Neal Margulis

Patent Trials and Appeals Board

Nov 29, 2019

13194783 - (D) (P.T.A.B. Nov. 29, 2019)

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.
13/194,783 07/29/2011 Neal Margulis 066.0015D2C1 1606
70560 7590 11/29/2019
LKGLOBAL (Dish Technologies L.L.C.)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
EXAMINER
KIM, WILLIAM JW
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
11/29/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dish@lkglobal.com
ipdept@dish.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEAL MARGULIS
____________________

Appeal 2018-007041
Application 13/194,783
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
ADAM J. PYONIN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21, 22, 28–35, 37, 38, and 41–50. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant indicates the real party in interest is Sling Media LLC.
Appeal Br. 2.
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Application 13/194,783

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CLAIMED SUBJECT MATTER
Claim 21 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
21. A system comprising:
[A.] a network interface configured to receive a processed
digital stream of selected video programming generated
by a base station over a network,
[i.] wherein the processed digital stream of selected video
programming encodes a program signal obtained
from a television receiver that is a selected one of a
plurality of program sources associated with the
base station;
[B.] a display controller configured to display the program
information on a display; and
[C.] an input module configured to generate control information
in response to user inputs applied to the system by the
user,
[i.] wherein the control information comprises[:]
[a.] a first instruction based upon a first user input
to select the television receiver from the
plurality of program sources associated with
the base station and
[b.] a second instruction based upon a second user
input to control the base station to change a
channel of the television receiver and
thereby obtain the selected video
programming from the television receiver as
a high definition television signal in a
format suitable for presentation on a
television, and
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Application 13/194,783

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[ii.] wherein the generated control information is
supplied to the network interface for transmission
to the base station via the network to thereby direct
the base station to provide the processed digital
stream of selected video programming obtained
from the selected program source based on the
generated control information,
[iii.] wherein the base station is configured[:]
[a.] to receive the high definition television signal
containing the selected video programming
from the television receiver in the format
suitable for presentation on a television and
[b.] to transcode the high definition television
signal to generate the processed digital
stream,
[iv.] wherein the processed digital stream[:]
[a.] has a lower bitrate than the high definition
television signal and
[b.] is formatted for transport to the system over
the network.
REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Hayashi US 5,237,420 Aug. 17, 1993
Chen US 6,067,118 May 23, 2000
Allport US 6,097,441 Aug. 1, 2000
Daniels US 2002/0032907 A1 Mar. 14, 2002
Ellis US 7,913,278 B2 Mar. 22, 2011

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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Application 13/194,783

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REJECTIONS3
A.
The Examiner rejects claims 21, 22, 28, 29, 32, 33, and 50 under
35 U.S.C. § 103 as being unpatentable over the combination of Allport,
Daniels, Hayashi, and Chen. Final Act. 3–11, 27–28.
We select claim 21 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 22, 28, 29, 32, 33,
and 50. Except for our ultimate decision, we do not address claims 22, 28,
29, 32, 33, and 50 further herein.
B.
The Examiner rejects claims 30, 31, 34, and 35 under 35 U.S.C. § 103
as being unpatentable over the combination of Allport, Daniels, Hayashi,
Chen, and Ellis. Final Act. 11–13.
Appellant does not present arguments for claims 30, 31, 34, and 35.
Rather, Appellant asserts these claims are “patentable a fortiori for at least
the reasons set forth above [for claim 21].” Appeal Br. 16. Thus, the
rejection of these claims turn on our decision as to claim 21. Except for our
ultimate decision, we do not address the § 103 rejection of claims 30, 31, 34,
and 35 further herein.
C.
The Examiner rejects claims 37, 38, and 41–49 under 35 U.S.C. § 103
as being unpatentable over the combination of Allport, Daniels, and
Hayashi. Final Act. 13–26.

3 For simplicity, we refer to any rejections under 35 U.S.C. § 103(a) as
rejections under 35 U.S.C. § 103.
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Application 13/194,783

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We select claim 37 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 38 and 41–49.
Except for our ultimate decision, we do not address claims 38 and 41–49
further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
The final Office Action rejects claim 21 by citing a Section
103 combination of four different references: Allport, Daniels,
Hiyashi [sic] and Chen. Only the Chen reference, however, is
cited against our claim language relating to the digital processed
stream being “formatted for transport” over the network and
having a “lower bitrate” than the HDTV signal selected by the
user. . . . Even though four references are used to reject our
claim, the Office Action relies solely and entirely upon the Chen
reference for the bitrate conversion feature.
But Chen does not actually teach any sort of bitrate
conversion at all; it certainly does not consider the level of detail
that is recited in our claims.
Appeal Br. 14.
The Examiner responds to Appellant’s argument as follows:
Chen is not introduced to teach a bitrate conversion.
Ans. 4 (emphasis added).
We are unpersuaded by Appellant’s argument. We disagree with
Appellant’s assertions and we agree with the Examiner. In the rejection, the
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Examiner found that Hayashi “teaches . . . the processed digital stream is
down-converted from the high definition television signal.” Final Act. 7–8.
Contrary to the Appellant’s argument, the Examiner does not rely solely on
Chen for the argued limitation.
B.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 37 under 35 U.S.C. § 103.
There is simply no reason to believe that a person skilled in the
art would select and combine the various features of the many
different references to arrive at our claims, especially since no
reference appreciates the problem addressed by our claims as a
whole.
Appeal Br. 18 (emphasis added).
As to Appellant’s assertion, we are unpersuaded. “[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). Appellant’s argument is directly contrary to the Supreme Court’s
explicit guidance.
Further, we do not find in Appellant’s argument an indication of the
particular problem addressed by their claims. Our review determines that
the problem being addressed is the bitrate and data formatting constraints
and needs of the network. See, e.g., Spec. 3:2–17. The prior art cited in the
Examiner’s rejection reasonably demonstrates that it is known in the art to
address such constraints and needs in the manner claimed by Appellant.
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Application 13/194,783

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CONCLUSION
The Examiner has not erred in rejecting claims 21, 22, 28–35, 37, 38,
and 41–50 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 21, 22, 28–35, 37, 38, and 41–50
as being unpatentable under 35 U.S.C. § 103 are affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 22, 28,
29, 32, 33,
50
103 Allport, Daniels,
Hayashi, Chen
21, 22, 28,
29, 32, 33,
50

30, 31, 34,
35
103 Allport, Daniels,
Hayashi, Chen, Ellis
30, 31, 34,
35

37, 38, 41–
49
103 Allport, Daniels,
Hayashi
37, 38, 41–
49

Overall
Outcome

21, 22, 28–
35, 37, 38,
41–50

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).
AFFIRMED