Ex Parte Unger

Board of Patent Appeals and Interferences

Mar 22, 2006

09711325 (B.P.A.I. Mar. 22, 2006)

Application for patent filed November 13, 2000, entitled1
"Method and System for Minimizing the Time Required to Acquire a
Control Channel of a Cable Television Signal with a Set-Top
Unit."
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ROBERT ALLAN UNGER

Appeal No. 2006-0303
Application 09/711,3251

ON BRIEF

Before BARRETT, DIXON, and NAPPI, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the final rejection of claims 3-8, 11-16, 18, 19, and 21-29.
Claims 1, 2, 9, 10, 17, and 20 have been canceled.
We reverse.
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Application 09/711,325
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BACKGROUND
The invention relates to a method and system for using a
plurality of tuners to acquire the control channel required to
allow a set-top unit to operate within a cable system.
Claim 23 is reproduced below.
23. A set-top unit for connection to a cable television
system comprising:
a control channel tuner;
at least one programming tuner; and
a processor for controlling both said tuners;
wherein said processor is configured to concurrently
control both said control channel tuner and said at least
one programming tuner to scan a frequency band to locate a
control channel.
THE REFERENCES
The examiner relies on the following references:
Heberle et al. 5,220,580 June 15, 1993
Chiu et al. (Chiu) 5,883,901 March 16, 1999
Jerding et al. (Jerding) US 2002/0104097 Pub. August 1, 2002
(effective filing date May 4, 2000)
Bahraini US 2002/0116706 Pub. August 22, 2002
(based on provisional application filed December 14, 1999)
Robbins et al. (Robbins) 6,807,676 October 19, 2004
(effective filing date March 21, 1996)
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THE REJECTIONS
Claims 3, 4, 11, 12, 18, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Jerding and
Bahraini.
Claims 5-8, 13-16, 19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jerding and Bahraini, with
Heberle cited to support a finding of Official Notice.
Claims 23, 25, 26, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jerding and Bahraini, with
Robbins cited to support a finding of Official Notice.
Claims 27 and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jerding and Bahraini, with Robbins and
Heberle cited to support a finding of Official Notice.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jerding, Bahraini, and Chiu, with Robbins cited
to support a finding of Official Notice. The statement of the
final rejection using Chiu did not include claim 24, but since
claim 24 was included in the discussion (final rejection,
page 12), we assume the omission was inadvertent. Chiu is not
listed in the references in the answer.
We refer to the final rejection (pages referred to as
"FR__"), the advisory action (pages referred to as "AA__"), and
the examiner's answer (pages referred to as "EA__") for a
statement of the examiner's rejection, and to the appeal brief
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Application 09/711,325
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(pages referred to as "Br__") for a statement of appellant's
arguments thereagainst.
DISCUSSION
We follow the order of addressing claims in the brief, which
is based on the order in the advisory action.
As a matter of procedure, the rejections in the final
rejection relied upon Official Notice. Robbins and Heberle were
cited in the advisory action to support the finding of Official
Notice although the examiner notes that appellant did not require
citation of a reference to support the Official Notice. Although
the statements of the rejection in the examiner's answer refer to
Robbins and Heberle as part of the rejection, it is noted that
these references can only be relied upon to the extent they
support the findings of Official Notice, and not for everything
taught therein; otherwise, the rejection would constitute a new
ground of rejection.
Claims 23-27
Claim 23 requires, in relevant part, that "said processor is
configured to concurrently control both said control channel
tuner and said at least one programming tuner to scan a frequency
band to locate a control channel."
Jerding discloses a set-top box having a tuner system 25 for
tuning to a particular channel and for sending and receiving data
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from the headend 11 (¶ 0022), which the examiner finds to be two
tuners: a control channel tuner and a programming tuner.
Bahraini discloses using a single tuner to scan for an
out-of-band or an in-band control channel (¶ 0010). The examiner
admits that "Jerding fails to show that the programming tuner
scans frequencies to locate a control channel" (EA9) and that
"neither [Jerding nor Bahraini] teaches or suggests a set-top
unit that includes and concurrently uses two tuners to scan a
frequency band to locate a control channel" (AA2). The advisory
action states (AA2):
Official Notice is given that it is [sic, was] well known
and expected in the art to control two tuners at the same
time. This allows the system to perform multiple tasks
without the need to wait for instructions to be completed by
one of the tuners. Therefore, it would have been obvious to
one of ordinary skill in the art at the time the invention
was made to modify Jerding and Bahraini with the ability to
control both of the tuners at the same time so that the
system could access both tuners independently with
individual instruction sets.
Appellant argues that even if the finding of Official Notice
were true, this does not mean that it was well known in the art
to control two tuners concurrently to locate a control channel as
claimed (Br6). The appellant is clearly correct. A processor
may control two programming tuners concurrently, such as to
provide a picture-in-picture (as taught, for example, at page 9
of the specification), but this does not suggest using two tuners
to locate a control channel.
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The examiner cites column 12, lines 35-45, of Robbins in
support of the Official Notice and finds that "Robbins clearly
shows using two tuners concurrently" (AA2).
Appellant argues that Robbins teaches using a video tuner
120 and a digital audio tuner 202 simultaneously, where the audio
tuner 202 is in a separate module (Br6-7). It is argued that the
audio tuner 202 would not be capable of locating or tuning a
control channel in a cable television system and, thus, Robbins
cannot support the position that it would have been obvious to
concurrently use two similar tuners as claimed (Br7). It is
argued that Robbins does not teach or suggest concurrently using
two similar tuners in a set-top unit to locate a control channel
as claimed (Br7).
The examiner responds by discussing how Robbins controls two
tuners and concludes that "[s]ince[] Robbins shows a variety of
methods of receiving in band and out of band data simultaneously
between two tuners, there is ample motivation and suggestion that
these techniques are frequently used in the art" (EA15).
Initially, we note that the examiner can not rely on Robbins
for anything more than what is stated in the Official Notice,
i.e., the examiner cannot bring in the full teachings of Robbins
in the guise that it merely supports the finding of Official
Notice. If the examiner intends to rely on Robbins for anything
more than what is stated in the Official Notice, the rejection
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must be designated a new ground of rejection. We assume Robbins
is limited to supporting the Official Notice.
We agree with appellant regarding the content of Robbins.
Robbins does not suggest concurrently using two tuners in a
set-top unit. The example of a processor concurrently
controlling two programming tuners to display picture-in-picture
is a better example of concurrently controlling two tuners than
Robbins. The examiner's rejection does not come to grips with
the limitation of controlling two tuners for the specific
function of locating a control channel: a general teaching of
controlling two tuners for some other purpose (e.g., to use two
programming tuners to tune two channels, where each tuner is used
for its intended purpose of tuning a programming channel) does
not teach or suggest controlling the tuners to locate a control
channel, which has been done in the prior art using a single
channel tuner. Since appellant's invention is to using plural
tuners to locate a control channel, more that just a general
teaching of controlling two tuners for any purpose is required.
The combination of Jerding, Bahraini, and Robbins does not
suggest controlling two tuners to locate a control channel. The
rejection of claims 23 and 25-27 is reversed.
The examiner applies Chiu to teach storing the last known
frequency in memory as recited in claim 24. The examiner has not
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applied Chiu to cure the deficiencies in the rejection of
claim 23. The rejection of claim 24 is reversed.
Claims 28 and 29
Claim 28 recites, in part, that "said processor is
configured to concurrently control said programming tuners to
scan a frequency band to locate a control channel." This claim
recites controlling two programming tuners, instead of a control
channel tuner and a programming tuner as in claim 23.
Appellant argues that the combination of Jerding, Bahraini,
and Robbins fails to teach using two or more tuners concurrently
to scan a frequency band to locate a control channel, as
discussed in connection with claim 23 (Br8). We agree with this
argument for the reasons discussed, supra. The rejection of
claims 28 and 29 is reversed.
Claims 6-8, 14-16, 19, and 22
Claim 6 recites, in part, that "said processor divides said
frequency band among said control channel tuner and said at least
one programming tuner, and controls each said tuner to search a
different portion of said frequency band for said control
channel." Claims 14, 19, and 22 recite similar subject matter.
These claims recite that two tuners, a control channel tuner and
a programming tuner, are used together to locate a control
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channel. The frequency band is divided among the two tuners so
that the search can be completed more quickly.
The examiner admits that "[b]oth Jerding and Bahraini fail
to show splitting up the frequency scanning between two tuners"
(FR6), but takes Official Notice that "it is [sic, was] well
known and expected in the art to split up a task between plural,
but similar, components to facilitate processing and speed up
computational calculations" (FR6).
Appellant argues that the combination of references does not
teach or suggest using multiple similar components to conduct a
single task, e.g., searching for a control channel (Br9) and even
if the Official Notice is given credit, the prior art still does
not teach or suggest a processor that divides a frequency band
among two similar tuners in search for a control channel (Br9).
We agree with appellant that the Official Notice does not go
to the specific limitation at issue of dividing a frequency band
among two similar tuners in search for a control channel. Thus,
the Official Notice is not persuasive of obviousness.
In the advisory action, the examiner cites Heberle,
column 5, lines 20-55, in support of the Official Notice finding
that Heberle shows dividing a frequency spectrum between
components to facilitate a faster search (AA2).
Again, we note that the examiner can not rely on Heberle for
anything more than what is stated in the Official Notice, i.e.,
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the examiner can not bring in the full teachings of another
reference in the guise that it merely supports the finding of
Official Notice. If the examiner intends to rely on Heberle for
anything more than what is stated in the Official Notice, the
rejection must be designated a new ground of rejection. We
assume Heberle is limited to supporting the Official Notice.
Appellant responds that Heberle does not teach or suggest
dividing up a frequency band among two tuners in the search for a
control channel, so even if Heberle were combined with Jerding,
Bahraini, and Robbins, the combination still would not teach or
suggest dividing a frequency band among multiple tuners that are
concurrently controlled to search for a control channel in that
frequency band (Br9).
The examiner responds that Heberle is not used to show any
of the tuners or processors, but is only relied on to show
dividing the search frequency between two spectrums to facilitate
a faster search or scan (EA16).
We agree with appellant that Heberle does not teach or
suggest dividing a frequency band among two similar tuners in
search for a control channel. Heberle discloses dividing up a
spread-spectrum signal into approximately equal lengths of time
(col. 5, lines 43-46), not dividing up a frequency band among two
tuners in search for a control signal. While Heberle may support
the finding of Official Notice that splitting up a task between
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plural components to facilitate processing and speed up
computational calculations was known, this general teaching does
not disclose or suggest the specific task of splitting up the
frequency range to search for a control signal. The rejection of
claims 6-8, 14-16, 19, and 22 is reversed.
Claims 3-5, 11-13, 18, and 21
Claim 3 recites, in part, "said processor controls said at
least one programming tuner to tune frequencies in said frequency
band and identify frequencies carrying an active signal; and
wherein said processor controls said control channel tuner to
tune said frequencies carrying an active signal to locate said
control channel." Claims 11, 18, and 21 recite similar subject
matter. These claims recite that two tuners, a control channel
tuner and a programming tuner, are used together to locate a
control channel. One tuner is used to search for frequencies
carrying an active signal, while the second tuner is used to tune
those frequencies with active signals to determine which is a
control signal.
The examiner finds that Jerding (at ¶ 0022) teaches that the
processor controls the programming tuner to tune to frequencies
carrying an active signal and controls the control tuner to tune
to frequencies carrying an active signal (AA2). The examiner
finds that the only limitation not shown by Jerding is the
scanning process of finding the active frequencies, but Bahraini
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teaches scanning for an active frequency (AA2). Appellant argues
that nowhere does the combination of Jerding and Bahraini teach
or suggest using two tuners concurrently, let alone using one to
find active signals and the second to follow up to determine if
any of the active signals are control channels (Br10).
The rejection does not address the specifics of the claim
language. There is no disagreement that it was known for the
control channel tuner to tune to an active control channel or for
programming tuners to tune to an active programming channel (of
course, programming tuners do not have to search for active
channels because channel frequencies are pre-assigned and known
to the tuner). However, there is no suggestion whatsoever in
Jerding or Bahraini for the programming tuner to search and
identify active signals which are screened by the control channel
tuner to identify the control channel. The rejection of
claims 3-5, 11-13, 18, and 21 is reversed.
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CONCLUSION
The rejections of claims 3-8, 11-16, 18, 19, and 21-29 are
reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
Appeal No. 2006-0303
Application 09/711,325
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