Ex Parte Krupp

Patent Trial and Appeal Board

Aug 31, 2016

12635142 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/635,142 12/10/2009
24131 7590 09/02/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Johannes Krupp
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. CONFIRMATION NO.
2008P02049 8803
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES KRUPP
Appeal2014-008326
Application 12/635,142
Technology Center 2400
Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 3-14, 16, and 17, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 The real party in interest is identified as Nokia Siemens Networks OY.
(App. Br. 2.)
Appeal2014-008326
Application 12/635,142
Claimed Subject Matter
The claimed invention generally relates to a method and system for
providing program information to multiple terminals and subscribers. (Spec.
Abstract, i-f 9.) Claim 1, reproduced below,2 is illustrative:
1. A data processing method, which comprises:
providing first program information with a first system,
the first system being linked to a packet-based fixed network, via
which it communicates with the at least one first terminal and a
gateway;
providing the first program information also for at least
one first terminal;
determining, by the gateway, second program information
on a basis of the first program information;
providing, by the gateway, the second program
information for a second system;
providing, with a function of the second system, the
second program information for at least one second terminal, the
at least one second terminal being a mobile terminal;
providing, by the gateway, the second program
information to at least one further terminal, the second system
including the at least one further terminal; the at least one further
terminal being a mobile terminal, and the at least one further
terminal acquires the second program information in a manner
such that the function of second system is bypassed.
2 The reproduced claim is from Appellant's listing of the claims in the
Response To Non-Final Office Action (filed May 10, 2013) because the
claims in the Claims Appendix attached to the Appeal Brief (App. Br. 21-
26) reflect amendments in Appellant's Response To Final Office Action
(filed Oct. 16, 2013), which was not entered (see Advisory Action mailed
Nov. 7, 2013).
2
Appeal2014-008326
Application 12/635,142
Rejection
Claims 1, 3-14, 16, and 17 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Marsh et al. (US 2009/0220216 Al; publ. Sept. 3, 2009)
("Marsh"). (Final Act. 2-10.)
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments (App. Br. 6-19; Reply Br. 2---6). On the record before us, we
concur with Appellant's contention (App. Br. 10-19; Reply Br. 3---6) that the
Examiner has not shown Marsh discloses providing, by the gateway, the
second program information to at least one further terminal, the second
system including the at least one further terminal, the at least one further
terminal being a mobile terminal, and the at least one further terminal
acquires the second program information in a manner such that the function
of second system is bypassed, as recited in claim 1.
The Examiner finds: (1) Marsh's wireless DVR interface 742 is the
claimed gateway (Final Act. 3); (2) Marsh's gateway provides second
program information for the second system, user layers 722 or 736 (Final
Act. 3 (citing Marsh Fig. 9, i-f 94)); (3) a function of the second system
provides the second program information to a second terminal, and the
function is reducing the channel listing to a shorter time period, or for
tailoring the data for display on mobile devices (Final Act. 4 (citing Marsh
Fig. 9, i-fi-191, 96, 80, 1003)); (4) Marsh's gateway (wireless DVR interface
3 We agree with Appellant (App. Br. 8) that the Examiner's citation to
paragraph 1000 was likely inadvertent and intended to refer to paragraph
100.
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Appeal2014-008326
Application 12/635,142
742) provides the second program information to a further terminal 704,
706, or 708 in the second system (Final Act. 4 (citing Marsh Fig. 9, i-fi-1 91,
94)); and (5) the further terminal acquires the second program information in
such a manner that the function of the second system is bypassed because
terminals 704, 706, and 708 can receive the program information from block
750 in Figure 9 of Marsh, bypassing wireless DVR interface 742 (Final Act.
4 (citing Fig. 9, i194)).
As Appellant points out (App. Br. 10-11), claim 1 recites bypassing
the function of the second system, not the gateway, which provides the
second program information to the further terminal. Accordingly, even if
wireless DVR interface 742 could be considered a part of the second system
and was bypassed in providing the second program information to the
further terminal, the Examiner's findings would not address all limitations of
the claim because the Examiner finds wireless DVR interface 742 is the
claimed gateway. The Examiner has not explained how the gateway can
provide the second program information to the further terminal and also be
bypassed as the second program information is provided to the further
terminal. To the extent the Examiner does not find wireless DVR interface
742 is bypassed, but rather only the function of tailoring the data for display
on mobile devices is bypassed, we agree with Appellant (App. Br. 8-10) that
the function identified by the Examiner is disclosed in Marsh as being
performed by wireless DVR interface 742. (See Marsh i-fi-189, 94, 96, 100.4)
4 Paragraph 89 of Marsh teaches "wireless DVR interface block 742 is set
up to translate the protocols, the type of data, and so forth, to allow the back
end communications intended for PC 720 to be 'tuned down ' to work with
the mobile devices 704, 706, 708"; paragraph 94 teaches "electronic program
data is periodically obtained from an external source, such as 750, and such
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Appeal2014-008326
Application 12/635,142
The Examiner also finds Marsh bypasses the second system's function
as required by claim 1 because "the second system ... can receive the
program information from other wireless network [that] may be operated by
a third party who is not a partner of the cable television service provider, in
other words bypassing the cable television service provider," and "the
mobile devices ... bypass[] the packet-based fixed network distributing the
content from 'head end' (HE)." (Ans. 12-14 (citing Marsh Fig. 9, i-fi-185, 86,
94) (emphasis added).) Although Marsh refers to cellular or wireless
networks operated by a third party that is not a partner of the cable television
service provider (paragraph 86), the cited portions of Marsh do not
specifically disclose how a terminal would receive the second program
information under these circumstances. Logically, "User Layer 2: CATV
provider" (see Marsh Fig. 9, block 722) would be bypassed under these
circumstances. Claim 1, however, requires the function that is bypassed in
providing the program information to the further terminal to be the same
function that provides the program information for the second terminal
recited in the claim. As discussed above, the Examiner identifies the
function that provides second program information for at least one second
terminal to be a function performed by wireless DVR interface 742. (Final
Act. 4 (citing Marsh i-fi-180, 91, 96, 100).) Thus, the Examiner's finding
electronic program data is cached in wireless DVR interface block 742";
paragraph 96 teaches that "the functionality of block (or layer) 742 is to tune
the aforementioned functionality down for the mobile devices"; and
paragraph 100 teaches that "[o]n a mobile phone or other mobile devices
704, 706, 708, this [user interface] functionality is advantageously
converted, for example, via block 742, to function with the relatively small
screen and limited memory of the mobile devices." (Marsh i-fi-189, 94, 96,
100 (emphasis added).)
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Appeal2014-008326
Application 12/635,142
regarding bypassing the cable television service provider (Ans. 12) does not
match the finding as to a function of the second system recited earlier in the
claim (Final Act. 4 ).
Accordingly, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 102(e) as anticipated by Marsh. We also do not sustain
the Examiner's rejection of independent claim 16, which contains limitations
of commensurate scope and stands rejected on the same basis as claim 1, or
the rejection of dependent claims 3-14 and 17.
DECISION
The Examiner's decision to reject claims 1, 3-14, 16, and 17 is
reversed.
REVERSED
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