SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Oct 21, 2020

14992105 - (D) (P.T.A.B. Oct. 21, 2020)

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.
14/992,105 01/11/2016 Sung-hee HWANG Q224357 7587
23373 7590 10/21/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
RIVAS, SALVADOR E
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
10/21/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SUNG-HEE HWANG and HYUNG-KOO YANG
________________

Appeal 2019-004258
Application 14/992,105
Technology Center 2400
________________

Before JASON V. MORGAN, GREGG I. ANDERSON, and
DAVID J. CUTITTA II, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 7–9, 19, and 20. Claims 4–6 and
10–18 are canceled. Appeal Br. 25 (Claims Appendix). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as SAMSUNG
ELECTRONICS CO., LTD. Appeal Br. 2.
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Summary of the Disclosure
Appellant’s claimed subject matter relates to generating a packet that
includes a header having a base header with three fields: “a first field
indicating a packet type of the input packets[,] . . . a second field indicating a
number of [transport stream] packets included in the payload and a third
field . . . indicating [whether] the header of the packet further comprises [an]
additional header.” Abstract.
Illustrative Claim
(Emphasis and Bracketing Added to Indicate Disputed Limitations)
1. A transmitting apparatus comprising at least one processor
configured to implement:
a packet generator generating a packet comprising a header and
a payload; and
a transmitter transmitting the generated packet,
wherein the header comprises a base header,
[1] wherein the base header comprises a first field, a second
field and a third field,
wherein the first field comprises a value indicating that a packet
type of an input packet is a transport stream (TS) packet,
wherein the second field comprises a value indicating a number
of TS packets included in the payload, [2] wherein the third
field comprises a first value or a second value,
[3] wherein the first value indicates presence of an additional
header, and the second value indicates absence of the
additional header,
wherein if TS header compression is performed, the third field
comprises the first value, and
wherein a header of a TS packet among the TS packets included
in the payload is removed by the TS header compression.
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The Examiner’s rejections and cited references
The Examiner rejects claims 1–3 and 7–9 on grounds of non-statutory
obviousness-type double patenting over claims 1–5 of Hwang et al. (US
App. No. 15/271,838; filed Sept. 21, 2016) (“Hwang ’838”), claims 1–18 of
Yang et al. (US App. No. 14/989,894; filed Jan. 7, 2016) (“Yang ’894”), and
Kwak et al. (US 2016/0345033 A1; published Nov. 24, 2016) (“Kwak
’033”), which claims priority under 35 U.S.C. § 119(e) to Kwak et al. (US
Prov. App. No. 62/090,351; filed Dec. 10, 2014) (“Kwak ’351”). Non-Final
Act. 3–6; Amend. to Spec. 2, App. No. 14/909,882 (Kwak ’033) (Feb. 3,
2016).
The Examiner rejects claims 1–3, 7–9, 19, and 20 under 35 U.S.C.
§ 103 as obvious over Petrov et al. (US 2012/0307842 A1; published Dec. 6,
2012) and Kwak ’033. Non-Final Act. 8–14.
ANALYSIS
Appellant argues that Kwak ’033 is not entitled to the filing date of
the provisional application Kwak ’351. Appeal Br. 9–16. Appellant first
argues that Kwak ’351 does not provide § 112 written description support
for Figure 12 and paragraph 359 of Kwak ’033. Id. at 13–16. Second,
Appellant argues that Kwak ’033’s claims are not supported by the
disclosure in Kwak ’351. Id. at 16–22. For the reasons discussed below, we
agree that, for purposes of the Examiner’s obviousness rejection, Kwak ’033
is not entitled to the filing date of Kwak ’351.
In rejecting claim 1 as obvious, the Examiner finds that Kwak ’033—
in teaching a header structure of a link layer packet that includes the fields
“Packet_Type,” “NUMTS,” and “AHF”—teaches or suggests recitations [1]
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“wherein the base header comprises . . . a third field,” [2] “wherein the third
field comprises a first value or a second value,” and [3] “wherein the first
value indicates presence of an additional header, and the second value
indicates absence of the additional header,” of claim 1. Non-Final Act. 9–10
(citing Kwak ’033 ¶ 359 Fig. 12). The Examiner does not dispute that the
Kwak ’033 Patent Cooperation Treaty filing date of December 1, 2015,
postdates the January 9, 2015, date of filing date for Yang et al. (US Prov.
App. No. 62/101,497) (“Yang ’497”) and the November 19, 2015, date of
filing for Hwang et al. (KR 10-2015-0162420) (“Hwang ’420”), to which
Appellant’s non-provisional application claims priority. Spec. ¶ 1; Non-Final
Act. 14–15. Nor does the Examiner find that Yang ’497 and Hwang ’420 fail
to provide written description or enablement support for any of the pending
claims of the present invention. 35 U.S.C. § 119(e); see also Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (describing the need for both written description and enabling support
for the claims of a non-provisional application claiming priority to the
earlier-filed provisional application); Fiers v. Revel, 984 F.2d 1164, 1169–70
(Fed. Cir. 1993) (describing similar written description and enablement
requirements when claiming priority to an earlier-filed foreign patent
application). Rather, the Examiner finds that although figure 12 of Kwak
’033 “is not explicitly shown in the provisional application,” Kwak ’351
“provides enough details in pages 113–127 to construct Fig.12 of Kwak
[’033].” Non-Final Act. 15. Thus, the Examiner finds that Kwak ’033 can be
relied on as prior art based on the earlier December 10, 2014, filing date of
Kwak ’351, to which Kwak ’033 claims priority. Amend. to Spec. 2, App.
No. 14/909,882 (Kwak ’033) (Feb. 3, 2016).
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Specifically, the Examiner finds that:
Kwak et al. provisional application [62/090,351] teaches a
system that supports three types of input data streams (e.g.:
MPEG2-TS, IP, GS). (page 113) Further, Kwak [’351]
teach[es] adaptation modules that slice incoming data streams
into data fields of a baseband frame (BBF)(page 113) Also,
Kwak [’351] teach[es] subblocks used in each input data stream
(Table 4-1, page 114). For example, Kwak [’351] teach[es] a
Baseband Frame Header Insertion (Section 4.1.7, Table 4.4,
pages 122–123) Also, Kwak [’351] teach[es] Null-packet
Deletion block used for a TS input stream (Section 4.1.3, page
114) Also, Kwak [’351] teach[es] different packet header
compression techniques used in a TS stream (Section 4.1.4,
pages 115–119).
Non-Final Act. 15; Ans. 4.
Appellant contends the Examiner erroneously “relies on [the]
obviousness rationale of § 103 (not § 112) and refers for support to ‘the
stuffing field as taught in Section 4.2.2 page 123 and Fig.4.12.’” Appeal
Br. 15. We agree with Appellant that the Examiner must show written
description and enablement support for the relied on subject matter.
For purposes of determining whether a patent or application for
patent is prior art to a claimed invention under [35 U.S.C.
§ 102(a)(2)], such patent or application shall be considered to
have been effectively filed, with respect to any subject matter
described in the patent or application . . . (2) if the patent or
application for patent is entitled to claim a right of priority
under section 119 . . . or to claim the benefit of an earlier filing
date . . . based upon 1 or more prior filed applications for
patent, as of the filing date of the earliest such application that
describes the subject matter.
35 U.S.C. § 102(d). A claim for priority under 35 U.S.C. § 119(e), requires
the patent application claiming priority be “disclosed in the manner provided
by section 112(a) (other than the requirement to disclose the best mode) in
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[the] provisional application” to which priority is claimed. “[F]iling a
provisional application in the USPTO that meets the statutory requirements,
in effect, provides a self-authenticating[] instrument establishing a date of
disclosure for the subject matter contained within the” provisional
application. Ex parte Yamaguchi, 88 USPQ2d 1606, 1611 (BPAI 2008)
(precedential) (emphasis added). Thus, “[l]ike a regular utility application,
the provisional application is considered prior art for all that it teaches.” Id.
at 1612 (emphasis added). That is, the filing date of the provisional
application can only be relied on if, given hypothetical claims encompassing
the pertinent subject matter, the provisional application meets the
requirements of 35 U.S.C. § 112(a) for the pertinent subject matter. Cf. In re
Wertheim, 646 F.2d 527, 537 (CCPA 1981) (“if a patent could not
theoretically have issued the day the application was filed, it is not entitled
to be used against another as ‘secret prior art’”). Therefore, for Kwak ’033 to
be considered to have been effectively filed on the date Kwak ’351 was
filed—for purposes of teaching or suggesting the disputed recitations of
claim 1—Kwak ’351 must describe (providing written description and
enablement support for) the subject matter of the disputed recitations. MPEP
§ 2151 (9th Ed., Rev. 10.2019, June 2020) (“a U.S. patent document is
effective as prior art as of the filing date of the earliest application to which
benefit or priority is claimed and which describes the subject matter relied
upon, regardless of whether the earliest such application is a U.S.
provisional or nonprovisional application”).
We also agree with Appellant that the Examiner’s findings fail to
show that the fifteen pages of Kwak ’351 the Examiner cites in general—or
the more specific portions of Kwak ’351 the Examiner cites in particular—
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show that Kwak ’351 provides the requisite written description and
enablement support for the pertinent subject matter of Kwak ’033. Appeal
Br. 15. As Appellant persuasively argues, “one of ordinary skill would
interpret the stuffing field as not being an additional header field, but rather
a portion of payload, consistent with how the Kwak stuffing field is
presented in” Kwak ’351. Id. (citing Kwak ’351 p. 123); Reply Br. 6.
Appellant also correctly notes “the Examiner’s Answer [merely] provides a
list of teachings from [Kwak ’351] and no other reasoning or discussion.”
Reply Br. 5. Thus, the Examiner’s findings fail to show that the subject
matter of Kwak ’033 pertinent to disputed recitations [1]–[3] has written
description and enablement support in Kwak ’351. Therefore, the
Examiner’s findings fail to show that Kwak ’033 can be used as prior art for
disputed recitations [1]–[3]. Accordingly, we do not sustain the Examiner’s
35 U.S.C. § 103 rejection of claim 1, and claims 2, 3, 7–9, 19, and 20, which
also contain the disputed recitations.
We also do not sustain the Examiner’s obviousness-type double-
patenting rejection of claims 1–3 and 7–9 because the Examiner similarly
relies on Kwak ’033 to teach or suggest disputed recitations [1]–[3]. Non-
Final Act. 6; Appeal Br. 22.
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CONCLUSION
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–3, 7–9 Nonstatutory Double
Patenting
1–3, 7–9
1–3, 7–9,
19, 20
103 Petrov, Kwak ’033 1–3, 7–9,
19, 20
Overall
Outcome
1–3, 7–9,
19, 20
REVERSED