Ex Parte Jendbro

Patent Trial and Appeal Board

Apr 30, 2014

11433815 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/433,815 05/12/2006 Magnus Jendbro 9342-365 2509
54414 7590 04/30/2014
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
TILAHUN, ALAZAR
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
04/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAGNUS JENDBRO
____________

Appeal 2011-012340
Application 11/433,815
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012340
Application 11/433,815
2
STATEMENT OF THE CASE
The Examiner finally rejected claims 1-21. Appellant appeals from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to a "DVB receiver . . . configured to use a
reference clock of the portable electronic device as a DVB reference clock
[and a] DVB frequency adjustment module . . . configured to receive
adjustment information associated with the reference clock of the portable
electronic device and adjust frequency settings of the DVB receiver
responsive to the adjustment information." (Spec., ¶ [0004]). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A portable electronic device, comprising:
[a] a digital video broadcast-handheld (DVB-H) receiver using
a reference clock of the portable electronic device as a DVB-H
reference clock; and
[b] a DVB-H frequency adjustment module configured to
receive adjustment information associated with the reference
clock of the portable electronic device and adjust frequency
settings of the DVB-H receiver responsive to the adjustment
information, [b1] wherein the DVB-H receiver is associated
with the DVB-H standard.
(Elements lettered and disputed limitation emphasized).

Appeal 2011-012340
Application 11/433,815
3
REJECTIONS
R1. Claims 1-4, 7-12, 14-18, 20, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combined teachings and
suggestions of United States Patent Application Publication No.
2004/0055013 A1 ("Ishioka") and United States Patent Application
Publication No. 2005/0097053 A1 ("Aaltonen").
R2. Claims 5, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of Ishioka,
Aaltonen and United States Patent Application Publication No.
2004/0233974 A1 ("Schilling").
R3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of United States
Ishioka, Aaltonen and United States Patent No. 6,798,790 B1 ("Enssle").

GROUPING OF CLAIMS
Based on Appellant's arguments, we decide the appeal of rejection R1
of claims 1-4, 7-12, 14-18, 20, and 21 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
1

We address rejection R2 of claims 5, 13, and 19 separately, infra.
We address rejection R3 of claim 6 separately, infra.

1
Appellant filed a Notice of Appeal on November 17, 2010. The date of
filing the Notice of Appeal determines which set of rules applies to an Ex
Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also MPEP Rev. 8, July 2010.
Appeal 2011-012340
Application 11/433,815
4
ANALYSIS
We disagree with Appellant's contentions regarding the Examiner's
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellant's Appeal Brief. (Ans. 12-17). We
highlight and address specific findings and arguments below.
R1. CLAIM 1
I.
Issue: Under § 103, did the Examiner err in finding the cited
references, either alone or in combination, would have taught or suggested
limitation [a] "a digital video broadcast-handheld (DVB-H) receiver using a
reference clock of the portable electronic device as a DVB-H reference
clock," (emphasis added), within the meaning of claim 1 and the
commensurate language of claims 10 and 16?

Appellant contends:
[T]he broadcast reception unit 130 of Ishioka does not use a
reference clock of the host device 200 as a DVB reference
clock. In stark contrast, Claim 1 recites a digital video
broadcast-handheld (DVB-H) receiver using a reference clock
of the portable electronic device as a DVB-H reference
clock.
(App. Br. 5).
Appellant’s contention that Ishioka alone would not have taught or
suggested limitation [a] is not persuasive because the Examiner relies on the
combination of Ishioka and Aaltonen. (Ans. 13-17). Specifically, the
Examiner finds, and we agree, that Ishioka teaches a portable host device
including time count unit 251 which provides a clock reference and also
teaches using the DVB-SI standard or a similar standard. (Ans. 15; Ishioka,
Appeal 2011-012340
Application 11/433,815
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¶¶ [0083]-[0088]). Further, the Examiner finds Aaltonen teaches a DVB-H
receiver associated with a DVB-H standard, (Ans. 16-17; Aaltonen, ¶
[0034]). The Examiner finds the combination of the two references would
have taught or suggested the contested limitation to one of ordinary skill in
the art. (Ans. 16-17).
For these reasons, on this record we are not persuaded that the
Examiner erred.
II.
Issue: Under § 103, did the Examiner err in finding the cited
references, either alone or in combination, would have taught or suggested
limitations " [b] a DVB-H frequency adjustment module configured to
receive adjustment information associated with the reference clock of the
portable electronic device and adjust frequency settings of the DVB-H
receiver responsive to the adjustment information, [b1] wherein the DVB-H
receiver is associated with the DVB-H standard," (emphasis added), within
the meaning of claim 1, and the commensurate language of claims 10 and
16?
Appellant contends:
[A]s discussed above, nothing in Ishioka teaches a digital video
broadcast (DVB) receiver using a reference clock of the
portable electronic device as a DVB reference clock as recited
in Claim 1. Thus, it follows that nothing in Ishioka teaches a
DVB frequency adjustment module configured to receive
adjustment information associated with the reference clock of
the portable electronic device as also recited in Claim 1.
(App. Br. 6).
Appellant's contentions attacking Ishioka in isolation are not
persuasive because the Examiner relies upon the combined teachings and
suggestions of Ishioka and Aaltonen. (Ans. 4-5, 14-17). For this reason, on
this record we are not persuaded the Examiner erred.
Appeal 2011-012340
Application 11/433,815
6
III.
Issue: Under § 103, did the Examiner err in combining the cited
references relied upon in the rejection of claim 1?

In the Appeal Brief, Appellant contends:
[T]here is no motivation to combine the Ishioka and Aaltonen
as suggested in the Final Action. Aaltonen is directed to a
system, terminal and method for protecting content as recited in
the title…. Thus, Aaltonen discusses adding padding to data
when it is transmitted and extracting the original data when it is
received to protect the content during transmission. In stark
contrast, Ishioka discusses a broadcast system including a host
device 200 configured to receive a broadcast reception card 100
as illustrated in Figure 2 of Ishioka. One of skill in the art
would not be motivated to combine Aaltonen and Ishioka as
suggested in the Final Action without using Appellant's
disclosure as a road map. The Office cannot just find random
teachings in references and then conclude that the combination
of these references would be obvious to teach the recitations of
the pending claims. (internal quotations omitted).
(App. Br. 7, emphasis added).
Regarding Appellant’s hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co.of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court also
qualified the issue of hindsight by stating “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” (Id.).

Appeal 2011-012340
Application 11/433,815
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Hindsight Balancing Test
Here, in applying the guidance of KSR, we see the hindsight question
before us as a balancing test ─ whether the Examiner’s proffered
combination of references is merely:
1. “[T]he predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417), consistent with
common sense; or,
2. Would an artisan reasonably have combined the cited references in
the manner proffered by the Examiner but for having the benefit of the
claim to use as a guide?
After reviewing the respective teachings and suggestions of the cited
references, we find the evidence more strongly supports the first prong of the
balancing test. The Examiner concludes, and we agree, it would have been
obvious to an artisan having general knowledge digital video broadcasting
receivers to combine the time count unit and associated adjustments to video
playback in the DVB receiver of Ishioka with the DVB-H receivers applying
the DVB-H standard of Aaltonen. (Ans. 16-17). This combination would
have been obvious because Ishioka teaches the use of reference clocks in
handheld systems which apply "DVB-SI…standard, and the like," (emphasis
added; Ishioka, ¶ [0088]) which suggests other DVB standards, like DVB-H
of Aaltonen could have been used. (Ans. 15-17). Moreover, the Examiner
finds that one skilled in the art would have been motivated to make the
combination "to receive digital video broadcasting data or content in DVB-H
network."
2
(Ans. 16-17). Additionally, Appellant merely alleges the

2
A reason to combine teachings from the prior art “may be found in explicit
Appeal 2011-012340
Application 11/433,815
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Examiner has relied on impermissible hindsight without presenting any
evidence in support. (App. Br. 7).
3
Instead, we find that combining the
respective teachings of the cited references in the manner proffered by the
Examiner would have resulted in “the predictable use of prior art elements
according to their established functions.” (KSR, 550 U.S. at 417.)
For this reason, on this record we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection of claim 1 and of claims 2-4,
7-12, 14-18, 20, and 21, which fall therewith.
R2. CLAIMS 5, 13, AND 19.
Appellant contends dependent claims 5, 13, and 19 are patentable
essentially for the same reasons previously advanced regarding claim 1.
(App. Br. 8). Accordingly, we are not persuaded the Examiner erred
regarding the rejection of claims 5, 13, and 19 for the same reasons given
above regarding claim 1.
R3. CLAIM 6.
Appellant contends dependent claim 6 is patentable essentially for the
same reasons previously advance regarding claim 1. (App. Br. 8).
Accordingly, we are not persuaded the Examiner erred regarding the
rejection of claim 6 for the same reasons given above regarding claim 1.

or implicit teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem to be
solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
3
Objective indicia of non-obviousness “can be the most probative evidence
of non-obviousness in the record, and enables the court to avert the trap of
hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed.
Cir. 2010).
Appeal 2011-012340
Application 11/433,815
9
OTHER ISSUE
In reviewing the record, we observe Appellant amended paragraph
[0037] the Specification to delete, inter alia, “transmission media such as
those supporting the Internet or an intranet.” (See amendment to the
Specification filed Jan. 22, 2010). However, our reviewing court guides “[a]
description can be broadened by removing limitations” which is “classical
new matter.” Anascape, Ltd. v. Nintendo of Am., Inc., 601 F. 3d 1333, 1338
(Fed. Cir. 2010) (citing Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512
F.3d 1338, 1344 (Fed. Cir. 2008)). We leave this issue to the review of the
Examiner in the event of further prosecution.

DECISION
We affirm the Examiner's rejections of claims 1-21 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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