11272344 (P.T.A.B. Dec. 11, 2013)

Ex Parte Wachtfogel et al

Patent Trial and Appeal BoardDec 11, 2013

11272344 (P.T.A.B. Dec. 11, 2013)

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. 11/272,344 11/10/2005 Reuven Wachtfogel 7251/95665 1627 24628 7590 12/11/2013 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER GUIRGUIS, MICHAEL M ART UNIT PAPER NUMBER 2434 MAIL DATE DELIVERY MODE 12/11/2013 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 REUVEN WACHTFOGEL and YAIR MIRSKY ____________ Appeal 2011-009088 Application 11/272,344 Technology Center 2400 ____________ Before CARLA M. KRIVAK, CARL W. WHITEHEAD, JR., and DENISE M. POTHIER, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-009088 Application 11/272,344 2 Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52 on September 30, 2013 (“Request”) from our Decision on Appeal mailed August 13, 2013 (“Decision”), wherein we affirmed the obviousness rejection of claims 22-36. See Decision 5. We did not find Appellants’ arguments to be persuasive because we did not find them commensurate with the scope of the claims. See Decision 4. Appellants argue the Board misapprehended the Vince reference. Id. at 2. However, we note that, “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981)). The Examiner’s rejection is based upon the combination of Vince and Morris. See Answer 4-5. Appellants argue that Vince’s “SO-CALLED ‘FRAMES’” are not frames. Request 2. We do not find Appellants’ arguments to be persuasive or relevant in showing how Vince was misapprehended. Appellants assert that Vince is not concerned with individual frames because Vince never labels them as frames. Id. However, Vince is a video on demand system (see Vince, Abstract) and as Appellants acknowledge, “a video presentation is a collection of still frames” (Request 2). Thus, regardless of whether Vince actually labels the portion of the video as “frames” is immaterial as Vince’s video on demand system is a video presentation and is concerned with individual frames. It is noted Appellants’ claims are concerned with a “multiplicity of frames” and a “plurality of frames” as is Vince. See Appellants’ claims 22, 29, and 36. Therefore we do not find support for Appeal 2011-009088 Application 11/272,344 3 Appellants’ assertion that Vince is not concerned with individual frames or that we misapprehended Vince. Appellants argue that there is no correlation between a group in Vince’s File II and a single group in Vince’s File I and that the frames do not depend on an associated key. Request 3-4. We do not find Appellants’ arguments to be persuasive because there is no apparent relevancy between Appellants’ arguments and the invention as it is claimed. Further, Vince indicates there is “correlation” between File I and File II. See Vince [0055]. Appellants further argues neither “Vince (or the other reference)” disclose or suggest “deciding not to descramble all frames requiring descrambling which are associated with the selected key period” as specified in the claims. See Request 5. Appellants argue there is no suggestion of deciding to descramble a frame in another key period instead of the frames associated with the selected key period. Id. We do not find Appellants arguments to be persuasive. The claim limitation essentially requires inactivity on the part of the descrambling means. See claims 22, 29, and 36. Further, we do not find Appellants’ arguments to be persuasive because Appellants fail to address the combination of Vince and Morris. As discussed by the Examiner, both Vince and Morris collectively teach this disputed feature. Answer 5. Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. See Keller, 642 F.2d at 425(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the Appeal 2011-009088 Application 11/272,344 4 references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” (Emphasis added) (citations omitted)). DECISION Appellants’ Request for Rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision. 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). REHEARING DENIED kis