Ex Parte Kawahara et al

Patent Trial and Appeal Board

Dec 5, 2016

13609494 (P.T.A.B. Dec. 5, 2016)

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.
13/609,494 09/11/2012 Hiroyuki Kawahara SCEP 25.213 5564
26304 7590 12/07/2016
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
PARK, SUNGHYOUN
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
12/07/2016 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):
nycuspto@kattenlaw.com
s amson. helfgott @ kattenlaw .com
hassan.shakir@kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI KAWAHARA, TATSUTO SUETOMI,
MASAYOSHI MIZUNO, NAOYUKI MIYADA, KENSAKUISHIZUKA,
and KIYOTO SHIBUYA
Appeal 2016-002342
Application 13/609,4941
Technology Center 2400
Before JEAN R. HOMERE, JON M. JURGOVAN,
and MICHAEL J. ENGLE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as the Sony Computer
Entertainment Inc. App. Br. 2.
Appeal 2016-002342
Application 13/609,494
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5, 7, and 8, which are all of the claims
pending in this appeal. Claims 3, 4, 6, 9, and 10 have been cancelled. App.
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants ’ Invention
Appellants’ invention is directed to a plurality of storage devices (10)
directly connected to one another in a daisy chain via a network (3) such that
a broadcast signal emitted by a client device (20) through an antenna (2) is
passed directly from one storage device (10) to another. Spec. 115, Fig. 1.
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A storage system where a client device and a storage
device are connected to a network, wherein the client device, which
accesses the storage device, provides a user with a user interface with
which the user operates the storage device, and
wherein the storage device has a network attached storage
(NAS) function and a recording function to record a broadcast signal
which the storage device receives directly from an antenna via an
input on the storage device, and
wherein the storage device has no interface of its own with
which to operate,
wherein an application for controlling the recording function
of the storage device is installed on the client device,
wherein a plurality of the storage devices are connected to the
network,
wherein the antenna is connected to an input of a first storage
device, and
an output of the first storage device is connected directly to an
input of a second storage device in order to pass the broadcast signal
to the second storage device.
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Appeal 2016-002342
Application 13/609,494
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Vij US 2002/0196771 A1 Dec. 26, 2002
Tsao US 2003/0079016 A1 Apr. 24, 2003
Adachi US 2009/0074387 A1 Mar. 19,2009
Rejection on Appeal
Claims 1, 2, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Adachi, Tsao, and Vij.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 5—8, and the Reply Brief, pages 2-4.
Appellants argue that the proposed combination of references does not
teach or suggest the output of a first storage device directly connected to the
input of a second storage device to thereby pass a broadcast signal directly
from the first storage device to the second device, as recited in independent
claim 1. App. Br. 5; Reply Br. 2. In particular, Appellants argue because
Vij’s disclosure of a wireless bridge interspersed between a car that
communicates via Bluetooth and a server that communicates via WLAN
would require to alter the signal from one protocol to another, Vij does not
teach a direct connection between the server and the car. Id. 6 (citing Vij
11 67, 71, Tig. 7). Accordingly, Appellants argue that Vij does not cure the
admitted deficiencies of Adachi and Tsao. Id. 7, 8. This argument is
persuasive.
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Appeal 2016-002342
Application 13/609,494
At the outset, we note although the Examiner correctly identifies one
of the goals of the present application as passing a broadcast signal between
a first storage device and a second storage device, the claim at issue
nonetheless requires that the devices be directly connected. Ans. 9. We
agree with Appellants that the Examiner erred in finding Vij’s disclosure of
using a wireless bridge to transmit a broadcast signal from the car to the
server teaches a direct connection between the devices regardless of whether
the content being transmitted does not change. Id. As persuasively argued
by Appellants, although the broadcast signal is passed between the devices,
they are not directly connected to each other because of the intermediate
wireless gateway interspersed between them for converting the signal from
Bluetooth to TCP/IP protocol. App. Br. 7, 8. One of ordinary skill would
not construe two devices as being directly connected to each other when an
intervening device is interspersed between them to facilitate inter­
communication. Because Appellants have shown at least one reversible
error in the Examiner’s rejection, we reverse the Examiner’s rejection of
claim 1, as well as claims 2, 5, 7, and 8, which recite the disputed limitations
discussed above.
DECISION
We reverse the Examiner’s obviousness rejection under 35 U.S.C.
§ 103(a) of claims 1, 2, 5, 7, and 8 as set forth above.
REVERSED
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