Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardSep 27, 201613366043 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/366,043 02/03/2012 23373 7590 09/29/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Ye-youlLEE 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. Ql29146 8205 EXAMINER SHEPARD, JUSTINE ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 09/29/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YE-YOUL LEE, SI-CHEOL KIM, and YOO-SEUNG HWANG Appeal2015-002931 Application 13/366,043 Technology Center 2400 Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, AARON W. MOORE, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Final Rejection of claims 1-38 under 35 U.S.C. § 134(a). Appeal Brief 8. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Introduction "The present invention provides an apparatus and method for providing an interactive service to devices using different digital broadcast middleware standards which can enable devices that comply with the HANA [High-Definition Audio-Video Network Alliance] specification to utilize OCAP [OpenCable™ Applications Platform] applications." Specification, paragraph 1 7. Appeal2015-002931 Application 13/366,043 _,_Representative Claim (disputed limitations emphasized) 1. An apparatus for providing an interactive service between a first device and a second device which utilize different digital broadcast middleware standards, the first device comprising: an execution information providing module which provides execution information regarding an application that has been executed in the first device using a first middleware standard, so that the application can be executed in the second device using a second middleware standard; and a request execution module which receives, from the second device, a request to execute the application in the first device when executing the application in the second device based on the execution information, performs a command corresponding to the request which is received, and controls a result of the request to be displayed in the second device remotely. Rejections on Appeal Claims 1-3, 8-11, 17-20, 25-28, and 34--38 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Williams (U.S. Patent Number 7,593,469 B2; issued September 22, 2009). Final Rejection 3---6. Claims 4, 5, 12, 13, 21, 22, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Williams and Horii (U.S. Patent Application Publication Number 2007/0157263 Al; published July 5, 2007). Final Rejection 6-7. Claims 6, 14, 23, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Williams and Candelore (U.S. Patent Application Publication Number 2008/0196075 Al; published August 14, 2008). Final Rejection 7-8. 2 Appeal2015-002931 Application 13/366,043 Claims 7, 15, 24, and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Williams, Candelore, and HANNA Whitesheet. Final Rejection 8. Claims 16 and 33 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Williams and Song (U.S. Patent Application Publication Number 2008/0066101 Al; published March 13, 2008). Final Rejection 8- 9. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 5, 2014), the Reply Brief (filed December 4, 2014), the Answer (mailed October 9, 2014), and the Final Rejection (mailed December 10, 2013) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Appellants argue Williams fails to anticipate the invention recited in independent claims 9, 18, and 26. Appeal Brief 9. The Examiner finds that Williams anticipates the claims because Williams teaches an execution information providing module and a request execution module. Final Rejection 4 (citing Williams column 4, lines 6-18, Figure 3, items 20 and 30). We find Appellants' arguments persuasive. Appellants argue: [I]n Williams, an OCAP-ready television is created by separately providing an OCAP Cablecard, and attaching the OCAP Cablecard to the television. The OCAP engine of the OCAP Cablecard receives Java code and conducts operations such as the generation of graphics dictated by the code. These graphics 3 Appeal2015-002931 Application 13/366,043 are then supplied to the host device for display. (See column 3, line 66 to column 4, line 6 of Williams). Appeal Brief 11 (emphasis omitted). The independent claims require two middleware standards (a first and a second); however, Williams teaches the employment of only one middleware standard (OCAP). See Williams Abstract. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Consequently, we reverse the Examiner's anticipation rejection of independent claims 1, 9, and 18, as well as dependent claims 2, 3, 8, 10, 11, 17, 19, 20, 25-28, and 34--38. We also reverse the Examiner's obviousness rejections of dependent claims 4--7, 12-16, 21-24, and 29-3 8 for the same reasons supra. DECISION The Examiner's anticipation rejection of claims 1-3, 8-11, 17-20, 25-28, and 34--38 is reversed. The Examiner's obviousness rejections of claims 4--7, 12-16, 21-24, and 29-38 are reversed. REVERSED 4 Copy with citationCopy as parenthetical citation