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 2231371450
`www.uspto.gov
`
`15/946,307
`
`04/05/2018
`
`TaihO NAKAZAWA
`
`2018-0515A
`
`4612
`
`52349
`
`759°
`
`”16/2019
`
`WENDEROTH, LIND & PONACK L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`
`Washington DC 20036
`
`HUERTA' ALEXANDER Q
`
`ART UNIT
`2425
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/16/2019
`
`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):
`eoa @ wenderoth. com
`kmiller @ wenderothcom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/946,307
`Examiner
`Alexander Q Huerta
`
`Applicant(s)
`NAKAZAWA et al.
`Art Unit
`AIA (FITF) Status
`2425
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 05 April 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—15 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`Claim(s) fl is/are allowed.
`
`Claim(s) 15—8 and 12—14is/are rejected.
`
`C] Claim(s) _
`
`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 05 April 2015 is/are: a). accepted or b)D objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)|:] Some**
`
`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
`
`2.|:] Certified copies of the priority documents have been received in Application No.
`
`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191004
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
`
`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
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`a claim element (also commonly referred to as a claim limitation) is limited by the
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`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection 1, claim limitations that meet the
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`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means” or “step” or a term used as a substitute
`
`for “means” that is a generic placeholder (also called a nonce term or a non-
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 3
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`structural term having no specific structural meaning) for performing the claimed
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`function;
`
`(B)
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`the term “means” or “step” or the generic placeholder is modified by functional
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`language, typically, but not always linked by the transition word “for” (e.g.,
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`“means for”) or another linking word or phrase, such as “configured to” or “so
`
`that”; and
`
`(C)
`
`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
`
`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
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`acts to entirely perform the recited function.
`
`Absence of the word “means” (or “step”) in a claim creates a rebuttable
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`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites function without reciting
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`sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are
`
`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`except as otherwise indicated in an Office action. Conversely, claim limitations in this
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`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 4
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`application that do not use the word “means” (or “step”) are not being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
`
`indicated in an Office action.
`
`This application includes one or more claim limitations that do not use the word
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`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
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`that is coupled with functional language without reciting sufficient structure to perform
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`the recited function and the generic placeholder is not preceded by a structural modifier.
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`Such claim limitation is: output unit in claim 13.
`
`If applicant does not intend to have this/these limitation(s) interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the
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`claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
`
`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
`
`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
`
`sufficient structure to perform the claimed function so as to avoid it/them being
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 5
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`Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre-AlA the applicant regards
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`as the invention.
`
`Claim limitation “output unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph. However, the written description fails to disclose the corresponding
`
`structure, material, or acts for performing the entire claimed function and to clearly link
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`the structure, material, or acts to the function. While the specification appears to
`
`describe general computer components related to the claimed unit (see publication
`
`[0191], [0260], [0396], [1361], Fig. 7), it fails to disclose the specific structure that
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`performs the recited functions (i.e., outputting decoded data). Alternatively, the
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`specification fails to disclose the specific algorithms related to the general computer
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`components to perform the functions of the claimed units.
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`Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-
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`AlA 35 U.S.C. 112, second paragraph.
`
`Applicant may:
`
`(a)
`
`Amend the claim so that the claim limitation will no longer be interpreted as a
`
`limitation under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph;
`
`(b)
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`Amend the written description of the specification such that it expressly recites
`
`what structure, material, or acts perform the entire claimed function, without
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`introducing any new matter (35 U.S.C. 132(a)); or
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`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 6
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`(c)
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`Amend the written description of the specification such that it clearly links the
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`structure, material, or acts disclosed therein to the function recited in the claim,
`
`without introducing any new matter (35 U.S.C. 132(a)).
`
`lf applicant is of the opinion that the written description of the specification
`
`already implicitly or inherently discloses the corresponding structure, material, or acts
`
`and clearly links them to the function so that one of ordinary skill in the art would
`
`recognize what structure, material, or acts perform the claimed function, applicant
`
`should clarify the record by either:
`
`(a)
`
`Amending the written description of the specification such that it expressly
`
`recites the corresponding structure, material, or acts for performing the claimed
`
`function and clearly links or associates the structure, material, or acts to the
`
`claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
`
`(b)
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`Stating on the record what the corresponding structure, material, or acts, which
`
`are implicitly or inherently set forth in the written description of the specification,
`
`perform the claimed function. For more information, see 37 CFR 1.75(d) and
`
`MPEP 4545 608.01 (0) and 2181.
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 7
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`Claims 1, 5-8, 14 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Toma et al. (US Pub. 2005/0169303) in view of Tanemura et al. (US Pub.
`
`2010/0281498), herein referenced as Toma and Tanemura, respectively.
`
`Regarding claim 1, Toma discloses “A receiving device ([0012], Le. mobile
`
`terminal) comprising: a first processor that (i) receives a broadcast signal ([0012], Le,
`
`broadcasting data) obtained by modulating multiplexed data including at least first
`
`multiplexed data out of the first multiplexed data ([0012], Le, TS multiplex scheme) and
`
`second multiplexed data ([0012], Le, multiplexed using MP4)
`
`the first multiplexed
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`data being in a first multiplexing format, the second multiplexed data being in a second
`
`multiplexing format different from the first multiplexing format ([0014], Le, TS converted
`
`to MP4); and
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`a converter (i.e., conversion apparatus) that (i) converts a multiplexing format of
`
`the first multiplexed data into the second multiplexing format, and (ii) outputs converted
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`data obtained as a result of the conversion, the first multiplexed data being included in
`
`the multiplexed data that has been output.” ([0002], [0014], [0016], [0069], Fig. 8, Le,
`
`converting multiplex scheme from T8 to MP4).
`
`Toma fails to explicitly disclose demodulating the broadcast signal received and
`
`outputs the multiplexed data obtained as a result of the demodulation.
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 8
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`Tanemura teaches the technique of demodulating the broadcast signal received
`
`and outputs the multiplexed data obtained as a result of the demodulation ([0147]-
`
`[0148], Fig. 2, Le, the demodulating section outputs multiplexed data). Thus, it would
`
`have been obvious to one of ordinary skill in the art before the effective filing date of the
`
`claimed invention to apply the technique of demodulating the broadcast signal received
`
`and outputs the multiplexed data obtained as a result of the demodulation as taught by
`
`Tanemura, to improve the multiplex scheme conversion system of Toma for the
`
`predictable result of extracting information from a broadcast signal.
`
`Regarding claim 5, Toma discloses “a retransmitter that retransmits, to a
`
`different receiving device, the converted data that has been output by the converter.”
`
`([0130], Fig. 29, Le, the mobile phone converts the received TS packets into MP4 and
`
`records it in an SD card. Alternatively, the mobile phone attaches the MP4 file to
`
`electronic mail and sends to another mobile phone via wireless base station).
`
`Regarding claim 6, Toma discloses “a storage that stores, in a storage, the
`
`converted data that has been output by the converter.” ([0070], [0130], Figs. 8, 29, Le,
`
`the mobile phone converts the received TS packets into MP4 and records it in an SD
`
`card or memory 102).
`
`Regarding claim 7, Toma discloses “a retransmitter that retransmits, to a
`
`different receiving device, the converted data stored in the storage device.” ([0070],
`
`[0130], Figs. 8, 29, Le, the mobile phone converts the received TS packets into MP4
`
`and records it in an SD card. Alternatively, the mobile phone attaches the MP4 file to
`
`electronic mail and sends to another mobile phone via wireless base station).
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 9
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`Regarding claim 8, Toma discloses “a second processor that performs decoding
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`processing of decoding the converted data that has been output by the converter, and
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`outputting the decoded data obtained as a result of the decoding processing.” ([0112]-
`
`[0113], Fig. 25, Le, MP4 file is provided to a decode and display unit).
`
`Regarding claim 14, Toma discloses “A receiving method comprising: (i)
`
`receiving a broadcast signal ([0012], Le, broadcasting data) obtained by modulating
`
`multiplexed data including at least first multiplexed data out of the first multiplexed data
`
`([0012], Le, TS multiplex scheme) and second multiplexed data ([0012], Le,
`
`multiplexed using MP4)
`
`the first multiplexed data being in a first multiplexing format,
`
`the second multiplexed data being in a second multiplexing format different from the first
`
`multiplexing format ([0014], Le, TS converted to MP4); and
`
`(i) converting (i.e., conversion apparatus) a multiplexing format of the first
`
`multiplexed data into the second multiplexing format, and (ii) outputting converted data
`
`obtained as a result of the converting, the first multiplexed data being included in the
`
`multiplexed data that has been output.” ([0002], [0014], [0016], [0069], Fig. 8, Le,
`
`converting multiplex scheme from T8 to MP4).
`
`Toma fails to explicitly disclose demodulating the broadcast signal received and
`
`outputs the multiplexed data obtained as a result of the demodulation.
`
`Tanemura teaches the technique of demodulating the broadcast signal received
`
`and outputs the multiplexed data obtained as a result of the demodulation ([0147]-
`
`[0148], Fig. 2, Le, the demodulating section outputs multiplexed data). Thus, it would
`
`have been obvious to one of ordinary skill in the art before the effective filing date of the
`
`claimed invention to apply the technique of demodulating the broadcast signal received
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 10
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`and outputs the multiplexed data obtained as a result of the demodulation as taught by
`
`Tanemura, to improve the multiplex scheme conversion system of Toma for the
`
`predictable result of extracting information from a broadcast signal.
`
`Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Toma in
`
`view of Tanemura and in further view of Lim (US Pub. 2016/0241888, which claims
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`priority to 62/115,953 and 62/117,212), herein referenced as Lim.
`
`Regarding claim 12, the combination fails to disclose “wherein the first
`
`multiplexing format is an MMT/TLV (MPEG MediaTransport/Type Length Value) format,
`
`and the second multiplexing format is a TS (Transport Stream) format.”
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`Lim teaches the technique of providing wherein the first multiplexing format is an
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`MMT/TLV (MPEG MediaTransport/Type Length Value) format, and the second
`
`multiplexing format is a TS (Transport Stream) format ([0004]-[0006], Fig. 5, Le,
`
`converting a MMT stream into TS). Thus, it would have been obvious to one of ordinary
`
`skill in the art before the effective filing date of the claimed invention to apply the
`
`technique of providing wherein the first multiplexing format is an MMT/TLV (MPEG
`
`MediaTransport/Type Length Value) format, and the second multiplexing format is a TS
`
`(Transport Stream) format as taught by Lim, to improve the multiplex scheme
`
`conversion system of Toma for the predictable result of redistributing MMT to cable TV
`
`services using MPEG-2 TS ([0004]).
`
`

`

`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 11
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`Allowable Subject Matter
`
`Claims 2-4, 9-11 are objected to as being dependent upon a rejected base
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`claim, but would be allowable if rewritten in independent form including all of the
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`limitations of the base claim and any intervening claims.
`
`Claim 13 would be allowable if rewritten or amended to overcome the
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`rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth
`
`in this Office action.
`
`Claim 15 is allowed.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Alexander Q Huerta whose telephone number is
`
`(571)270-3582. The examiner can normally be reached on M-F 9:00 AM-5:00 PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Brian Pendleton can be reached on (571)272-7527. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`

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`Application/Control Number: 15/946,307
`Art Unit: 2425
`
`Page 12
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/ALEXANDER Q HUERTA/
`
`Primary Examiner, Art Unit 2425
`October 10, 2019
`
`