Ex Parte Sibley

Board of Patent Appeals and Interferences

May 3, 2007

09844976 (B.P.A.I. May. 3, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIN H. SIBLEY
____________________

Appeal 2007-1094
Application 09/844,9761
Technology Center 2600
____________________

Decided: May 3, 2007
____________________

Before: HOWARD B. BLANKENSHIP, JAY P. LUCAS,
and SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed April 26, 2001. Application 09/844,976 is a
continuation-in-part of 09/564,082, filed 5/3/2000, and claims the benefit
under 35 U.S.C. § 119(e) of provisional applications 60/249,153, filed
11/16/2000, 60/268,482, filed 02/12/2001, 60/262,811, filed 1/19/2001,
60/271,578, filed 2/22/2001, and 60/272,741, filed 3/1/2001. The real party
in interest is The Direct TV Group, Inc. of El Segundo, California.
We note that there appears to be an omission in the Appeal Brief of a prior
related appeal and several pending related appeals. See 37 C.F.R. §§ 41.8,
41.37(c)(1)(ii); MPEP 1205.02. Specifically, there was an earlier decided
appeal of a related application (Serial No. 09/844,919, Appeal No. 2006-
2918) and there are three currently pending appeals of other related
applications (Serial Nos. 09/564,082, 09/844,920, and 09/844,932).

Appeal 2007-1094
Application 09/844,976

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DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellant's invention relates to a system and method for distributing
electronic content using unused portions of over-the-air broadcast signals.
In the words of the Appellant:
[0008] The present invention provides a system that
combines satellite broadcasting with over-the-air broadcasting
to bring service to both fixed and mobile users.
[0009] In one aspect of the invention, a system for
distributing electronic content comprises a satellite and a
network operations system that uplinks electronic content to the
satellite. An over-the-air broadcast system receives electronic
content from the satellite and generates over-the-air electronic
content signals during a vertical blanking interval of an analog
broadcast signal. A user appliance receives the electronic
content for use by the user.
[0010] In a further aspect of the invention, a method for
distributing electronic content comprises the steps of:
uplinking a plurality of electronic content packages to a
satellite;
receiving the electronic content packages from the
satellite;
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over-the-air broadcasting the electronic content packages
during a vertical blanking interval of an analog broadcast
signal; and
receiving the electronic content packages through a user
appliance.
(Specification 4, paragraphs 0008 to 0010).
Claim 1 is exemplary:
1. A system of distributing electronic content comprising:

a satellite;

a network operations center uplinking electronic content
to said satellite;

a terrestrial over-the-air broadcast center receiving said
electronic content from said satellite and generating digital
over-the-air electronic content during a vertical blanking
interval of an analog broadcast signal; and

a user appliance receiving said electronic content.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hendricks 6,160,989 Dec. 12, 2000
Kim 6,556,248 Apr. 29, 2003
Owa 6,711,379 Mar. 23, 2004

Appeal 2007-1094
Application 09/844,976

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The Examiner cites the following references in support of the taking
of Official Notice:
Kostreski 5,729,549 Mar. 17, 1998

Group I: The Examiner rejected claims 1-7 and 9-12 under 35 U.S.C.
§ 103(a) for being obvious over Hendricks in view of Kim.
Group II: The Examiner rejected claim 8 under 35 U.S.C. § 103(a) for
being obvious over Hendricks in view of Kim and further in view of Owa.
Appellant contends that the claimed subject matter is not rendered
obvious by Hendricks in combination with Kim or by Hendricks in
combination with Kim and Owa, for reasons to be discussed more fully
below. The Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We affirm the rejections.

2 Except as will be noted in this opinion, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) (2004). The issue turns on
whether there is a legally sufficient justification for combining the
disclosures of Hendricks and Kim. Appellant asserts that the "Examiner is
forming a hindsight reconstruction of the present invention using the
teachings of the prior art " and that "no support, motivation, or incentive is
provided by the two cited references for the combination proposed by the
Examiner." (Br. 5-6). The Examiner asserts the contrary.

FINDINGS OF FACT
Appellant describes a system 10 that distributes electronic content to
users 18 in which a network operations center 12 uplinks electronic content
to a satellite 14 and an over-the-air broadcast center 16 receives electronic
content from the satellite. (Specification 7, paragraphs 0030-0032; Fig. 1).
The over-the-air broadcast center 16 is coupled to a wireless transmitter 60,
which "may comprise a cell tower such as that used in cellular phones, a TV
tower that broadcasts digital signals or a stratospheric platform positioned
above a predetermined metropolitan area for broadcasting over-the-air
signals." (Specification 7, paragraphs 0032-0033; Fig. 1). According to the
Specification, "digital over-the-air content may be incorporated into unused
portions of an analog television broadcast, i.e., the vertical blanking
interval." (Specification 7, paragraph 0033).
Hendricks describes a network controller that manages a television
program delivery network from a cable headend. (Col. 1, ll. 34-36; Fig. 1).
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A program delivery system 200 includes an operations center 202 where
program packaging and control information are created and assembled in the
form of digital data. (Col. 7, ll. 12-17; Fig. 1). The digital data is mapped
into digital signals for satellite transmission to the cable headend 208. (Col.
7, ll. 18-21). These signals are received by the cable headend 208 and may
be decoded, demultiplexed, managed by a local central distribution and
switching mechanism, combined and then transmitted to the set top terminal
220 located in each subscriber's home over a cable system 210. (Col. 7, ll.
24-29).
Hendricks teaches that "[a]lthough concatenated cable systems 210
are the most prevalent transmission media to the home, telephone lines,
cellular networks, fiberoptics, Personal Communication Networks and
similar technology for transmitting to the home can be used interchangeably
with this program delivery system 200." (Col. 7, ll. 29-34).
Hendricks also discloses that analog signals may be transmitted over
the communications media 216 linking the cable headend 208 and the
subscriber's home. (Col. 10, ll. 20-25; Fig. 3).
Kim describes an image signal processor, specifically a hyper text
markup language (HTML) data transmitting/receiving apparatus that
selectively inserts an NTSC broadcasting signal and an HTML signal into a
VHF or UHF broadcast channel. (Col. 1, ll. 9-13; Figs. 1, 3). In one
embodiment, an HTML data signal may be transmitted by being loaded in
the Vertical Blanking Interval (VBI) of a TV broadcast signal. (Col. 5, ll.
28-31). In a section entitled "Description of the Conventional Art," Kim
also describes prior art systems that insert and transmit information in the
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VBI of a TV broadcast signal together with the TV program so that the user
can receive various information. (Col. 1, ll. 25-40).
Owa describes a digital broadcasting system for broadcasting
multimedia data to a terminal device in a mobile station. (Col. 1, ll. 6-9; Fig.
1).
A reference cited in an IDS dated January 30, 2006 submitted by
Appellant states that "stratospheric telecommunications networks us[e] high-
altitude planes or balloons to serve as sort of tall antennas or very low
satellites, depending on the perspective." (Robert Glenn et al., Wireless
Information Technology for the 21st Century 17 (Info. Tech. Lab., Nat'l Inst.
of Standards & Tech., Draft Wireless White Paper, Feb. 17, 1999)).

PRINCIPLES OF LAW
"In reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection of the claims.
Appellant may sustain its burden by showing that where the Examiner
relies on a combination of disclosures, the Examiner failed to provide
sufficient evidence to show that one having ordinary skill in the art would
have done what Appellant did. United States v. Adams, 383 U.S. 39 (1966);
In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick,
Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).
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The mere fact that all the claimed elements or steps appear in the prior art is
not per se sufficient to establish that it would have been obvious to combine
those elements. United States v. Adams, supra; Smith Industries Medical
systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415,
1420 (Fed. Cir. 1999).
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, 5 USPQ2d 1596, 1598
(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, 148
USPQ 459, 467 (1966). If that 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, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on one reference alone without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67
(CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2
(CCPA 1966).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that "claims must be interpreted as
broadly as their terms reasonably allow." Our reviewing court further states
that "the words of a claim 'are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321,
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1326 (Fed. Cir. 2005) (en banc) (internal citations omitted). The "ordinary
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application." Id. at
1313, 75 USPQ2d at 1326.

ANALYSIS
Appellant contends that Examiner erred in rejecting claims 1-12 under
35 U.S.C. 103(a). Reviewing the findings of facts cited above, we do not
agree. In particular, we find that the Examiner made a prima facie showing
of obviousness with respect to claims 1-12 and Appellant failed to meet the
burden of overcoming that prima facie showing.
We find that a skilled artisan would have used the VBI broadcast
signal teachings of Kim to aid in increasing the efficiency of the program
delivery system of Hendricks.
Regarding claim 1, we note that the plain language of claim 1 does not
require the "electronic content" received by the terrestrial over-the-air
broadcast center and also received by the user appliance to be the same as
the "digital over-the-air electronic content" generated during a vertical
blanking interval of an analog broadcast signal by the terrestrial over-the-air
broadcast center. Claim 1 does not link or otherwise show a relationship
between the "electronic content" limitation and the "digital over-the-air
electronic content" limitation. Neither does the plain language of claim 1
require the "electronic content" received by the user appliance to be received
from the terrestrial over-the-air broadcast center. Further, Appellant has
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provided no special definition of "digital over-the-air electronic content" in
the Specification.
Thus, under a reasonable interpretation of claim 1 the cable headend
of Hendricks may receive certain electronic content from the satellite and
separately generate different digital over-the-air electronic content to be
transmitted to the user during the vertical blanking interval of an analog
broadcast signal using the VBI teachings of Kim. As claimed, the subject
matter of claim 1 reads on Hendricks in view of Kim.
Even if the "electronic content" received by the terrestrial over-the-air
broadcast center and also received by the user appliance is the same as the
"digital over-the-air electronic content" generated during a vertical blanking
interval of an analog broadcast signal by the terrestrial over-the-air broadcast
center, claim 1 still reads on Hendricks in view of Kim. Our findings above
indicate that Hendricks receives signals from a satellite, and the same signals
are manipulated and transmitted to the set top terminal of the subscriber over
various possible transmissions systems. Hendricks teaches that an analog
signal could be used to transmit signals to the subscriber, and the VBI
teachings of Kim would improve the efficiency of that transmission.
Regarding claim 2, the plain language of the claim merely requires the
"over-the-air broadcast center" to be "coupled to" a "stratospheric platform."
We decline Appellant's invitation to import limitations from the
Specification into the claim. As our findings above indicate, Hendricks
teaches a cable headend coupled to a satellite. Also, the term "stratospheric
platform" is broad enough that a skilled artisan would recognize that a
satellite could be a stratospheric platform.
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Regarding claim 3, Appellant admits that Hendricks teaches a cellular
network, but nevertheless argues that there is no teaching or suggestion of a
cell tower. (Reply Br. 3). Appellant does not respond to the Examiner's
argument that a cell tower is inherent in a cellular network. We agree with
the Examiner that a cell tower is inherent in a cellular network.
With respect to claim 4, Appellant argues that a TV broadcast tower is
not shown in Hendricks (Br. 6). The Examiner took Official Notice that TV
broadcast towers are well known as a transmission scheme, as evidenced by
Kostreski. (Answer 4-5). We agree with the Examiner.
Claims 5 and 6 were not argued separately, and stand or fall together
with claim 1.
Regarding claim 7, Appellant argues that a fixed user appliance is not
taught or suggested by Hendricks. (Br. 7). The Examiner replies that the set
top terminals of Hendricks are fixed. (Reply Br. 5). We agree with the
Examiner.
With respect to claim 8, we find that a skilled artisan would have used
the mobile device teachings of Owa to make the system as taught by
Hendricks in view of Kim more convenient to the user by enabling the user
to roam freely with the mobile terminal.
Claims 9-12 were argued on the same grounds as claims 1-4, and we
affirm the rejection of claims 9-12 for the same reasons as discussed above
with respect to claims 1-4.

Appeal 2007-1094
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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-12. The rejection of those
claims is affirmed.

DECISION
The rejection of claims 1-12 is Affirmed.

AFFIRMED

KIS

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