Ex Parte Marko et al

Board of Patent Appeals and Interferences

May 12, 2010

09695228 (B.P.A.I. May. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PAUL D. MARKO
and CRAIG P. WADIN

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Appeal 2009-001220
Application 09/695,228
Technology Center 2400
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Decided: May 12, 2010
________________

Before JOHN A. JEFFERY, KENNETH W. HAIRSTON,
and THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 2, and 4-21. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
Appellants claim a receiver apparatus and method for processing and
storing a data file that is interspersed in a digital broadcast signal as
partitioned segments. A header is provided to identify the data file segments
and to specify the memory size required for storing the segments. A
receiver processor is programmed to use header-provided information to
identify what memory capacity is needed for storing the data file segments,
and to monitor storage of received segments.1 Claim 1 is illustrative:

1. A receiver in a digital broadcast system comprising:

a memory device for storing content from a transmitted broadcast
signal using said digital broadcast system, the content comprising data
files, said data files each being partitioned into segments that are
interspersed in said transmitted broadcast signal, said transmitted
broadcast signal being provided with at least one header comprising
information indicating the number of said segments that constitute at
least one of said data files and information to identify each of said
segments;

a reception device for receiving said transmitted broadcast signal and
processing said broadcast signal to obtain at least part of said content
including said segments corresponding to at least one of said data files
therein; and

a processing device connected to said memory device and said
reception device and being programmable to use said at least one
header in said transmitted broadcast signal to determine the size of at
least one section in said memory device to allocate for storing the data
file, to store said segments corresponding to the data file in said

1 See generally Spec. 5:21-30; 6:7-16; 7:5, 6; 7:18-8:8; 9:6-10:26; 11:9-26;
Figs. 1-5, 7.
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allocated section, and to monitor the progress of the storage of said
segments in said allocated section, said at least one header comprising
data to indicate how much of said memory device needs to be
allocated to store the data file.

The Examiner relies on the following prior art references to show
unpatentability:2
Rieger US 5,732,324 Mar. 24, 1998
Hiroshima US 5,801,781 Sep. 1, 1998
Morrison US 5,815,671 Sep. 29, 1998
Wolzien US 2003/0212996 A1 Nov. 13, 2003
Foster US 6,801,536 B1 Oct. 5, 2004
1. The Examiner rejected claims 1, 4, 5, 9, 12, 17, and 18 under 35
U.S.C. § 103(a) as being unpatentable over Foster and Hiroshima
(Ans. 3-6).3
2. The Examiner rejected claims 2, 10, and 19 under 35 U.S.C. §
103(a) as being unpatentable over Foster, Hiroshima, and Rieger
(Ans. 6-8).
3. The Examiner rejected claims 6, 7, 20, and 21 under 35 U.S.C. §
103(a) as being unpatentable over Foster, Hiroshima, and Morrison
(Ans. 8-10).

2 Effective filing dates for these documents precede Appellants’ earliest
effective filing date and are not at issue.
3 Although the Examiner did not include claim 12 in the statement of
rejection (Ans. 3), we presume this is a typographical error and that the
Examiner intended to include claim 12 based on the discussion of claim 12
in the statement of reasons for this rejection (Ans. 5).
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4. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Foster, Hiroshima, Morrison, and Wolzien (Ans.
10).
5. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Foster, Hiroshima, Rieger, and Morrison (Ans. 10,
11).
6. The Examiner rejected claims 13-15 under 35 U.S.C. § 103(a) as
being unpatentable over Foster and Morrison (Ans. 11, 12).
7. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Foster, Morrison, and Wolzien (Ans. 13).
Rather than repeat the Appellants’ or the Examiner’s arguments, we
refer to the Appeal Brief filed Aug. 9, 2007, the Examiner’s Answer mailed
Nov. 16, 2007, and the Reply Brief filed Jan. 16, 2008 for their respective
details. In this decision, we have considered only those arguments actually
made by Appellants. Arguments that Appellants could have made but did
not make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants’ Contentions
Appellants group claims 1, 4, 5, 9, 12, 17, and 18, and separately
argue independent claim 1 as not being obvious over Foster and Hiroshima
(App. Br. 7-14; Reply Br. 4-9). We, accordingly, select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants contend the
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references, either alone or in combination, fail to teach providing a header
with a transmitted broadcast signal so a processing device can (i) determine
the required size for a memory device to store data file segments; and (ii)
monitor storage of data file segments as recited in claim 1.
Appellants separately argue claim 2 as not being obvious over Foster,
Hiroshima, and Rieger (App. Br. 14, 15). Appellants contend Reiger fails to
teach or suggest generating an alert message when data file segments have
been stored as recited in claim 2.
Appellants separately argue claims 10 and 19 as not being obvious
over Foster, Hiroshima, and Rieger (App. Br. 15). Appellants contend
Reiger fails to teach or suggest determining whether rebroadcast data file
segments previously had been received and stored as recited in claims 10
and 19.
Appellants group claims 13-15, and separately argue independent
claim 13 as not being obvious over Foster and Morrison (App. Br. 17; Reply
Br. 9, 10). We, accordingly, select claim 13 as representative. See 37
C.F.R. § 41.37(c)(1)(vii). Appellants contend Foster fails to teach providing
a header with a transmitted broadcast signal that includes (i) a first field
indicating the total number of data file segments; and (ii) a second field
indicating segment identification codes as recited in claim 13.
ISSUES
Under § 103(a), have Appellants shown the Examiner erred in
rejecting:
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(a) representative claim 1 by finding Foster and Hiroshima, either
alone or in combination, teaches or suggests a header being provided with a
transmitted broadcast signal so a processing device can (i) determine the
required size for a memory device to store data file segments; and (ii)
monitor storage of data file segments;
(b) claim 2 by finding Rieger teaches or suggests generating an alert
message when data file segments have been stored;

(c) claims 10 and 19 by finding Rieger teaches or suggests
determining whether rebroadcast data file segments previously had been
received and stored; and
(d) representative claim 13 by finding Foster fails to teach providing a
header with a transmitted broadcast signal that includes (i) a first field
indicating the total number of data file segments; and (ii) a second field
indicating segment identification codes?
FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
Foster
1. Foster describes a receiver (190) with a set-top box (STB) (100)
(col. 3, ll. 48-51; Fig. 1) that has memory devices (130, 140) for
storing transmitted video/audio content (col. 4, ll. 2-11).
2. Foster discloses a STB compliant video/audio data buffering
method (col. 3, ll. 26-29; Fig. 2) that receives a transport stream
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210, i.e., a broadcast signal, for communicating data packets with
a header indicating the type of transported data (col. 5, ll. 43-46;
Figs. 2, 3).
3. Foster further discloses that transported packets are stored by
buffers 222A and 222V (col. 5, ll. 56-67).
4. A “bytes-to-interrupt” (BTI) value is disclosed by Foster as being
applied at the STB to packetized elementary stream (PES)
headers for establishing when buffer stages have been filled so as
to assure data does not overflow or underflow buffer stages (col.
6, ll. 1-18).
5. Foster also discloses that headers are built and queued with data
sub-blocks, and that system time clock (STC) values are included
in the headers for comparison with current STC values to
correlate sub-block storage locations (col. 3, ll. 10-15).
Hiroshima
6. Hiroshima discloses an apparatus for converting transport stream
communicated video/ audio data from a MPEG1 (Motion Picture
Experts Group) format to MPEG2 (Abstract; col. 1, ll. 7-16) by
using a “buffer memory” to store transmitted MPEG1 data (col. 7,
ll. 44-47).
7. Hiroshima shows an explanatory block diagram for a stream of
MPEG1 data as a conversion source (col. 4, 31, 32; Fig. 6), and
discloses that included data pack 86-1 has both a packet header 88
and system header 90 (col. 8, ll. 14-18), with the system header
90 including buffer size 122 in addition to other packet
information (col. 8, ll. 32-39).
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Rieger
8. Rieger describes a digital audio communication system with a
receiver capable of receiving and saving transmitted programs to
storage media (col. 1, ll. 7-21).
9. Rieger discloses that after a transmitted program is received and
stored, “a brief audio alarm to attract attention” can be emitted
(col. 5, ll. 43-51).
10. Rieger further discloses including an encoded preamble with
transmitted program data that describes program content and date
of creation so that a receiving unit can use the preamble
information “to filter out programs recognized as already having
been captured” (col. 4, ll. 29-42).

PRINCIPLES OF LAW
Analysis of claim rejections begins with a determination of claim
scope. We determine claim scope not solely on the basis of claim language,
but also on giving claims their broadest reasonable construction in light of
the specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
See also Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004) (“Though understanding the claim language may be aided by
explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim”).

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ANALYSIS
Claims 1, 4, 5, 9, 12, 17, and 18
Based on the record, we are persuaded the Examiner did not err under
§ 103(a) in rejecting these claims as being unpatentable over Foster and
Hiroshima.
Receiver apparatus claim 1 recites the following disputed limitations:
“a processing device . . . being programmable to use . . . [a] header . . . to
determine the size of at least one section in said memory device to allocate
for storing the data file . . . and to monitor the progress of the storage of said
segments in said allocated section . . . .” Appellants argue that “the headers
of the transport stream packets of Foster et al are not used to determine the
size of at least one section in a memory device to allocate for storing a data
file, . . . nor to monitor the progress of the storage of segments in the
allocated section . . .” (Reply Br. 5).
The Examiner acknowledges “Foster does not clearly disclose the use
of the header comprising data to indicate how much of the memory device
need[s] to be allocated to store the data file” (Ans. 4). Turning to
Hiroshima, though, the Examiner finds a data pack system header 90 taught
that includes “buffer size” and other data packet information (Ans. 16, 17;
accord FF 7). Appellants do not contest that Hiroshima teaches data pack
headers with included “buffer size” information, but, instead, Appellants
argue that “Hiroshima et al is silent regarding what the buffer size 122
corresponds to” (Reply Br. 6).

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Citing to the references, the Examiner finds and reasons:
Hiroshima discloses the use of the packet header data to indicate how
much of the memory device need[s] to be allocated to store the data
file (see Fig. 6, el. 122; Col. 8, lines 32-45) for the purpose of
preventing data loss by allocating corresponding memory size as
needed. Therefore, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify Foster
with Hiroshima for having a buffer size with a packet header so to
guarantee neither overflow nor underflow of the buffers.
(Ans. 4). In accord with the Examiner’s findings and reasoning, we further
find Hiroshima teaches using a “buffer memory” to store transmitted
MPEG1 data (FF 6). On this record, which is silent as to an ordinarily
skilled artisan lacking understanding or implementing skill in this regard, we
are persuaded by the Examiner’s and our findings that Hiroshima teaches the
claimed subject matter. For example, we note that “if a technique has been
used to improve one device [e.g., sizing Hiroshima’s buffer memory], and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007).
With respect to the recited monitoring of segment storage, the
Examiner finds Foster teaches that “[‘]blocks of audio and video data are . . .
queued to the buffers forming storage queues until the total data size
established by the BTI value . . . is reached’ (col. 8 lines 19-21). This
process effectively determines when data files have been received” (Ans.
18).
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Consistent with these Examiner findings, we find Foster teaches a
“bytes-to-interrupt” (BTI) parameter applied at the STB to packetized
elementary stream (PES) headers for determining that buffer stages are
neither overfilled nor under filled with received data (FF 4).
Appellants do not contest that Foster teaches a BTI parameter for
determining when buffer stages are filled with received data, but, instead,
Appellants argue “the BTI value is not in a header of a transmitted broadcast
signal and therefore [Foster] does not teach elements of the inventions . . .”
(Reply Br. 8; see App. Br. 10). More specifically, Appellants assert “the
Examiner is relying on a BTI value that is generated at the STB and
therefore is not part of the header in a transmitted broadcast signal” (Reply
Br. 8). We are not persuaded by this argument because representative claim
1 recites a “transmitted broadcast signal being provided with at least one
header.” Construing claim 1 based on the record, we find no reason to
exempt the recitation for a “transmitted broadcast signal . . . provided”
header, which is not limited as to where and when header provision occurs,
from a reasonably broad construction that reads on Foster’s application of
BTI values at a STB to headers (FF 4). See Am. Acad. of Sci. Tech. Ctr., 367
F.3d at 1364
Appellants further argue that “the BTI value does not identify each
block therein as the Examiner seems to suggest” (Reply Br. 8). Appellants
apparently are relying on the representative claim 1 recitation for a receiver
apparatus having a “memory device for storing content from a transmitted
broadcast signal . . . provided with at least one header comprising . . .
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information to identify each of said segments . . .” (emphasis added). In our
view, however, storing segment identifications from a header, without more,
does not functionally or structurally limit the claimed subject matter.
Therefore, the stored segment identifications constitute non-functional
descriptive material. Such non-functional descriptive material does not
patentably distinguish over prior art that otherwise renders claims
unpatentable. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also
Ex Parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential)
(discussing cases pertaining to non-functional descriptive material).
For the foregoing reasons, we find the Examiner did not err in
rejecting representative claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Foster and Hiroshima. Accordingly, the Examiner’s
rejection of independent claim 1, as well as the not-separately-argued
rejection of claims 4, 5, 9, 12, 17, and 18 will be sustained.
Claim 2
Based on the record before us, we are persuaded the Examiner did not
err under § 103(a) in rejecting dependent claim 2 as being unpatentable over
Foster, Hiroshima, and Rieger.
Appellants’ arguments are directed to Rieger, which Appellants assert
“teaches sending audio programs from low power transmitters to proximate
digital burst radio (PDBR) receiving units in motor vehicles” (App. Br. 14;
accord FF 8). Specifically, Appellants argue Rieger “does not disclose
alerting as claimed” (App. Br. 14).
The Examiner rejoins that “Rieger clearly shows that an audio alarm
is triggered when data has been correctly received (col. 5 lines 40-50, after
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capturing transmission, receiver emits audio alarm to attract attention to
newly saved data)” (Ans. 20).
We do not find the record supports construing outside a plain meaning
the recited “to generate an alert message.” Therefore, based on the record,
we concur with the Examiner’s findings from Rieger (see FF 8, 9). In
particular, we agree with the Examiner and not Appellants, because we find
Rieger discloses emitting “a brief audio alarm to attract attention” when a
transmitted audio program is received and stored (FF 9). Consequently, we
find the claim 2 recited “generat[ing] an alert message . . . when each of said
segments corresponding to the data file has been stored” is taught by Rieger.
We, accordingly, find the Examiner did not err in rejecting claim 2
under 35 U.S.C. § 103(a), and will sustain the rejection.
Claims 10 and 19
Based on the record, we are persuaded the Examiner erred under
§ 103(a) in rejecting dependent claims 10 and 19 as being unpatentable over
Foster, Hiroshima, and Rieger.
In relevant part, claims 10 and 19 recite having a data file rebroadcast,
with: (i) claim 10 further reciting that the processing device operates to store
rebroadcast segments “if said segments are not yet stored . . ., and to discard
said segments that . . . were previously stored;” and (ii) claim 19 further
recites “storing the rebroadcast said segments that are determined to have
not been previously stored.”
Again, Appellants’ arguments are directed to Rieger. For both claims
10 and 19, Appellants identically argue Rieger “discloses filtering programs
that are already captured at a receiver, but not determining whether parts of
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programs have been received or not” (App. Br. 15). We do not find that the
Examiner separately addressed this argument.
In the statement of reasons for the rejection of claims 10 and 19, the
Examiner indicates that Foster and Hiroshima fail to teach or suggest (i)
rebroadcast of segments, (ii) determining what data has been stored, (iii)
discarding rebroadcast data that was previously stored, and (iv) saving
rebroadcast data not previously stored (Ans. 7). Turning to Rieger, the
Examiner finds such subject matter taught. (id.).
We find Rieger teaches audio programs being rebroadcast and
received multiple times, and that a receiver can use preamble-provided
information “to filter out programs recognized as already having been
captured” (FF 10). We, however, do not find Rieger teaches or suggests an
apparatus or method to identify whether program segments were or were not
previously stored.
For the foregoing reasons, Appellants have persuaded us of error with
respect to the rejection under § 103(a) of dependent claims 10 and 19, and
we, accordingly, will not sustain the Examiner’s rejection.
Claims 13-15
Based on the record, we are persuaded the Examiner did not err under
§ 103(a) in rejecting representative claim 13 as being unpatentable over
Foster and Morrison.
In relevant part, independent claim 13 recites a method that provides a
“broadcast signal with segment headers . . . that each comprise . . . a first
field indicating the total number of said segments in the corresponding one
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of said data files, and a second field indicating said identification code of the
segment.” The Examiner finds Foster teaches this recited subject matter
(Ans. 11, 12).
In particular, the Examiner finds Foster “providing each segment with
a header that identifies the total number of segments” (Ans. 11). Appellants
acknowledge that Foster teaches a “sub block header 412 indicating total
data block size” (Reply Br. 10), and then argue “sub block header 412 . . . is
not in the transmitted stream but rather is created at the STB and can be of
courser granularity as explained in Foster et al at column 5, lines 5-6,
column 6, line 66 through column 7, line 8 and column 7, lines 24-27” (id.).
We are not persuaded by Appellants’ arguments because claim 13
recites “providing said broadcast signal with segment headers.” We do not
find any recited limitation as to when or where the “segment headers” are
provided to the broadcast signal. Thus, introducing information as to the
total number of segments into a header at a STB in our view does not avoid
being read on by claim 13. Additionally, claim 13 does not recite any
limitation addressing header “granularity,” and, therefore, we are not
persuaded by that argument.
For the second recited field, the Examiner finds Foster teaches a STC
(system time clock) identification code that is “in the header [and] indicates
the order in the file (col. 7 lines 5-35, col. 9 lines 1-23, STC in header)”
(Ans. 17). What Appellants argue is that the “STC . . . is not itself a part of
the transport stream, nor is it disclosed in Foster et al as part of a header 412
for sub blocks of data created at the STB from the received transport stream”
(Reply Br. 10). We are not persuaded by Appellants’ arguments because we
find Foster discloses that headers are built and queued with data sub-blocks,
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and STC values are included in the headers for comparison with current STC
values to correlate sub-block storage locations (FF 5). Further, as addressed
supra, we construe claim 13 as being reasonably broad enough to read on
STB construction of claimed headers.
For the foregoing reasons, we find the Examiner did not err in
rejecting representative claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Foster and Morrison. Accordingly, the Examiner’s
rejection of independent claim 13, as well as the not separately argued
rejection of dependent claims 14 and 15 will be sustained.
Claims 6, 7, 20, and 21
Based on the record, we are persuaded the Examiner did not err under
§ 103(a) in rejecting dependent claims 6, 7, 20, and 21 as being unpatentable
over Foster, Hiroshima, and Morrison.
Appellants essentially reiterate the same arguments considered above
for base independent claims 1 and 17 (App. Br. 15, 16). Accordingly, we
will sustain the rejection of dependent claims 6, 7, 20, and 21 for similar
reasons as their base claims. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987).
Claim 8
Based on the record, we are persuaded the Examiner did not err under
§ 103(a) in rejecting dependent claim 8 as being unpatentable over Foster,
Hiroshima, Morrison, and Rieger.
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Appellants essentially reiterate the same arguments considered above
for base independent claim 1 (App. Br. 16). Accordingly, we will sustain
the rejection of dependent claim 8 for similar reasons as base claim 1.
Nielson, 816 F.2d at 1572.
Claim 11
Based on the record, we are persuaded the Examiner erred under §
103(a) in rejecting dependent claim 11 as being unpatentable over Foster,
Hiroshima, Rieger, and Morrison.
Claim 11 is dependent from claim 10 that we find nonobvious as is
addressed supra. We do not find that Morrison overcomes the deficiencies
of Foster, Hiroshima, and Rieger. We, accordingly, will not sustain the
rejection of claim 11 because it contains all the limitations of claim 10.
Hartness Int’l Inc., v. Simplimatic Eng’g Co., 819 F.2d 1100, 1108 (Fed.
Cir. 1987).
Claim 16
Based on the record, we are persuaded the Examiner did not err under
§ 103(a) in rejecting dependent claim 16 as being unpatentable over Foster,
Morrison, and Wolzien.
Appellants essentially reiterate the same arguments considered above
for base independent claim 13 (App. Br. 17, 18). Accordingly, we will
sustain the rejection of dependent claim 16 for similar reasons as claim 13.
Nielson, 816 F.2d at 1572.
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CONCLUSIONS
Under § 103(a), Appellants have shown the Examiner erred in
rejecting claims 10, 11, and 19 as being unpatentable over Foster,
Hiroshima, and Rieger.
Under § 103(a), Appellants have not shown the Examiner erred in
rejecting claims 1, 2, 4-9, 12-18, 20, and 21 as being unpatentable over cited
references.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4-9, 12-18, 20, and 21
is affirmed. The Examiner’s decision rejecting claims 10, 11, and 19 is
reversed.
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-IN-PART

KIS

Stacey J Longanecker
Roylance Abrams Berdo & Goodman, L.L.P.
1300 19th Street NW
Suite 600
Washington, DC 20036