Ex Parte Rouhana

Patent Trials and Appeals BoardApr 25, 2019

12655008 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/655,008 12/21/2009 William J. Rouhana JR. 25881 7590 04/29/2019 EPSTEIN DRANGEL LLP 60 EAST 42ND STREET SUITE 2520 NEW YORK, NY 10165 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. 2181-123a 5239 EXAMINER ANDRAMUNO, FRANKLIN S ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 04/29/2019 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): mail@ipcounselors.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM J. ROUHANA JR. Appeal2018-006562 Application 12/655,008 1 Technology Center 2400 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's non- final rejection of claims 1-6, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellant, the real party in interest is R TEM Innovations Corp. Br. 2. Appeal2018-006562 Application 12/655,008 INVENTION Appellant's application relates to the delivery of interactive broadband service. Spec. 6. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method for delivery of interactive broadband service to one or more communications devices using an existing fiber or local exchange carrier telephone network, the method comprising the steps of: providing interactive broadband service, delivering the interactive broadband service to the existing fiber or local exchange telephone network, connecting the existing fiber or local exchange telephone network to a first connector circuit capable of being enabled to select one or more communications paths, connecting the first connector circuit to a second connector circuit by said one or more communications paths, the second connector circuit being capable of being enabled to select one or more communications paths, and connecting the second connector circuit to a transmitter/receiver for broadcast to the communications devices, wherein the step of connecting the first connector circuit and the second connector circuit comprises the step of enabling each of said first connector circuit and the second connector circuit to simultaneously select the same one or more communications paths to provide two- waybroadband service connection between said first connector circuit and said second connector circuit from the following group: fiber, cable, fixed wireless, cellular, PCS, WiMax, laser and local exchange carrier telephone network. REJECTIONS Claims 1---6 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Bennett (US 7,626,994 B2, issued Dec. 1, 2009) and Petite et al. (US 2004/0053639 Al, published March 18, 2004). Non-Final Act. 10, 12. 2 2 We have combined the Examiner's twoÂ§ I03(a) rejections, as both refer to the same prior art references. 2 Appeal2018-006562 Application 12/655,008 ANALYSIS Rejection of Claims 1-6 under 35 U.S.C. Â§ 103(a) We have reviewed the rejections of claims 1---6 in light of Appellant's arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Brief. Any other arguments Appellant could have made, but chose not to make, in the Brief are waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellant's arguments are not persuasive of error. We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer (Ans. 3-10) and in the Action from which this appeal was taken (Non-Final Act. 10-14). We provide the following explanation for emphasis. In rejecting claim 1, the Examiner found Bennet teaches or suggests all of the recited limitations, except wherein the step of connecting the first connector circuit and the second connector circuit comprises the step of enabling each of said first connector circuit and the second connector circuit to simultaneously select the same one or more communications paths to provide two-way broadband service connection between said first connector circuit and said second connector circuit from the following group: fiber, cable, fixed wireless, cellular, PCS, WiMax, laser and local exchange carrier telephone network. The Examiner relied on Petite as teaching that limitation. Non-Final Act. 11. Appellant contends the Examiner erred because "the Examiner equates a personal computer with a connector circuit" and because the second connection path does not include an existing fiber or LEC. Br. 10. Appellant further contends the Examiner erred because "[t]he Examiner does 3 Appeal2018-006562 Application 12/655,008 not identify any component of Bennett which corresponds to applicant's second connector circuit." Br. 10. Appellant also argues "[t]he Examiner does not identify any element in Petite which corresponds to applicant's second connector circuit." Br. 13. We are not persuaded the Examiner erred. The Examiner found Bennet's AP 133 Multipath Manager and STB 135 Multipath Manager teach or suggest a first and second connector circuit, respectively. Ans. 3---6. The Examiner further found Bennet teaches at least two connectors/switches (AP 133) and (STB 135) which connect in different paths PC 157 to wired data ( 121 ). Id. at 6. The Examiner found Petite teaches the communication between the two devices is done by PSTN plain standard telephone network. Id. at 8. Appellant has not persuasively rebutted the Examiner's findings. Appellant further contends the Examiner's proffered reason to combine Bennett and Petite is lacking and that "no person however skilled in any art could combine Bennett and Petite to obtain the claimed invention." Br. 13. 3 We are not persuaded that the Examiner erred. A rejection based on obviousness needs to be supported by "some articulated reasoning with some rational underpinning" to combine known elements in the manner required by the claim. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, the Examiner has set forth articulated reasoning with rational underpinnings for the combination. Non-Final Act. 11-12. 3 Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 4 Appeal2018-006562 Application 12/655,008 Appellant contends paragraphs 5 through 8 of Petite teach away from the Examiner's proposed combination because those paragraphs teach that a communication channel established in a cellular link is inherently noisy and unreliable, as well as expensive. Br. 14. Appellant's "teaching away" argument (Br. 14) is not persuasive because Appellant has not identified where Petite actually criticizes, discredits, or otherwise discourages Appellant's argued limitations. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed.") ( citing Fulton). The test for obviousness is not whether the claimed invention is expressly taught in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Here, Appellant did not persuasively rebut the Examiner's findings and explanations in the Answer as Appellant did not file a Reply Brief and has not persuaded us the Examiner's claim interpretations are overly broad, unreasonable, or inconsistent with the Specification. Nor has Appellant presented sufficient persuasive argument or objective evidence to rebut the Examiner's findings of fact. For these reasons, we are not persuaded the Examiner erred in finding that the combination of Bennet and Petite teaches or suggests the disputed 5 Appeal2018-006562 Application 12/655,008 limitations of claim 1. Appellant does not present separate arguments regarding independent claim 3 and dependent claims 2 and 4. Regarding independent claims 5 and 6, Appellant generally repeats the arguments made regarding claim 1. Br. 14--17. For the reasons discussed above with regard to claim 1, we are not persuaded of Examiner error in the rejection of claims 5 and 6. Appellant further argues "an Examiner must point to some reason, suggestion or motivation found in the reference which would lead a person of ordinary skill in the field of the invention would make the combination." Br. 18. Appellant's argument is not persuasive. MPEP section 2143 provides exemplary rationales that may support a conclusion of obviousness. The Examiner concluded it would have been obvious at the time of the invention to combine the cited references because the arrangement yields a predictable outcome, which is one of the permissible rationales under KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). See Ans. 9. Appellant also argues Bennet and Petite are not properly combinable to support an obvious rejection because "they are not in the same field of endeavor as the claimed invention and do not address the same problem which the claimed invention is designed to overcome." Br. 17. In particular, Appellant argues Bennett is not in the same field of endeavor as the claimed invention because it does not teach a system for simultaneous delivery of digital television and interactive broadband service in a manner that maximizes digital broadcast spectrum usage. Br. 20. Appellant argues Bennet also does not involve delivery of interactive broadband service to one or more communications devices using an existing fiber or local 6 Appeal2018-006562 Application 12/655,008 exchange carrier telephone network or selecting the best communication path to do so. Id. Appellant further argues neither Bennet nor Petite address the problem of efficiently delivering interactive broadband service to one or more communications devices. Id. "A reference qualifies as prior art for an obviousness determination underÂ§ 103 only when it is analogous to the claimed invention." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Two separate tests define the scope of analogous art: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." In re Clay, 966 F. 2d 656, 659 (Fed. Cir. 1992). In other words, "familiar items may have obvious uses beyond their primary purposes." KSR, 550 U.S. at 402. Here, Appellant so narrowly describes the field of the invention that Appellant essentially eliminates the "field of endeavor" test. See Br. 20. Moreover, Appellant has not presented any persuasive argument or objective evidence regarding whether Bennet would have logically commended itself to an inventor's attention in considering his problem. See Clay, 966 F. 2d at 659. 7 Appeal2018-006562 Application 12/655,008 For these reasons, we are not persuaded the Examiner erred in rejecting claims 1-6 underÂ§ 103(a). Accordingly, we sustain the Examiner'sÂ§ 103(a) rejection of independent claim 1, as well as the Examiner's Â§ 103(a) rejection of independent claims 3, 5, and 6. We also sustain the Examiner's rejections of dependent claims 2 and 4, not argued separately with particularity. DECISION We affirm the Examiner's decision rejecting claims 1---6. 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). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 8