Ex Parte Skelly

Patent Trial and Appeal BoardSep 18, 2012

11510361 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAUL ANDREW SKELLY ____________________ Appeal 2010-005927 Application 11/510,361 Technology Center 2400 ____________________ Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and JUSTIN BUSCH, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005927 Application 11/510,361 2 STATEMENT OF CASE1 The Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection of claims 1-23, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. The Appellant invented a measurement of video quality at customer premises. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [some paragraphing added]: 1. A method, comprising: providing a video signal to a set top box, the video signal being provided by a head end and including a plurality of channels; providing an instruction to the set top box to record a specified portion of the video signal to create a video sample, the specified portion of the video signal being specified by the instruction at least in part by a particular channel of the video signal during a specified time period; receiving the video sample from the set top box; obtaining a reference video corresponding to the video sample, the reference video being obtained from the head end; and comparing the video sample to the reference video. REFERENCES The Examiner relies on the following prior art: Janko US 5,818,520 Oct. 6, 1998 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed September 8, 2009) and Reply Brief (“Reply Br.,” filed February 5, 2010), and the Examiner’s Answer (“Ans.,” mailed December 9, 2009), and Final Rejection (“Final Rej.,” mailed April 13, 2009). Appeal 2010-005927 Application 11/510,361 3 Chappell US 6,160,991 Dec. 12, 2000 Yang US 2006/0023067 A1 Feb. 2, 2006 REJECTIONS Claims 1-3, 5-10, 12-19, and 21-23 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Yang and Chappell. Claims 4, 11, and 20 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Yang, Chappell, and Janko. ISSUE The issue of whether the Examiner erred in rejecting claims 1-23 turns on whether the combination of Yang and Chappell teach or suggest “the specified portion of the video signal being specified by the instruction at least in part by a particular channel of the video signal during a specified time period.” ANALYSIS Claims 1-3, 5-10, 12-19, and 21-23 rejected under 35 U.S.C. §103(a) as being unpatentable over Yang and Chappell The Appellant first contends that the combination of Yang and Chappell fails to teach or suggest “the specified portion of the video signal being specified by the instruction at least in part by a particular channel of the video signal during a specified time period,” as required by claim 1. App. Br. 12-14 and Reply Br. 2-4. We agree with the Appellant. The Examiner relies on Yang to describe “providing an instruction to the set top box to record a specified portion of the video signal…” Ans. 4 (citing Yang ¶ 0016). The Examiner found that Yang fails to describe “the specified Appeal 2010-005927 Application 11/510,361 4 portion of the video signal being specified by the instruction at least in part by a particular channel of the video signal during a specified time period,” but finds that Chappell describes this limitation. Ans. 4-5. However, we find no evidence in Chappell that describes the specified portion of the video signal, which is recorded, is specified by the instruction at least in part by a particular channel during a specified time period. Chappell describes that a telemetry signal provides a list of frequencies to a remote unit and the remote unit stores the measured signal levels at each frequency to be used for future sweeps. Chappell 2:24-31, 3:1-6, and Fig. 5. The Examiner asserts that “Chappell’s telemetry signals cause the test unit to record video signal data at specified frequencies.” Ans. 12-13. As such, Chappell describes that the instruction (signal) causes the device to record video signal data at specified frequencies, not the portion of the video signal. Ans. 12; Chappell 3:1-6. The Examiner has not provided any further rationale to illustrate how the use of telemetry signals and measured signal levels at different frequencies describes “the specified portion of the video signal being specified by the instruction at least in part by a particular channel of the video signal during a specified time period.” Independent claims 8, 15, and 23 recite this same limitation and dependent claims 2-3, 5-7, 9-10, 12-14, 16-19, and 21-22 were not separately argued. As such, we do not sustain the Examiner’s rejection of 1-3, 5-10, 12-19, and 21-23. Since this issue is dispositive as to the rejections against these claims, we need not reach the remaining arguments raised by the Appellant. Appeal 2010-005927 Application 11/510,361 5 Claims 4, 11, and 20 rejected under 35 U.S.C. §103(a) as being unpatentable over Yang, Chappell, and Janko Claims 4, 11, and 20 depend on independent claims 1, 8, and 15. The Examiner has not shown Janko cures the deficiencies of Yang and Chappel, taken alone or in proper combination. Therefore we do not sustain the Examiner’s rejection of claims 4, 11, and 20 for the same reasons discussed supra. CONCLUSIONS The Examiner erred in rejecting claims 1-3, 5-10, 12-19, and 21-23 under 35 U.S.C. §103(a) as being unpatentable over Yang and Chappell. The Examiner erred in rejecting claims 4, 11, and 20 under 35 U.S.C. §103(a) as being unpatentable over Yang, Chappell, and Janko. DECISION To summarize, our decision is as follows:  The rejection of claims 1-3, 5-10, 12-19, and 21-23 under 35 U.S.C. §103(a) as being unpatentable over Yang and Chappell is not sustained.  The rejection of claims 4, 11, and 20 under 35 U.S.C. §103(a) as being unpatentable over Yang, Chappell, and Janko is not sustained. REVERSED tj