Ex Parte SoundararajanDownload PDFPatent Trial and Appeal BoardFeb 19, 201410537890 (P.T.A.B. Feb. 19, 2014) Copy Citation 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. 10/537,890 06/07/2005 Aravind Soundararajan T100529USN 7209 77561 7590 02/20/2014 Duane Morris LLP (Entropic) IP Department 30 South 17th Street Philadelphia, PA 19103-4196 EXAMINER MENDOZA, JUNIOR O ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 02/20/2014 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 ARAVIND SOUNDARARAJAN ___________ Appeal 2011-003570 Application 10/537,890 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and DANIEL N. FISHMAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003570 Application 10/537,890 2 This is an appeal under 35 U.S.C. § 134(a) of the final rejection claims 1-31. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE THE INVENTION Appellant’s invention relates generally to the field of personal messaging, and specifically, relates to communication between set top boxes without using the Internet. See generally, Spec. 1:3-5. Claim 1, reproduced below, is illustrative: 1. A method of communicating comprising: receiving a text message from a user of a source set top box; transmitting the text message from the source set top box to an exchange; packetizing at the exchange said text message into a plurality of data packets, wherein said plurality of data packets include said text message, an identifier of said source set top box, an identifier of a destination set top box for the text message, and a packet header information; forwarding said plurality of data packets to a multiplexor; multiplexing said plurality of data packets and audio data and video data into an output transport stream; and broadcasting said output transport stream to a plurality of destination set top boxes, the plurality of destination set top boxes including the destination set top box for the text message. 1 Appellant incorrectly indicates only claims 1-26 are on appeal. Br. 2. However, the Notice of Appeal (filed January 19, 2010) and the remainder of the Appeal Brief clearly indicate that the rejection of all claims (1-31) is appealed. We deem this to be harmless error and review the appeal of the rejection of all claims (1-31). Appeal 2011-003570 Application 10/537,890 3 THE REJECTION Claims 1-31 are rejected under 35 U.S.C. § 103(a) as unpatentable over McKissick (US 2007/0124795 A1), Danker (US 2003/0208777 A1), and Oshita (US 5,796,441). THE CONTENTIONS Rather than repeat all arguments here, we refer to Appellant’s Appeal Brief (“Br.” filed June 21, 2010) and the Examiner’s Answer (“Ans.” mailed September 15, 2010) for the respective positions of Appellant and the Examiner. Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Appeal Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant argues, “Examiner fails to cite to any reference that teaches broadcasting text messages that are received from users of source set top boxes, as in the claimed invention.” Br. 7. Appellant further argues the Examiner’s proposed combination would improperly change the principle of operation of McKissick and is not supported by proper reasoning. Br. 8-10. ISSUES Appellant’s arguments do not dispute the Examiner’s findings regarding Oshita and do not challenge the propriety of combining Oshita with McKissick and Danker. See Ans. 28. Appellant’s arguments present the following issues: 1. Has the Examiner erred by failing to find that the combination of reference teaches “broadcasting said output transport stream to a Appeal 2011-003570 Application 10/537,890 4 plurality of destination set top boxes, the plurality of destination set top boxes including the destination set top box for the text message” as recited in claim 1? 2. Has the Examiner erred in combining the references because the proposed combination changes the principle of operation of McKissick and because the Examiner fails to provide a reason for the combination of McKissick and Danker? ANALYSIS Issue 1 The Examiner finds McKissick discloses broadcasting (e.g., transferring) a message between set top boxes. Ans. 5 (citing McKissick ¶ 0083). The Examiner relies on Danker to disclose multiplexing of text messages with other content to generate the output transport stream and to disclose, “broadcasting said output transport stream to a plurality of destination set top boxes, the plurality of destinations set top boxes including the destination set top box for the text message.” Ans. 5-6. Thus, the Examiner relies on the combined teachings of McKissick and Danker for teaching or suggesting the broadcasting step. Appellant argues McKissick fails to disclose broadcasting because messages are stored on an intermediate server and then transmitted (downloaded) to the recipient responsive to a request from the recipient (after logging into the server). Br. 7. We are not persuaded. The Examiner explains the claims do not preclude intermediate steps to store a received message prior to broadcasting the message to a plurality of recipient set top boxes. Ans. 23-24. We agree. In like manner, the claims do not preclude Appeal 2011-003570 Application 10/537,890 5 additional intermediate steps by a recipient device to log into a server to request transmission (download) a message received from a source set top box and stored on the intermediate server. Appellant admits, “McKissick teaches communicating messages directly to and from users by way of an intermediate server, where the message information is sent directly to the recipient, either by downloading alone or with additional content, instead of being broadcast to a plurality of destinations.” Br. 7. We agree that McKissick teaches communicating messages directly to and from users and note that the Examiner relies on Danker, not McKissick, for broadcasting text messages (multiplexed with other content) to a plurality of destination devices. Appellant’s argument improperly attacks the individual teachings of McKissick while the rejection relies upon the teachings of the combination of McKissick and Danker. “[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citations omitted). Appellant further argues: The Danker reference, however, also does not teach broadcasting text messages that are received from users of source set top boxes. In fact, the Danker reference does not receive text messages from users of set top boxes. Instead, the Danker reference teaches providing message data sent by hosting services to client devices. Br. 8. Again, Appellant’s argument improperly attacks Danker individually while the rejection relies upon the combination of references. See Keller, at 426. The Examiner relies on McKissick for transmission (broadcast) of a text message from a source set top box to a destination set top box (regardless of the intermediate server storage functions) and relies on Appeal 2011-003570 Application 10/537,890 6 Danker for disclosing the broadcast of multiplexed messages and content to plural recipients. See Ans. 5-6, 25. In view of the above discussion, we are not persuaded that the Examiner erred by finding the combination of references teaches or suggests “broadcasting said output transport stream to a plurality of destination set top boxes, the plurality of destination set top boxes including the destination set top box for the text message,” as recited in claim 1. Issue 2 Appellant argues modifying McKissick with the teachings of Danker as proposed by the Examiner is improper, contending, “such a modification [(i.e., multiplexing text messages with other content)] would change the principle of operation of the McKissick reference in that the messages would no longer be stored on a server to be accessed by the intended recipients on an individual basis.” Br. 9. We are not persuaded by Appellant’s argument. Appellant’s characterization of the principle of operation of McKissick narrowly focuses on an alleged requirement to store a received message on an intermediate server for later retrieval by the recipient. Initially, we suggest Appellant’s characterization is unduly narrow. However, even accepting Appellant’s narrow characterization of the principle of operation of McKissick, Appellant has not shown how the combination of Danker with McKissick changes the asserted principle of operation of McKissick. A received message may be stored on an intermediate server for retrieval by an individual recipient, as suggested by McKissick, and also processed, as in Danker, to multiplex the message with other content for broadcast to a Appeal 2011-003570 Application 10/537,890 7 plurality of recipients. Combining Danker’s teachings with McKissick does not necessarily affect a stored copy of the message. Further, the Examiner explains McKissick teaches other embodiments in which a received instant message may be stored (temporarily or permanently) at the recipient device. Ans. 26 (citing McKissick ¶¶ 0098 and 0125). Thus, the Examiner asserts, “McKissick teaches the distribution infrastructure at a high level of detail, the examiner notes that the Danker reference simply teaches structural elements implemented in a television distribution system which multiplexes messages with television and audio content.” Ans. 27. The Examiner therefore finds, “modifying the communication text messages distributed by McKissick with the digital multiplexer of Danker would not change the principle of distribution of McKissick, since . . . McKissick immediately sends the instant messages to the recipients set top box, where it gets stored for a predetermined amount of time.” Ans. 27. We agree. McKissick broadly discloses a principle of operation in which messages are transferred between users of set top boxes according to a variety of embodiments—regardless of where, and for what duration, messages are stored. Danker’s features do not require a change to this principle of operation. Appellant further argues, “the Examiner fails to provide a valid reason or acceptable rationale for the proposed combination of the McKissick and Danker references, thus also failing to cite evidence of motivation for modifying the McKissick reference.” Br. 9. We are not persuaded. The Examiner has articulated a reason based on rational underpinnings for the proposed combination of McKissick and Danker. Ans. 6. Appellant further contends, “the McKissick reference already allows for messages to be sent Appeal 2011-003570 Application 10/537,890 8 using the same communication paths that carry television broadcast signals thereby eliminating the need for additional communication paths . . . .” Br. 9-10. The Examiner does not rely on Danker for teaching additional communication paths. The Examiner finds using similar structural elements in a television distribution system to provide additional functionality for multiplexing messages with other content and for broadcasting the resulting stream to multiple recipients is an obvious modification to McKissick. Ans. 26-27. Appellant has not provided persuasive evidence of error in the Examiner’s articulated reason for modifying McKissick with the teachings of Danker. Appellant also contends, “the proposed combination involves extensively modifying the McKissick reference by replacing the manner in which the McKissick reference exchanges messages between users of set top boxes.” Br. 10. We are not persuaded. Appellant has not provided persuasive evidence that modifying the message exchange of McKissick with the multiplexing and broadcasting features of Danker would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 2007)). In view of the above discussion, we are not persuaded that the proposed combination changes the principle of operation of McKissick and are not persuaded that the Examiner fails to provide a reason for the combination of McKissick and Danker. Appeal 2011-003570 Application 10/537,890 9 DECISION For the above reasons, the rejection of claims 1-31 under 35 U.S.C. § 103 is affirmed. 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