Ex Parte Debey

Board of Patent Appeals and Interferences

May 15, 2002

08897900 (B.P.A.I. May. 15, 2002)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HENRY C. DEBEY
_____________
Appeal No. 2000-1643
Application 08/897,900
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING, and BLANKENSHIP, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
rejection of claims 22 and 30, which constitute all the claims remaining in the
application.
The disclosed invention pertains to a method for optimizing transmission of a
program over a distribution system for multiple users. The program is divided into a
plurality of segments, at least some of which are further divided into a plurality of
fragments, and during each time interval one fragment of each segment is transmitted
Appeal No. 2000-1643
Application No. 08/897,900
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to the users’ receivers.
Representative claim 22 is reproduced as follows:
22. A method of transmitting a program to multiple users over a distribution
system comprising:
providing a program divided into a plurality of segments wherein at least
some of the segments are divided into a plurality of fragments; and
during each predetermined time interval transmitting one fragment of each
segment to users’ receivers.
The examiner relies on the following references:
Dancis et al. (Dancis) 3,731,282 May 1, 1973
Gimple et al. (Gimple) 4,430,731 Feb. 7, 1984
Yarbrough et al. (Yarbrough) 4,598,288 Jul. 1, 1986
Claims 22 and 30 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Yarbrough in view of Gimple with respect to claim 22,
and the examiner adds Dancis to this combination with respect to claim 30.
Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s arguments set forth in the briefs
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Application No. 08/897,900
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along with the examiner’s rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in claims 22 and 30.
Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed invention. Such reason must
stem from some teaching, suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
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complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been considered [see 37 CFR §
1.192(a)].
With respect to independent claim 22, the examiner cites Yarbrough as teaching
a system which provides a program divided into a plurality of segments wherein at least
some of the segments are combined and transmitted. The examiner acknowledges
that Yarbrough does not disclose that the segments are divided into fragments and
transmitted to the user as claimed. The examiner cites Gimple as teaching a CATV
system for dividing a segment (192 bits) into a plurality of fragments (24 frames) and
transmitted to users in time intervals (time slots). The examiner finds that it would have
been obvious to the artisan to divide the Yarbrough program segments into fragments
as taught by Gimple to control the ability of Yarbrough to more dynamically adapt to
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specific parameters of the broadcasted segments in Yarbrough [answer, pages 3-4].
Appellant argues that the examiner’s rejection does not address the last step of
claim 22. Specifically, appellant argues that the cited references do not teach or
suggest the transmission of one fragment of each segment during each predetermined
time interval. Appellant also argues that Yarbrough and Gimple cannot be combined
because the packetized transmission protocol of Gimple is irrelevant to the program
segments of Yarbrough. Appellant also notes that there is no explicit or implicit
suggestion within the references that they could be combined. Appellant argues that
the motivation to combine provided by the examiner is not suggested anywhere within
the cited references [brief, pages 4-8].
The examiner responds that the step of transmitting one fragment of each
segment during each time interval is “inherent to the claimed invention” [answer, page
5]. The examiner also notes that Yarbrough and Gimple both relate to program
distribution systems so that they are properly combinable. Finally, the examiner
responds that his motivation to combine is supported by Yarbrough [id., pages 6-7].
Appellant responds that the examiner has still not cited any art which teaches
transmitting one fragment of each segment during each time interval. Appellant argues
that there is nothing in Yarbrough to suggest dividing the program into individual
fragments that can be transmitted nonsequentially, resulting in noncontiguous
transmission of the program. Appellant also responds that the fact that Yarbrough and
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Gimple both relate to program distribution systems is insufficient as a basis to combine
them. Appellant asserts that the two references are nonanalogous art because they
relate to different fields of endeavor. Finally, appellant responds that each of the
portions of the prior art cited by the examiner fails to support the findings as asserted by
the examiner [reply brief].
We will not sustain the examiner’s rejection of claim 22 because the examiner
has failed to establish a prima facie case of obviousness. The teachings of the applied
prior art establish nothing more than the fact that the program segments of Yarbrough
can be comprised of a plurality of bits, frames or superframes. Thus, the applied prior
art teaches that as program segments in Yarbrough are transmitted to the users, these
segments may include a plurality of bits, frames or superframes. Even if the applied
prior art teaches this much, however, we agree with appellant that there is no teaching
that within any predetermined time interval a single (one) fragment of each program
segment is sent to the users’ receivers as claimed. The examiner asserts that this is
inherent to appellant’s invention, but this assertion is not relevant to the obviousness of
the claimed invention. The examiner has failed to identify where within the applied prior
art there is any suggestion to transmit one fragment of each program segment to users’
receivers as recited in claim 22. We agree with appellant that the portions of the
prior art cited by the examiner do not support the examiner’s position. Therefore, we do
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not sustain the rejection of claim 22.
With respect to claim 30, appellant argues that Dancis does not teach the
claimed relationship between the predetermined time interval during which one
fragment from each of a plurality of segments is transmitted and the playback interval of
a segment [brief, pages 8-9]. The examiner responds that the playback time interval in
Dancis is monostable [answer, page 7]. Appellant responds that this assertion, even if
true, is irrelevant to the claimed invention [reply brief].
We do not sustain the examiner’s rejection of claim 30 for the reasons asserted
by appellant in the briefs. We also note that Dancis does not overcome the deficiencies
in the basic combination of Yarbrough and Gimple which were discussed above.
In summary, we have not sustained either of the examiner’s rejections of the
claims on appeal. Therefore, the decision of the examiner rejecting claims 22 and 30 is
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reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS:yrt
cc: Barry D. Rein, Esq.
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