Ex Parte Lu

Board of Patent Appeals and Interferences

Feb 20, 2009

09745622 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIN LU
____________

Appeal 2009-0142
Application 09/745,622
Technology Center 2600
____________

Decided:1 February 20, 2009
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Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0142
Application 09/745,622

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STATEMENT OF CASE
Appellant’s claimed invention is directed to a method, system, and
module for sending out-of-band (OOB) service information from a data
module to a host system such as a set-top box (Spec. 1:5-9).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. A system for sending out-of-band (OOB) service information from
a service provider, the system comprising:

a point of deployment (POD) module which receives an in-band (IB)
transport stream (TS) including IB TS packets, the POD module
including a processor for processing OOB service information from a
service provider, constructing OOB TS packets using the OOB service
information, identifying unoccupied gaps in the IB TS, inserting the
OOB TS packets in the unoccupied gaps and sending the OOB TS
packets and the IB TS packets to a set-top box using a transport
stream channel; and

wherein the set-top box includes a processor for processing the OOB
TS packets.

REFERENCES
Bacon US 2002/0101991 A1 Aug. 1, 2002
(filed Dec. 4, 2000)
Bertram US 2003/0103532 A1 Jun. 5, 2003
(filed Dec. 10, 1999)
Vantalon US 6,628,891 B1 Sep. 30, 2003
(filed Nov. 19, 1999)

The Examiner rejected claims 1-15 under 35 U.S.C. § 103(a) based
upon the teachings of Vantalon, Bertram, and Bacon.
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Appellant contends the reservation of space inside content stream by a
NULL packet, as taught by Bertram, is not the same as the insertion of OOB
packets when the system detects a gap in the in-band (IB) transport stream
(TS) (Br. 5).2

ISSUE
Did Appellant establish the Examiner erred in finding the NULL
packet of Bertram is the same as an unoccupied gap?

FINDINGS OF FACT
1. Appellant’s invention is a system for sending out-of-band
(OOB) service information from a service provider to a set-top box where a
point of deployment (POD) module identifies unoccupied gaps in the in-
band (IB) transport stream (TS) and inserts the OOB TS packets into the
unoccupied gaps (cl. 1, Br. 5).
2. Bertram teaches a method and apparatus for transport encoding
asset data and content data (Abstract). The content data transport stream
includes a number of NULL transport packets interspersed with the content
data transport packets such that the NULL packets “‘reserve[s’] a portion of
the asset data stream” (¶¶ [0020], [0024]).

PRINCIPLES OF LAW
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

2 Appellant does not contest the teachings of Vantalon and Bacon (Br. 5).
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1576, 1582 (Fed. Cir. 1996)). Furthermore, the specification is the single
best guide to the meaning of a claim term. Id. at 1315.
The “broadest reasonable interpretation” rule recognizes that “before a
patent is granted the claims are readily amended as part of the examination
process.” Burlington Indus., Inc. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir.
1987). Thus, a patent applicant has the opportunity and responsibility to
remove any ambiguity in claim term meaning by amending the application.
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). If the Examiner’s burden is met, the burden
then shifts to the Appellant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
The Examiner rejected claims 1-15 under 35 U.S.C § 103 as obvious
over Vantalon, Bertram, and Bacon (Ans. 3). Appellant separately argues
independent claims 1, 4, 7, 12, however, the arguments all refer to those
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provided with respect to claim 1. Thus, the claims are argued together as a
group and this rejection is addressed with respect to representative claim 1.
The Examiner finds Vantalon teaches a system for sending out-of-
band (OOB) service information from a service provider to an access
module for receiving an in-band (IB) transport stream (TS), a processor, and
a set-top box. However, Vantalon does not teach or suggest a system or
method where the access module sends the OOB data as packets, identifying
unoccupied gaps in the IB TS, and inserting the OOB TS packets in the
unoccupied gaps, and the access module being a point of deployment (POD)
module (Ans. 3). The Examiner then states Bacon teaches that an access
module is also known as a POD and that Bertram discloses unoccupied gaps
(Ans. 3-4).
Appellant does not contest the Examiners findings with respect to
Vantalon or Bacon. Appellant does contest the Examiner’s findings with
respect to Bertram. Particularly, Appellant argues, “the reservation of space
inside the content stream by a NULL packet is not the same as the insertion
of OOB packets when the system detects a gap in the IB TS” (Br. 5).
Claim 1 recites, “identifying unoccupied gaps in the IB TS” and
“inserting the OOB TS packets in the unoccupied gaps.” We look to the
Specification to determine the meaning of the term “gap.” Page 9, lines 19-
21 states, “there is sufficient ‘space’ between two consecutive TS packets of
the original IB TS stream to insert the OOB TS packets.” In this instance,
“space” is also not defined. Giving this term its broadest reasonable
interpretation, “space” can be considered any area between packets,
including a NULL. There is nothing in Bertram that identifies the NULL
packet as anything other than empty space. Appellant’s own definition
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provided by Chiariglione’s MPEG Systems FAQ, pg.6, states a “NULL
packet is a particular undeclared transport packet that belongs to nobody
(emphasis added).” Accordingly, if a NULL packet belongs to nobody, it is
an unoccupied space/gap. Therefore, the Examiner’s position that “a NULL
packet is considered an unoccupied gab [sic]” is reasonable. (Ans. 7)
Appellant has not successfully rebutted the Examiner’s prima facie
case of obviousness. Appellant has not shown the Examiner erred in
interpreting a NULL packet as an “unoccupied gap.” Thus, the Examiner
properly rejected claims 1-15 as obvious over the collective teachings of
Vantalon, Bertram, and Bacon.

CONCLUSION
The Examiner did not err in rejecting claims 1-15 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s decision rejecting claims 1-15 is affirmed.
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

KIS

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