Ex Parte Jenzowsky et alDownload PDFPatent Trial and Appeal BoardAug 30, 201612094001 (P.T.A.B. Aug. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/094,001 08/27/2008 34060 7590 09/01/2016 MICHAELN, HAYNES 1341 HUNTERSFIELD CLOSE KESWICK, VA 22947 FIRST NAMED INVENTOR Stefan J enzowsky 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. 2006P00240WOUS (1120-018) CONFIRMATION NO. 7832 EXAMINER TRAN,HAIV ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 09/01/2016 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): P AIR@MichaelHaynes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte STEFAN JENZOWSKY, NORBERT LOBLG, and RUDOLF STELZL Appeal2015-002357 Application 12/094,001 Technology Center 2400 Before THU A. DANG, JOHN A. EV ANS, and MELISSA A. RAAP ALA, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal 1 under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants' Appeal Brief does not include a section for related appeals as required by 37 C.F.R. § 41.37(c)(iii) (2013). We remind Appellants that failure to comply with all the requirements of paragraph ( c) of section 41.37 generally results in a Notice of Non-Compliance, and that failure to submit a compliant brief in response results in dismissal of the appeal. See 3 7 C.F .R. § 41.37(d). Appeal2015-002357 Application 12/094,001 TI'-JVENTION Appellants' invention is directed to switching between programs, e.g., a transition from a broadcast program to an identical unicast program. See Spec. 1. Claim 1 is exemplary of the subject matter on appeal: 1. A device comprising a receiver unit adapted to receive a first program comprising a content and an additional program contribution; a determining unit communicatively coupled to the receiver unit and adapted to determine a second program corresponding to the first program, wherein the second program comprises the content and is free of the additional program contribution; an analysis unit communicatively coupled to the determining unit and adapted to: recognize an interruption of the content of the first program, the interruption caused by the additional program contribution; based on a time of the interruption, determine a time of continuation in the second program, the time of continuation being an elapsed content time of the content of the first program; and transmit the second program to an output unit starting from the time of continuation. REJECTIONS ON APPEAL Claims 1-5 and 14 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite.2 2 The Examiner withdrew the 35 U.S.C. § 112 rejection of claims 6-10. Ans. 10. 2 Appeal2015-002357 Application 12/094,001 Claims 1-3, 5-8, 10, 12, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Dooms (WO 2006/035406 Al; Apr. 6, 2006) and Daniels (US 2002/0048448 Al; Apr. 25, 2002). Claim 14 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Dooms, Daniels, and Fritsch (US 6,973,667 B2; Dec. 6, 2005). Claims 4, 9, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Dooms, Daniels, and Tsuchida (US 2002/0194593 Al; Dec. 19, 2002). ISSUES Appellants' contentions present us with the following issues: A) Did the Examiner err in finding claims 1-5 and 14 are indefinite? B) Did the Examiner err in finding the combination of Dooms and Daniels teaches or suggests based on a time of the interruption, [an analysis unit adapted to] determine a time of continuation in the second program, the time of continuation being an elapsed content of the content of the first program analysis unit; and transmit the second program to an output unit starting from the time of continuation ("determine and transmit" limitations), as recited in independent claim 1? C) Did the Examiner err in finding the combination of Dooms, Daniels, and Fritsch teaches or suggests the analysis unit is adapted to compare a broadcast signal of the first program with a unicast signal of the second program for determination of the time of continuation ("compare" limitation), as recited in dependent claim 14? 3 Appeal2015-002357 Application 12/094,001 ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions and the evidence of record. We disagree with Appellants' contentions that the Examiner's obviousness rejections of claims 1-16 are in error. However, Appellants have persuaded us of error in the 35 U.S.C. § 112 rejection. Issue A: 35 U.S. C. § 112 Rejection The Examiner finds claims 1-5 and 14 are indefinite because the limitation "adapted to" or "is adapted to" is language that suggests or makes optional, but does not limit the claims to a particular structure and does not limit the scope of the claims. Final Act. 5; see also Ans. 11. The Examiner further finds "adapted to" is exceedingly broad in scope and would cover any and every way of adaptation so to perform the corresponding function as claimed. Ans. 11. Appellants argue "adapted to" is not facially indefinite and has been interpreted approvingly by the Federal Circuit. Reply Br. 2-3. Appellants further argue "adapted to" is not optional language, but instead means "designed to", "made to", or "configured to." Reply Br. 6. We agree with Appellants that the "adapted to" limitations recited in the rejected claims is not optional language. See In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) ("[T]he phrase 'adapted to' generally means 'made to,', 'designed to,' or 'configured to,' though it can also be used more broadly to mean 'capable of' or 'suitable for."'). The receiver unit, determining unit, and analysis unit must at least be capable of performing the recited functions. Therefore, the rejected claims are not 4 Appeal2015-002357 Application 12/094,001 indefinite, but simply broad, and "breadth is not to be equated with indefiniteness." In re Miller, 441F.2d689, 693 (CCPA 1971). We conclude the Examiner erred in rejecting claims 1-5 and 14 as being indefinite under 35 U.S.C. § 112, second paragraph. Accordingly, we do not sustain this rejection. Issue B: 35 U.S. C. § 103 Rejection - Claims 1-13, 15, and 16 Appellants contend the applied references do not teach, alone or in combination, the "determine and transmit" limitations recited in claim 1. App. Br. 12. In support of this contention, Appellants argue Dooms doesn't recognize any need for syncing the "second program" such that the content continues where it was interrupted and provides no reason to "temporarily pause" and then return to a broadcast program. App. Br. 13-14. Appellants also argue Daniels provides no reason to detect an advertisement on the current channel and select a different channel. App. Br. 14. Additionally, Appellants argue that given its opposing purpose, a person having ordinary skill in the art would have no good reason to refer to Daniels to cure the deficiencies of Doom, and vice versa. App. Br. 14; see also Reply Br. 9. 3 The Examiner finds Dooms teaches transmitting a second program to an output unit starting from the time of continuation and Daniels teaches based on a time of interruption, determining a time of continuation in the second program that is an elapsed content time. Final Act. 7, Ans. 13. 3 For the first time in the Reply Brief, Appellants contend the claim requires the interruption of the content of the first program must be caused by the additional program contribution. Reply Br. 7. In the absence of showing of good cause explaining why the argument could not have been presented in the in the principle Brief, we decline to consider this argument and deem it waived. See 37 C.F.R. § 41.41(b)(2) (2012 5 Appeal2015-002357 Application 12/094,001 Appellants' arguments do not point out any deficiencies in the Examiner's findings that the combination of Doom and Daniels teaches or at least suggests the "determine and transmit" limitations. Instead, Appellants' arguments essentially amount to an assertion that the cited prior art does not teach the claimed language and an argument that the combination is improper because the references there would be no reason to combine the references. See App. Br. 12-14. However, a mere assertion the cited prior art does not teach the claimed language is not a substantive argument for separate patentability. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). Nor do Appellants persuade us the combination is improper. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Here, the Examiner finds it would have been obvious to one of ordinary skill in the art to modify Dooms using the time sequential of the video content taught by Daniels in order to yield predictable results, such as the viewer is able to time shift the viewing of continuously aired program and can view the program after returning from a break starting at a point in the program at which the break started. Ans. 13-14. We determine this to be sufficient articulate reasoning, with rational underpinning, to support the combination. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approvalinKSR, 550U.S. at418). For the reasons stated above, Appellants fail to persuade us of error in the rejection of claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of: (1) claim 1; (2) independent claim 6, which Appellants group 6 Appeal2015-002357 Application 12/094,001 with claim 1 (see App. Br. 12); iii) independent claim 16, for which Appellants merely repeat substantially the same arguments made for claim 1 (see App. Br. 15-18); and (3) dependent claims 5 and 7-9, which are not argued separately. With respect to dependent claims 4, 9, 11, and 13, Appellants merely contend the additional reference used in the rejection of these claims (Tsuchida) does not make up for the purported deficiencies present in the Dooms/Daniels combination. See App. Br. 15. For the reasons discussed supra, Appellants fail to establish any deficiencies in the Dooms/Daniels combination. Accordingly, we sustain the 35 U.S.C. § 103(a) rejections of claims 4, 9, 11, and 13. Issue C: 35 U.S.C. § 103 Rejection - Claim 14 Appellants contend the cited references do not teach, alone or in combination, the "compare" limitation recited in claim 14. App. Br. 18. 4 Specifically, Appellants argue Fritsch provides no motivation to select a different channel, particularly a different channel that per the claimed subject matter is transmitting a second program from when that content was interrupted in the first program. Id. The Examiner finds, and we agree, that Fritsch teaches comparing a broadcast signal of the first program with a unicast signal of the second program for determining a resume operation following an interruption (time of continuation). Ans. 16; see Fritsch 9:45---61. Appellants' arguments 4 Appellants additionally reiterate substantially the same arguments made for claim 1 that the cited combination does not teach or suggest transmitting the second program starting from a specified time of continuation that is an elapsed content time of the first program. App. Br. 19. We are not persuaded by this argument for the reasons discussed supra Issue A. 7 Appeal2015-002357 Application 12/094,001 regarding the deficiencies in Fritsch are not persuasive because the Examiner relies on the combination of Dooms and Daniels, not Fritsch, for teaching or suggesting the transmitting limitation. See Ans. 16; see also supra Issue A. One cannot show non-obviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, Appellants do not persuade us of error in the 35 U.S.C. § 103(a) rejection of claim 14 and we sustain this rejection. DECISION We reverse the Examiner's decision to reject claims 1-5 and 14 under 35 U.S.C. § 112, second paragraph and affirm the Examiner's decision to reject claims 1-16 under 35 U.S.C. § 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision to reject claims 1- 16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 8 Copy with citationCopy as parenthetical citation