Ex Parte Illgner-Fehns et al

Patent Trial and Appeal Board

Apr 26, 2016

11663294 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/663,294 04/01/2008 Klaus Illgner-Fehns
86528 7590 04/28/2016
Slayden Grnbert Beard PLLC
401 Congress Avenue
Suite 1900
Austin, TX 78701
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.
03869.119211 5949
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
trosson@sgbfirm.com
patent@sgbfirm.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS ILLGNER-FEHNS, UWE RAUSCHENBACH,
and MARCEL WAGNER
Appeal2014-000132
Application 11/663,294
Technology Center 2400
Before BARBARA A. BENOIT, JAMES W. DEJMEK, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 12-29, which constitute all pending claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part and designate our affirmance as containing NEW
GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Appeal2014-000132
Application 11/663,294
STATEMENT OF THE CASE
Appellants' disclosed invention relates to a method for transmitting
information to a terminal and to a television set. (Spec. i-f 2.) Claim 12,
which is illustrative, reads as follows:
12. A method for transmitting information, comprising:
transmitting first information, which supplements second
information, to a terminal independently of the second
information over a first transmission network;
receiving the first information;
storing the first information in a buffer;
providing a television as a different device than the
terminal;
transmitting second information over a second
transmission network to the television, the second transmission
network being mutually different and separate from the first
transmission network, and
displaying the first information at the terminal in a
manner synchronized with a replay of the second information
using a delay time, the second information being replayed by
the television set, the delay time depending on a system used
for transmitting the second information.
REFERENCES
The prior art relied on by the Examiner in rejecting the claims on
appeal is:
Maeda (et al.)
Ackley
Cloutier (et al.)
us 5,999,224
US 2004/0259577 Al
US 7,317,926 Bl
2
Dec. 7, 1999
Dec. 23, 2004
Issued Jan. 8, 2008
Filed June 28, 2004
Appeal2014-000132
Application 11/663,294
REJECTIONS ON APPEAL
Claims 12, 15, 17-20, and 23-27 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Cloutier. (Final Act. 4.)
Claims 13, 14, 16, 21, and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cloutier in view of Ackley. (Final Act. 8.)
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cloutier in view of Maeda. (Final Act. 10.)
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cloutier in view of Ackley and Maeda. (Final Act. 11.)
ISSUES
Did the Examiner err in finding Cloutier discloses the two
transmitting limitations recited in claim 12?
Did the Examiner err in finding Cloutier discloses receiving and
buffer-storing first information as recited in claim 23?
ANALYSIS
Claims 12, 15, 17-20, and 23-25
Appellants argue the Examiner erred in finding Cloutier teaches the
two transmitting limitations recited in claim 12, which read:
(i) transmitting first information, which supplements
second information, to a terminal independently of the second
information over a first transmission network and
(ii) transmitting second information over a second
transmission network to the television, the second transmission
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Application 11/663,294
network being mutually different and separate from the first
transmission network.
(App. Br. 4--10.)
The Examiner finds Cloutier satisfies both limitations by
(i) transmitting subtitles through its subtitles control network 315 to subtitle
device control device 330 and (ii) transmitting video through video network
210 to video device 320. (Ans. 3--4, 11-12.) The Examiner correlates: the
subtitles with the recited first information, the video with the recited second
information, subtitle control device 330 with the recited terminal, video
device 320 with the recited television, subtitles control network 315 with the
recited first network, and video network 210 with the recited second
transmission network. Id.
Appellants first argue the Examiner erred because Cloutier
synchronously transmits and delivers the subtitles and the video, and
therefore, does not "transmit[] first information ... independently of the
second information." (App. Br. 4--9.) We do not find this argument
persuasive. The transmitting limitations of claim 12 do not preclude
synchronously transmitting the first information and the second information.
In fact, claim 19, which depends on claim 12, recites synchronous
transmission of the first information and the second information. (See claim
19.) The Specification also discloses synchronous transmission of the first
information and the second information in a passage cited by Appellants as
supporting claim 12. (Spec. i-f 12; App. Br. 2.)
Second, Appellants argue the Examiner erred because the second
transmission network in Cloutier is not mutually different and separate from
Cloutier' s first transmission network. Appellants note that gateway server
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Application 11/663,294
325 transmits data to both video device 320 and subtitle control device 330.
(App. Br. 9.) We do not find this argument persuasive. The limitation-at-
issue requires transmitting the first information and second information over
independent and separate networks. As the Examiner finds, Cloutier
describes transmitting the first information and the second information over
two independent and separate networks, subtitled control network 315 and
video network 310, respectively. (Ans. 12 (citing Cloutier, Fig. 3; 4:40-45,
64--67).) Claim 12 has no limitation precluding a common gateway server.
We sustain the Examiner's rejection of claim 12 and of claims 15 and
17-20, which were not argued separately.
Claim 23
Appellants argue the Examiner erred in finding Cloutier teaches
"receiving and buffer-storing first information" as recited in claim 23. 1
(App. Br. 10-11.) The Examiner finds Cloutier discloses this limitation by
describing, inter alia, that information received at the first and the second
device may be stored in memory and/or played back from memory. (Ans.
13.) Appellants argue the terminals in Cloutier do not receive and buffer
store first information because the agents in Cloutier synchronize the first
and second data streams. (App. Br. 10-11.) Appellants are presumably
suggesting because Cloutier' s agents synchronize the data streams, Cloutier
1 This recited function is part of an element that could be subject to 35
U.S.C. § 112, sixth paragraph. Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1349 (Fed. Cir. 2015). Because Appellants' argument focuses on
whether Cloutier satisfies the recited function, which Cloutier must satisfy
even if this element is subject to§ 112, sixth paragraph, we will limit our
review to whether Cloutier discloses the recited function. See, e.g.,
MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1170-71 (Fed. Cir.
2015).
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Application 11/663,294
does not need buffering. We do not find this argument persuasive. The
issue here is not whether there would be a motivation to add buffering to
Cloutier, but whether Cloutier itself discloses buffering. As the Examiner
finds, Cloutier' s storing information in memory and playing the information
back from memory discloses buffering. (Ans. 13.) We sustain the
Examiner's rejection of claim 23.
Claims 13, 14, 16, 21, and 22
Appellants argue the Examiner erred in rejecting claims 13, 14, 16,
21, and 22 because Cloutier does not teach transmitting first information to a
terminal independently of the second information over a first transmission
network. (App. Br. 20-21.) We do not find this argument persuasive for the
reasons expressed above for claim 12. We sustain the Examiner's rejection
of claims 13, 14, 16, 21, and22.
Claims 24 and 25
Appellants argue the Examiner erred in rejecting claims 24 and 25
because Cloutier does not teach transmitting first information to a terminal
independently of the second information. (App. Br. 11-20.) We do not find
this argument persuasive for the reasons expressed above for claim 12. We
sustain the Examiner's rejection of claims 24 and 25.
Claims 26--29: New Grounds of Rejection
Appellants argue the Examiner made the same error for claims 26 and
27 as he did for claim 12 and the same error for claim 28 as he did for claim
13. (App. Br. 4, 20.) Appellants argue the Examiner erred in rejecting claim
29 because Cloutier does not disclose transmitting first information to a
terminal independently of second information. (App. Br. 21-22.) As
discussed above, we do not find these arguments persuasive.
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Application 11/663,294
To cure what appears to be a clerical error in the Examiner's
rejections of claims 26-29, however, we will reverse the rejection of claims
26 and 27, issue a new rejection of those claims, and affirm the rejection of
claims 28 and 29, but designate our affirmance of those claims as new
grounds of rejection.
We enter the new grounds of rejection because the Examiner's
rejections of claims 26-29 do not account for those claims' incorporation by
dependency of the limitations of claims 13 and 14. The Examiner finds
Cloutier anticipates claims 26 and 27, which incorporate by dependency the
elements of claims 13 and 14. (Ans. 3, 6.) The Examiner, however, does
not find Cloutier teaches every element of claims 13 and 14. (Ans. 7.) The
Examiner does reject claims 28 and 29 over both Cloutier and Ackley, the
references used to reject claims 13 and 14. (Ans. 7-11.) In so doing, the
Examiner, however, does not expressly address the limitations of claims 13
and 14. Therefore, in affirming the rejection of claims 28 and 29, we
address the limitations of claims 13 and 14 and designate our affirmance as
new grounds of rejection.
In entering our new grounds of rejection, however, we adopt the
pertinent findings by the Examiner. In both the Final Action and the
Answer, the Examiner has set forth how the prior art teaches or suggests
every element of claims 26-29, including the elements of claims 13 and 14.
With those findings, we reject each of claims 26-28 under 35 U.S.C.
§ 103 as obvious over Cloutier and Ackley. For this rejection, we adopt the
Examiner's findings regarding: Cloutier's teachings of the elements of
claim 12 (Final Act. 2-3, 5---6; Ans. 3--4, 11-12.), Cloutier's and Ackley's
teachings and suggestions for the elements of claims 13 and 14 (Final Act.
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8-9; Ans. 7, 15.), Cloutier's teachings of the elements added by claim 26
(Final Act. 7; Ans. 6.), and Cloutier and Ackley's teachings and suggestions
for the elements added by claims 27 and 28. (Final Act. 7, 10; Ans. 6-9.)
We also adopt the Examiner's reasons for combining the references. (Final
Act. 8, 10; Ans. 7-9.)
We reject claim 29 under 35 U.S.C. § 103 as obvious over Cloutier,
Ackley, and Maeda. For this rejection, we adopt the same findings as for
claims 26-28. In addition, we adopt the Examiner's findings regarding the
element added by claim 29 and the combination of Cloutier, Ackley, and
Maeda. (Final Act. 11-12; Ans. 10-11, 16.)
DECISION
We affirm the Examiner's rejection of claims 12-25.
We reverse the Examiner's rejection of claims 26 and 27.
We newly reject claims 26-29 as being unpatentable over Cloutier
and Ackley.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Regarding the new designated grounds, 37 C.F.R. § 41.52(a)(l)
provides "Appellant[s] may file a single request for rehearing within two
months of the date of the original decision of the Board." 37 C.F.R.
§ 41.50(b) provides "[a] new ground of rejection ... shall not be considered
final for judicial review." 37 C.F.R. § 41.50(b) also provides that
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
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Application 11/663,294
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
exammer ....
(2) Request for rehearing. Request that the proceeding be
reheard ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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