Ex Parte Devara

Board of Patent Appeals and Interferences

Sep 8, 2008

09821122 (B.P.A.I. Sep. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAVITHA VALLARI DEVARA
____________

Appeal 2007-3041
Application 09/821,122
Technology Center 2600
____________

Decided: September 8, 2008
____________

Before, KENNETH W. HAIRSTON, ALLEN R. MACDONALD,
and MARC S. HOFF, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 25. We have jurisdiction under 35 U.S.C. § 6(b).
We will reverse the lack of written description rejection, sustain the
nonstatutory subject matter rejection, and sustain the obviousness rejections.
Appellant has invented a mechanism and a method for inserting data
within a transport stream in a transceiver (Figure 1; Spec. 4). An estimate of
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future available bandwidth is produced by periodic sampling of bandwidth
used by programs of the transport stream together with information
regarding upcoming programming changes (Figure 2; Spec. 4 and 11). The
estimate of future available bandwidth is used to schedule data insertion
within the transport stream (Spec. 4, 11, and 12). The scheduled data is
inserted by replacing selected null packets within the transport stream based
upon the predicted estimate of available bandwidth (Spec. 4, 11, and 12).
Claim 1 is illustrative of the claimed invention, and it reads as
follows:
1. For use in a transceiver, an adaptive data insertion mechanism for
inserting data within a transport stream without destructive disturbance
comprising:
a bandwidth estimator producing an estimate of future available
bandwidth within said transport stream from future programming
information to be transmitted by said transport stream;
a scheduler prioritizing and scheduling insertion of insertion content
to be inserted within said transport stream based upon said estimate of future
available bandwidth and required insertion bandwidth of said insertion
content; and
an insertion unit inserting scheduled insertion content within said
transport stream by replacement of selected replaceable content within said
transport stream to form a new transport stream if sufficient bandwidth is
available, said sufficient bandwidth being determined from said estimate of
future available bandwidth and said required insertion bandwidth.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rudrapatna US 5,592,470 Jan. 7, 1997
Sohraby US 6,192,049 B1 Feb. 20, 2001
Feder US 2001/0024239 A1 Sep. 27, 2001
(filed Jan. 25, 2001)
Jeffrey US 6,567,981 B1 May 20, 2003
(filed Mar. 10, 2000)
Wu US 7,016,337 B1 Mar. 21, 2006
(filed Feb. 28, 2000)
Tranchard EP 0 926 894 A1 Jun. 30, 1999

The Examiner rejected claim 22 under the first paragraph of 35 U.S.C.
§ 112 for lack of written description.
The Examiner rejected claims 17 to 20 under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
The Examiner rejected claims 1, 3 to 5, 7, 9, 11 to 13, 17, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Tranchard in view of
Feder.
The Examiner rejected claims 2, 6, 8, 10, 14 to 16, and 18 under 35
U.S.C. § 103(a) as being unpatentable over Tranchard in view of Feder and
Sohraby.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Tranchard in view of Feder and Wu.
The Examiner rejected claims 22 and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Tranchard in view of Feder and Rudrapatna.
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The Examiner rejected claims 24 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Tranchard in view of Feder and Jeffrey.

ISSUES
(1) Written description
The Examiner concludes that “[c]laim 22 recites using an electronic
program guide, event information tables, and history tables tracking
bandwidth utilization as a function of a time of day, wherein the originally
filed Specification states that use of history tables is an alternative to using
an electronic program guides [sic], clearly distinguishing them to two
distinct embodiments (see Applicant’s Specification, page 16, lines 8-20)”
(Ans. 4 and 5). Appellant contends that the use of “and/or” in the referenced
portion of the disclosure permits the inclusion of history tables with system
information tables and electronic program guide (EPG) data (Br. 19). Thus,
the issue before is whether history tables are an alternative to using an
electronic program guide?
(2) Nonstatutory subject matter
The Examiner concludes that claim 17 does not fall within any of the
four statutory categories (i.e., process, machine, manufacture, or
composition of matter) (Ans. 3 and 4), whereas Appellant contends inter alia
that “the claimed signal of claim 17, is either structural or directed to a
practical application of the signal” (Br. 18). Accordingly, the issue before us
is whether the signal (i.e., data stream embedded in a carrier) set forth in
claim 17 is directed to any one of the four statutory subject matter
categories?
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(3) Obviousness
The Examiner concludes and the Appellant disagrees that it would
have been obvious to one of ordinary skill in the art to apply the stored
estimated required bandwidth teachings of Feder in Tranchard for improved
insertion of content within the transport stream. The issue presented by the
evidence and arguments is whether the skilled artisan would have applied
the bandwidth estimation teachings of Feder during the insertion of content
in the transport stream described by Tranchard?

FINDINGS OF FACT
(1) Written description
Appellant’s disclosure states that changes in bandwidth use “may be
predicted, however, by analyzing system information tables and/or
electronic program guide (EPG) data (step 403) such as the event
information table (EIT) which provides the lineup of current and upcoming
programs” (Spec. 16). Appellant’s disclosure further states that “[r]esources
similar to the system information tables, such as history tables tracking
bandwidth utilization as a function of the time of day, may be employed for
other environments” (Spec. 16).
(2) Nonstatutory subject matter
Claim 17 is directed to the signal (i.e., data transport stream embedded
in a carrier) that traverses the local transmitter 111 on transport stream 200.

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(3) Obviousness
1. Tranchard describes an adaptive data insertion mechanism and
method in which data is inserted within a transport stream without
destructive disturbance to the transport stream (Abstract; paragraphs 0015
and 0055).
2. The data is inserted in the transport stream described by Tranchard
“to make full use of [the] available bandwidth” (paragraph 0015).
3. In Tranchard, a data packet insertion means acts “to insert a packet
of data in the transport stream by detecting the presence of a null packet and
replacing this packet by the packet to be inserted” (paragraph 0016).
4. A packet ID counter 21 is used by Tranchard to count the number
of null packets present in the transport stream in order to evaluate bandwidth
availability so that packet insertion unit 25 can replace null packets with
packet data stored in memory 27 (Figure 2; paragraphs 0015, 0051, 0056,
and 0059).
5. Feder describes techniques for bandwidth optimization (Title).
6. One bandwidth optimization technique used by Feder is estimation
of required bandwidth (paragraph 0371) needed for insertion of content (e.g.,
an advertisement) into a stream of video data (paragraph 0373).

PRINCIPLES OF LAW
(1) Written description
Under the written description portion of the first paragraph of 35
U.S.C. § 112, Appellant must convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he was in possession of the
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invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991).
(2) Nonstatutory subject matter
“A transitory, propagating signal . . . is not a ‘process, machine,
manufacture, or composition of matter.’” In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007).
(3) Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to Appellant to overcome the prima
facie case with argument and/or evidence. See Id.
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
(1) Written description
As indicated supra in the findings of fact, Appellant’s disclosure
clearly explains that history tables are a resource similar to system
information tables, and that system information tables and electronic
program guides are used in tracking use of bandwidth. Appellant’s
disclosure never states that “use of history tables is an alternative to using an
electronic program guides [sic]” as contended by the Examiner (Ans. 4-5).
Thus, we agree with Appellant’s argument that the originally filed disclosure
provides written description support for the subject matter set forth in claim
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22 on appeal because “the use of ‘and/or’ in the referenced portion of the
disclosure permits the inclusion of history tables with system information
tables and electronic program guide (EPG) data” (Br. 19).
(2) Nonstatutory subject matter
As indicated supra in the findings of fact, claim 17 is directed to a
signal (i.e., data transport stream embedded in a carrier). Appellant’s
arguments (Br. 15 to 18) that claim 17 fits within at least one of the four
statutory subject matter categories under 35 U.S.C. § 101 are without merit
in view of the Nuijten decision which held that a “transitory, propagating
signal” does not fit within any of the four statutory subject matter categories.
Accordingly, we agree with the Examiner that claim 17 is directed to
nonstatutory subject matter.
(3) Obviousness
As indicated supra in findings of facts 1 to 4, Tranchard seeks “to
make full use of [the] available bandwidth” during insertion of data into the
transport stream by packet insertion unit 25. Feder teaches that bandwidth
optimization can be achieved by using bandwidth estimation (findings of
fact 5 and 6). Such an estimation technique involves estimating future
available bandwidth. Thus, we agree with the Examiner’s reasoning (Ans.
7) that it would have been obvious to one of ordinary skill in the art to
modify Tranchard with the bandwidth estimation teachings of Feder for the
advantages of “better predicting future bandwidth considerations and for
dynamic determination of content insertion.”

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CONCLUSIONS OF LAW
A lack of written description has not been established by the
Examiner.
The Examiner has established that claim 17 and the claims that
depend therefrom are directed to nonstatutory subject matter.
The Examiner has established the obviousness of claim 1. Appellant
has not presented any patentability arguments for claims 2 to 25 apart from
the arguments presented for claim 1.

ORDER
The lack of written description rejection of claim 22 is reversed.
The nonstatutory subject matter rejection of claims 17 to 20 is
affirmed.
The obviousness rejections of claims 1 to 25 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KIS

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