Ex Parte Henry et alDownload PDFPatent Trial and Appeal BoardAug 10, 201812998262 (P.T.A.B. Aug. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/998,262 03/31/2011 24498 7590 08/14/2018 Brian J. Dorini THOMSON Licensing LLC 4 Research Way 3rd Floor Princeton, NJ 08543 FIRST NAMED INVENTOR Jean-Baptiste Henry 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PF080118 7413 EXAMINER WU, TSUNG YIN ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 08/14/2018 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): uspto@technicolor.com russell. smith@technicolor.com patricia.verlangieri@interdigital.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-BAPTISTE HENRY and GILLES STRAUB Appeal2018-001418 Application 12/998,262 Technology Center 2400 Before ALLEN R. MacDONALD, HUNG H. BUI, and NABEEL U. KHAN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 1 Appellants indicate the real party in interest is Thomson Licensing. App. Br. 3. Appeal2018-001418 Application 12/998,262 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-9 and 11. Appellants have cancelled claim 10. App. Br. 13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Illustrative Claim 2 Illustrative claim 1 under appeal reads as follows ( emphasis, formatting, and bracketed material added): 1. A network device comprising: [A.] an interface for connecting said network device to a local network, said local network comprising a gateway device adapted to connect the local network to a second network, [B.] a first server for making available to a local device located on said local network, information on multimedia content available at a second local device in said local network; and [C.] an IPTV proxy module, responsive to a request from said local device for receiving a multimedia content, said multimedia content corresponding to an IPTV service, for informing said gateway for joining an IPTV session with an IPTV server located on the second network for receiving an IPTV content corresponding to said multimedia content, so that said gateway device forwards said IPTV content received from said IPTV server to the local device. 2 The claimed invention is directed to Internet Protocol Television (IPTV). 2 Appeal2018-001418 Application 12/998,262 Rejections A. The Examiner rejected claims 1, 2, 4--7, and 11 under 35 U.S.C. § 103 as being unpatentable over the combination of Igarashi (WO 2007 /10254 7 Al; pub. Sep. 13, 2007 (using US 2009/0100147 Al as its English language translation) and Haeuser et al. (US 2008/0015932 Al; pub. Jan. 17, 2008). Appellants argue separate patentability for claim 1. Appellants do not argue separate patentability for claims 2, 4--7, and 11. Except for our ultimate decision, we do not address claims 2, 4--7, and 11 further herein. B. The Examiner rejects claims 3, 8, and 9 under 35 U.S.C. § I03(a) as being unpatentable over the combination of Igarashi and Haeuser in various combinations with other references. Final Act. 23-26. Appellants do not present arguments for claims 3, 8, and 9. Thus, the rejections of these claims tum on our decision as to claim 1. Except for our ultimate decision, we do not discuss the§ 103 rejections of claims 3, 8, and 9 further herein. Issues on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants. Except as noted below, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from 3 Appeal2018-001418 Application 12/998,262 which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following points. A. Appellants raise the following arguments in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). It appears that the gateway 211/503, which is distinct from the IMS gateway 212, even if they may be embedded in a single device, is not joining an IPTV session with the AS for receiving an IPTV content contrary to the saying of the Examiner. Indeed, neither the IMS gateway 502 nor the terminal 501 exchanges messages or requests with the gateway 211/ 503. App. Br. 8 (Appellants' emphasis omitted; Panel emphasis added). [W]e believe that Igarashi fails to disclose an IPTV proxy module, embedded in a network device, capable of informing the gateway for joining an IPTV session with a server located on the broadband network. App. Br. 8 (emphasis added). The Examiner present the following response to Appellants' above arguments. Igarashi discloses the client inside the local network sends an IGMP-join message to the external server for joining the relevant multicast group [para. 22, and Fig. 3, para. 457-458]. Since the RG is routing the IGMP-join message to join a multicast group, it is equivalent to say that the RG is ''joining the client to an IPTV session with an IPTV server located on the second network for receiving an IPTV content corresponding to said multimedia content". Ans. 3 (emphasis added). 4 Appeal2018-001418 Application 12/998,262 We agree with the Examiner's position that Igarashi explicitly discloses joining the client to an IPTV session at paragraphs 457--458. B. Appellants also raise the following arguments in contending that the Examiner erred in rejecting claim 1 under 3 5 U.S. C. § 1 0 3 (a). Haeuser fails to disclose a network device belonging to the local network and embedding an IPTV proxy module informing the residential gateway to join an IPTV session. Haeuser discloses a remote server, i.e. not belonging to the local network, requesting the gateway to take actions such as establishing a communication session for a device 118. It would not have been obvious for one of ordinary skill in the art to incorporate the teachings of Haeuser into the system of Igarashi because in Igarashi, the gateway is not involved in the delivering of the IPTV service besides managing the transmission of the IPTV service to the device 501 in a conventional manner. Furthermore there is no hint in Igarashi as to modify the method in order to involve the gateway in the delivery of the IPTV service. Even if one of ordinary skill in the art would incorporate the teachings of Haeuser into the system of Igarashi, it would not lead to the invention as claimed. Indeed, when introducing the teachings of Haeuser into the system of Igarashi, one would obtain a system in which the residential gateway is requested to take actions such as establishing a VoIP session by a server outside the local network. One with ordinary skill in the art would fail to obtain a network device, located on a local network, comprising an IPTV proxy module informing the residential gateway to join an IPTV session with a server located in another network. App. Br. 9 ( emphasis added). Appellants' arguments are not persuasive. First, the Examiner does not rely on Haeuser for teaching the argued "network device belonging to 5 Appeal2018-001418 Application 12/998,262 the local network and embedding an IPTV proxy module informing the residential gateway to join an IPTV session" limitation. Rather, the Examiner relies on Haeuser for "informing a gateway for joining the session. (Haeuser discloses an application server 108 to instruct residential gateway 112 to initiate a communication session.)" (Final Act. 8), and the Examiner relies on Igarashi for the remainder of the argued limitation. Thus, Appellants do not address the actual reasoning of the Examiner's rejection. Instead, Appellants attack the Haeuser reference individually where the Examiner's rejection is based on a combination of references. See In re Keller, 642 F.2d 413,425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). References must be read, not in isolation, but for what they fairly teach in combination with the prior art as a whole. Merck, 800 F .2d at 1097. Second, Appellants acknowledge Igarashi' s gateway is used to "manag[ e] the transmission of the IPTV service to the device 501 in a conventional manner." App. Br. 9. However, claim 1 does not require the recited gateway ("gateway device adapted to connect the local network to a second network" and "said gateway device forwards said IPTV content received from said IPTV server to the local device") to perform additional functions, except informing the gateway to initiate these connection operations. As such, the Examiner correctly finds that Haeuser discloses it is well-known in the art to instruct a gateway to join a communications sess10n. Third, Appellants' arguments speculates that the combination of Igarashi and Haeuser would render obvious "a system in which the residential gateway is requested to take actions such as establishing a VoIP 6 Appeal2018-001418 Application 12/998,262 session by a server outside the local network." App. Br. 9. Even if we were to agree that the cited combination also renders obvious an invention other than the invention of Appellants' claim 1, this is simply not a relevant argument as to whether the Examiner has provided a proper final conclusion that the combination of references renders obvious the claimed invention. A combination of references is not precluded from rendering obvious any number of distinct inventions. CONCLUSIONS ( 1) The Examiner has not erred in rejecting claims 1-9 and 11 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1-9 and 11 are not patentable. DECISION The Examiner's rejections of claims 1-9 and 11 are affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation