Ex Parte Lemmers

Patent Trial and Appeal BoardNov 29, 2012

10565816 (P.T.A.B. Nov. 29, 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. 10/565,816 01/24/2006 Johannes Hendrikus Lemmers E5982-00097 7555 77561 7590 11/29/2012 Duane Morris LLP (Entropic) IP Department 30 South 17th Street Philadelphia, PA 19103-4196 EXAMINER HANCE, ROBERT J ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 11/29/2012 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 JOHANNES HENDRIKUS LEMMERS Appeal 2010-001697 Application 10/565,816 Technology Center 2400 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-9 and 12. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention is directed to a method and apparatus for handling the execution of independent features within a broadcast signal. See Spec. 1, ll. 1-10. Appeal 2010-001697 Application 10/565,816 2 Claim 1 is illustrative, with key disputed limitations emphasized: 1. A method, for a receiver (105, 107, 109, 111) adapted for receiving broadcasted signal (103) from a broadcaster (101), of handling the execution of a first independent feature, where at least a part of feature data (A, B, C, D), needed to execute said first independent feature, is comprised in said broadcasted signal as data relating to a first Xlet, wherein said data relating to said first Xlet further comprise feature data needed to execute at least a second independent feature (A, B, C, D), and wherein said feature data are broadcasted as data carousels, the method comprising the steps of: - receiving instructions identifying said first feature, wherein the instructions further comprise an identification that the identified first feature is to be executed, - loading, from at least one of the data carousels, the feature data related to said first feature into memory of said receiver, the feature data related to said first feature and said second feature being part of said first Xlet, and - executing said identified feature. The Examiner relies on the following as evidence of unpatentability: Ludvig US 7,216,170 May 08, 2007 Heredia US 2003/0217369 A1 Nov. 20, 2003 Kalhour US 2002/0010924 A1 Jan. 24, 2002 Peng and Vuorimaa, “Digital Television Application Manager,” 2001 IEEE International Conference on Multimedia and Expo, 685-688 (hereinafter “Peng”) Appeal 2010-001697 Application 10/565,816 3 THE REJECTIONS 1. The Examiner rejected claims 1-9 under 35 U.S.C. §103(a) as unpatentable over Peng and Ludvig. Ans. 3-7.1 2. The Examiner rejected claim 12 under 35 U.S.C. §103(a) as unpatentable over Peng, Ludvig and Heredia. Ans. 7-8. ISSUE Based upon our review of the record, the arguments proffered by Appellant and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under § 103, has the Examiner erred in rejecting claims 1, 8 and 9 by finding that Peng and Ludvig, collectively, show or suggest feature data “related to said first feature and said second feature being part of said first Xlet” as set forth in independent claims 1, 8 and 9? ANALYSIS Appellant argues that the cited portion of Ludvig discloses an application information table (AIT) that includes transport protocol descriptor information along with other application specific data; however, Appellant argues that Ludvig fails to disclose “the feature data related to said first feature and said second feature being part of said first Xlet” as set forth in representative claim 1. App. Br. 6. 1 Throughout this opinion, we refer to the Appeal Brief filed March 30, 2009; the Examiner’s Answer mailed June 25, 2009; and, the Reply Brief filed August 25, 2009. Appeal 2010-001697 Application 10/565,816 4 Specifically, Appellant argues that the disclosed AIT is not “part of the Xlet” despite the admission by Appellant that the AIT may be “needed to run the Xlet.” App. Br. 6-7. Appellant urges that despite being necessary to run the Xlet, the AIT is not “part of the Xlet.” Id. The Examiner finds that the generally accepted definition of “part” is “an essential or integral attribute or quality,” citing the Random House Dictionary. Ans. 8. The Examiner also finds that Peng discloses that the Xlet cannot be executed without an AIT. Id. Consequently, the Examiner finds that the AIT is indeed a “part of the Xlet.” Id. We find no express definition within Appellant’s Specification which mandates that the feature data (AIT) form a physical part of the Xlet. During prosecution, “the PTO gives claims their 'broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir. 1989)). We find the Examiner’s finding that a required AIT forms a “part” of the Xlet is within the broadest reasonable definition of that term. Consequently, we find the Examiner did not err in finding that claims 1, 8, and 9 are unpatentable under §103 over Peng and Ludvig. In the Reply Brief filed August 25, 2009, Appellant argues that the Examiner failed to point out particular elements within the AIT of Ludvig which the Examiner equates with the “first independent feature” and the “second independent feature,” as well as feature data related to those features. Reply Br. 5. “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d Appeal 2010-001697 Application 10/565,816 5 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). Here, the Examiner’s finding that the AIT of Ludvig contains data necessary to execute a plurality of applets in the Examiner’s Answer (p. 4) is identical to that in the Final Rejection (p. 4), from which the instant appeal was taken. Because the findings are identical, we find nothing that would have prompted the new argument in the Reply Brief. Appellant could have made the argument in the Appeal Brief. The term “Reply Brief” is exactly that, a brief in reply to new rejections or new arguments set forth in an Examiner’s Answer. Accordingly, this basis for asserting error is waived. See 37 C.F.R. § 41.37(c)(1)(vii). We therefore find that the Examiner did not err in the rejection of claims 1, 8, and 9, as well as claims 2-7 and 12, which were not argued separately. CONCLUSION The Examiner did not err in rejecting claims 1-9 and 12 under § 103. ORDER The Examiner’s decision rejecting claims 1-9 and 12 is affirmed. 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). AFFIRMED peb