Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Nov 30, 2012

10937322 (P.T.A.B. Nov. 30, 2012)

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.
10/937,322 09/10/2004 Jeyhan Karaoguz 14528.00136 1450
16378 7590 11/30/2012
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
LUONG, ALAN H
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
11/30/2012 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 JEYHAN KARAOGUZ and JAMES BENNETT
____________

Appeal 2011-005173
Application 10/937,322
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to receiving and redistributing broadband
signals at a Set Top Box (STB). Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for processing and redistributing
multiple signals, the method comprising the steps of:

receiving an input data signal having a corresponding
protocol, wherein at least a portion of the input data signal
contains data received from a broadband access antenna;

analyzing the input data signal, wherein said analyzing
comprises processing and identifying the input data signal;

converting at least a portion of the input data signal into a
different protocol for redistribution;

providing the input data signal to one of a plurality of
adaptors in a set top box based on one or both of said analyzing
and/or said converting; and

providing the converted portion of the input signal
having said different protocol to one of a wired networking
mode and a wireless networking mode to be redistributed,
wherein the steps are performed in the set top box.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Knutson US 2003/0163822 A1 Aug. 28, 2003
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Atad

US 2005/0055723 A1

Mar. 10, 2005
(filed Mar. 29, 2004)

REJECTIONS
Claims 1-5, 8-15, and 18-28 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Atad.
Claims 6, 7, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Atad and Knutson.

ANALYSIS
The Anticipation Rejection
Claims 1-4, 8-14, 18-24, and 26-28
Regarding independent claim 1, Appellants contend that Atad does
not disclose “providing the input data signal to one of a plurality of
adaptors in a set top box based on one or both of said analyzing and/or said
converting” (App. Br. 8). Specifically, Appellants argue that
[Atad’s] Figure 22 merely discloses a combination gateway
and STB. These components are still separate and distinct
from one another, but merely combined in a single unit.
Accordingly, the parts of Atad that the Office Action relies on
as “adaptors” in a “set top box,” are still, nonetheless, in the
gateway, but not the STB.

(App. Br. 11). Appellants further contend Atad does not disclose that “all of
the steps recited in claim 1 are performed in the set top box” (App. Br. 12).
Appellants also contend Atad does not disclose “converting at least a portion
of the input data signal into a different protocol for redistribution” as recited
in claim 1 (App. Br. 12-14). We disagree.
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The Examiner finds that Atad discloses performing all the steps
recited in claim 1, including “providing the input data signal to one of a
plurality of adaptors in a set top box,” in the system shown in Figure 22
(Ans. 4-5; 12-13). Atad explains:
Reference is now made to FIG. 22, which is a simplified
system diagram of the combined STB and residential gateway
unit 94 of FIGS. 16B and D. . . . The device is a combination
of the devices of FIGS. 20 and 21, except that the interfaces
between the STB and the residential gateway are no longer
required. Instead a CPU 160 is provided for overall control.

(Atad, ¶ 0144]). Accordingly, we agree with Appellants that Figure 22
discloses “a single unit” (see App. Br. 11). We are not persuaded, however,
that the components the Examiner relies on as the claimed “adaptors”—
“802.11 WLAN transceiver [136], VoIP GW module [134] or 10/100 DSL
switch” (Ans. 5)—are “in the gateway, but not the STB” (App. Br. 11).
These components are inside the single unit of Figure 22, and whether the
unit is referred to as a set top box is simply a matter of labeling.
Furthermore, Figure 22 does in fact label the unit a “WiNetworks RG with
integrated STB (STB Max),” i.e., a type of set top box. Absent a more
specific definition of a “set top box” in claim 1, we find Atad’s Figure 22
meets this limitation.
We are also not persuaded by Appellants’ argument that Atad does
not disclose “converting at least a portion of the input data signal into a
different protocol for redistribution,” as recited in claim 1 (App. Br. 12-14).
We agree with the Examiner (Ans. 4-5; 13-14) and find Atad’s receiving
input 802.16 data and transmitting output 802.11 data meets the
“converting” limitation (see Atad, ¶ 0140]; Fig. 22). Specifically, Atad
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discloses an “802.16 transceiver unit 130 provides an interface to the WAN
for the incoming, outgoing and relay WAN traffic” and an “802.11 interface
136 allows a connection for any 802.11 compatible device so as to set up a
local hotspot” (Atad, ¶ 0140]). In order to provide a hotspot, data is
converted between the 802.16 protocol and the 802.11 protocol. For
example, Atad discloses:
The conversion of the satellite antenna as described
herein enables a transformation of the current installed location
into a 802.11 WiFi hotspot. The 802.16 WAN cloud thus
serves as a backdrop to a series of WiFi hotspots. Transition
between 802.11 and 802.16 operation is part of the 802.16
standard and is preferably carried out in accordance with the
standard.

(Atad, ¶ 0137]).
We are therefore not persuaded the Examiner erred in rejecting claim
1, and claims 2-4 and 8-10 not separately argued. Although Appellants
separately argue independent claims 11 and 21, the arguments presented are
similar to the claim 1 arguments (see App. Br. 16-20 and 22-26). We
therefore sustain the rejections of claims 11 and 21, and claims 12-14, 18-20,
22-24, and 28 depending therefrom, for the reasons discussed above.

Claims 5, 15, and 25
Appellants contend “the Office Action does not explain or otherwise
demonstrate that there is anything in either Figure 14A or [0124] of Atad
that describes, teaches, or suggests providing a converted portion [of an
input signal] that includes supplemental data to a television receiver to
supplement data received from a satellite antenna” (App. Br. 15).
Appellants also cite Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed.
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Cir. 2008) and contend “the Office Action seems to apply portions of
different embodiments of Atad in a piecemeal fashion with respect to the
anticipation rejections” (App. Br. 15). We disagree.
The Examiner identifies paragraph 0124] in Atad as disclosing the
limitations of claim 5 (Ans. 6, 15). Here, Atad discloses that “the TV
receives the satellite signals for display and also has a return channel and a
full-duplex unicast broadband connection via the WAN. In addition the TV
is able to receive any video on demand or interactive TV signals that may be
sent via the WAN.” (Atad, ¶ 0124]) (emphasis added). Appellants do not
specifically explain (see App. Br. 14-15) why receiving interactive TV
signals via the WAN fails to meet the claim 5 step of “providing
supplemental data to a television receiver to supplement data received from
the satellite antenna,” and thus we are not persuaded of error in the
Examiner’s findings regarding this limitation.
Further, we find the facts of the present appeal are distinguishable
from Net MoneyIN, where the Federal Circuit found anticipation lacking in a
reference because the elements were not “arranged or combined in the same
way as in the claim.” Net MoneyIN at 1370-71. In Net MoneyIN the
reference disclosed two distinct protocols, and steps from each of the two
protocols were needed to meet all the limitations of the disputed claim. Id.
at 1371. Here, while the Examiner cites different parts of the Atad reference
for independent claim 1 and dependent claim 5, the disclosure in one part
relates to that of the other part (see Ans. 4-6). That is, the description of
Figure 14A (Atad, ¶ 0124])—relied upon for claim 5—describes not only
the functionality of Figure 14A, but also that of Figure 22—relied upon for
claim 1. Specifically, Atad’s paragraph 124 describes receiving “any video
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on demand or interactive TV signals that may be sent via the WAN.” The
system in Figure 22 comprises an “802.16 transceiver unit 130 [that]
provides an interface to the WAN for the incoming, outgoing and relay
WAN traffic” (Atad, ¶¶ 0140], 0144]), and therefore receives “any video
on demand or interactive TV signals that may be sent via the WAN,” as
described in paragraph 0124]. Moreover, Atad discloses that
The present embodiments comprise a satellite (DVB-S) or
terrestrial (DVB-T) based broadcasting system in which a
digital TV feed is provided over a satellite or terrestrial
connection to a user’s satellite or terrestrial receiver and
wherein a 2-way preferably relatively high data rate channel is
provided over a WAN which uses each installed satellite or
terrestrial receiver as a micro-base station for the WAN
network. . . . The WAN provides at least a return channel to
enable interactive television and like services but may also
provide an outward channel of high capacity allowing unicast
services. Thus services such as Internet, Internet telephony and
video/gaming on demand can be made available.

(Atad, ¶ 0081]) (emphases added). This further shows that Atad’s plural
embodiments, including the system in Figure 22, receive interactive TV
signals over a WAN in addition to satellite signals.
We are therefore not persuaded the Examiner erred in rejecting claim
5. Although Appellants separately argue claim 15, the arguments presented
are similar to the claim 5 arguments (see App. Br. 20-21). We therefore
sustain the rejection of claim 15 for the reasons discussed above.
Regarding claim 25, the Examiner’s Answer updated the rejection to
rely on the same findings as for claim 5 (see Ans. 9, 16-17). In the Reply
Brief, Appellants separately argue claim 25, but rely on the arguments
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presented for claim 5 (Reply Br. 9). We therefore sustain the rejection of
claim 25 for the reasons discussed above.

The Obviousness Rejection
Claims 6 and 16
Appellants do not provide any new arguments for claims 6 and 16
other than those presented for claims 1 and 11, from which claims 6 and 16
depend. We therefore sustain the rejection of claims 6 and 16 for the
reasons discussed above.

Claims 7 and 17
The Examiner finds Knutson discloses an outdoor unit 24 with a
coarse tuner 36 that performs the claimed downconverting, receiving,
analyzing, converting, and providing steps (Ans. 11; Knutson, Figs. 2 & 3).
Appellants contend Knutson does not disclose that the “‘downconverting,
receiving, analyzing, converting and providing steps are all performed in’
the ‘coarse tuner 36’” (App. Br. 27). We agree with Appellants that the
Examiner has not specifically identified where Knutson discloses all of the
claimed steps are performed in the coarse tuner 36. For example, the
Examiner has not identified where Knutson discloses the coarse tuner 36
performs the claimed “converting” step (see Ans. 11, 17), which comprises
“converting at least a portion of the input data signal into a different protocol
for redistribution,” as recited in claim 1. We are therefore constrained by the
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record to find that the Examiner erred in rejecting claim 7, and claim 17
which recites commensurate limitations.1

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 7 and 17 under 35 U.S.C.
§ 103(a).
The Examiner did not err in rejecting claims 1-5, 8-15, and 18-28
under 35 U.S.C. § 102(e), and claims 6 and 16 under 35 U.S.C § 103(a).

DECISION
For the above reasons, we reverse the rejection of claims 7 and 17,
and we affirm the rejections of claims 1-6, 8-16, and 18-28.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED-IN-PART

1 We do not comment on whether claims 7 and 17 fail to further limit claims
1 and 11, respectively, under 35 U.S.C. § 112, fourth paragraph. We leave it
to the Examiner to address, upon further prosecution, whether the claim 7
limitations “wherein the downconverting, receiving, analyzing, converting
and providing steps are all performed in a downconversion module
proximate to the broadband access antenna” are outside the scope of claim
1, which recites “wherein the steps are performed in the set top box,” and
thus should be rejected under § 112, fourth paragraph. See Pfizer, Inc. v.
Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (A claim that
“fails to ‘specify a further limitation of the subject matter’ of the claim to
which it refers because it is completely outside the scope of [the other]
claim” is invalid for failure to comply with § 112, fourth paragraph.).
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