Ex Parte Sibley et al

Patent Trial and Appeal BoardMar 17, 2017

14179853 (P.T.A.B. Mar. 17, 2017)

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. 14/179,853 02/13/2014 Erin Sibley DTV200027B 1018 141451 7590 AT&T Legal Dept. - [HDP] Attention: Patent Docketing, Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER MENGESHA, MULUGETA A ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 03/17/2017 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 ERIN SIBLEY and WILLIAM GOLIFF Appeal 2016-007659 Application 14/179,8531 Technology Center 2400 Before LARRY J. HUME, JAMES W. DEJMEK, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—28. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE CLAIMED INVENTION Appellants’ claimed invention relates “generally to broadcasting digital information, and more specifically, to distributing and selling electronic content to a target market.” Spec. 12. 1 According to Appellants, the real party in interest is The DIRECTV Group, Inc. App. Br. 2. Appeal 2016-007659 Application 14/179,853 Claim 1 is illustrative of the subject matter of the appeal and is reproduced below. 1. A method comprising: communicating national feeds to an over-the-air broadcast center from a network operations center through a satellite; receiving the national feeds at the over-the-air broadcast center from the satellite; broadcasting the national feeds through a cell tower wireless transmitter; and receiving the national feeds at a user device. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1—4, 10—14, and 20—23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hugenberg et al. (US 2003/0140353 Al; published July 24, 2003) (hereinafter “Hugenberg”) and Taylor et al. (US 2007/0214484 Al; published Sept. 13, 2007) (hereinafter “Taylor”). (2) The Examiner rejected claims 5, 15, and 24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hugenberg, Taylor, and Hendricks et al. (US 6,408,437 Bl; issued June 18, 2002) (hereinafter “Hendricks”). (3) The Examiner rejected claims 6, 16, and 25 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hugenberg, Taylor, and Sun et al. (US 2011/0167444 Al; published July 7, 2011) (hereinafter “Sun”). (4) The Examiner rejected claims 7, 17, and 26 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hugenberg, Taylor, and Tash (US 7,546,622 B2; issued June 9, 2009) (hereinafter “Tash”). 2 Appeal 2016-007659 Application 14/179,853 (5) The Examiner rejected claims 8, 18, and 27 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hugenberg, Taylor, and Sullivan et al. (US 8,139,607 B2; issued Mar. 20, 2012) (hereinafter “Sullivan”). (6) The Examiner rejected claims 9, 19, and 29 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hugenberg, Taylor, and Park (US 2012/0066717 Al; published Mar. 15, 2012). ISSUE The dispositive issue for this appeal is whether application no. 09/564,082 (“the ’082 application”)2 provides written description support for the claims on appeal, so as to entitle the claims on appeal to an effective filing date of the ’082 application’s earlier filing date, which would remove Taylor as prior art. ANALYSIS Appellants assert the claims on appeal are entitled to claim benefit (under 35 U.S.C. § 120) of the May 3, 2000 filing date of the ’082 application. See, e.g., App. Br. 6—10. Specifically, Appellants argue the ’082 application’s disclosure supports “broadcasting the national feeds through a cell tower wireless transmitter,” as recited in independent claim 1, and similarly recited in independent claims 10 and 20. See App. Br. 6—10; Reply Br. 2—5. According to Appellants, the ’082 application’s specification discloses (i) a network operations center 12 that uplinks national feeds (e.g., 2 The present application “is a continuation of United States Patent Application No. 13/087,293 filed on April 14, 2011 which is a continuation of United States Patent Application No. 09/564,082 filed on May 3, 2000.” Spec. 11. 3 Appeal 2016-007659 Application 14/179,853 DIRECTV or cable type services) to a satellite 14, (ii) an over-the-air broadcast center 16 that downlinks the national feeds from the satellite 14, and (iii) a wireless transmitter 60 coupled to the over-the-air broadcast center 16 (via control system 42) for broadcasting the national feeds to users (e.g., a mobile or PC). See App. Br. 7—8 (citing ’082 Spec. 4,1. 7 — 5,1. 15); see also ’082 Fig. 1. The ’082 application’s specification further discloses “[wjireless transmitter 60 may comprise a cell tower such as that used in cellular phones, a TV tower that broadcasts digital signals or a stratospheric platform positioned above a predetermined metropolitan area for broadcasting over-the-air signals.” App. Br. 8 (citing ’082 Spec. 5,11. 10- 13). Appellants thus contend (i) claims 1,10, and 20 are supported by the ’082 application’s specification and are entitled to benefit of the May 3, 2000 filing date, and (ii) Taylor does not qualify as prior art for these claims. See App. Br. 6; Reply Br. 5. The Examiner finds the ’082 application’s disclosure fails to support broadcasting national feeds through a cell tower wireless transmitter. Ans. 3^4; Final Act. 5. The Examiner agrees with Appellants that the ’082 application’s specification discloses (i) “the wireless transmitter 60 may comprise [] a cell tower such as that used in cellular phone, a TV tower that broadcast digital signals ... above a predetermined metropolitan area for broadcast over the air signals” and (ii) “national feeds may be national ‘cable’ type services channels or satellite services.” Ans. 3^4 (citing ’082 Spec. 5,11. 10—13; 4,11. 12—13). The Examiner, however, finds the disclosure “distinguished] what functions the cell tower and TV tower does i.e. cell tower used to distribute wireless telephonic signals to the cellular 4 Appeal 2016-007659 Application 14/179,853 phone and the TV tower that broadcasting over the air digital signals to the users (i.e. the national feed broadcasting through a TV tower not the cell tower).” Ans. 4. The Examiner finds the appealed claims are not entitled to the ’082 application’s priority date. Id. We find Appellants’ arguments persuasive. We agree with Appellants that one of ordinary skill in the art would have understood the ’082 application discloses broadcasting national feeds using cell tower wireless transmitters. See ’082 Spec. 4,1. 7 —5,1. 15; ’082 Fig. 1. The ’082 specification provides examples of wireless transmitters by identifying cell towers and TV towers (e.g., “[wjireless transmitter 60 may comprise a cell tower such as that used in cellular phones, [or] a TV tower that broadcasts digital signals” (’082 Spec. 5,11. 10-13), without limiting the towers to transmitting a particular type of traffic, as the Examiner finds (Ans. 4 (finding cell towers only distribute wireless telephonic signals, and TV towers are what broadcast national feeds)). Accordingly, we find claims 1, 10,3 and 20 are entitled to benefit of at least the May 3, 2000 filing date of the ’082 application.4 See, e.g., Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed Cir. 2004) (“[T]he test to determine if an application is to receive the benefit of an earlier filed application is whether a person of ordinary skill in the art would recognize that the 3 The Examiner’s findings regarding claim 10 (which recites “re-encoded national feeds” (emphasis added)) do not raise substantive arguments separate from those for claims 1 and 20. See Ans. 6. 4 The 13/087,293 application, which is the parent of the present application and the child of the ’082 application, also contains the relevant disclosures. See 111, 18-21. 5 Appeal 2016-007659 Application 14/179,853 applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.”). The Examiner does not cite an earlier effective date for Taylor, which was filed on March 13, 2006. Thus, based on the evidence of record, we find Taylor is not prior art to the appealed claims. Furthermore, each of the rejections on appeal rely on Taylor’s teachings. Accordingly, we do not sustain the Examiner’s rejection of claims 1,10, and 20, nor the remaining rejections, which address claims that depend, at least indirectly, from one of these independent claims. DECISION We reverse the Examiner’s decision rejecting claims 1—28. REVERSED 6