Ex Parte Ross et alDownload PDFPatent Trial and Appeal BoardMay 13, 201511958272 (P.T.A.B. May. 13, 2015) Copy Citation 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. 11/958,272 12/17/2007 Steven Ross 14528.00116 1835 16378 7590 05/14/2015 BGL/Broadcom P.O. Box 10395 Chicago, IL 60610 EXAMINER CLAWSON, STEPHEN J ART UNIT PAPER NUMBER 2461 MAIL DATE DELIVERY MODE 05/14/2015 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 STEVEN ROSS, VIJAY KUMAR, and JEAN ZHOU ____________________ Appeal 2013-002206 Application 11/958,272 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2013-002206 Application 11/958,272 2 A. INVENTION According to Appellants, the claimed invention relates to detecting the end of a stream (Spec. ¶ 7). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A circuit for presenting data, said circuit comprising: an interface for receiving multiplexed packets from a media source, wherein said multiplexed packets carry a plurality of elementary streams multiplexed into a single multiplexed data stream; and a controller for detecting the end points of said plurality of elementary streams in the multiplexed data stream received by the interface and appending markers to each elementary stream within the multiplexed data stream, said markers indicating the end points of each of said plurality of elementary streams, thereby resulting in a modified multiplexed data stream. C. REJECTIONS The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Cantoni US 5,050,166 Sept. 17, 1991 Kohno US 2003/0126238 A1 July 3, 2003 Richards US 6,614,793 B1 Sept. 2, 2003 Nakanishi US 2004/0027890 A1 Feb. 12, 2004 Claims 1–3, 12–14, 20, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as being obvious over Richards and Cantoni. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as being obvious over Richards, Cantoni, and Kohno. Claims 5–11, 16–19, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Richards, Cantoni, and Nakanishi. Appeal 2013-002206 Application 11/958,272 3 II. ISSUES The principal issues before us are whether the Examiner erred in finding the combination of Richards and Cantoni, teaches or would have suggested “a controller for detecting the end points” of a “plurality of elementary streams in the multiplexed data stream received by the interface” and “appending markers to each elementary stream . . . , said markers indicating the end points . . . , thereby resulting in a modified multiplexed data stream” (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Richards 1. Richards discloses a data reception unit for receiving a plurality of data streams over a data channel (Abst.). 2. Richards discloses that it is known to split messages into parts at the transmission channel to allow a plurality of messages to be sent over a single transmission channel, wherein the parts are recombined at the receiving device to reconstitute the messages (col. 1, ll. 23–42). 3. Upon determining an end of a message has been reached, error check information is transmitted (col. 3, ll. 13–15). Cantoni 4. Cantoni discloses transfer of messages in a multiplexed system (Title), wherein Figure 1 is reproduced below: Appeal 2013-002206 Application 11/958,272 4 Figure 1 discloses a variable length message 20 comprising address fields 22 and 24 for the destination address (DA) and source address (SA), length field (L) 26, information field (IU) 28, and error checking field (CRC) 30, wherein the message 20 is segmented into a number of slots 32 (col. 3, ll. 28–41) with the first slot being identified by a BOM (Beginning of Message) code in the TYPE field 36 while the last slot of the message having the TYPE field 36 coded as EOM (End of Message) (col. 4, l. 67 to col. 5, l. 13). IV. ANALYSIS Appellants contend “the disclosure of Richards is limited to segmentation of a message from a transmission device and reassembly of the message from a receiving device” but “Richards is silent as to any modification to a data stream carrying multiple elementary streams or message segments, e.g., a multiplexed data stream” (App. Br. 7). Although Appellants concede Richards “may determine the end of a particular message,” Appellants contend Richards “fails to disclose or teach a controller for detecting end points and appending markers in a multiplexed data stream, as claimed” (App. Br. 8). Similarly, although Appellants Appeal 2013-002206 Application 11/958,272 5 concede “Cantoni discloses segmentation and marking of message segments prior to transmission through a switch and across a transmission line,” Appellants contend Cantoni’s “message is not a multiplexed data stream, nor does segmenting a single message prior to transmission include modifying a multiplexed data stream carrying a plurality of elementary streams” (App. Br. 10). However, the Examiner finds “Richards discloses sending data which contains a plurality of messages” and, thus, discloses a “data stream” that “contains a plurality of elementary streams” which are “sent over a single channel from a transmitter to a receiver (i.e. multiplexing)” and “requires that these messages be split into parts (i.e. message segments)” (Ans. 4). The Examiner then points out “the word ‘multiplex’ has a broad meaning [in] the field of communications and only requires, i.e., two different pieces of information sharing a transmission medium” (Ans. 5). The Examiner also finds “Cantoni does disclose multiplexed data stream (i.e. the act of sending multiple messages (i.e. data streams (i.e. 0’s and 1’s which represent data)[)] which contain elementary streams (i.e. more than one message))” (id.). At the outset, we also note claim 1 is directed to a “circuit,” which merely comprises an “interface” intended “for receiving” data packets (data), and a “controller” intended “for detecting” the end points of data streams (data) and for “appending” markers to each data stream (claim 1). Our reviewing court has determined that an intended purpose will not narrow the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). That is, since claim 1 is directed to a “circuit,” a question arises as to whether the intended Appeal 2013-002206 Application 11/958,272 6 functional limitations “for detecting,” and “for appending” further limit the structure of the claimed apparatus. Our reviewing court guides the patentability of an apparatus/system claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir. 2014) (Rader, J., concurring): [A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009). We find this reasoning applicable here, as Appellants urge the claimed circuit (structure) is patentably distinguished over the prior art structure (Richards and Cantoni) based solely on the functional limitations (of “detecting” and “appending”) without indicating any differences between the structures (App. Br. 7–10). Nevertheless, we find no error with the Examiner’s broad but reasonable claim interpretation, underlying factual findings, and ultimate legal conclusion of obviousness because we give the claims their broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although Appellants contend “Richards is silent as to any modification to a data stream carrying multiple elementary streams or Appeal 2013-002206 Application 11/958,272 7 message segments” (App. Br. 7) and that Cantoni does not disclose “modifying a multiplexed data stream carrying a plurality of elementary streams” (App. Br. 10), such contentions are not commensurate in scope with the recited language of claim 1. In particular, claim 1 does not require any “modification” or “modifying” of data streams as Appellants contend (id.). That is, as discussed above, claim 1 merely requires forming a “controller” intended “for detecting” and “appending” markers to each stream “thereby resulting in a modified” stream. That is, a “modified” stream is provided in a “thereby” clause describing the results of the intended “appending” function to be performed by a “controller” in the claimed “circuit.” Given the language used, the “thereby” clause is reasonably interpreted to identify the intended result if and when a controller within the claimed circuit performs its intended function of “appending” markers to each elementary stream. Thus, the “thereby” clause at issue is akin to a “whereby” clause that merely states an intended result. Our reviewing court has concluded that “[a] ‘whereby’ clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim.” Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993) (citation omitted). Accordingly, we will not read a “modifying” step into the circuit of claim 1. We note claim 1 does not define the recited “multiplexed” data streams other than as a “plurality of elementary streams” “multiplexed” into a “single multiplexed data stream” (claim 1). Further, the Specification does not provide any clear definition for this term. Thus, we find no error with the Examiner’s broad but reasonable interpretation that “multiplex” merely Appeal 2013-002206 Application 11/958,272 8 requires “two different pieces of information sharing a transmission medium” (Ans. 5). Richards discloses receiving a plurality of data streams over a data channel (FF 1), wherein messages are split into parts to allow a plurality of messages to be sent over a single transmission channel, and the parts are recombined at the receiving device to reconstitute the messages (FF 2). That is, Richards discloses receiving a plurality of data packets wherein the packets carry a plurality of data streams over a single transmission channel (id.). In view of our broad but reasonable interpretation of “multiplexed” discussed above, we find no error with the Examiner’s finding that Richards would have taught or suggested “an interface for receiving multiplexed packets,” wherein “said multiplexed packets carry a plurality of elementary streams multiplexed into a single multiplexed data stream” (claim 1). In Richards, an end of message is determined (FF 3) and Appellants concede Richards “may determine the end of a particular message” (App. Br. 8). Furthermore, Cantoni discloses transfer of messages in a multiplexed system wherein each message is segmented into a number of slots and the last slot comprises a TYPE field 36 coded as EOM (End of Message) (FF 4). That is, Cantoni discloses appending an EOM field to each message of a plurality of messages in a multiplexed system, indicating the end point of the message (id.). We observe Cantoni’s disclosure appears to be no different from the description in Appellants’ “Brief Summary of the Invention” which merely indicates that the claimed invention is directed to “accurately detecting the end of a stream” (Spec. 7, emphasis added). Thus, we find no error with the Examiner’s finding that Cantoni, in combination with Appeal 2013-002206 Application 11/958,272 9 Richards, teaches or suggests the step of “appending markers to each elementary stream within the multiplexed data stream” wherein the markers “indicating the end points of each of said plurality of elementary streams” (claim 1). Furthermore, since the Examiner rejects the claims as obvious over the combined teachings of Richards and Cantoni under 35 U.S.C. § 103(a), the test for obviousness is what the combination of Richards and Cantoni would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We find it would have been well within the level of skill of one skilled in the art to combine Richards’ teachings of receiving multiplexed packets carrying a plurality of elementary streams into a single multiplexed data stream (FF 1–3) with Cantoni’s teachings of appending markers to each elementary stream indicating the end points to each of the elementary streams (FF 4), and, thus, resulting in a modified multiplexed data stream. The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 421. On this record, we find no error in the Examiner’s rejection of claim 1, of claim 12 not argued separately (App. Br. 11), and of claims 2, 3, 12–14, 20, 21, and 23, depending respectively therefrom (id.), over Richards and Cantoni. Appeal 2013-002206 Application 11/958,272 10 As for claims 4 and 15, Appellants merely contend “Kohno fails to remedy the deficiencies of the Richards-Cantoni combination (id.). Similarly, as for claims 5–11, 16–19, and 22, Appellants merely contend “Nakanishi fails to remedy the deficiencies of the Richards-Cantoni combination” (App. Br. 12). However, as discussed above, we find no deficiencies with respect to the Examiner’s reliance on the combination of Richards and Cantoni. Accordingly, we also affirm the rejection of claims 4 and 15 over Richards and Cantoni, in further view of Kohno; and of claims 5–11, 16–19, and 22 over Richards and Cantoni, in further view of Nakanishi. V. CONCLUSION AND DECISION We affirm the Examiner’s rejection of claims 1–23 under 35 U.S.C. § 103(a). 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 rwk Copy with citationCopy as parenthetical citation