e., perhaps for later transmission thereof). On balance, the known benefit for using known tables, even if not explicit, appears to have been fast acquisition, because otherwise, the receiver would have to wait for the required information as it is transported in the standard tables of the MPEG stream. Eyer’s teaching of the ability to immediately switch channels at least suggests this benefit while the A/55 standard and the MPEG standard suggest faster acquisition as a trade-off of bandwidth. It is not disputed that the minimal amount of information required to obtain a program was also known. According to Appellant, this minimal information includes one additional piece of information not found in the combination of Eyer and the A/55 standard, i.e., the PCR PID (timing information). (See Reply Br. 16.) As discussed supra, the Examiner found and Appellant’s expert agrees (see Bove Decl. ¶¶ 95-97) that the MPEG standard makes it clear that the PCR PID information is one of the four items of information needed to acquire a program. (Ans. 40-41.) Since tables were known for providing information redundant to that transmitted in the MPEG PMT, and based on the foregoing discussion, it would have been Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 17 obvious to put whatever desired information is required into a similar table in order to obtain the desired result quickly, in this case a particular program. Appellant also asserts teaching away, lack of reasonable expectation of success (Reply Br. 22-23), and as indicated supra, “that the inventors’ idea to replicate redundant program map information in channel map information went against conventional wisdom.” (Reply Br. 25.) Appellant points to Dr. Bove’s declaration and the prosecution history to support these related assertions. (Id.) However, the assertions and evidence pointed to by Appellant are not persuasive and do not outweigh the teachings of the prior art for the reasons discussed above and further below; i.e., Eyer, the A/55 standard, the A/56 standard, and the MPEG standard, each employ redundant/replicating table maps evidencing a reasonable expectation of success suggesting a similar such table map for program acquisition. Secondary Considerations Appellant argues that “[o]f all the possible solutions to the channel latency problem, the world’s leading experts, the ATSC group, adopted precisely one: the ‘074 Patent inventor’s proposal to include information replicated from the MPEG Program Map Table in a separate table.” (Reply Br. 26.) Appellant asserts that A/55 and A/56 were in many ways competing and incompatible standards that were both rejected in favor of the subsequent A/65 standard (which corresponds to the ‘074 patent invention). (Id.) According to Appellant, the ATSC issued an IPSI Proposal which served as the basis for the A/65 standard and states: “‘Although these protocols (the A/55 and A/56 standards) were individually efficient and accomplished their purpose, their mutual implementation was difficult due Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 18 to their structural differences and their overlapping definitions. IPSI solves this problem.’” (Reply Br. 26-27 (citation omitted).)10 Appellant maintains that this evidence shows that “the ATSC committee rejected the prior art methods of A/55 and A/56 as unworkable separately or, even more so, in combination.” (Reply Br. 27.) Apparently the inventors were involved in the IPSI Proposal as discussed further below. But even if they were not, Appellant’s argument implies that a known latency problem existed at the time of the invention. This supports the Examiner’s findings supra showing that skilled artisans recognized latency problems associated with the known methods outlined in the MPEG, A/55, and A/56 standards. “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). In addition, Appellant’s argument shows that there was a known “difficult” problem in using two separate standards. The inventors solved the problem, in part, by combining different aspects of the two known standards. At most, Appellant’s evidence establishes that it was “difficult” to mutually implement the two standards, but notwithstanding the difficulty, this “mutual implementation” of the two standards occurred or was at least envisioned. As an example (aside from Appellant’s argument), Eyer, the 10 Advanced Television Systems Committee, An Overview of the IPSI Protocol for Terrestrial Broadcast with Application Examples, Document T3/S8-192 (July 9, 1997) (attached as Ex. R, App. Br. App’x) (also referred to as “IPSI Proposal” as indicated supra, see Reply Br. 27) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 19 A/55 standard, and the A/56 standard each employ the concept of channel grouping in a table map. (E 1-2; A/55 3.) Further, the A/55 and A/56 standards are based on the MPEG standards and in particular on information packets transmitted in one or more PSI tables. (MP 1-4; supra note 8.) The MPEG standard shows that MPEG streams in general “provide[] significant flexibility in the construction and transmission of the PSI.” (MP 4.) Hence, even if combining some aspects of the A/55 and A/56 standards may have been difficult, this “significant flexibility” provides a mechanism for overcoming that difficulty. Appellant buttresses the assertion of difficulty by stating that “[t]he ATSC adopted the ‘074 Patent inventor’s suggestion despite criticism from some that the idea was ‘risky’.” (Reply Br. 26.) The asserted basis for this risk stems for testimony before the ITC as follows: Q. What were the criticisms, as you understood it, that were made to this idea when you presented it. A. Ones that I remember are replicating information, for example, has a risk, because it is possible that the information no longer matches, and receivers can get confused about that. And I also remember that some people from the cable industry argued that because they already had deployed enough equipment in cable systems, that it would actually hard [sic] for them to follow those, to do replication.” (Heredia Tr. at 174:4-15.)11 In other words, the testimony shows that the industry criticism involved a risk of stale information resulting in “confused” receivers and 11 Partial Transcript of Testimony of Edwin A. Heredia in International Trade Commission Investigation No. 337-TA-617 (Aug. 11-22, 2008) (attached as Exhibit Q, App. Br. App’x). (See also App. Br. 75-77 (listing the attachments to the Brief).) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 20 market based risk presumably involving the required alteration of older equipment that cable companies had previously inserted. Entirely missing from this asserted criticism is the notion that any skilled artisan considered the invention to involve anything more than routine skill to overcome known receiver problems – or more simply, to modify existing receivers to accommodate the invention. While acceptance by the industry is indicative of unobviousness, in the case at hand, based on the testimony supra, and Appellant’s arguments, one named inventor (Heredia) was involved in convincing the ATSC industry standard group to adopt the invention as (at least part of) a new ATSC standard while according to the third party requestor, another named inventor (Ozkan) was a member of the “ATSC T3/S8” specialist group and the T3/S8 ad hoc group that was responsible for drafting these standards – i.e., the A/65 proposal. (Third Party Request for Reexamination 22 (Reexam. Cont. 90/010075); see also Reply Br. 26-27 (briefly describing the ATSC T3/S8 subcommittee and A/65 proposal).) Appellant’s attorney verified that at least some of the inventors were on the ATSC panel. (BPAI Hearing Tr. 12 (“Same inventors were filing - - the same people on our patent and the ATSCs.”).)12 Under these circumstances, adoption by ATSC is only minimally probative of unobviousness. For example, the inventors may have influenced other ATSC committee members not solely because the invention 12 Appellant’s statement at the oral hearing came in response to a question by Judge Easthom about whether the ATSC standard committee published the IPSI Proposal (i.e., the T3/S8 - 192 document) describing the invention prior to the effective filing date of the ‘074 patent. (See id. at 11.) Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 21 was unobvious but because a solution (requiring minimal additional effort) was readily available. Appellant’s Briefs do not point to evidence detailing the decision making process and in particular what influence the inventors may have had over the adoption of the ATSC A/65 standard. The totality of evidence presented, including evidence related to acceptance by the industry, alleged skepticism, teaching away, and other factors of record, does not outweigh the findings of record highlighted supra supporting obviousness. While Appellant also asserts that the combination does not suggest the means and step of identifying and assembling the channel map information, the arguments presented essentially reduce to the same arguments discussed supra. That is, Appellant maintains that the combination does not teach or suggest identifying or assembling all four pieces of information required to obtain a program. (See App. Br. 58-59.) To the contrary, as discussed supra, the combination does suggest all four pieces of required program acquisition data, and, based on the arguments presented and the Examiner’s findings (Ans. 17-19) and responses (Ans. 53-55), the means and step of identifying and assembling such information. Based on the foregoing discussion, the Examiner did not err in finding and concluding that Eyer and the known A/55, A/56, and MPEG industry standards, render obvious independent claims 1, 11, 13, 14, 16, 23, and 24 and dependent claims 3, 4, 10, 18, and 22.13 13 Although Appellant asserts that certain of these claims (e.g., 3, 11, 14, and 18) are not anticipated (App. Br. 46-49), Appellant does not present separate patentability arguments against the Examiner’s obviousness rejection of claims 3, 4, 10, 18, 22 (Ans. 24-26, 29-30). Rather, Appellant relies on arguments presented against the obviousness of claim 1. (See App. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 22 Dependent claims 2, 12, 15, and 17 Appellant’s arguments focus on claim 2 (App. Br. 45-46), hereby selected as representative of claims 2, 12, 15, and 17. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 2 follows: “Apparatus according to claim 1, wherein said channel map information further associates an individual program with a corresponding program clock reference (PCR) value.” Appellant argues that the PCR (i.e., “program clock reference”) value itself does not appear in the normal MPEG PMT stream, but rather only the PCR PID, which points to the PCR value, appears therein. As such, Appellant concludes that a skilled artisan would not have replicated something (the PCR value) which is not in the MPEG PMT. (Reply Br. 32.) This argument is not commensurate in scope with claim 2, which does not require a replication of the PCR value. Claim 2 is broad enough to read on the PCR PID normally included in the MPEG PMT and replicated in a channel map according to the obviousness findings described supra with respect to claim 1. A pointer in a channel map to the PCR value “associates an individual program” as set forth in claim 2. As such, the Examiner did not err in finding and concluding that the applied combination renders claims 2, 12, 15, and 17 obvious. Br. 63; Reply Br. 31.) Therefore, Appellant has not presented a sufficient argument, if any, to disturb the Examiner’s obviousness analysis and conclusion. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 23 Dependent claim 5 While Appellant nominally (at most) indicates that claim 5 is separately patentable from claim 1, the arguments track those presented for patentability of claim 1. (App. Br. 65.) Accordingly, the Examiner did not err in finding that the applied art renders claim 5 obvious. Dependent claims 6, 7, and 19 Appellant argues that claims 6 and 19 require “two ‘identification numbers used in conjunction to identify said broadcast channel’” (App. Br. 66.) Appellant explains that in the prior art, users employed only one channel number to identify a single digital channel. According to Appellant, users would enter, for example, “2” for a CBS channel in NY City, but according to the invention, users will enter for example, a “2-1.” (App. Br. 66.) The Examiner explained that Eyer specifically discloses that ABC-1, ABC-2, and ABC-3 are designated respectively as 10.1, 10.2, and 10.3, or 10-A, 10-B, etc. to reinforce channel groupings under a primary channel. (Ans. 61 (quoting and citing Eyer at col. 9, l. 58 to col. 10, l. 7).) The Examiner also found that Eyer discloses a four character designator in the channel information table. (Ans. 62.) The Examiner reasoned that it would have been obvious to place a two part identification number in a channel designator to reinforce the concept of channel groupings. (Id.) Appellant argues that these two part channel designators only appear on Eyer’s television screen and that Eyer discloses a unique channel number in the range from 1 to 999. (App. Br. 68.) With respect to claim 7, Appellant further argues that a user in Eyer does not enter two numbers and that Eyer’s system only transmits one number. (App. Br. 70.) Appellant Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 24 also argues that sending two numbers would have been counterintuitive and wasteful of bit resources. Appellant’s arguments are unconvincing. Since Eyer employs up to three digits to designate channels, it is not clear how bit resources would be any greater in the sending of two numbers, assuming for the sake of argument that there is a distinction between a digit and a number as set forth in the claim. Similar remarks apply to Eyer’s use of four characters. As such, substituting a user entry of a two part number and/or transmission of same in place of Eyer’s digits (ranging from 1 to 999) or in place of Eyer’s four characters amounts to a mere substitution (of numbers or characters) and would have been obvious for the purpose of advancing Eyer’s desire to reinforce the concept of a channel grouping as the Examiner reasoned. Eyer notes that a channel group can be maintained no matter what the channel number because a channel designation is “virtual” (E 1) – thereby suggesting other such virtual designations such as 10.1, 10.2, etc. as transmissions, inputs, or otherwise. Alternatively, as the claims do not require the numbers to be in more than one packet, any distinction in transmission of Eyer’s three digit number or four character designator over the claimed two (side-by-side) numbers constitutes a non-functionally descriptive distinction. Based on the foregoing discussion, the Examiner did not err in finding that the applied combination renders claims 6, 7, and 19 obvious. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 25 Claims 8, 9, 20, and 21 Appellant argues that these claims are not obvious based on reasons presented for patentability of claim 1 and because the prior art does not suggest conveying broadcast channel associating information in a descriptor section of said channel map information. (App. Br. 70-72.) Based on the arguments presented, claim 8 is selected as representative of claims 8, 9, 20, and 21. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner found that it was well known in the art to convey information in descriptor sections in a map. (Ans. 32-33 (citing the MPEG and the A/55 standards).) Appellant does not contest this finding. The Examiner also found that the A/55 discloses PID information in a descriptor list in a Master Guide Table (citing “at least Figure 5.7” and also “A/55 at [§] 5.1,”) thereby rendering obvious using descriptors in another table, including the CIT table. (Ans. 62-63). The Examiner also reasoned that the MPEG Program Map Table (another channel information table) contains descriptors and that the reasoning for replicating information as required by claim 1 supports also replicating descriptors in the CIT table. (Ans. 62.) The Examiner also reasoned that “[a] person skilled in the art considering the A/55 standard would naturally consider the alternative of moving the PID information into a descriptor section for purposes of making the data layout of the A/55 Channel Information Table less cluttered.” (Ans. 33.) Appellant argues that this latter “conclusion” amounts to “hindsight reconstruction” and that “no disclosure in any prior art reference includes an express or inherent teaching that the required information should be carried Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 26 in a descriptor within the ‘channel map information.’” (App. Br. 72 (citing Bove Decl. at ¶ 93).) Appellant’s argument and Dr. Bove’s opinion about what the references disclose is only partially helpful in determining what the references suggest. Based on the evidence and arguments presented, descriptors in mapping tables were known mechanisms for transmitting information. As such, placing replicated map information in or with such descriptors would have been obvious as a change to another known format for the predicable purpose of transmitting information in a recognizable format. While Appellant challenges the Examiner’s conclusion as based on hindsight, Appellant does not specifically state or point to evidence showing that skilled artisans would not have understood that descriptors in maps, or descriptors in general, involved known programming techniques or descriptive material for transmitting information or known techniques for simplifying the information presentation. Based on the foregoing discussion, the Examiner did not err in finding that the applied combination renders claims 8, 9, 20, and 21 obvious. Conclusion The Examiner did not err in finding and determining that it would have been obvious, based on a combination of Eyer, the A/55, the A/56, and the MPEG standards, to transfer a program map replicating map information already replicated in MPEG streams. Appeal 2010-007834 Reexamination Control 90/010,075 & 90/008,828 Patent 6,115,074 27 DECISION The Examiner’s decision to reject appealed claims 1-24 is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED KMF Counsel for Patent Owner: Robert A. Saltzberg Morrison & Foerster, LLP 425 Market Street San Francisco, California 94105-2482 Counsel for Third Party Requesters: Jason S. 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