Ex Parte Norin et al

Patent Trial and Appeal Board

Jun 18, 2013

11593711 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/593,711 11/07/2006 John Norin PD-205084 5880
20991 7590 06/18/2013
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
SOROWAR, GOLAM
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
06/18/2013 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 JOHN NORIN, SCOTT CASAVANT,
JORGE GUZMAN, and SEAN S. LEE
____________

Appeal 2011-000998
Application 11/593,711
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JASON V. MORGAN,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-15, and 17-25, which constitute all the claims pending in this
application. See App. Br. 2. Claims 2 and 16 are cancelled. See id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).
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THE INVENTION
Appellants’ invention relates to transferring files from a home-based
satellite receiver system to a vehicle-based satellite receiver system. See
Spec. ¶ 0002. Claim 1, which is illustrative of the invention, reads as
follows:
1. A method comprising:
storing a file on a storage device associated with a
satellite receiver;
storing a first household key with the file;
communicating the file and the first household key
to a file playback device from the storage device;
storing a second household key on the file
playback device;
authorizing playback of the file through the file
playback device when the first household key matches
the second household key; and
playing the file with the file playback device after
authorizing.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Coffin US 2005/0124289 A1 June 9, 2005
Caspi US 2005/0136975 A1 June 23, 2005
Grace US 2006/0004948 A1 Jan. 5, 2006
McDowell US 2006/0154687 A1 July 13, 2006
Houldsworth US 2006/0194535 A1 Aug. 31, 2006
Boss US 2006/0220799 A1 Oct. 5, 2006
De Luca US 2006/0240811 A1 Oct. 26, 2006

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Claims 1, 3, 4, 13, 17, 181, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Houldsworth and De Luca. See Ans. 3-8
Claims 5, 8, 9, 11, 12, 14, 15, and 242 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Houldsworth, De Luca, and Grace. See Ans.
9-13.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Houldsworth, De Luca, and Boss. See Ans. 13-14.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Houldsworth, De Luca, and Caspi. See Ans. 14-15.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Houldsworth, De Luca, and Coffin. See Ans. 15-16.
Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Houldsworth and McDowell. See Ans. 16-17.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Houldsworth, McDowell, and Grace. See Ans. 17-18.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Houldsworth, McDowell, and De Luca. See Ans. 18-19.

1 The statement of the rejection at page 3 of the Answer does not list claims
17 and 18. However, substantive rejections of those claims are provided at
page 7 of the Answer. Accordingly, we treat this rejection as including
claims 17 and 18.
2 The statement of the rejection at page 9 of the Answer includes claim 20.
However, there is no substantive statement of a rejection of claim 20 over
Houldsworth, De Luca, and Grace. The Answer later includes a substantive
rejection of claim 20 over Houldsworth, McDowell, and Grace. See Ans.
17-18. Thus, we treat claim 20 as rejected over Houldsworth, McDowell,
and Grace.
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ANALYSIS
REJECTION OF CLAIMS 1, 3, 4, 13, 17, 18, 23, AND 25
UNDER 35 U.S.C. § 103(a)
The Examiner finds that Houldsworth teaches each limitation of claim
1 except for “storing a first household key with the file” and “storing a
second household key on the file playback device,” see Ans. 3-4, limitations
the Examiner finds taught in De Luca, see Ans. 4-5. In response to
Appellants’ arguments that Houldsworth does not teach communicating a
file and a household key or matching a first household key and a second
household key, see App. Br. 8, the Examiner clarifies that Houldsworth does
not teach a “first household key” and a “second household key,” and that De
Luca is cited for those limitations. See Ans. 20. In other words, the
Examiner finds that Houldsworth teaches “storing a file on a storage device
associated with a satellite receiver,” “communicating the file . . . to a file
playback device from the storage device,” “authorizing playback of the file
through the file playback device,” and “playing the file with the file
playback device after authorizing,” and that De Luca teaches that storing and
communicating a household key with a file, along with matching that key to
a second household key to authorize a file, were well-known techniques.
See Ans. 3-5, 20-22.
De Luca describes techniques for activating and deactivating
subscription receivers (including satellite receivers in homes or in
automobiles) using portable wireless devices (e.g., cell phones and personal
digital assistants (“PDA”)). See De Luca, ¶ 0020. According to De Luca, a
cell phone establishes a Bluetooth connection with a subscription receiver,
queries the receiver for an identification value, and sends an activation
request message with the receiver identification value and a user identifier
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(e.g., cell phone number) to a subscription service provider, which identifies
the user’s account. See id. The subscription service provider then transmits
an activation message to the subscription receiver, which is then activated
for receiving and playing music. See id.
Appellants contend that De Luca does not teach storing a household
key with a file on a storage device associated with a satellite receiver and
communicating the file and the household key to a playback device. See
App. Br. 9-10. Appellants contend that De Luca is “directly contrary” to the
invention described in the Specification because De Luca’s system allows an
authorized mobile device to directly receive satellite signals from a satellite
provider, rather than receiving a file from another satellite receiver. See
App. Br. 9. The Examiner responds by finding that De Luca’s receiver
identification value is a first household key and the user identification
number stored in the cell phone is a second household key. See Ans. 22. In
reply, Appellants contend that De Luca does not teach storing the receiver
identification number with the file to be communicated, nor does it teach
communicating both the receiver identification number and the file. See
Reply Br. 2-3.
We agree with Appellants. While De Luca teaches communicating a
receiver identification value to a cell phone, then to a subscription service,
and then to a receiver, De Luca does not teach storing the receiver
identification value with a file to be played back or communicating such a
file and the receiver identification value to the receiver. Thus, neither
Houldsworth nor De Luca teaches storing a first household key with a file on
a storage device or communicating the file and the first household key to a
file playback device from the storage device.
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Accordingly, we do not sustain the rejection of: (1) independent claim
1; (2) independent claims 13 and 23, which recite commensurate limitations;
(3) claims 3 and 4, which depend on claim 1; (4) claims 17 and 18, which
depend on claim 13; and (5) claim 25, which depends on claim 23.
Appellants’ contentions raise additional issues as to claim 1. Because
we are persuaded of Examiner error by the identified issues, which are
dispositive, we do not reach the additional issues.

REJECTION OF CLAIMS 5, 8, 9, 11, 12, 14, 15, AND 24
UNDER 35 U.S.C. § 103(a)
Claims 5, 8, 9, 11, 14, 15, and 24
Claims 5, 8, 9, and 11 depend on claim 1; claims 14 and 15 depend on
claim 13; and claim 24 depends on claim 23. The Examiner does not rely on
Grace to cure the above-noted deficiencies of the prior art. See Ans. 9-13.
Accordingly, for the reasons given for claim 1, we do not sustain the
rejection of claims 5, 8, 9, 11, 14, 15, and 24.

Claim 12
Claim 12 depends on claim 1 and recites “wherein transferring a file
comprises transferring the file to a portable memory device” and
“transferring the file from the portable memory device to the DVR.”
However, claim 1 does not recite either transferring a file or a DVR (digital
video recorder). Claim 1 does recite communicating a file from a storage
device to a file playback device. If “communicating” and “transferring” are
synonymous (which is not clear), then the DVR recited in claim 12 would
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presumably be included in the file playback device. However, claim 113,
which depends on claim 1, recites both “transferring” and a DVR, and
further recites that the storage device, not the file playback device,
comprises the DVR. We note that the Specification describes both the
storage device and the file playback device as including DVRs. See Figure 2
(item 178) and Figure 3 (item 278). Thus, claim 12 is amendable to at least
two constructions. “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (BPAI 2008)
(precedential).
The analysis of a claim rejection based on prior art should not be
performed where it is necessary to engage in speculation as to the meaning
of claim terms and assumptions as to the scope of a claim. See In re Steele,
305 F.2d 859, 862 (CCPA 1962). Because we conclude that claim 12 is
indefinite, we do not sustain the rejection of claim 12.

REJECTION OF CLAIMS 19 AND 21 UNDER 35 U.S.C. § 103(a)
Claim 19
The Examiner finds that Houldsworth teaches each limitation of claim
19 except for the receiving device being fixedly coupled within an
automobile. See Ans. 16. In particular, the Examiner finds that
Houldsworth’s cell phone and PDA each could be an automobile-based

3 It may be that Appellants intended claim 12 to depend on claim 11.
However, we decline to speculate.
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satellite receiving device if used in an automobile. See id. The Examiner
finds the missing limitation taught in McDowell, which teaches a cradle,
affixed to an automobile, for holding a cell phone to allow for hands-free
operation. See Ans. 16-17; McDowell, ¶ 0021.
Appellants contend that Houldsworth’s cell phone and PDA are not
satellite receiving devices. See App. Br. 13. Likewise, Appellants argue
that McDowell’s cell phone is not a satellite receiving device. See App. Br.
13-14. The Examiner responds by explaining that the Specification does not
provide enough information to limit “automobile based-satellite receiving
device” to a particular device, and that claim 19 does not recite that the file
is transmitted via satellite. See Ans. 27. Thus, the Examiner concludes, a
broadest reasonable interpretation of “automobile-based satellite receiving
device” encompasses Houldsworth’s cell phone and PDA, each of which has
the capability of receiving files transmitted via satellite, albeit indirectly
through the broadcast media receiver 30. See id.
We agree with the Examiner. “During examination, claims are to be
given their broadest reasonable interpretation consistent with the
specification . . . .” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (internal quotation marks and citations omitted). Appellants
point to paragraphs 0015 and 0016 as describing communicating a video file
from a home-based storage device to an automobile-based satellite receiving
device of claim 19. See App. Br. 5. Here, the Specification explains that
the mobile receiving system 22 is disposed within an
automotive vehicle 24. A mobile receiving antenna 26 receives
the wireless signals from the satellite 18 and processes the
signals in a mobile receiving device 28. The mobile receiving
device 28 may be similar a set top box or an integrated receiver
decoder and will be further described below. The mobile
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receiving device 28 may also include a separate antenna 30 and
a receiver 32 for receiving various content from a home-base
system as will be described below.
Spec. ¶ 0016.
Here, while the exemplary “mobile receiving device” is described as
including an antenna for receiving satellite signals, the Specification does
not define an “automobile-based satellite receiving device” as requiring such
structure. Moreover, the mobile receiving device includes a separate
antenna and receiver for receiving terrestrial-based communications from
the home-base system. See id.; see also Spec. ¶ 0017-18. Indeed, the
satellite communications the mobile receiving device receives from the
home-based storage device, the “files,” are received indirectly using
terrestrial means rather than directly from satellite transmissions. See Spec.
0017-20. In particular, the Specification makes clear:
The original satellite file may be communicated in a various
number of manners including using an intermediate mobile
storage device 192 illustrated in Figure 2. Various types of
devices may be used for the transfer including wired and non-
wired transfers through an interface. For a mobile storage
device 192, a USB connection may be used. Wireless transfer
may include a Bluetooth, WiFi, WiMax, wired, wireless,
cellular phone or wireless phone.
Spec. ¶ 0046. Thus, under a broadest reasonable interpretation, an
“automobile-based satellite receiving device” is a device, in an automobile,
that receives information transmitted, directly or indirectly, by satellite.
Under this construction, the Examiner did not err in finding this limitation
taught in Houldsworth and McDowell.
Appellants also contend that the automobile-based satellite receiving
device of claim 19 is fixedly coupled within an automobile, and thus a cell
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phone or PDA does not correspond to it. See App. Br. 13. Appellants argue
more specifically that “the cellular phone is not a fixed device and may be
removed from the vehicle.” Reply Br. 6. We agree with the Examiner,
however, that when the cellular phone is in the cradle affixed to the
automobile, it is “fixedly coupled within an automobile,” as broadly as
recited in claim 19. Appellants point to nothing in the Specification or
otherwise to suggest that “fixedly coupled” should be construed more
narrowly. Thus, we are not persuaded by Appellants’ argument.
Accordingly, we sustain the rejection of claim 19.

Claim 21
Claim 21 depends on claim 19, and adds that the video file in the
automobile-based satellite receiving device comprises storing the video file
to a memory in the playback device. Appellants contend that this limitation
is not met because a cellular phone does not store a video file therein. See
App. Br. 14. Appellants cite no evidence in support of their contention. In
reply, Appellants admit Houldsworth’s cell phone has a memory, but argue
that this cell phone “merely communicates an identification number received
from the receiving device to an authorizing unit” and thus the memory does
not store files. Reply Br. 6.
This argument is not persuasive. According to Houldsworth, a mobile
device includes a “memory for storing data and applications programs,”
¶ 0053, examples of which include electronic program guides, ¶ 0070, and
media from a broadcast channel transcoded into MPEG-4 format, ¶ 0073.
See also Ans. 17 (citing Houldsworth, ¶ 0053). Thus, Houldsworth’s mobile
device can store a video file.
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Accordingly, we sustain the rejection of claim 21.

REJECTION OF CLAIM 20 UNDER 35 U.S.C. § 103(a)
Claim 20 depends on claim 19 and adds storing the video file in a
DVR in the automobile-based receiving device. The Examiner cites Grace
as disclosing this limitation. See Ans. 17 (citing Grace, ¶ 0022, Fig. 2, video
content 46). Appellants admit that Grace teaches a DVR, but argue that
Grace’s DVR is not fixed within an automobile-based satellite receiving
device. See App. Br. 14.
As shown in Figure 20 of Grace, a DVR (46) is coupled to a hard
drive and microprocessor embedded in a vehicle, such that video files can be
downloaded to and stored on the DVR. See also Grace, ¶ 0022. Paragraph
0022 is not specific as to whether the DVR is fixed in the automobile or
remote from the automobile. Paragraph 0023 of Grace explains that, in a
wireless transfer configuration, the DVR may be remote from the vehicle.
This at least suggests that, in a non-wireless configuration, the DVR can be
fixed in the vehicle.
In any case, “a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“When there
is a design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.”).
We agree with the Examiner that storing the file in a DVR in the
automobile-based satellite receiving device would have been within the level
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of skill of an ordinarily skilled artisan. Thus, we are not persuaded that the
Examiner erred in concluding that claim 20 would have been obvious.
Accordingly, we sustain the rejection of claim 20.

REJECTION OF CLAIM 22 UNDER 35 U.S.C. § 103(a)
Claim 22 depends on claim 19 and adds, inter alia, “communicating a
first household key with the video file.” With reference to our analysis for
claim 1, this is commensurate with a limitation we found not taught in
Houldsworth or De Luca. The Examiner does not rely on McDowell to cure
the above-noted deficiencies. See Ans. 18. Accordingly, we do not sustain
the rejection of claim 22.

REMAINING OBVIOUSNESS REJECTIONS
Claims 6, 7, and 10 depend on claim 1. The Examiner does not rely
on Boss, Caspi, or Coffin to cure the above-noted deficiencies of the prior
art. See Ans. 13-16. Accordingly, for the reasons given for claim 1, we do
not sustain the rejection of claims 6, 7, and 10.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claim 12 is rejected on a new ground of rejection under 35 U.S.C.
§ 112, second paragraph.
For the reasons given above in reversing the rejection of claim 12,
claim 12 is ambiguous and susceptible to more than one plausible
construction. Accordingly, claim 12 is indefinite.

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ORDER
The decision of the Examiner to reject claims 19-21 is affirmed. The
decision of the Examiner to reject claims 1, 3-15, 17, 18, and 22-25 is
reversed.
We enter a new ground of rejection for claim 12 under 35 U.S.C.
§ 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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