Ex Parte Lee et al

Patent Trial and Appeal Board

Feb 16, 2013

11416554 (P.T.A.B. Feb. 16, 2013)

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.
11/416,554 05/03/2006 Young-Gu Lee 678-2450 7248
66547 7590 02/19/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
CHAUHAN, ULKA J
ART UNIT PAPER NUMBER
2679
MAIL DATE DELIVERY MODE
02/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOUNG-GU LEE and HOON YOO
____________________

Appeal 2010-004570
Application 11/416,554
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JASON V. MORGAN, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Introduction
This is a decision on Appellants’ Request for Rehearing.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method for forming a broadcast program time
table in an electric program guide (EPG) database, the method
comprising the steps of:
storing present program information of event information
table present/follow (EIT P/F) information in a first program
information area of a corresponding segment area in the electric
program guide (EPG) database by determining a segment, in
which program discontinuity occurs, in an event information
table (EIT) schedule if the EIT P/F information is received; and
storing program information of an Nth segment in a
second program information area when the Nth segment of the
EIT schedule is received, and program discontinuity occurs in
the Nth segment, the Nth segment being a segment included in
the received EIT schedule.

Appellants’ Contentions
1. Appellants quote the Board’s decision and contend that the
Board erred because “the Board has merely deferred to the Examiner's
assertions.” (Rehearing Request 2).
2. Appellants contend that the Board erred because its “form of
analysis directly contradicts requirements set forth by both the Board of
Patent Appeals and Interferences itself and the Court of Appeals for the
Federal Circuit.” (Rehearing Request 4).
2.A. In particular, Appellants note that the Board’s Frye decision
“sets forth the form of review to be performed by the Board.” Ex parte Frye,
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Appeal No. 2009-006013 (BPAI 2010)(Precedential). Appellants go on to
quote from Frye:
The Board's role in any subsequent appeal is to, “on written
appeal of an applicant, review adverse decisions of examiners
upon applications for patents.” 35 U.S.C. § 6(b) (2006)
(emphasis added) .... The panel then reviews the obviousness
rejection for error based upon the issues identified by the
appellant, and in light of the arguments and evidence produced
thereon (sic) Seer (sic) Oetiker, 977 F.2d at 1445 (“In reviewing
the Examiner’s decision on appeal, the Board must necessarily
weigh all of the evidence and argument.”) (emphasis added) ...
Specifically, the Board reviews the particular finding(s)
contested by the appellant anew in light of all the evidence and
argument on that issue. See Ex parte Frye, Appeal No. 2009-
006013 (Bd. App. 2010).
(Rehearing Request 2-3).
2.B. Further in particular, Appellants note the Federal Circuit’s
Gechter decision and argues that the Board is required to set forth findings
of fact. Gechter v. Davidson, 116 F.3d 1454 (Fed.Cir.1997). Appellants go
on to quote from Gechter:
The Board is required to set forth in its opinions specific
findings of fact and conclusions of law adequate for form a
basis of our review. In particular, we expect that the Board's
anticipation analysis be conducted on a limitation by limitation
bases, with specific fact findings for each contested limitation
and satisfactory explanations for such findings. Claim
construction must also be explicit, at least to any construction
disputed by the parties to the interference (or an applicant or
patentee in an ex parte proceeding). See Gechter v. Davidson,
116 F.3d 1454, 1457-58 (Fed.Cir.1997).
(Rehearing Request 3).
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3. Appellants contend that the Board erred because:
[T]he Board has referred to the Examiner’s reasoning without
reviewing the particular findings contested anew, and has failed
to directly consider and address all of Appellants’ arguments.
(Rehearing Request 3; emphasis in original).
4. Appellants contend that the Board erred because:
[T]he Examiner has not responded to Appellants’ arguments in
the Reply Brief, and therefore, by merely referring to the
Examiner’s previous findings, the Board has failed to address
Appellants’ arguments in the Reply Brief.
(Rehearing Request 3-4).

ANALYSIS
First Contention
We disagree with Appellants’ first contention that “the Board has
merely deferred to the Examiner's assertions.” (Rehearing Request 2).
Appellants’ contention misstates the facts of record.
Contrary to Appellants allegation, this Board did not merely indicate
agreement with the Examiner. Rather, as the panel stated (emphasis added):
We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur
with the Examiner’s anticipation finding.
(Decision 3). Adoption of the Examiner’s findings and reasons can form an
adequate record to permit judicial review. In Hyatt, the Federal Circuit
explicitly pointed out that “[t]he Board adopted the examiner’s findings” and
“[t]he Board adopted the examiner’s analysis.” In re Hyatt, 211 F.3d 1367,
1370-71 (Fed. Cir. 2000). The court in Hyatt then concluded that “the Board
addressed the limitations of each claim in a manner adequate to permit
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judicial review” and the court “decline[d] the invitation to vacate the
Board’s decision on the ground that [the Board] failed to explain its
reasoning sufficiently to enable us to review its rulings.” Hyatt, 211 F.3d at
1371. Further, Appellants attention is directed to our reviewing court’s Rule
36 decision in Carnahan where the Federal Circuit affirmed the Board
decision in Ex Parte Carnahan, Appeal 2010-011437 (BPAI 2011), which
“incorporated by reference the Examiner’s Answer.” In re Carnahan, 440
Fed.Appx 927 (Fed. Cir. 2011) (nonprecedential).

Second Contention
Appellants’ second contention that the Board has erred is based on
several points. (Rehearing Request 2-3).
1) That the Board’s Frye holding, which sets forth the form of review
to be performed by the Board, also sets a particular format for an
opinion of this Board.
2) The Federal Circuit’s Gechter holding, that the Board is required
to do fact finding in an interference (where the Board is the initial
fact finder), is extendable to the unrelated review functions of the
Board (where the Board is not the initial fact finder).
We disagree with Appellants’ analysis as it relates to both the Frye holding
of this Board and the Gechter holding of the Federal Circuit.
As to Frye, we agree with Appellants that the Board must review the
particular finding(s) contested by the appellant anew in light of all the
evidence and argument on that issue. However, contrary to Appellants’
contention that under Frye they are entitled to a particular Board decision
format and content, Frye is silent as to such a requirement. In Frye the
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Board panel set forth an analysis which reiterated and agreed with some
points made in the Appeal Brief argument of Appellant Frye. However,
nothing precluded the Frye panel from referencing Appellant Frye’s Appeal
Brief arguments and adopting those points as its own.1 Frye does not hold
that this Board is required in their decisions to regurgitate in-whole the
examiner findings and reasoning and/or appellant briefing points with which
the panel agrees.
As to Gechter, we agree with Appellants that the Board must explain
the basis for its rulings sufficiently to enable meaningful judicial review by
the Federal Circuit. However, contrary to Appellants’ contention that under
Gechter they are entitled to a particular Board decision format and content,
our review of Gechter finds no mention of this special requirement as argued
by Appellants. Our review finds that Gechter states “the statute’s mandate
to ‘review’ implies inherent power in this court to require that the Board’s
decision be capable of review.” 116 F.3d at 1454, 1457. We disagree with
Appellants’ request and find inappropriate their attempt to convert this
inherent power of our reviewing court into an Appellants’ entitlement that
the Board’s decision must be set forth in a specific format.
Further, Gechter involved an interference decision where the Board
was the fact finder as opposed to the appeal before the Board for review of
the adverse decision of the Examiner including the fact finding of the
Examiner therein. Although the Gechter rule of “inherent power in this
court to require that the Board’s decision be capable of review” is applicable
to all decisions of the Board, the Federal Circuit has never held as argued by

1 The format of many reversals of this Board is one of reference to and
adoption of particular points made in an Appellant’s Appeal Brief.
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Appellants that Appellants are entitled as a matter of law to more than the
decision they received. To the contrary, Appellants attention is again
directed to the court’s decisions in Hyatt and Carnahan.
Third Contention
Appellants argue that the Board has erred because Appellants allege
the Board did not review the particular findings contested anew, and has
failed to directly consider all of Appellants’ arguments. We disagree with
Appellants’ conclusion that this panel erred.
Since this panel did not state in its decision that it was not reviewing
the particular findings contested anew and did not state that it was not
considering Appellants’ arguments, we assume that Appellants, in making
general allegations, intended to argue that this Board in its decision did not
provide an individualized critique of each argument that Appellants
presented in their Appeal Brief and Reply Brief.
Oetiker requires that in reviewing the Examiner’s decision on appeal,
the Board must necessarily weigh all of the evidence and arguments. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). However, Appellants cite to
no basis for interpreting Oetiker as holding that this Board is required to
provide an individualized critique of each argument that Appellants present.
This panel did consider all of Appellants’ argument in its deliberations and
reviewed the particular findings contested anew. This panel did not err in
not discussing individually each of Appellants’ arguments in its ultimate
decision.
Fourth Contention
Appellants argue that the Board has erred because since Examiner has
not responded to Appellants’ arguments in the Reply Brief, then the Board
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did not address Appellants’ arguments in the Reply Brief. We disagree with
Appellants’ conclusion that this panel erred.
These Reply Brief arguments were weighted in our review of the
Examiner’s decision. However, except for the argument we discuss directly
below, these Reply Brief arguments were merely variations on the “Sull et
al. does not provide any teachings regarding program discontinuity” (App.
Br. 6) arguments of the Appeal Brief, i.e., they were not substantively
different from the arguments of Appellants Appeal Brief.
Appellants’ Reply Brief argues that “the cited paragraph [0275] of
Sull is unrelated to step 1030 of Sull” at page 3 thereof. However, our
review of these cited portions of Sull, found that paragraph [0275] discusses
the meaning of “segmentation information” and step 1030 is directed to how
“segmentation information” is processed. Thus, the Examiner properly cited
to paragraph [0275] in discussing step 1030. See Ans. 7. Although we did
not memorialize the results of our review for the record, we deemed this
argument to be frivolous and observed that this argument was confined to
the Reply Brief. While we chose at that time not to place our concerns into
the record and to overlook Appellants’ filing of a frivolous argument, given
Appellants’ contention in the Request for Rehearing, we now make our
concerns of record.
As we noted above, In re Oetiker requires that in reviewing the
Examiner’s decision on appeal, the Board must necessarily weigh all of the
evidence and arguments. 977 F.2d at 1445. However, Appellants cite to no
basis for interpreting Oetiker as holding that this Board is required to
consider frivolous arguments. Although ultimately this panel did in fact
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consider Appellants’ frivolous argument in its deliberations, this panel made
no error in not discussing that frivolous argument in its ultimate decision.

DECISION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellants’ request with respect to making any change thereto.

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)(v).

REQUEST FOR REHEARING DENIED

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