Ex Parte Laksono

Patent Trial and Appeal Board

Aug 18, 2016

12246375 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/246,375 10/06/2008 Indra Laksono
93253 7590 08/22/2016
Garlick & Markison (VIXS)
P.O. Box 160727
Austin, TX 78716-0727
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.
VIXS005USC1 5976
EXAMINER
PARRA, OMAR S
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
MMurdock@texaspatents.com
ghmptocor@texaspatents.com
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INDRA LAKSON0 1
Appeal2015-003553
Application 12/246,375
Technology Center 2400
Before DEBRA K. STEPHENS, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9 and 25-35, which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION UNDER
37 C.F.R. § 41.50(b).
Technology
The application relates to a multimedia server receiving a plurality of
programs and mixing them into a stream of program data. Abstract. Claim
1 is representative and provided below with the key limitations emphasized:
1. A multimedia system comprising:
a multimedia server operably coupled to receive a
plurality of programs from a plurality of sources, wherein the
1 Appellant states the real party in interest is ViXS Systems, Inc. App. Br. 2.
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Application 12/246,375
plurality of sources includes at least one multimedia source, a
wide area network and at least one playback device and wherein
the multimedia server includes:
a tuning module operably coupled to receive the
plurality of programs and to select a set of programs from
the plurality of programs from the plurality of sources
based on a set of program select commands that is derived
from select requests;
a program mixer operably coupled to mix the set of
programs into a stream of program data; and2
a first transceiving module operably coupled to
transmit the stream of program data via a first
communication path and to receive the select requests;
a second transceiving module operably coupled to
transmit the stream of program data via a second
communication path contemporaneously with the first
transceiving module's transmission of the stream of
program data via the first transmission path; and
a client module that produces the select requests for
at least one of a plurality of clients, wherein the at least
one of the plurality of clients is operably coupled to
receive at least a portion of the stream of program data,
wherein the client module includes:
a selection module operable to produce at
least one of the select requests; and
a network interface controller operably
coupled to transmit the at least one of select requests
to the multimedia server and to receive the stream
of program data via the first communication path.
Rejections
Claims 25-28 and 30-35 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination ofRakib et al. (US 2004/0172658 Al; Sept. 2,
2004) and Hicks et al. (US 7,698,723 B2; Apr. 13, 2010). Final Act. 2.
2 This "and" appears to be redundant and could be deleted for clarity.
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Claims 1-7 and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Rakib, Hicks, and Diehl et al. (US 6, 7 62,690 B 1;
July 13, 2004). Final Act. 8.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Rakib, Hicks, Diehl, and Hamlin (US 5,574,964; Nov. 12,
1996). Final Act. 17.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination ofRakib, Hicks, and Shinyagaito (US 2001/0021884 Al; Sept.
13, 2001). Final Act. 18.
ISSUE
Did the Examiner err in finding the combination of Rakib and Hicks
teaches or suggests "a program mixer operably coupled to mix the set of
programs into a stream of program data" wherein the set of programs is
selected from a plurality of programs from a plurality of sources and the
plurality of sources "includes at least one multimedia source ... and at least
one playback device," as recited in claim 1?
ANALYSIS
Indefiniteness: Claims 25-35
In a new grounds using our authority under 37 C.F.R. § 41.50(b), we
reject claims 25-35 as indefinite under 35 U.S.C. § 112, second paragraph.
"[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014). However, "indefiniteness rejections by the USPTO arise in a
different posture from that of indefiniteness challenges to an issued patent."
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Jn re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014). "The Office construes
claims by giving them their broadest reasonable interpretation during
prosecution in an effort to establish a clear record of what the applicant
intends to claim. Such claim construction during prosecution may
effectively result in a lower threshold for ambiguity than a court's
determination." MPEP § 2173.02(1). "At the same time, this requirement is
not a demand for unreasonable precision" and "how much clarity is required
necessarily invokes some standard of reasonable precision in the use of
language in the context of the circumstances." Packard, 751 F.3d at 1313.
A type of uncertainty called a lack of antecedent basis can arise where
a claim refers to "said element" or "the element" without first introducing
"an element," or where there are two recitations of "an element" within the
same claim and it is not reasonably certain which is being referred to by a
reference to "said element." See generally MPEP § 2173.05(e); Slimfold
Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). The
failure to provide explicit antecedent basis does not necessarily render a
claim indefinite if the context provides reasonable certainty. Energizer
Holdings, Inc. v. Int'! Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir.
2006). However, we find no such reasonable certainty here, regardless of
whether these claims were in prosecution or an issued patent.
Independent claims 25 and 33 twice recite "the one or more channel
select commands." However, the claims never recite "a one or more channel
select commands." To the extent the phrase refers to either "a first set of
channel select commands" or "a second set of channel select commands,"
we determine an ordinarily skilled artisan would find it not reasonably
certain which set (or both) is intended. Moreover, a "set" can consist of zero
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or more elements (e.g., the null set or empty set) so merely having a "set" of
commands does not inherently require "one or more" commands. Thus, "the
one or more channel select commands" lacks antecedent basis and renders
the claims indefinite. Dependent claims 26-32, 34, and 35 ultimately
depend from these claims, and dependent claims 28, 30, and 31 further use
the same phrase. Thus, we conclude these claims are also indefinite.
Independent claims 25 and 33 also recite "the second set of channels,"
which lacks antecedent basis. The claims recite "a first set of channels" but
not "a second set of channels." What "the second set of channels" is
intended to refer to is not reasonably certain. For example, the multiplexors
receive "a second set of channel select commands" (which is a set of
"commands," not channels) and output "a set of single channel multimedia
sources" (which is a set of "sources," not channels, and which is not clearly
identified as being the "second" set). Therefore, "the second set of
channels" lacks antecedent basis and the claims are indefinite. Dependent
claims 26-32, 34, and 35 ultimately depend from these claims, and
dependent claims 28-32 further use the same phrase. Thus, we conclude
these claims are also indefinite.
Accordingly, in a new ground, claims 25-35 are rejected as indefinite.
Obviousness: Claims 1-9
Claim 1 recites "a multimedia server operably coupled to receive a
plurality of programs from a plurality of sources, wherein the plurality of
sources includes at least one multimedia source, a wide area network and at
least one playback device" and "a program mixer operably coupled to mix
the set of programs into a stream of program data." Appellant's
Specification describes that the multimedia source may be, for example, a
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connection to satellite, cable, or antenna (Spec. 11 :29-31 ), while the
playback device may be a "VCR" or "DVD player." Spec. 16:9-15. Both
Appellant and the Examiner refer to a multimedia source as "external" and a
playback device as "local" or "internal" (Reply Br. 7; Ans. 21 ), though such
language does not appear in the claims and is not defined in the
Specification.
The Examiner relies upon Rakib for teaching that multiple multimedia
sources can be converted, packetized, and "mixed together on an IP stream
of packets for distribution to each of the requesting devices." Ans. 19 (citing
Rakib i-f 120). For example, Figure 3 of Rakib shows the gateway 14
connected to a satellite dish 56, a cable TV subscription network 16, and
telephone lines 58. Rakib i-f 38. The Examiner relies upon Hicks for
teaching "the gateway can receive the content from local and external
sources," i.e., both playback devices and multimedia sources. Id. at 20. For
example, Figure 1 of Hicks shows a switch 101 connected to "playback
devices" such as a mass storage device 103 as well as "multimedia sources"
such as cable television (CATV) and satellite TV. Hicks 6:7-32, 1:16. The
Examiner finds the combination of Rakib and Hicks teaches or suggests the
claimed mixing of sources, and that whether "a signal is from an external
source [i.e., multimedia source as Rakib teaches] or an internal source [i.e.,
playback device as Hicks teaches] does not impose further requirements to
Rakib's gateway." Id. at 21.
We have considered Appellant's arguments but are not persuaded of
any error. Appellant argues neither reference mixes both playback devices
and multimedia sources. App. Br. 7-12; Reply Br. 6-7. But "[n]on-
obviousness cannot be established by attacking references individually
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where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, Appellant has not sufficiently persuaded us against the Examiner's
findings that (1) Rakib mixes3 multiple multimedia sources, (2) Hicks
receives signals from both playback devices and multimedia sources,
(3) applying Rakib's mixing to a playback device (e.g., a VCR) does not
impose any further requirements on Rakib's gateway, and (4) modifying
Rakib with Hicks provides the additional benefit of allowing the user to
watch playback device content anywhere in the house. Ans. 19-21, 11, 4.
Nor has Appellant identified any unexpected result from mixing data from a
playback device rather than (or in addition to) a multimedia source. Given
this record, we are not persuaded of any error.
In the Reply Brief, after repeating multiple pages of the Appeal Brief
verbatim, Appellant newly argues Hicks teaches away from mixing because
it instead outputs on separate communications links. Reply Br. 7. By
regulation, "any arguments or authorities not included in the appeal brief
will be refused consideration by the Board for purposes of the present
appeal." 37 C.F.R. § 41.37(c)(l)(iv). Further, "[a]ny argument raised in the
reply brief which was not raised in the appeal brief, or is not responsive to
an argument raised in the examiner's answer, ... will not be considered by
the Board for purposes of the present appeal, unless good cause is shown."
37 C.F .R. § 41.41 (b )(2). Appellant has not shown good cause. Nor has
Appellant overcome the rule that "[a] reference does not teach away ... if it
merely expresses a general preference for an alternative invention but does
not criticize, discredit, or otherwise discourage investigation into the
3 The Specification equates "mixes" with "multiplexes." Spec. 22: 14.
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invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation omitted).
We also note many of Appellant's arguments are based on limitations
not recited in the claims, such as calling a playback device "local." E.g.,
Reply Br. 6-7. Similarly, Appellant treats independent claims 1 and 25
nearly identically in arguing the prior art does not mix both multimedia
sources and playback devices (App. Br. 12), yet in claim 1 as written, all of
the programs for mixing could be selected from a single kind of source (e.g.,
a multimedia source). In claim 1, a program from a playback device must be
received, but that does not mean it must also be selected or mixed.
Regardless, even if mixing both multimedia sources and playback devices
were required, for the reasons discussed above, we see no error in the
Examiner's conclusion that claim 1 is obvious.
Accordingly, we sustain the Examiner's rejection of claim 1, and
claims 2-9, which Appellant argues are patentable for similar reasons. See
App. Br. 13; 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Claims 25-35
Although claims 25-35 are indefinite, we note that with respect to
obviousness of the disputed limitations, the Examiner and Appellant applied
the same findings and arguments to all claims. See, e.g., App. Br. 11; Ans.
2--4, 7-11. Accordingly, for claims 25-35, we assume, solely for purposes
of furthering prosecution, that ( 1) the first instance of "the one or more
channel select commands" refers to "a first set of channel select commands"
and the second instance of that phrase refers to "a second set of channel
select commands" and (2) "the second set of channels" refers to "a set of
single channel multimedia sources." Based on those assumptions, we
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sustain the obviousness rejection of claims 25-35 for the same reasons as
claim 1.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-9 and 25-35 as obvious. In a new ground of rejection, we reject
claims 25-35 under 35 U.S.C. § 112, second paragraph for indefiniteness.
TIME TO RESPOND
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection for obviousness, this
decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
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review under 35 U.S.C. § 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
37 C.F.R. § 41.50(b)
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