Ex Parte Paila et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201511007048 (P.T.A.B. Feb. 23, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TONI PAILA, TOPI POHJOLAINEN, JANI POIKELA, and JUHANI HUTTUNEN ____________________ Appeal 2012-010298 Application 11/007,048 Technology Center 2400 ____________________ Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–3, 5–9, 11–22, 24–26, 30–33, and 36–52. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-010298 Application 11/007,048 2 STATEMENT OF THE CASE Appellants’ invention “relates to the signaling of an aggregate of data within a broadcast system.” 1 Claim 1 illustrates the claimed subject matter: 1. A memory configured to store a single transport object configured to signal and transport concurrently an aggregate of data items, the transport object comprising: a container payload comprising the data items; and a container header having an extensible structure, the container header specifying a container header length and one or more data item descriptor entries, the data item descriptor entries configured to include offset information specifying locations of the data items, each of the locations being defined with respect to a beginning of the container payload. REJECTIONS Claims 20, 21, 33, and 36 stand rejected under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written description requirement. Claims 1–3, 5, 18–20, 30, 31, 33, 36, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie (US 5,850,218; Dec. 15, 1998), Breslow (US 2003/0081609 A1; May 1, 2003), and Basso (US 2004/0167916 Al; Aug. 26, 2004). Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso and Kilkki (US 6,421,335 B1; July 16, 2002). Claims 7, 8, 21, and 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, and Miller (US 2005/0172199 A1; Aug. 4, 2005). 1 (Spec. ¶ 2.) Appeal 2012-010298 Application 11/007,048 3 Claims 9, 11, 12, 22, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, Miller, and Lee (US 2004/0255114 Al; Dec. 16, 2004). Claims 13 and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, Miller, Lee, and Jerding (US 2002/0104097 Al; Aug. 1, 2002). Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, and Luby et al., Asynchronous Layered Coding (ALC) Protocol Instantiation, (Dec. 2002). Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, and Klemets (US 2003/0236912 Al; Dec. 25, 2003). Claims 37–40 and 45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, and Hoang (US 2002/0049980 A1; Apr. 25, 2002). Claims 41 and 42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, and ITU-T Recommendation H.222.0, Information Technology -- Generic Coding of Moving Pictures and Associated Audio Information: Systems (2000) (“H.222.0”). Claims 43 and 44 stand rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, H.222.0, and Klemets. Claim 46 stands rejected under 35 U.S.C. §103(a) as unpatentable over LaJoie, Breslow, Basso, Hoang, and Miller. Claim 47 stands rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, Hoang, and Kilkki. Appeal 2012-010298 Application 11/007,048 4 Claim 48 stands rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, Hoang, and Cohen (US 6,076,094; June 13, 2000). Claim 51 stands rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, Kilkki, Miller, and Lee. Claim 52 stands rejected under 35 U.S.C. § 103(a) as unpatentable over LaJoie, Breslow, Basso, Kilkki, and Ezaki (US 6,263,506 B1; July 17, 2001). ISSUES (1) Did the Examiner erroneously conclude claims 20, 21, 33, and 36 fail to satisfy the written description requirement of 35 U.S.C. § 112 because these claims recite either “one or more processors” or “at least one processor”? (2) Did the Examiner erroneously conclude the cited art teaches or suggests “the container header specifying a container header length and one or more data item descriptor entries, the data item descriptor entries configured to include offset information specifying locations of the data items, each of the locations being defined with respect to a beginning of the container payload” as recited in claim 1? (3) Did the Examiner erroneously conclude the cited art teaches or suggests “wherein the each data item comprises an electronic service guide fragment” as recited in claim 2? (4) Did the Examiner erroneously conclude the cited art teaches or suggests “wherein the data item descriptor entries further include metadata of universally identifiable identification codes of the data items” as recited in claim 7? Appeal 2012-010298 Application 11/007,048 5 (5) Did the Examiner erroneously conclude the cited art teaches or suggests “wherein the universally identifiable identification code is configured by appending a base uniform resource identifier (BaseURI) to an associated data item identification that identifies each respective data item within the container payload or the container” as recited in claim 9? (6) Did the Examiner erroneously conclude the cited art teaches or suggests “wherein a container type is defined by a combination of data items therein as signature” as recited in claim 46? ANALYSIS § 112 Claims 20, 21, 33, and 36 recite “at least one processor.” The Examiner rejected these claims under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written description requirement. 2 The Examiner found “the specification only discloses a single processor. Therefore the inclusion of ‘one or more’ or ‘at least one’ processors constitutes new matter that was not present in the specification as originally filed.” 3 Appellants contend “the specification . . . describes a processor 138, and the concept of deploying multiprocessors executing parallel processing was known to one skilled in the art as of the US filing date of the present application.” 4 Appellants also contend the originally-filed disclosure recites “a” processor and assert the Federal Circuit has held that “a” means “at least one” when construing open-ended claims. 5 2 (Final Rej. 3–4.) 3 (Id. at 4 (internal citations omitted).) 4 (App. Br. 13.) 5 (Reply Br. 3–4.) Appeal 2012-010298 Application 11/007,048 6 We agree with Appellants. Appellants’ original claims recite a mobile terminal comprising “a” processor. 6 As argued by Appellants, the article “a” usually means “one or more” in claims like the ones at issue. 7 Because we see no reason to depart from this presumption here, we agree that one of skill in the art would have understood the original claims to encompass one or more processors. Moreover, we agree with Appellants that, at the time the application was filed, using multiple processors was well known. We therefore do not sustain the Examiner’s rejection of claims 20, 21, 33, and 36 under 35 U.S.C. § 112, ¶ 1. § 103 Claim 1 Claim 1 recites “the container header specifying a container header length and one or more data item descriptor entries, the data item descriptor entries configured to include offset information specifying locations of the data items, each of the locations being defined with respect to a beginning of the container payload.” The Examiner concluded a combination of LaJoie, Breslow, and Basso teaches the limitations recited in claim 1. 8 In their Appeal Brief, Appellants argue Basso teaches an offset from the start of a container, not an offset from the start of the container payload as required by claim 1. 9 Appellants raise for the first time in their Reply Brief three additional challenges to the Examiner’s finding: First, 6 (See, e.g., Spec. 16, 18 (filed Dec. 8, 2004).) 7 See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). 8 (Final Rej. 5–6.) 9 (App. Br. 14.) Appeal 2012-010298 Application 11/007,048 7 Appellants contend one of skill in the art would not have been motivated to combine Basso’s offsets into Breslow’s data packets because doing so would “disrupt[] Breslow’s principle of operation that requires all primary data packets have the same overall fixed length.” 10 Second, Appellants contend one of ordinary skill in the art would have been “discouraged to combine Basso’s offsets into Breslow’s primary data packet” because Basso’s and Breslow’s respective offsets use different starting points. 11 Third, Appellants assert Breslow’s container header does not specify a container header length as recited in claim 1; rather, according to Appellants, Breslow teaches calculating a container header length based on other lengths. 12 We disagree. Regarding the argument Appellants set forth in their Appeal Brief—that is, that Basso does not teach an offset defined from the start of the container payload—this argument does not address the rejection made by the Examiner. The Examiner found Breslow, not Basso, teaches offset information defined with respect to a beginning of a container payload and concluded a combination of LaJoie, Breslow, and Basso teaches the subject matter at issue. 13 “[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references,” 14 particularly when those attacks do not respond to the rejection made by the Examiner. As for the arguments Appellants made for the first time in their Reply Brief, Appellants could have raised these arguments in their Appeal Brief 10 (Reply Br. 5 (emphases omitted).) 11 (Id. at 5–6 (emphases omitted).) 12 (Id. at 6.) 13 (See Final Rej. 5–6; Ans. 3.) 14 In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appeal 2012-010298 Application 11/007,048 8 but chose not to. Therefore, Appellants have waived these arguments. 15 In any event, we find the arguments unpersuasive. Appellants’ arguments concerning whether one of skill in the art would have been motivated to make (or discouraged from making) the Examiner’s combination of the cited art largely rest on Appellants’ belief that one cannot merge the prior art data structures. 16 But “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” 17 We agree with the Examiner the cited art would have suggested the limitation at issue. Finally, concerning the recited “specifying a container header length,” we note Breslow discloses “various means are available for configuring a packet to include information regarding the length of a field in the packet. For instance, certain bits in a packet header may be specially designated for indicating the length of one or more fields.” 18 Breslow discloses these bits may indicate the length of fields in a header. 19 Thus, we agree with the Examiner that Breslow suggests “specifying a container header length.” To 15 See Ex parte Borden, No. 2008-004312, 2010 WL 191083, at *2 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). 16 (See Reply Br. 5–6.) 17 Keller, 642 F.2d at 425. 18 (Breslow ¶ 99 (emphasis added).) 19 (Id. (“For example, the initial bits in the source identifier field may be designated to identify the total number of bits in the source identifier.” (internal reference number omitted) (emphasis added); see also id. Fig 4 (illustrating the source identifier 52 is part of header 40).) Appeal 2012-010298 Application 11/007,048 9 the extent Appellants contend claim 1 requires specifying the entire length of a container header, we note claim 1 does not explicitly recite such a limitation. We sustain the rejection of claim 1 for the above reasons. Because Appellants argued claims 19, 30, 33, 36, 37, and 41 together with claim 1, 20 we also sustain the rejection of these claims. Claim 2 Claim 2 recites “wherein the each data item comprises an electronic service guide [ESG] fragment.” The Examiner found LaJoie discloses “program guide (ESG) data is transmitted over IP” and concluded a combination of LaJoie, Breslow, and Basso teaches the subject matter recited in claim 2. 21 Appellants contend they defined the claimed “electronic service guide fragment” as “comprising XML documents, a SDP (Session Description Protocol) description, textual file or an image” and argue neither LaJoie nor Breslow teaches or suggests such a fragment. 22 Appellants also assert the Examiner’s motivation to combine the cited art is “at best, applicable to content data. The Examiner failed to provide the motivation to apply the method to ESG fragments.” 23 We disagree. Appellants’ specification does not define ESG fragments in terms of the items listed by Appellants; rather, the specification simply explains that ESG fragments can include such items. 24 Appellants’ 20 (See App. Br. 11.) 21 (Final Rej. 6.) 22 (Reply Br. 6–7; see also App. Br. 14–15.) 23 (App. Br. 15.) 24 (See Spec. ¶ 3 (“Traditionally, ESG fragments comprise XML Appeal 2012-010298 Application 11/007,048 10 specification states that “ESG fragments are independently existing pieces of the ESG,” and “ESG fragments describe one or several aspects of currently available (or future) service or broadcast program[s].” 25 As found by the Examiner, LaJoie discloses transmitting Interactive Program Guide data messages, 26 and there is no dispute that LaJoie’s Interactive Program Guide describes an aspect of current or future broadcast programs. The Examiner concluded a combination of references teaches the claimed “electronic service guide fragment,” 27 and Appellants’ arguments against LaJoie and Breslow individually have not persuaded us this finding is erroneous. 28 Moreover, we agree with the Examiner that the type of data being transmitted is irrelevant to the Examiner’s motivation to combine, 29 and Appellants’ arguments have not persuaded us the Examiner’s motivation to combine is erroneous. Accordingly, we sustain the Examiner’s rejection of claim 2. Because Appellants argued claim 38 together with claim 2, 30 we also sustain the rejection of claim 38. Claim 7 Claim 7 recites “wherein the data item descriptor entries further include metadata of universally identifiable identification codes of the data items.” The Examiner found Miller “discloses a descriptor entry with a documents, but more recently they have encompassed a vast array of items, such as for example, a SDP (Session Description Protocol) description, textual file, or an image.” (emphases added).) 25 (Id.) 26 (See Final Rej. 6 (citing LaJoie col. 14, ll. 15–18); Ans. 4.) 27 (Final Rej. 6; Ans. 4.) 28 See Keller, 642 F.2d at 425. 29 (See Ans. 4.) 30 (App. Br. 11.) Appeal 2012-010298 Application 11/007,048 11 unique identification of a segment” and concluded a combination of LaJoie, Breslow, Basso, and Miller suggests the subject matter recited in claim 7. 31 Appellants contend Miller’s “PSEG descriptor is not included in any container header.” 32 Moreover, according to Appellants, Miller’s unique identifier is “merely unique for the processed depicted” in Miller’s Fig. 12 instead of universally identifiable as required by claim 7. 33 We disagree. Regarding Appellants’ contention that Miller’s PSEG descriptor is not part of a header, the Examiner found a combination of LaJoie, Breslow, Basso, and Miller suggests the limitations recited in claim 7. As we explained above, “one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” 34 As for Appellants’ argument that Miller’s identifier is not “universally identifiable,” Appellants have provided no support for their contention that Miller’s identifier is “merely unique for the process depicted in Fig. 12.” 35 In any event, the plain and ordinary meaning of the term “universally” includes “[w]ith extension to every part (of a specified whole).” 36 The Examiner found Miller’s unique identifier is at least universally identifiable 31 (Final Rej. 16.) 32 (App. Br. 16.) 33 (Id. (emphasis omitted.)) 34 Keller, 642 F.2d at 426. 35 (App. Br. 16 (emphasis omitted).) 36 Universally Definition, OED Online, http://www.oed.com/view/Entry/214794?redirectedFrom=universally (emphasis added) (last visited Jan. 16, 2015). Appeal 2012-010298 Application 11/007,048 12 within a specified whole, namely, the system that uses the identifier, 37 and Appellants have not persuaded us this finding is erroneous. Accordingly, we sustain the Examiner’s rejection of claim 7. Because Appellants have argued claims 21 and 32 together with claim 7, 38 we also sustain the rejections of claims 21 and 32. Claim 9 Claim 9 recites “wherein the universally identifiable identification code is configured by appending a base uniform resource identifier (BaseURI) to an associated data item identification that identifies each respective data item within the container payload or the container.” The Examiner found Lee discloses “a URL (which is a URI) in a packet header” and concluded a combination of LaJoie, Breslow, Basso, Miller, and Lee suggests the claimed subject matter. 39 Appellants contend even if one of skill in the art had been motivated to combine the teachings of Lee and Miler, Lee’s URL would not have been “integrally formed as part of Miller’s . . . data segment ID.” 40 In any event, Appellants argue Lee’s URL “is extracted from the head to retrieve the provider’s certificate so as to authenticate the provider, rather than be [sic] identifies as an [sic] unit with the ID to universally identify a data item after transmission.” 41 Appellants also assert Lee’s URL “simply is not included in a universally identifiable identification code” and Miller’s “data segment ID is not embedded in a container header and is irrelevant to ‘universally 37 (Ans. 4–5.) 38 (App. Br. 11.) 39 (Final Rej. 18.) 40 (App. Br. 17 (emphases omitted)). 41 (Id. (emphases omitted); see also Reply Br. 7.) Appeal 2012-010298 Application 11/007,048 13 identifiable ID codes of the data item.’” 42 Moreover, Appellants contend the Examiner ignored the “universally identifiable identification code” element recited in claim 9. 43 We disagree. The Examiner did not ignore limitations recited in claim 9. Instead, the Examiner correctly pointed out claim 9 does not recite “integrally formed” or “included in a universally identifiable identification code” as argued by Appellant but instead recites “appending.” 44 Appellants’ arguments regarding “identif[ying] . . . as [a] unit with the ID to universally identify a data item after transmission” suffers from the same flaw: the words “identif[ying] . . . [a] unit with the ID to universally identify a data item after transmission” do not appear in claim 9. Because this language is not recited in claim 9, Appellants’ arguments concerning this language are not persuasive. In any event, the Examiner found that “[i]n the combined system, the URL and the ID are both within the header, and therefore the URL can be said to be ‘appended to the fragment identification,’” 45 and Appellants have not persuaded us this finding is erroneous. Moreover, we note claim 9 does not require the combined BaseURI and associated data item “identif[y] each respective data item within the container payload or the container.” Rather, in its current form, claim 9 merely requires the associated data item perform the recited identifying: [W]herein the universally identifiable identification code is configured by appending a base uniform identifier (BaseURI) to an associated data item identification that identifies each 42 (App. Br. 17 (emphases omitted).) 43 (Reply Br. 7.) 44 (See Ans. 5.) 45 (See id.) Appeal 2012-010298 Application 11/007,048 14 respective data item within the container payload or the container. 46 The Examiner found the cited art suggests the claimed data item identification, 47 and Appellants have not persuasively argued these references fail to teach or suggest the recited “data item identification.” Finally, regarding Appellants’ contentions that Lee’s URL “simply is not included in a universally identifiable identification code” and Miller’s “data segment ID is not embedded in a container header and is irrelevant to ‘universally identifiable ID codes of the data item,” Appellants’ arguments against Lee and Miller individually are unpersuasive because the Examiner found a combination LaJoie, Breslow, Basso, Miller, and Lee suggests the subject matter recited in claim 9. 48 For the above reasons, we sustain the Examiner’s rejection of claim 9. Because Appellants argued claims 11–13, 22, 24–26, and 51 together with claim 9, 49 we also sustain the rejection of claims 11–13, 22, 24–26, and 51. Claim 46 Claim 46 recites “wherein a container type is defined by a combination of data items therein as signature.” The Examiner concluded a combination of LaJoie, Breslow, Basso, Hoang, and Miller suggests the subject matter recited in claim 46. 50 Appellants argue the portions of Miller cited by the Examiner are silent regarding “‘a combination of data items 46 (App. Br. 28 (emphasis added).) 47 (Final Rej. 16, 18; Ans. 5.) 48 See Keller, 642 F.2d at 426. 49 (App. Br. 11.) 50 (Final Rej. 31; Ans. 5–6.) Appeal 2012-010298 Application 11/007,048 15 used as a signature,’ much less about ‘a container type is defined by the combination of data items therein.” 51 As noted above, the Examiner concluded a combination of references suggest the subject matter recited in claim 46, 52 and Appellants’ arguments against Miller alone have not addressed this finding—in particular, the Examiner’s findings regarding Hoang 53 —or the Examiner’s accompanying reasoning. Moreover, as we have repeatedly noted, “one cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” 54 We therefore sustain the Examiner’s rejection of claim 46. Remaining Claims Appellants’ arguments concerning the obviousness rejections of the remaining appealed claims either rely on, or are similar to, Appellants’ arguments for claims 1, 2, 7, 9, and 46 and are unpersuasive for the reasons discussed above. We therefore also sustain the obviousness rejections of these claims. DECISION We have considered Appellants’ remaining arguments and have found them unpersuasive, waived, or both. For the above reasons, we reverse the rejection of claims 20, 21, 33, and 36 under 35 U.S.C. § 112, ¶ 1. We affirm the obviousness rejections of claims 1–3, 5–9, 11–22, 24–26, 30–33, and 36–52. 51 (App. Br. 22 (emphases omitted).) 52 (See Ans. 5–6.) 53 (Id. at 5.) 54 Keller, 642 F.2d at 426. Appeal 2012-010298 Application 11/007,048 16 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 ELD Copy with citationCopy as parenthetical citation