Ex Parte Kim et al

Patent Trial and Appeal Board

Sep 23, 2013

11417237 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HYUN-WOO KIM, TAE-YUN AN,
and BYUNG-HEE LEE
____________

Appeal 2011-006347
Application 11/417,237
Technology Center 2400
____________

Before KRISTEN L. DROESCH, JASON V. MORGAN and
BARBARA A. PARVIS, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 3-5, 7, 8, 10-12, 14-16, 18, 19, 21 and 22.1 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. An oral hearing was held
on September 12, 2013.
BACKGROUND
The Appellants’ disclosed invention relates to a method and apparatus
of providing a time shift function in an audio/video (AV) network. The
method of providing the time shift function includes restoring broadcast
content of received broadcast signals; transmitting the restored broadcast
content to a content output apparatus; transmitting the restored broadcast
content to a content storage apparatus; and interrupting the transmission of
the broadcast content to the content output apparatus if the time shift
function is requested. Abs.; see also Spec. ¶¶ 11-16.
Independent claims 1 and 5 are illustrative and reproduced below
(disputed limitation in italics):
1. A method of providing a time shift function, the
method comprising:
restoring broadcast content of received broadcast signals;
transmitting the restored broadcast content to a content
output apparatus;
transmitting the restored broadcast content to a content
storage apparatus; and
interrupting the transmission of the broadcast content to
the content output apparatus if the time shift function is
requested;

1 Claims 2, 6, 9, 13, 17 and 20 have been cancelled.
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wherein the transmitting the restored broadcast content to
the content storage apparatus is performed automatically if
channel switching is not requested within a predetermined time,
and
wherein an audio/video network connection between a
broadcast receiving apparatus and the content output
apparatus is disconnected when the time shift function is
requested.

5. A method of providing a time shift function, the
method comprising:
outputting broadcast content received from a broadcast
receiving apparatus; and
outputting broadcast content received from a content
storage apparatus if the time shift function is requested;
wherein the outputting broadcast content received from a
content storage apparatus comprises:
disconnecting an audio/video (A/V) network connection
with the broadcast receiving apparatus;
establishing an A/V network connection with the content
storage apparatus;
receiving the broadcast content from the content storage
apparatus; and
outputting the broadcast content received from the
content storage apparatus.
Rejections
Claims 1, 3, 4, 8, 10-12, 14, 15, 19, 21 and 22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yap (U.S. Patent Pub.
2001/0033343 A1, Oct. 25, 2001), Brenner (U.S. Patent Pub. 2003/0154479
A1, Aug. 14, 2003) and Gibbs (U.S. Patent 6,452,935 B1, Sep. 17, 2002).
Claims 5, 7, 16 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yap and Gibbs.
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ISSUE
Did the Examiner err in determining that the claimed invention would
have been obvious over the combination of Yap and Gibbs or the
combination of Yap, Brenner and Gibbs?
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ arguments in the Appeal Brief presented in response to the Final
Office Action and the Reply Brief presented in response to the Answer. We
highlight and address specific findings and arguments as follows.
Rejection of claims 1, 3, 4, 8, 10-12, 14, 15, 19, 21 and 22 over
Yap, Brenner and Gibbs
The Appellants argue that Gibbs does not teach or suggest “an
audio/video network connection between a broadcast receiving apparatus
and the content output apparatus is disconnected when the time shift
function is requested,” as recited in claim 1, and similarly recited in
independent claims 8, 12 and 19. App. Br. 17-18; Reply Br. 9-12. The
Appellants argue that Gibbs’s teachings have no relevance to the claimed
invention since Gibbs is related to a system for automatically allocating
bandwidth on a network bus. App. Br. 17-19; Reply Br. 9-10.
We are not persuaded by the Appellants’ arguments. We agree with
the Examiner that the Appellants’ arguments address the teachings of the
Gibbs reference alone rather than addressing the combined teachings of the
reference. Ans. 25 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In re
Merck, 800 F.2d 1091 (Fed. Cir 1986)). We agree with, and adopt as our
own, the Examiner’s findings that Yap, Brenner and Gibbs, as combined by
the Examiner, teach the disputed claim limitations and the Examiner’s
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determination that the claims would have been obvious to one with ordinary
skill in the art at the time of the invention. Ans. 25-29. In particular, we note
that the Examiner relies on the combined teachings of Yap and Gibbs -- Yap
for teaching a time shift function and interrupting the transmission of the
broadcast content to the content output apparatus if a time shift function is
requested, and combined with Gibbs’ teaching of establishing and
disconnecting the AV network connection. Ans. 4-5, 25-29.
The Appellants also argue that the Examiner has not articulated an
objective motivation to modify Yap, Brenner and Gibbs to achieve the
claimed invention because Brenner teaches away from the combination with
Yap. App. Br. 12-13; Reply Br. 10-11. The Appellants assert that Brenner
teaches that local storage must be delayed for a predetermined amount of
time, in contrast to Yap which teaches simultaneous recording, viewing and
playback of multiple signals. App. Br. 13 (citing Yap ¶ 0009; Brenner
¶ 0041).
We are not persuaded by the Appellants’ arguments. The Appellants
do not meaningfully explain why Brenner’s teachings suggest that
developments flowing from its disclosures are unlikely to produce the
objective of the Appellants’ invention. See Syntex (U.S.A.) v. Apotex, Inc.,
407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994)). Rather, the Appellants’ arguments focus on the differences
between Brenner and Yap. A teaching of something different is not a
teaching away. Moreover, contrary to the Appellants’ suggestion, the
teachings of Yap are not limited to simultaneous recording, viewing and
playback of multiple signals. Yap also teaches that alternatively, one
program can be recorded while another is being viewed either from a live
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broadcast or from the previously recorded video library in the storage unit.
¶ 0018; see also ¶ 0085. In other words, Yap teaches that the program being
viewed can be delayed in the case when the program is from the previously
recorded video library.
We are also unpersuaded by the Appellants’ argument that Yap and
Brenner individually teach away from the disclosure of the present invention
because Yap and Brenner both teach storing broadcast content in a remote
storage device. App. Br. 13-14; Reply Br. 5-6. The Appellants’ arguments
are not commensurate in scope with the claims since independent claims 1,
8, 12 and 19 do not specify the location of the content storage apparatus.
Last, the Appellants argue there is no motivation to combine Yap,
Brenner and Gibbs because: 1) Yap appears to be fully able to provide
adequate bandwidth for the devices on the network; and 2) Brenner does not
indicate a need for additional bandwidth. App. Br. 15; Reply Br. 7-8. The
Appellants assert that one with ordinary skill in the art would not be
motivated to modify Yap and Brenner when it already possesses the
supposed benefits of the proposed modification. Id.
The Appellants’ arguments are not persuasive. The Appellants do not
direct us to objective evidence to support their assertion that Yap already
provides adequate bandwidth and that Brenner does not need additional
bandwidth. We are also not persuaded by the Appellants’ arguments because
we are unaware of, and the Appellants do not direct us to, persuasive
authority requiring the prior art reference(s) to identify the same problem
which is solved by an additional prior art reference. “Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
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the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007) (emphasis added). In this case, one with ordinary skill in the
art at the time the invention was made would have recognized that Gibbs’
technique of establishing and disconnecting connections to make adequate
bandwidth available when a request for a connection is received would
improve similar devices in the same way, the use of which is obvious unless
its actual application is beyond the skill of one with ordinary skill in the art.
See KSR, 550 U.S. at 417.
For all these reasons, we sustain the rejection of claims 1, 3, 4, 8, 10-
12, 14, 15, 19, 21 and 22 as being obvious over Yap, Brenner and Gibbs.
Rejection of claims 5, 7, 16 and 18 over Yap and Gibbs
The Appellants argue that Yap and Gibbs do not teach or suggest
“outputting broadcast content received from a content storage apparatus
comprises: disconnecting an audio/video (AV) network connection with the
broadcast receiving apparatus; establishing an AV network connection with
the content storage apparatus,” as recited in independent claim 5, and
similarly recited in independent claim 16. App. Br. 19-21; Reply Br. 12-13
(emphasis omitted).
We are not persuaded by the Appellants’ arguments. We agree with,
and adopt as our own, the Examiner’s findings that Yap and Gibbs, as
combined by the Examiner, teach the disputed claim limitations and
determination that the claimed invention would have been obvious to one
with ordinary skill in the art at the time of the invention. Ans. 12-13, 29-30.
In particular, we note that the Examiner relies on the combined teachings of
Yap and Gibbs -- Yap for teaching the particular devices, and combined with
Gibbs’ teaching of establishing and disconnecting AV network connections.
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Id. We additionally note that Yap teaches an AV network connection with
the broadcast receiving apparatus (i.e., receiver/tuner 40) and an AV
network connection with the content storage apparatus (i.e., storage device
200). Fig. 1.
For the same reasons as those explained above addressing claims
1, 3, 4, 8, 10-12, 14, 15, 19, 21 and 22, we are not persuaded by the
Appellants’ argument that the Examiner has not provided supportable
objective reasons why one of ordinary skill in the art would have been
motivated to modify Yap in view of Gibbs. App. Br. 21.
For all these reasons, we sustain the rejection of claims 5, 7, 16 and 18
as being obvious over Yap and Gibbs.
DECISION
We AFFIRM the rejections of claims 1, 3-5, 7, 8, 10-12, 14-16, 18,
19, 21 and 22 under 35 U.S.C. § 103(a).
TIME PERIOD
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).
AFFIRMED

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