10488051 (P.T.A.B. Dec. 11, 2012)

Ex Parte Hundscheidt et al

Patent Trial and Appeal BoardDec 11, 2012

10488051 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL APPEAL BOARD ___________________ Ex parte FRANK HUNDSCHEIDT, HEINO HAMELEERS, THORSTEN LOHMAR, and RALF KELLER ____________________ Appeal 2010-005577 Application 10/488,051 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and ANDREW J. DILLON, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of September 12, 2012. The Decision affirmed the Examiner’s rejection of claims 1-11 and 19-33 under 35 U.S.C. § 103(a). Appeal 2010-005577 Application 10/488,051 2 We have reconsidered our Decision, in light of Appellants’ arguments in the Request, and we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We decline to change our prior Decision for the reasons discussed infra. Appellants request reconsideration of our Decision for the following reason: Appellants claim a method in which advertisement and program content are combined prior to forwarding the multicast content, while the teaching of Eldering relied on by the Examiner describes a presentation stream that no longer comprises multicast content as the only recipient of locally- combined program and advertisement streams is a subscriber's local display. (Request 4, emphasis added). In particular, Appellants contend that the “claimed invention expressly requires ‘processing . . . multicast content by changing the content before forwarding said multicast content’ (emphasis added), which the Examiner has not identified in the teachings of Eldering, [therefore] a prima facie case of obviousness has not been established and the rejections should be reversed.” (Request 5). Regarding Appellants’ aforementioned contention on page 4 of the Request, we note that the argued “advertising and program content” are not recited in any of Appellants’ claims on appeal. Thus, Appellants’ contention (Request 4) is not commensurate with the scope of the claims. Moreover, Appellants’ Request is silent regarding any substantive rebuttal regarding the Examiner’s reliance on Gleeson for teaching or suggesting the disputed limitation of “changing the content before forwarding said multicast Appeal 2010-005577 Application 10/488,051 3 content.” (Ans. 4-5, 15).1 Eldering must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.). We note that the Examiner’s rejection is based on the combined teachings and suggestions of the Gleeson and Eldering references, as explained by the Examiner: Gleeson teaches changing multiple fields of multicast data streams prior to forwarding the streams to their final destinations (Gleeson: col 12, lines 45-65 provide for attaching headers, changing color designations; col 13, lines 39-53 provide for changing other packet related information). Eldering, teaching combining the program and advertisement streams, provides for the changing being with respect to the media content. And thus the combined teachings provide for the above argued limitation. And, upon further review, Eldering specifically provides for combining the ads with the program stream prior to forwarding the presentation to the end user either visually or audibly (Eldering: Figures 5, 7; col 7, line 59 - col 8, line 33 "the presentation stream is then converted to an analog signal and transmitted to the display for viewing by the subscriber''). (Ans. 15, emphasis added). We find the Examiner’s explanation regarding the disputed temporal limitation (i.e., when the content is changed: “before forwarding” ) is consistent with the statement of rejection as set forth on pages 5-6 of the 1 See 37 C.F.R. ¶41.52(1)(1): “ Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” Appeal 2010-005577 Application 10/488,051 4 Final Office Action, and as reproduced on pages 4-5 of the Answer. Thus, the Examiner relies on Glesson, inter alia, as teaching or suggesting the temporal limitation of changing the content before forwarding (“changing the multicast transmission before forwarding said content” Ans. 4-5) and the Examiner relies on Eldering for teaching changing multicast content corresponding to Appellants’ claimed transmission content (“Eldering, in a similar field of endeavor, teaches wherein changing the multicast transmission includes changing the multicast content” Ans. 5). Appellants had full opportunity to respond to the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness in the Principal Brief and the Reply Brief. However, Appellants did not rebut the Examiner’s finding that Gleeson teaches changing multiple fields of multicast data streams prior to forwarding the streams to their final destinations. (Ans. 4-5, 15). Arguments not made are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). See also n.1 supra. CONCLUSION We have considered the arguments raised by Appellants in the Request for Rehearing, but Appellants have not persuaded us that we misapprehended or overlooked any points in rendering our Decision. Appeal 2010-005577 Application 10/488,051 5 DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. 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)(2012). See also 37 C.F.R. § 41.52(b). DENIED tkl