Ex Parte Karaoguz et al

Patent Trial and Appeal BoardNov 30, 2012

10937322 (P.T.A.B. Nov. 30, 2012)

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. 10/937,322 09/10/2004 Jeyhan Karaoguz 14528.00136 1450 16378 7590 11/30/2012 Broadcom/BHGL P.O. Box 10395 Chicago, IL 60610 EXAMINER LUONG, ALAN H ART UNIT PAPER NUMBER 2425 MAIL DATE DELIVERY MODE 11/30/2012 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 JEYHAN KARAOGUZ and JAMES BENNETT ____________ Appeal 2011-005173 Application 10/937,322 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005173 Application 10/937,322 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to receiving and redistributing broadband signals at a Set Top Box (STB). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for processing and redistributing multiple signals, the method comprising the steps of: receiving an input data signal having a corresponding protocol, wherein at least a portion of the input data signal contains data received from a broadband access antenna; analyzing the input data signal, wherein said analyzing comprises processing and identifying the input data signal; converting at least a portion of the input data signal into a different protocol for redistribution; providing the input data signal to one of a plurality of adaptors in a set top box based on one or both of said analyzing and/or said converting; and providing the converted portion of the input signal having said different protocol to one of a wired networking mode and a wireless networking mode to be redistributed, wherein the steps are performed in the set top box. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Knutson US 2003/0163822 A1 Aug. 28, 2003 Appeal 2011-005173 Application 10/937,322 3 Atad US 2005/0055723 A1 Mar. 10, 2005 (filed Mar. 29, 2004) REJECTIONS Claims 1-5, 8-15, and 18-28 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Atad. Claims 6, 7, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atad and Knutson. ANALYSIS The Anticipation Rejection Claims 1-4, 8-14, 18-24, and 26-28 Regarding independent claim 1, Appellants contend that Atad does not disclose “providing the input data signal to one of a plurality of adaptors in a set top box based on one or both of said analyzing and/or said converting” (App. Br. 8). Specifically, Appellants argue that [Atad’s] Figure 22 merely discloses a combination gateway and STB. These components are still separate and distinct from one another, but merely combined in a single unit. Accordingly, the parts of Atad that the Office Action relies on as “adaptors” in a “set top box,” are still, nonetheless, in the gateway, but not the STB. (App. Br. 11). Appellants further contend Atad does not disclose that “all of the steps recited in claim 1 are performed in the set top box” (App. Br. 12). Appellants also contend Atad does not disclose “converting at least a portion of the input data signal into a different protocol for redistribution” as recited in claim 1 (App. Br. 12-14). We disagree. Appeal 2011-005173 Application 10/937,322 4 The Examiner finds that Atad discloses performing all the steps recited in claim 1, including “providing the input data signal to one of a plurality of adaptors in a set top box,” in the system shown in Figure 22 (Ans. 4-5; 12-13). Atad explains: Reference is now made to FIG. 22, which is a simplified system diagram of the combined STB and residential gateway unit 94 of FIGS. 16B and D. . . . The device is a combination of the devices of FIGS. 20 and 21, except that the interfaces between the STB and the residential gateway are no longer required. Instead a CPU 160 is provided for overall control. (Atad, ¶ 0144]). Accordingly, we agree with Appellants that Figure 22 discloses “a single unit” (see App. Br. 11). We are not persuaded, however, that the components the Examiner relies on as the claimed “adaptors”— “802.11 WLAN transceiver [136], VoIP GW module [134] or 10/100 DSL switch” (Ans. 5)—are “in the gateway, but not the STB” (App. Br. 11). These components are inside the single unit of Figure 22, and whether the unit is referred to as a set top box is simply a matter of labeling. Furthermore, Figure 22 does in fact label the unit a “WiNetworks RG with integrated STB (STB Max),” i.e., a type of set top box. Absent a more specific definition of a “set top box” in claim 1, we find Atad’s Figure 22 meets this limitation. We are also not persuaded by Appellants’ argument that Atad does not disclose “converting at least a portion of the input data signal into a different protocol for redistribution,” as recited in claim 1 (App. Br. 12-14). We agree with the Examiner (Ans. 4-5; 13-14) and find Atad’s receiving input 802.16 data and transmitting output 802.11 data meets the “converting” limitation (see Atad, ¶ 0140]; Fig. 22). Specifically, Atad Appeal 2011-005173 Application 10/937,322 5 discloses an “802.16 transceiver unit 130 provides an interface to the WAN for the incoming, outgoing and relay WAN traffic” and an “802.11 interface 136 allows a connection for any 802.11 compatible device so as to set up a local hotspot” (Atad, ¶ 0140]). In order to provide a hotspot, data is converted between the 802.16 protocol and the 802.11 protocol. For example, Atad discloses: The conversion of the satellite antenna as described herein enables a transformation of the current installed location into a 802.11 WiFi hotspot. The 802.16 WAN cloud thus serves as a backdrop to a series of WiFi hotspots. Transition between 802.11 and 802.16 operation is part of the 802.16 standard and is preferably carried out in accordance with the standard. (Atad, ¶ 0137]). We are therefore not persuaded the Examiner erred in rejecting claim 1, and claims 2-4 and 8-10 not separately argued. Although Appellants separately argue independent claims 11 and 21, the arguments presented are similar to the claim 1 arguments (see App. Br. 16-20 and 22-26). We therefore sustain the rejections of claims 11 and 21, and claims 12-14, 18-20, 22-24, and 28 depending therefrom, for the reasons discussed above. Claims 5, 15, and 25 Appellants contend “the Office Action does not explain or otherwise demonstrate that there is anything in either Figure 14A or [0124] of Atad that describes, teaches, or suggests providing a converted portion [of an input signal] that includes supplemental data to a television receiver to supplement data received from a satellite antenna” (App. Br. 15). Appellants also cite Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Appeal 2011-005173 Application 10/937,322 6 Cir. 2008) and contend “the Office Action seems to apply portions of different embodiments of Atad in a piecemeal fashion with respect to the anticipation rejections” (App. Br. 15). We disagree. The Examiner identifies paragraph 0124] in Atad as disclosing the limitations of claim 5 (Ans. 6, 15). Here, Atad discloses that “the TV receives the satellite signals for display and also has a return channel and a full-duplex unicast broadband connection via the WAN. In addition the TV is able to receive any video on demand or interactive TV signals that may be sent via the WAN.” (Atad, ¶ 0124]) (emphasis added). Appellants do not specifically explain (see App. Br. 14-15) why receiving interactive TV signals via the WAN fails to meet the claim 5 step of “providing supplemental data to a television receiver to supplement data received from the satellite antenna,” and thus we are not persuaded of error in the Examiner’s findings regarding this limitation. Further, we find the facts of the present appeal are distinguishable from Net MoneyIN, where the Federal Circuit found anticipation lacking in a reference because the elements were not “arranged or combined in the same way as in the claim.” Net MoneyIN at 1370-71. In Net MoneyIN the reference disclosed two distinct protocols, and steps from each of the two protocols were needed to meet all the limitations of the disputed claim. Id. at 1371. Here, while the Examiner cites different parts of the Atad reference for independent claim 1 and dependent claim 5, the disclosure in one part relates to that of the other part (see Ans. 4-6). That is, the description of Figure 14A (Atad, ¶ 0124])—relied upon for claim 5—describes not only the functionality of Figure 14A, but also that of Figure 22—relied upon for claim 1. Specifically, Atad’s paragraph 124 describes receiving “any video Appeal 2011-005173 Application 10/937,322 7 on demand or interactive TV signals that may be sent via the WAN.” The system in Figure 22 comprises an “802.16 transceiver unit 130 [that] provides an interface to the WAN for the incoming, outgoing and relay WAN traffic” (Atad, ¶¶ 0140], 0144]), and therefore receives “any video on demand or interactive TV signals that may be sent via the WAN,” as described in paragraph 0124]. Moreover, Atad discloses that The present embodiments comprise a satellite (DVB-S) or terrestrial (DVB-T) based broadcasting system in which a digital TV feed is provided over a satellite or terrestrial connection to a user’s satellite or terrestrial receiver and wherein a 2-way preferably relatively high data rate channel is provided over a WAN which uses each installed satellite or terrestrial receiver as a micro-base station for the WAN network. . . . The WAN provides at least a return channel to enable interactive television and like services but may also provide an outward channel of high capacity allowing unicast services. Thus services such as Internet, Internet telephony and video/gaming on demand can be made available. (Atad, ¶ 0081]) (emphases added). This further shows that Atad’s plural embodiments, including the system in Figure 22, receive interactive TV signals over a WAN in addition to satellite signals. We are therefore not persuaded the Examiner erred in rejecting claim 5. Although Appellants separately argue claim 15, the arguments presented are similar to the claim 5 arguments (see App. Br. 20-21). We therefore sustain the rejection of claim 15 for the reasons discussed above. Regarding claim 25, the Examiner’s Answer updated the rejection to rely on the same findings as for claim 5 (see Ans. 9, 16-17). In the Reply Brief, Appellants separately argue claim 25, but rely on the arguments Appeal 2011-005173 Application 10/937,322 8 presented for claim 5 (Reply Br. 9). We therefore sustain the rejection of claim 25 for the reasons discussed above. The Obviousness Rejection Claims 6 and 16 Appellants do not provide any new arguments for claims 6 and 16 other than those presented for claims 1 and 11, from which claims 6 and 16 depend. We therefore sustain the rejection of claims 6 and 16 for the reasons discussed above. Claims 7 and 17 The Examiner finds Knutson discloses an outdoor unit 24 with a coarse tuner 36 that performs the claimed downconverting, receiving, analyzing, converting, and providing steps (Ans. 11; Knutson, Figs. 2 & 3). Appellants contend Knutson does not disclose that the “‘downconverting, receiving, analyzing, converting and providing steps are all performed in’ the ‘coarse tuner 36’” (App. Br. 27). We agree with Appellants that the Examiner has not specifically identified where Knutson discloses all of the claimed steps are performed in the coarse tuner 36. For example, the Examiner has not identified where Knutson discloses the coarse tuner 36 performs the claimed “converting” step (see Ans. 11, 17), which comprises “converting at least a portion of the input data signal into a different protocol for redistribution,” as recited in claim 1. We are therefore constrained by the Appeal 2011-005173 Application 10/937,322 9 record to find that the Examiner erred in rejecting claim 7, and claim 17 which recites commensurate limitations.1 CONCLUSIONS OF LAW The Examiner erred in rejecting claims 7 and 17 under 35 U.S.C. § 103(a). The Examiner did not err in rejecting claims 1-5, 8-15, and 18-28 under 35 U.S.C. § 102(e), and claims 6 and 16 under 35 U.S.C § 103(a). DECISION For the above reasons, we reverse the rejection of claims 7 and 17, and we affirm the rejections of claims 1-6, 8-16, and 18-28. 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). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART 1 We do not comment on whether claims 7 and 17 fail to further limit claims 1 and 11, respectively, under 35 U.S.C. § 112, fourth paragraph. We leave it to the Examiner to address, upon further prosecution, whether the claim 7 limitations “wherein the downconverting, receiving, analyzing, converting and providing steps are all performed in a downconversion module proximate to the broadband access antenna” are outside the scope of claim 1, which recites “wherein the steps are performed in the set top box,” and thus should be rejected under § 112, fourth paragraph. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (A claim that “fails to ‘specify a further limitation of the subject matter’ of the claim to which it refers because it is completely outside the scope of [the other] claim” is invalid for failure to comply with § 112, fourth paragraph.). Appeal 2011-005173 Application 10/937,322 10 llw