Ex Parte Ross et al

Patent Trial and Appeal Board

May 13, 2015

11958272 (P.T.A.B. May. 13, 2015)

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.
11/958,272 12/17/2007 Steven Ross 14528.00116 1835
16378 7590 05/14/2015
BGL/Broadcom
P.O. Box 10395
Chicago, IL 60610
EXAMINER
CLAWSON, STEPHEN J
ART UNIT PAPER NUMBER
2461
MAIL DATE DELIVERY MODE
05/14/2015 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 STEVEN ROSS, VIJAY KUMAR, and JEAN ZHOU
____________________

Appeal 2013-002206
Application 11/958,272
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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A. INVENTION
According to Appellants, the claimed invention relates to detecting the
end of a stream (Spec. ¶ 7).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A circuit for presenting data, said circuit comprising:

an interface for receiving multiplexed packets from a media source,
wherein said multiplexed packets carry a plurality of elementary streams
multiplexed into a single multiplexed data stream; and

a controller for detecting the end points of said plurality of elementary
streams in the multiplexed data stream received by the interface and
appending markers to each elementary stream within the multiplexed data
stream, said markers indicating the end points of each of said plurality of
elementary streams, thereby resulting in a modified multiplexed data stream.

C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Cantoni US 5,050,166 Sept. 17, 1991
Kohno US 2003/0126238 A1 July 3, 2003
Richards US 6,614,793 B1 Sept. 2, 2003
Nakanishi US 2004/0027890 A1 Feb. 12, 2004
Claims 1–3, 12–14, 20, 21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Richards and Cantoni.
Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Richards, Cantoni, and Kohno.
Claims 5–11, 16–19, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Richards, Cantoni, and Nakanishi.
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II. ISSUES
The principal issues before us are whether the Examiner erred in
finding the combination of Richards and Cantoni, teaches or would have
suggested “a controller for detecting the end points” of a “plurality of
elementary streams in the multiplexed data stream received by the interface”
and “appending markers to each elementary stream . . . , said markers
indicating the end points . . . , thereby resulting in a modified multiplexed
data stream” (claim 1, emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Richards
1. Richards discloses a data reception unit for receiving a plurality
of data streams over a data channel (Abst.).
2. Richards discloses that it is known to split messages into parts
at the transmission channel to allow a plurality of messages to be sent over a
single transmission channel, wherein the parts are recombined at the
receiving device to reconstitute the messages (col. 1, ll. 23–42).
3. Upon determining an end of a message has been reached, error
check information is transmitted (col. 3, ll. 13–15).
Cantoni
4. Cantoni discloses transfer of messages in a multiplexed system
(Title), wherein Figure 1 is reproduced below:
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Figure 1 discloses a variable length message 20 comprising address
fields 22 and 24 for the destination address (DA) and source address (SA),
length field (L) 26, information field (IU) 28, and error checking field
(CRC) 30, wherein the message 20 is segmented into a number of slots 32
(col. 3, ll. 28–41) with the first slot being identified by a BOM (Beginning of
Message) code in the TYPE field 36 while the last slot of the message
having the TYPE field 36 coded as EOM (End of Message) (col. 4, l. 67 to
col. 5, l. 13).
IV. ANALYSIS
Appellants contend “the disclosure of Richards is limited to
segmentation of a message from a transmission device and reassembly of the
message from a receiving device” but “Richards is silent as to any
modification to a data stream carrying multiple elementary streams or
message segments, e.g., a multiplexed data stream” (App. Br. 7). Although
Appellants concede Richards “may determine the end of a particular
message,” Appellants contend Richards “fails to disclose or teach a
controller for detecting end points and appending markers in a multiplexed
data stream, as claimed” (App. Br. 8). Similarly, although Appellants
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concede “Cantoni discloses segmentation and marking of message segments
prior to transmission through a switch and across a transmission line,”
Appellants contend Cantoni’s “message is not a multiplexed data stream, nor
does segmenting a single message prior to transmission include modifying a
multiplexed data stream carrying a plurality of elementary streams” (App.
Br. 10).
However, the Examiner finds “Richards discloses sending data which
contains a plurality of messages” and, thus, discloses a “data stream” that
“contains a plurality of elementary streams” which are “sent over a single
channel from a transmitter to a receiver (i.e. multiplexing)” and “requires
that these messages be split into parts (i.e. message segments)” (Ans. 4).
The Examiner then points out “the word ‘multiplex’ has a broad meaning
[in] the field of communications and only requires, i.e., two different pieces
of information sharing a transmission medium” (Ans. 5). The Examiner also
finds “Cantoni does disclose multiplexed data stream (i.e. the act of sending
multiple messages (i.e. data streams (i.e. 0’s and 1’s which represent data)[)]
which contain elementary streams (i.e. more than one message))” (id.).
At the outset, we also note claim 1 is directed to a “circuit,” which
merely comprises an “interface” intended “for receiving” data packets
(data), and a “controller” intended “for detecting” the end points of data
streams (data) and for “appending” markers to each data stream (claim 1).
Our reviewing court has determined that an intended purpose will not
narrow the scope of the claim because it merely defines a context in which
the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). That is, since claim 1
is directed to a “circuit,” a question arises as to whether the intended
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functional limitations “for detecting,” and “for appending” further limit the
structure of the claimed apparatus. Our reviewing court guides the
patentability of an apparatus/system claim “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see
also Superior Industries, Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991
(Fed. Cir. 2014) (Rader, J., concurring):
[A] system claim generally covers what the system is, not what
the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) (“The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.”).
Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v.
Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).

We find this reasoning applicable here, as Appellants urge the claimed
circuit (structure) is patentably distinguished over the prior art structure
(Richards and Cantoni) based solely on the functional limitations (of
“detecting” and “appending”) without indicating any differences between
the structures (App. Br. 7–10).
Nevertheless, we find no error with the Examiner’s broad but
reasonable claim interpretation, underlying factual findings, and ultimate
legal conclusion of obviousness because we give the claims their broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Although Appellants contend “Richards is silent as to any
modification to a data stream carrying multiple elementary streams or
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message segments” (App. Br. 7) and that Cantoni does not disclose
“modifying a multiplexed data stream carrying a plurality of elementary
streams” (App. Br. 10), such contentions are not commensurate in scope
with the recited language of claim 1. In particular, claim 1 does not require
any “modification” or “modifying” of data streams as Appellants contend
(id.). That is, as discussed above, claim 1 merely requires forming a
“controller” intended “for detecting” and “appending” markers to each
stream “thereby resulting in a modified” stream. That is, a “modified”
stream is provided in a “thereby” clause describing the results of the
intended “appending” function to be performed by a “controller” in the
claimed “circuit.”
Given the language used, the “thereby” clause is reasonably
interpreted to identify the intended result if and when a controller within the
claimed circuit performs its intended function of “appending” markers to
each elementary stream. Thus, the “thereby” clause at issue is akin to a
“whereby” clause that merely states an intended result. Our reviewing court
has concluded that “[a] ‘whereby’ clause that merely states the result of the
limitations in the claim adds nothing to the patentability or substance of the
claim.” Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165,
1172 (Fed. Cir. 1993) (citation omitted). Accordingly, we will not read a
“modifying” step into the circuit of claim 1.
We note claim 1 does not define the recited “multiplexed” data
streams other than as a “plurality of elementary streams” “multiplexed” into
a “single multiplexed data stream” (claim 1). Further, the Specification does
not provide any clear definition for this term. Thus, we find no error with
the Examiner’s broad but reasonable interpretation that “multiplex” merely
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requires “two different pieces of information sharing a transmission
medium” (Ans. 5).
Richards discloses receiving a plurality of data streams over a data
channel (FF 1), wherein messages are split into parts to allow a plurality of
messages to be sent over a single transmission channel, and the parts are
recombined at the receiving device to reconstitute the messages (FF 2). That
is, Richards discloses receiving a plurality of data packets wherein the
packets carry a plurality of data streams over a single transmission channel
(id.). In view of our broad but reasonable interpretation of “multiplexed”
discussed above, we find no error with the Examiner’s finding that Richards
would have taught or suggested “an interface for receiving multiplexed
packets,” wherein “said multiplexed packets carry a plurality of elementary
streams multiplexed into a single multiplexed data stream” (claim 1).
In Richards, an end of message is determined (FF 3) and Appellants
concede Richards “may determine the end of a particular message” (App.
Br. 8).
Furthermore, Cantoni discloses transfer of messages in a multiplexed
system wherein each message is segmented into a number of slots and the
last slot comprises a TYPE field 36 coded as EOM (End of Message) (FF 4).
That is, Cantoni discloses appending an EOM field to each message of a
plurality of messages in a multiplexed system, indicating the end point of the
message (id.). We observe Cantoni’s disclosure appears to be no different
from the description in Appellants’ “Brief Summary of the Invention” which
merely indicates that the claimed invention is directed to “accurately
detecting the end of a stream” (Spec. 7, emphasis added). Thus, we find no
error with the Examiner’s finding that Cantoni, in combination with
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Richards, teaches or suggests the step of “appending markers to each
elementary stream within the multiplexed data stream” wherein the markers
“indicating the end points of each of said plurality of elementary streams”
(claim 1).
Furthermore, since the Examiner rejects the claims as obvious over
the combined teachings of Richards and Cantoni under 35 U.S.C. § 103(a),
the test for obviousness is what the combination of Richards and Cantoni
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We find it would have been
well within the level of skill of one skilled in the art to combine Richards’
teachings of receiving multiplexed packets carrying a plurality of elementary
streams into a single multiplexed data stream (FF 1–3) with Cantoni’s
teachings of appending markers to each elementary stream indicating the
end points to each of the elementary streams (FF 4), and, thus, resulting in a
modified multiplexed data stream.
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled
artisan is “a person of ordinary creativity, not an automaton.” Id. at 421.
On this record, we find no error in the Examiner’s rejection of
claim 1, of claim 12 not argued separately (App. Br. 11), and of claims 2, 3,
12–14, 20, 21, and 23, depending respectively therefrom (id.), over Richards
and Cantoni.
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As for claims 4 and 15, Appellants merely contend “Kohno fails to
remedy the deficiencies of the Richards-Cantoni combination (id.).
Similarly, as for claims 5–11, 16–19, and 22, Appellants merely contend
“Nakanishi fails to remedy the deficiencies of the Richards-Cantoni
combination” (App. Br. 12). However, as discussed above, we find no
deficiencies with respect to the Examiner’s reliance on the combination of
Richards and Cantoni. Accordingly, we also affirm the rejection of claims 4
and 15 over Richards and Cantoni, in further view of Kohno; and of claims
5–11, 16–19, and 22 over Richards and Cantoni, in further view of
Nakanishi.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejection of claims 1–23 under 35 U.S.C.
§ 103(a).
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
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