Ex Parte Sibley

Board of Patent Appeals and Interferences

Nov 13, 2006

09844919 (B.P.A.I. Nov. 13, 2006)

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not written for publication and is not binding precedent of the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 No. 2006-2918
Application No. 09/844,919
_______________

ON BRIEF
_______________

Before JERRY SMITH, BLANKENSHIP and SAADAT, Administrative
Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-22, which constitute all the claims pending
in this application.
The disclosed invention pertains to a method and system for
distributing electronic content within a wireless local area network.

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Application 09/844,919

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Representative claim 1 is reproduced as follows:

1. A system of distributing electronic content comprising:

a network operations center forming a composite broadcast signal
having digital electronic content during a vertical blanking interval of a
primary channel signal;

a content delivery system receiving said composite broadcast signal
from said network operations center and broadcasting said composite
broadcast signal;

a base station receiving said composite broadcast signal grabbing
frames from the composite broadcast signal and forming a wireless local
area network, said base station rebroadcasting at least a portion of said
composite signal as a rebroadcast signal using said wireless local area
network; and

a plurality of user appliances positioned within said local area network
and receiving said rebroadcast signal.

The examiner applies the following reference:
Allport 6,097,441 Aug. 01, 2000

The examiner cites the following references in support of the taking of
Official Notice:

Hendricks et al. (Hendricks) 5,990,927 Nov. 23, 1999
Campbell 6,167,263 Dec. 26, 2000
Knoblach et al. (Knoblach) 6,628,941 Sep. 30, 2003
(filed June 29, 1999)

IEEE 100, The Authoritative Dictionary of IEEE Standard Terms, Seventh
Edition (December 2000), pages ii, 633, 725-726.

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Claims 1-8, 10, 12, and 14-17 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by the disclosure of Allport. Claims 9, 11, 13, and
18-22 stand rejected under 35 U.S.C. § 103(a). As evidence of obviousness
the examiner offers Allport along with the taking of Official Notice.
Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of anticipation and
obviousness relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in reaching our
decision, the appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the
evidence relied upon supports each of the examiner’s rejections of the claims
on appeal. Accordingly, we affirm.
We consider first the rejection of claims 1-8, 10, 12, and 14-17 as being
anticipated by Allport. Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of inherency, each
and every element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional limitations. RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983).
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The examiner has indicated how the invention of these claims is
deemed to be fully met by the disclosure of Allport [final rejection, pages
2-5; incorporated into answer at page 31]. With respect to independent claim
1, appellant argues that there is no teaching in Allport of a wireless local
area network. More particularly, appellant argues that Allport is limited to a
remote control that directly communicates with the base station 75 and not
more than one user device [brief, pages 6-7]. The examiner responds that
the wireless communication link between the base station and remote control
of Allport meets the definition of a network as set forth in the IEEE 100
Dictionary. The examiner also points out that Allport discloses multiple
displays and is, therefore, not limited to a single user appliance [answer,
pages 4-5]. Appellant responds that the base station and remote control of
Allport communicate directly and, therefore, do not form a network as set
forth in claim 1. Appellant also points out that the base station and remote
control of Allport fail to meet the recitation of a plurality of user appliances
in claim 1. Appellant also responds that the multiple displays of Allport do
not represent a plurality of user appliances, but instead, represent multiple
displays on a single device. Finally, appellant asserts that the examiner’s
reliance on the IEEE dictionary is improper for a rejection under 35 U.S.C.
§ 102 [reply brief, pages 1-3].

1 Such incorporation of previous actions is not proper under current practice.
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We will sustain the examiner’s rejection of claim 1 as being anticipated
by Allport. We do not agree with appellant’s argument that Allport fails to
disclose a wireless local area network. There is a local area network
between base station unit 75, remote control unit 10, and TV 80 when the
term “local area network” is given its broadest reasonable interpretation.
Since appellant provided no specific definition for this term, the examiner
acted correctly in seeking to find the conventional meaning for the term.
The examiner, therefore, did not err in referring to a standard technical
dictionary to define the term. We agree with the examiner that the base
station, remote control and TV of Allport form a local area network based on
the evidence before us. The connection between base station 75 and the
remote control 10 can be wireless [column 10, lines 9-10]. The connection
between base station 75 and TV 80 is wired or may be wireless (modem
ports) [column 9, line 66-column 10, line 8]. The connection between
remote control 10 and TV 80 is wireless [column 10, lines 36-38]. Since at
least some of the connections between the elements on the network are
wireless, we find that the local area network of Allport can be properly
construed as a wireless local area network. In other words, the term
“wireless local area network” does not require that every connection on the
network be a wireless connection.
We also do not agree with appellant’s argument that there are not a
plurality of user appliances on the local area network of Allport. Allport
indicates that although the invention is described as a “dual display” system,
the invention is equally applicable to a “multiple display” system [column 5,
lines 59-62]. The two displays of the dual display system are the TV 80 and
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a display associated with remote control 10. Therefore, when using the
teachings of Allport in a multiple display system, it would have suggested to
the artisan the addition of another TV 80 or some other user appliance
having a display for television signals. Therefore, the multiple display
system of Allport would clearly meet the claim recitation of a plurality of
user appliances positioned within the local area network.
Since claims 2-8, 10, and 12 have not been separately argued by
appellant, we also sustain the examiner’s rejection of these claims for the
same reasons just discussed.
With respect to independent claim 14, appellant again argues that
Allport fails to disclose a wireless local area network [brief, page 8]. We
will sustain the examiner’s rejection of claim 14 for the same reasons
discussed above with respect to claim 1. Since claims 15-17 have not been
separately argued by appellant, we also sustain the examiner’s rejection of
these claims.
We now consider the rejections of the claims under 35 U.S.C. § 103.
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 is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
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relied on as evidence of obviousness. Id. 277 F.3d at 1343, 61 USPQ2d at
1433-34. The examiner cannot simply reach conclusions based on the
examiner’s own understanding or experience - or on his or her assessment of
what would be basic knowledge or common sense. Rather, the examiner
must point to some concrete evidence in the record in support of these
findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed.
Cir. 2001). Thus the examiner must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the examiner’s
conclusion. However, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly in the prior
art, as the teaching, motivation, or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant 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
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persuasiveness of the arguments. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976). 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
brief have not been considered and are deemed to be waived [see 37 CFR §
41.37(c)(1)(vii)(2004)].
The examiner has indicated how the invention of these claims is
deemed to be rendered obvious by the teachings of Allport and the taking of
Official Notice [final rejection, pages 6-9, incorporated into answer at page
3]. With respect to claim 9, appellant argues that although stratospheric
platforms are known in the art, the combination of a stratospheric platform
and a base station that forms a wireless local area network with user
appliances is not taught by Allport [brief, page 8]. The examiner responds
that Allport teaches that any data source could be used, and the examiner
cites Knoblach and Campbell as teaching the use of stratospheric platforms
for broadcast communications [answer, pages 6-7]. Appellant responds that
there is no teaching or suggestion for a stratospheric platform, and therefore,
the combination proposed by the examiner is a hindsight reconstruction of
the invention [reply brief, pages 3-4].

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We will sustain the examiner’s rejection of claim 92. The examiner took
Official Notice of stratospheric platforms and explained why it would have
been obvious to the artisan to modify Allport’s system to include a
stratospheric platform. Appellant’s argument regarding a wireless local area
network is not persuasive because Allport teaches such a network for
reasons discussed above. Appellant’s argument regarding hindsight
reconstruction is not persuasive because the evidence on this record clearly
establishes that it was conventional in the art to deliver video content by
using a stratospheric platform. Appellant has failed to address the merits of
the examiner’s position as to why the invention of claim 9 would have been
obvious in view of the cited evidence.
With respect to claim 11, appellant argues that although compression is
known, the combination of compression with a base station that forms a
wireless local area network is not taught or suggested by Allport [brief, page
9]. The examiner responds that Allport teaches everything except
compression, and the examiner cites Hendricks as teaching compression
[answer, pages 7-8]. Appellant responds that the examiner’s citation of
Hendricks represents hindsight reconstruction of the invention. Appellant
points out that since the rejection was on Allport taken alone, the citation of
Hendricks indicates that the rejection is deficient in making out a prima facie
case of obviousness [reply brief, page 4].

2 We note that there is no antecedent basis for the phrase “said high altitude device” in claims 8 and 9.
Perhaps these claims should depend from claim 7 instead of claim 1.
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We will sustain the examiner’s rejection of claim 11 although we
discourage this practice by the examiner of relying on references which are
not listed in the statement of the rejection or using Official Notice as a
substitute for the proper listing of references relied on. The examiner took
Official Notice that it was conventional in the art to compress video data for
transmission in order to save bandwidth. Thus, the rejection was not on
Allport alone, as argued by appellant, but instead, was on Allport and
Official Notice. The citation of Hendricks was merely used to replace this
Official Notice with an actual reference. The fact that Allport itself does not
suggest the advantages of compressed data transmission does not make the
rejection based on hindsight. The advantages of data compression were well
known at the time this application was filed as evidenced by the references
cited. Appellant has failed to address the merits of the examiner’s position
as to why the invention of claim 11 would have been obvious in view of the
cited evidence.
With respect to claim 13, appellant argues that the combination of a
fiber optic network with a base station that forms a wireless local area
network is not taught or suggested by Allport [brief, page 9]. The examiner
responds that Allport teaches everything except a fiber optic network, and
the examiner cites Hendricks as teaching a fiber optic network [answer,
pages 8-9]. Appellant responds that the examiner’s citation of Hendricks
represents hindsight reconstruction of the invention. Appellant points out
that since the rejection was on Allport taken alone, the citation of Hendricks
indicates that the rejection is deficient in making out a prima facie case of
obviousness [reply brief, page 4].
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We will sustain the examiner’s rejection of claim 13 despite the manner
in which the examiner has entered evidence into this case. The examiner
took Official Notice that it was conventional in the art to deliver video
content using a fiber optic network. Thus, the rejection was not on Allport
alone, as argued by appellant, but instead, was on Allport and Official
Notice. The citation of Hendricks was merely used to replace this Official
Notice with an actual reference. The fact that Allport itself does not suggest
the advantages of fiber optic data transmission does not make the rejection
based on hindsight. The advantages of fiber optic data transmission were
well known at the time this application was filed as evidenced by the
references cited. Appellant has failed to address the merits of the examiner’s
position as to why the invention of claim 13 would have been obvious in
view of the cited evidence.
With respect to claim 18, appellant argues that digitally compressing
electronic content into a digital video stream that is eventually inserted into
the vertical blanking interval is not taught in addition to rebroadcasting the
digital video stream using a wireless local area network [brief, page 9]. The
examiner responds by referring to the arguments with respect to claim 11
[answer, page 9].
We will sustain the examiner’s rejection of claim 18 for the reasons
discussed above with respect to claims 1 and 11. Since claims 19, 20 and 22
are not separately argued, we also sustain the examiner’s rejection of these
claims.

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With respect to claim 21, appellant argues that since digitally
compressing the digital video stream is not taught or suggested by Allport,
then digitally decompressing the signal is also not taught or suggested [brief,
page 10]. The examiner responds that Hendricks was cited to teach
compressing and decompressing of video content [answer, page 10].
Appellant responds that there is no teaching of decompression in Allport.
Appellant also asserts that since there is no local area network in Allport,
there is no need for compression or decompression. Appellant also points
out that the rejection is deficient because the examiner now relies on the
additional reference to Hendricks [reply brief, pages 4-5].
We will sustain the examiner’s rejection of claim 21. Each of
appellant’s arguments with respect to claim 21 has been considered with
respect to one or more claims above. Therefore, appellant’s arguments fail
to persuade us of error in the rejection of claim 21 for reasons discussed
above.
In summary, we have sustained each of the examiner’s rejections of the
claims on appeal. Therefore, the decision of the examiner rejecting claims
1-22 is affirmed.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT APPEALS
)
HOWARD B. BLANKENSHIP ) AND
Administrative Patent Judge )
) INTERFERENCE
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

JS:pgc
Appeal No. 2006-2918
Application 09/844,919

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The Directv Group INC.
Patent Docket Administration Re/R11/A109
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