Ex Parte Xu et al

Patent Trial and Appeal BoardAug 19, 2013

11711460 (P.T.A.B. Aug. 19, 2013)

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. 11/711,460 02/27/2007 Yiling Xu 678-3076 5339 66547 7590 08/20/2013 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER MENGESHA, MULUGETA A ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 08/20/2013 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 YILING XU, JONG-HOON ANN, JAE-YEON SONG, and KOOK-HEUI LEE ____________________ Appeal 2012-002509 Application 11/711,460 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002509 Application 11/711,460 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 19-38. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims relate to “a mobile Digital Video Broadcasting-Handheld (DVB-H) Convergence of Broadcasting and Mobile Service (CBMS). system, and more particularly to a method and an apparatus for providing handover-related information to a terminal trying to perform handover, by using Program Specific Information/Service Information (PSI/SI).” (Spec. 1). Claim 19, reproduced below, is representative of the claimed subject matter: 19. A terminal for receiving a broadcast service in a mobile Digital Video Broadcasting-Handheld (DVB-H) Convergence of Broadcasting and Mobile Service (CBMS) system, the terminal comprising: a broadcast receiver for receiving a broadcast service or signal comprising Program Specific Information/Service Information (PSI/SI) for the broadcast service from a broadcast network; an interactive adaptor for receiving an interactive service or signal from an interactive network; and a mobility manager for managing movement to another network, wherein if the same broadcast service is provided from the broadcast network through a plurality of Internet Protocol (IP) platforms existing in a single transport stream, mapping information between the plurality of IP platforms is received through the PSI/SI to check different service identifiers (IDs) allocated to the same broadcast service provided through the respective IP platforms. Appeal 2012-002509 Application 11/711,460 3 (Disputed limitations emphasized). REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Borsos US 7,486,640 B2 Feb. 3, 2009 Vare US Pat. App. Pub. No. 2006/0262793 A1 Nov. 23, 2006 REJECTION Claims 19-38 stand rejected under 35 U.S.C §103(a) as being unpatentable over the combined teachings and suggestions of Borsos and Vare.1 ANALYSIS In the principal Brief, Appellants repeatedly contest the Examiner’s findings regarding the recited “wherein” clause of representative claim 19: [W]hile these cited sections of Vare do teach that step 503 may involve discovering services offered by nearby networks based on information passed from a current network (see paragraph [0035]), there is nothing in Vare that teaches or suggests if the same broadcast service is provided from the broadcast network through a plurality of Internet Protocol (IP) platforms existing in a single transport stream, mapping information between the plurality of IP platforms is received through the PSI/SI to check different service identifiers (IDs) allocated to the same broadcast service provided through the respective IP platforms, as recited in independent Claims 19 and 29. (App. Br. 12, emphasis omitted). 1 Based on Appellants' arguments, we decide the appeal of the obviousness rejection of claims 19-38 on the basis of representative claim 19. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). Appeal 2012-002509 Application 11/711,460 4 Claim Construction At the outset we observe Appellants’ representative claim 19 is directed to an apparatus: “A terminal for receiving a broadcast service . . . .” We conclude the disputed “wherein” clause of claim 19 does not positively recite limitations that further limit the structure of the claimed apparatus. (Claim 19). 2 Instead, Appellants’ claimed “wherein” clause is directed to a mapping function that is conditionally performed “if the same broadcast service is provided from the broadcast network through a plurality of Internet Protocol (IP) platforms existing in a single transport stream.” 3 (Id.). Because claim 19 does not positively recite limitations that further limit the structure of the claimed apparatus, and because claim 19 does not positively recite limitations that would preclude the mapping function from being performed if the aforementioned condition is not satisfied, a question arises as to how much patentable weight, if any, should be given to the disputed “wherein” clause limitations. In addition, we conclude the recited “check [of] different service identifiers (IDs)” does not result in a change to any machine or computer 2 See MPEP § 2111.04 regarding “wherein” clauses: Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. (MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012). 3 i.e., conditionally or optionally performed regarding independent method claim 29; see n.1. supra. Appeal 2012-002509 Application 11/711,460 5 function, within the meaning of claim 19. Thus, to the extent Appellants’ arguments urging patentability are based on the informational content or data type of the claimed “service identifiers (Ids),” we find such arguments are predicated on non-functional descriptive material. (Id.). We note that functional descriptive material consists of data structures or computer programs which impart functionality when employed as a computer component. In contrast, non-functional descriptive material (“service identifiers (IDs)”) refers to data content that does not change or affect the way the computing processes are performed. The informational content of such nonfunctional descriptive material is not entitled to patentable weight in the patentability analysis.4 Assuming arguendo that patentable weight may be given to the disputed “wherein” clause, we agree with the Examiner’s findings regarding Vare as teaching or at least suggesting the disputed “wherein” clause limitations (in combination with the teachings and suggestions of Borsos): Vare discloses if the same broadcast service is provided from the broadcast network through a plurality of Interact Protocol (IP) platforms existing in a transport stream (see included but not limited to; see fig.4 , Network 1,2 and 3 service delivery I P Platform; page.3, ¶0031-¶0033 ; based on the broadcast service information or INT(IP Notification) tables from each of the candidate networks checks if same service is offered), mapping information between the plurality of IP platforms is received through the PSI/SI to check different service identifiers (IDs) allocated to the same broadcast service provided through the respective IP platforms(see included but not limited to; fig.4 4 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). See also: MPEP §2111.05(III). Appeal 2012-002509 Application 11/711,460 6 and fig.5, page.3,¶0032-¶0033,¶0026; based on the broadcast service information or INT(IP Notification) tables (which includes platform_id, service_id, media_id) from each of the candidate networks checks if same service is offered and seamless transition and/or handover to any of the networks could be possible). (Ans. 10, emphasis omitted). The Supreme Court guides that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Given the claim construction issues discussed above, on this record, we are not persuaded that the Examiner’s reading of the disputed “wherein” clause on the combination of references is overly broad, unreasonable, or inconsistent with the Specification.5 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 5 Cf. Spec. e.g., “Description of Related Art” p. 5, ll. 12-17: “When the transport stream changes, the terminal must find out a transport stream providing the same service in the new network or IP platform to which the terminal has moved. When the transmission frequency changes, it is necessary to know frequency information of the neighbor network or IP platform. The information in order to perform the above process can be obtained from the PSI/SI provided by the DVB broadcast network.” Appeal 2012-002509 Application 11/711,460 7 CONCLUSION OF LAW The Examiner did not err in rejecting representative claim19 (and claims 20-38 grouped therewith) under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Borsos and Vare. DECISION For the above reasons, the Examiner’s § 103 rejection of claims 19-38 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). ORDER AFFIRMED Vsh