Ex Parte Illgner-Fehns et al

Patent Trial and Appeal BoardApr 26, 2016

11663294 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/663,294 04/01/2008 Klaus Illgner-Fehns 86528 7590 04/28/2016 Slayden Grnbert Beard PLLC 401 Congress Avenue Suite 1900 Austin, TX 78701 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 03869.119211 5949 EXAMINER FLYNN, RANDY A ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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): trosson@sgbfirm.com patent@sgbfirm.com wjenks@sgbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KLAUS ILLGNER-FEHNS, UWE RAUSCHENBACH, and MARCEL WAGNER Appeal2014-000132 Application 11/663,294 Technology Center 2400 Before BARBARA A. BENOIT, JAMES W. DEJMEK, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 12-29, which constitute all pending claims in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part and designate our affirmance as containing NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). Appeal2014-000132 Application 11/663,294 STATEMENT OF THE CASE Appellants' disclosed invention relates to a method for transmitting information to a terminal and to a television set. (Spec. i-f 2.) Claim 12, which is illustrative, reads as follows: 12. A method for transmitting information, comprising: transmitting first information, which supplements second information, to a terminal independently of the second information over a first transmission network; receiving the first information; storing the first information in a buffer; providing a television as a different device than the terminal; transmitting second information over a second transmission network to the television, the second transmission network being mutually different and separate from the first transmission network, and displaying the first information at the terminal in a manner synchronized with a replay of the second information using a delay time, the second information being replayed by the television set, the delay time depending on a system used for transmitting the second information. REFERENCES The prior art relied on by the Examiner in rejecting the claims on appeal is: Maeda (et al.) Ackley Cloutier (et al.) us 5,999,224 US 2004/0259577 Al US 7,317,926 Bl 2 Dec. 7, 1999 Dec. 23, 2004 Issued Jan. 8, 2008 Filed June 28, 2004 Appeal2014-000132 Application 11/663,294 REJECTIONS ON APPEAL Claims 12, 15, 17-20, and 23-27 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Cloutier. (Final Act. 4.) Claims 13, 14, 16, 21, and 28 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cloutier in view of Ackley. (Final Act. 8.) Claim 22 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cloutier in view of Maeda. (Final Act. 10.) Claim 29 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Cloutier in view of Ackley and Maeda. (Final Act. 11.) ISSUES Did the Examiner err in finding Cloutier discloses the two transmitting limitations recited in claim 12? Did the Examiner err in finding Cloutier discloses receiving and buffer-storing first information as recited in claim 23? ANALYSIS Claims 12, 15, 17-20, and 23-25 Appellants argue the Examiner erred in finding Cloutier teaches the two transmitting limitations recited in claim 12, which read: (i) transmitting first information, which supplements second information, to a terminal independently of the second information over a first transmission network and (ii) transmitting second information over a second transmission network to the television, the second transmission 3 Appeal2014-000132 Application 11/663,294 network being mutually different and separate from the first transmission network. (App. Br. 4--10.) The Examiner finds Cloutier satisfies both limitations by (i) transmitting subtitles through its subtitles control network 315 to subtitle device control device 330 and (ii) transmitting video through video network 210 to video device 320. (Ans. 3--4, 11-12.) The Examiner correlates: the subtitles with the recited first information, the video with the recited second information, subtitle control device 330 with the recited terminal, video device 320 with the recited television, subtitles control network 315 with the recited first network, and video network 210 with the recited second transmission network. Id. Appellants first argue the Examiner erred because Cloutier synchronously transmits and delivers the subtitles and the video, and therefore, does not "transmit[] first information ... independently of the second information." (App. Br. 4--9.) We do not find this argument persuasive. The transmitting limitations of claim 12 do not preclude synchronously transmitting the first information and the second information. In fact, claim 19, which depends on claim 12, recites synchronous transmission of the first information and the second information. (See claim 19.) The Specification also discloses synchronous transmission of the first information and the second information in a passage cited by Appellants as supporting claim 12. (Spec. i-f 12; App. Br. 2.) Second, Appellants argue the Examiner erred because the second transmission network in Cloutier is not mutually different and separate from Cloutier' s first transmission network. Appellants note that gateway server 4 Appeal2014-000132 Application 11/663,294 325 transmits data to both video device 320 and subtitle control device 330. (App. Br. 9.) We do not find this argument persuasive. The limitation-at- issue requires transmitting the first information and second information over independent and separate networks. As the Examiner finds, Cloutier describes transmitting the first information and the second information over two independent and separate networks, subtitled control network 315 and video network 310, respectively. (Ans. 12 (citing Cloutier, Fig. 3; 4:40-45, 64--67).) Claim 12 has no limitation precluding a common gateway server. We sustain the Examiner's rejection of claim 12 and of claims 15 and 17-20, which were not argued separately. Claim 23 Appellants argue the Examiner erred in finding Cloutier teaches "receiving and buffer-storing first information" as recited in claim 23. 1 (App. Br. 10-11.) The Examiner finds Cloutier discloses this limitation by describing, inter alia, that information received at the first and the second device may be stored in memory and/or played back from memory. (Ans. 13.) Appellants argue the terminals in Cloutier do not receive and buffer store first information because the agents in Cloutier synchronize the first and second data streams. (App. Br. 10-11.) Appellants are presumably suggesting because Cloutier' s agents synchronize the data streams, Cloutier 1 This recited function is part of an element that could be subject to 35 U.S.C. Â§ 112, sixth paragraph. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Because Appellants' argument focuses on whether Cloutier satisfies the recited function, which Cloutier must satisfy even if this element is subject toÂ§ 112, sixth paragraph, we will limit our review to whether Cloutier discloses the recited function. See, e.g., MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1170-71 (Fed. Cir. 2015). 5 Appeal2014-000132 Application 11/663,294 does not need buffering. We do not find this argument persuasive. The issue here is not whether there would be a motivation to add buffering to Cloutier, but whether Cloutier itself discloses buffering. As the Examiner finds, Cloutier' s storing information in memory and playing the information back from memory discloses buffering. (Ans. 13.) We sustain the Examiner's rejection of claim 23. Claims 13, 14, 16, 21, and 22 Appellants argue the Examiner erred in rejecting claims 13, 14, 16, 21, and 22 because Cloutier does not teach transmitting first information to a terminal independently of the second information over a first transmission network. (App. Br. 20-21.) We do not find this argument persuasive for the reasons expressed above for claim 12. We sustain the Examiner's rejection of claims 13, 14, 16, 21, and22. Claims 24 and 25 Appellants argue the Examiner erred in rejecting claims 24 and 25 because Cloutier does not teach transmitting first information to a terminal independently of the second information. (App. Br. 11-20.) We do not find this argument persuasive for the reasons expressed above for claim 12. We sustain the Examiner's rejection of claims 24 and 25. Claims 26--29: New Grounds of Rejection Appellants argue the Examiner made the same error for claims 26 and 27 as he did for claim 12 and the same error for claim 28 as he did for claim 13. (App. Br. 4, 20.) Appellants argue the Examiner erred in rejecting claim 29 because Cloutier does not disclose transmitting first information to a terminal independently of second information. (App. Br. 21-22.) As discussed above, we do not find these arguments persuasive. 6 Appeal2014-000132 Application 11/663,294 To cure what appears to be a clerical error in the Examiner's rejections of claims 26-29, however, we will reverse the rejection of claims 26 and 27, issue a new rejection of those claims, and affirm the rejection of claims 28 and 29, but designate our affirmance of those claims as new grounds of rejection. We enter the new grounds of rejection because the Examiner's rejections of claims 26-29 do not account for those claims' incorporation by dependency of the limitations of claims 13 and 14. The Examiner finds Cloutier anticipates claims 26 and 27, which incorporate by dependency the elements of claims 13 and 14. (Ans. 3, 6.) The Examiner, however, does not find Cloutier teaches every element of claims 13 and 14. (Ans. 7.) The Examiner does reject claims 28 and 29 over both Cloutier and Ackley, the references used to reject claims 13 and 14. (Ans. 7-11.) In so doing, the Examiner, however, does not expressly address the limitations of claims 13 and 14. Therefore, in affirming the rejection of claims 28 and 29, we address the limitations of claims 13 and 14 and designate our affirmance as new grounds of rejection. In entering our new grounds of rejection, however, we adopt the pertinent findings by the Examiner. In both the Final Action and the Answer, the Examiner has set forth how the prior art teaches or suggests every element of claims 26-29, including the elements of claims 13 and 14. With those findings, we reject each of claims 26-28 under 35 U.S.C. Â§ 103 as obvious over Cloutier and Ackley. For this rejection, we adopt the Examiner's findings regarding: Cloutier's teachings of the elements of claim 12 (Final Act. 2-3, 5---6; Ans. 3--4, 11-12.), Cloutier's and Ackley's teachings and suggestions for the elements of claims 13 and 14 (Final Act. 7 Appeal2014-000132 Application 11/663,294 8-9; Ans. 7, 15.), Cloutier's teachings of the elements added by claim 26 (Final Act. 7; Ans. 6.), and Cloutier and Ackley's teachings and suggestions for the elements added by claims 27 and 28. (Final Act. 7, 10; Ans. 6-9.) We also adopt the Examiner's reasons for combining the references. (Final Act. 8, 10; Ans. 7-9.) We reject claim 29 under 35 U.S.C. Â§ 103 as obvious over Cloutier, Ackley, and Maeda. For this rejection, we adopt the same findings as for claims 26-28. In addition, we adopt the Examiner's findings regarding the element added by claim 29 and the combination of Cloutier, Ackley, and Maeda. (Final Act. 11-12; Ans. 10-11, 16.) DECISION We affirm the Examiner's rejection of claims 12-25. We reverse the Examiner's rejection of claims 26 and 27. We newly reject claims 26-29 as being unpatentable over Cloutier and Ackley. This decision contains new grounds of rejection pursuant to 37 C.F.R. Â§ 41.50(b). Regarding the new designated grounds, 37 C.F.R. Â§ 41.52(a)(l) provides "Appellant[s] may file a single request for rehearing within two months of the date of the original decision of the Board." 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection ... shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to 8 Appeal2014-000132 Application 11/663,294 the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the exammer .... (2) Request for rehearing. Request that the proceeding be reheard .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 9