Chang Tang et al.Download PDFPatent Trials and Appeals BoardDec 2, 20202020003726 (P.T.A.B. Dec. 2, 2020) Copy Citation 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. 11/830,493 07/30/2007 Chang Bin Tang 3E601-009001 2914 69713 7590 12/02/2020 OCCHIUTI & ROHLICEK LLP 50 Congress Street Suite 1000 Boston, MA 02109 EXAMINER GEORGALAS, ANNE MARIE ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 12/02/2020 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): INFO@ORPATENT.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHANG BIN TANG and FEN ZHOU Appeal 2020-003726 Application 11/830,493 Technology Center 3600 ____________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and TAWEN CHANG, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected the claims under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as TRANSOFT (SHANGHAI) INC. Appeal Br. 3. Appeal 2020-003726 Application 11/830,493 2 STATEMENT OF THE CASE The Examiner rejected the claims in the Final Office Action as follows: 1. Claims 1–7, 9, 10, and 12–14 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Gordon et al. (US 6,253,375 B1, issued Jun. 26, 2001) (“Gordon”) and Thomas et al. (US 2011/0126246 A1, published May 26, 2011). Final Act. 7. 2. Claim 11 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Gordon, Thomas, and Morrison et al. (US 2008/0065507 A1, published Mar. 13, 2008) (“Morrison”). Final Act. 30. There are three independent claims on appeal, claims 1, 5, and 14. We select claim 1 as representative and reproduce it below (annotated with bracketed numbers for reference to the claim limitations): 1. A web-based generalized application virtualization method for leasing digital contents selected by a subscriber on a network through a client server delivery system, the digital contents including data related to a primary application, a plurality of secondary applications, and delivered content data associated with the primary application, the method comprising: [1] performing a pre-logging procedure including performing a plurality of pre-logging steps, at least some pre- logging steps of the plurality of pre-logging steps causing communication over the network, the network being accessible from a client device, including obtaining a plurality of parameters, reading a setup file, initializing a data exchange service, monitoring communication activities, and carrying out subscriber registration; [2] performing an access protocol for the subscriber to log into an access server via an access protocol between a client SOD (Software on-Demand) controller and the access server; [3] detecting selection of the digital contents via the client device using a keyword input by the subscriber, Appeal 2020-003726 Application 11/830,493 3 according to a content management protocol between the client SOD controller and a content server; [4] choosing, via the client device, an application virtualization technique of a plurality of application virtualization techniques stored on the client device by the client SOD controller according to bandwidth needed by the subscriber and resources consumed in a data center on the network; [5] executing, via the client SOD controller, executable code of the chosen application virtualization technique at the client device, and thereby initiating a transfer of the primary application to the client device and, upon completion of the transfer of the primary application to the client device, running the primary application on the client device using the chosen application virtualization technique, wherein the primary application is executed via the chosen application virtualization technique without modification of an operating system of the client device by installation of the primary application; and [6] real-time metering start and end time of running the primary application and calculating billing according to a billing protocol between the client SOD controller and a billing server, wherein the client SOD controller executes software on- demand. DISCUSSION The Specification discloses, in the section titled “The Prior Art,” that “the application virtualization technique . . . provides a unified leasing method to application software, game, and other media.” Spec. 1:22–23. Using the application virtualization technique, the Specification teaches that there is “no need to modify application code; no worry about incompatibility between player and media; and no chance of content piracy. Spec. 1:23–25. The “secret,” the Specification explains, is that the virtualization technique: [U]ses a pre-processing sequencing method to package application software or game one-by-one. For media such as movie or music, package the specific player and the media Appeal 2020-003726 Application 11/830,493 4 together. (These sequenced software or medium packages are called content hereafter.) Then place the said contents at the server for users to stream, on-demand, to their virtual client. At the virtual client, the contents need not be installed, are piracy- free, can be used anywhere/anytime, and does not disturb Windows registry and operating system files. Spec. 1:25–31. The virtualization technique, according to the Specification, “has already been provided by several vendors,” including the Microsoft product, “SoftGrid.” Spec. 1:31–33. The Specification discloses U.S. Patent 7,017,188 as describing SoftGrid. Spec. 2:9. A copy of the “Configuration Guide” for “SoftGrid for Windows Desktops Client v2.0.5 (Copyright 2002) was provided by Appellant during prosecution (December 13, 2010) (“SoftGrid Guide”). Claim 1 is directed to a “web-based generalized application virtualization method for leasing digital contents selected by a subscriber on a network through a client server delivery system.” (Emphasis added.) Steps [4] and [5] of the claim involve using the “virtualization technique” on a client device. We understand the client device to be a user’s personal computer, cell phone, media player, etc. Thus, there is no question, based on the claim preamble and body of the claim, that claim 1 employs the virtualization techniques described in the prior art section of the Specification. Rejection The Examiner rejected the claims based on Gordon and Thomas.2 Final Act. 7. Gordon describes “a system for delivering interactive 2 Gordon has been part of the prior art rejection since it was cited in a non- final Office Action mailed on April 9, 2010. Appeal 2020-003726 Application 11/830,493 5 information services, such as video, audio, library, interactive games, and the like to one or more subscribers.” Gordon 1:10–13. The system comprises “an information server, a video session manager, a bi-directional cable transport network, and subscriber equipment (e.g., a set top terminal, an input device, and a display device).” Gordon 2:9–12. Gordon explains that the information server provides a video session manager which sends programs that generally comply with MPEG-2 protocols to the subscriber. Gordon 2:35–48. The “video session manager opens a ‘session’ for a given subscriber and sends requested program streams through the cable transport network to the subscriber’s set top terminal via the information channel.” Gordon 2:45–48. The set top terminal is connected to a display device, such as a television, video monitor, or stereo system. Gordon 5:24–25; 5:43–44. Gordon therefore “streams” video from a provider’s server to a subscriber’s set top terminal which displays the video on a television or video monitor. We next turn to whether Gordon describes the steps of claim 1 as found by the Examiner. Step [1] of claim 1 performs a “pre-logging procedure” that causes communication over the network and (a) obtains a plurality of parameters, (b) reads a setup file, (c) initializes a data exchange service, (d) monitors communication activities, and (e) carries out subscriber registration. The Examiner found that Gordon describes (a), (c), (d), and (e) at column 6, lines 10–28 and (b) the reading of the setup file at column 6, lines 35–50. Final Act. 9. The reading of the setup file in Gordon, however, takes place after a movie has been selected for viewing (Gordon 6:29–32). In contrast, the [1] pre-logging procedure in claim 1 takes place before the subscriber logs on to the access server in step [2]) and before it selects the Appeal 2020-003726 Application 11/830,493 6 digit content in step [3]. Thus, this step is not accomplished in Gordon as it is in the claim. Step [4] of the claim further recites: [C]hoosing, via the client device, an application virtualization technique of a plurality of application virtualization techniques stored on the client device by the client SOD controller according to bandwidth needed by the subscriber and resources consumed in a data center on the network. The Examiner cites the disclosure in Gordon of allocating different “channels” to subscribers depending on how much bandwidth is needed for the particular content which is being viewed. Gordon explains: The system is capable of dynamically allocating information channel resources to the subscribers. Allocation decisions are predicated on subscriber program requests and subscriber resource usage. For example, programs may be characterized according to program content during, e.g., a storage or pre- transmission operation. Such a characterization provides an indication of a necessary, desirable or optimal information channel resource level (i.e., bandwidth). A subscriber requesting a program requiring a high information channel resource level (e.g., a basketball game) will be allocated an additional subrate channel or a super rate channel (if available). A subscriber requesting a program requiring a low information channel resource level (e.g., a black and white movie) will be allocated fewer (or only one) subrate channels. Gordon 13:37–52. Gordon teaches that the “channel” is the element which carries the stream to the subscriber and carries the bandwidth allocated to a subscriber: The requested information is multiplexed onto an information channel, e.g., ten streams of 2.6 Mbit/sec data are carried by a single information channel to a plurality of set top terminals (a neighborhood). A neighborhood may be serviced by more than one channel to further increase the transmission flexibility. For instance, the terminals are dynamically allocated to the Appeal 2020-003726 Application 11/830,493 7 channels such that 10 terminals can simultaneously share one channel or three terminals can receive 5.2 Mbit/sec data, and so on. Consequently, any combination of data rates is permissible and the data rate for a particular subscriber depends upon the requested information. Some programs, such as basketball games, may require a large transmission bandwidth to avoid compression anomalies. Gordon 3:26–40. The Examiner found choosing a channel carrying a stream of suitable bandwidth as described in Gordon corresponds to step [4] of claim of choosing an application virtualization technique according to the bandwidth needed by the subscriber. Final Act. 10. The Examiner made this determination based on interpreting “application virtualization technique” to mean “a method of streaming applications,” but not having any other “specific characteristics/traits.” Ans. 7 (emphasis omitted). The Examiner recognized that the Specification describes virtualization techniques, including Microsoft’s SoftGrid virtualization technique, as well as another example, Citrix Tarpon. Ans. 5–6. However, the Examiner stated that there was an inconsistency in the descriptions in the publications of record of virtualization techniques. Specifically, the Examiner found that the Citrix virtualization technique executes entirely on a server (Ans. 6), while Microsoft describes its product as executing locally and not on a server (Ans. 6–7). Because of this “contradiction,” the Examiner interpreted application virtualization as “a method of streaming” without any other characteristics (Ans. 9) and found that Gordon’s method of streaming and allocating bandwidth to different channels meets all the requirements of step [4] of claim 1. Appeal 2020-003726 Application 11/830,493 8 We do not agree with the Examiner’s interpretation of the term “application virtualization technique.” The basic principle of the virtualization technique, as explained in the Specification, is packaging the player and media together. Spec. 1:25–27. The Specification specifically describes using SoftGrid as the virtualization technique (Spec. 7:5–8), as well as Citrix Tarpon (Spec. 8:14–18). The SoftGrid Guide explains, in more detail, that SoftGrid virtualization enables “applications, when launched, [to] act as if they have been locally installed, even though they are actually executing in a virtual runtime environment (and are thus isolated from other applications that may be locally installed or running).” SoftGrid 1-1. The description in the SoftGrid Guide of the files used for virtualization and the setup steps (SoftGrid Guide 1-3 to 1–6) appear to be similar to, if not the same, as recited in steps [1], [2], and [5] of claim 1, which would be consistent with the description in the Specification of using SoftGrid as a virtualization technique (Spec. 7:5–8:18). The files described in the SoftGrid Guide correspond to what the Specification describes as the “player.” One of ordinary skill in the art, in light of the Specification and the known meaning of virtualization, would interpret “application virtualization technique” to mean packaging and sending the player and video stream to the subscriber to execute the application in a virtual runtime environment. This is explained in detail in the SoftGrid Guide. The Examiner’s interpretation of “application virtualization technique” as being merely “a method of streaming” is Appeal 2020-003726 Application 11/830,493 9 therefore unduly broad and inconsistent with the Specification and the term’s ordinary usage in the art.3 It seems clear from the disclosures cited by the Examiner that an application virtualization technique can be run on both a server and desktop computer.4 Thus, there is no inconsistency or contradiction in the documents cited by the Examiner about the ordinary meaning of this term. Gordon’s description of the channels which convey the video as streams to the subscriber does not meet the definition of an “application virtualization technique” as that term would be reasonably interpreted by one of ordinary skill in the art. The Examiner cited Gordon’s teaching about changing data rates by allocating channels to a subscriber (e.g., an additional subrate channel or a super rate channel) to meet this limitation, but this is not the same as virtualization because it does not involve packaging player files with the media to be viewed. Gordon’s disclosure about choosing different bandwidth channels does not provide a reason to choose, by the client device, “an application virtualization technique of a plurality of application virtualization techniques 3 During patent examination proceedings, claim terms are given “the broadest reasonable meaning . . . in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 4 Although not necessary, we further cite “Analysis: Virtual App Wars Move From OS To Desktop – InformationWeek,” dated Sept. 8, 2006, which discloses virtualization applications. The publication indicates that Citrix’s Tarpon and VMware are virtualization applications that can run on the server side. SoftGrid, on the other hand, is described as a virtualization application which is “locally installed. Soft Grid Guide 1-2. Appeal 2020-003726 Application 11/830,493 10 stored on the client device . . . according to bandwidth needed by the subscriber and resources consumed in a data center on the network” as required by the rejected claims. The Examiner did not provide evidence of the obviousness of “choosing . . . application virtualization technique of a plurality of application virtualization techniques” as recited in step [4] of the claim. Neither Thomas nor Morrison compensates for this deficiency. Consequently, we are compelled to reverse the rejection of claim 1. Independent claims 5 and 14 have the same requirement of step [4] of claim 1 and are therefore reversed for the same reasons. Dependent claims 2–4, 6, 7, 9, 10, 11, 12, and 13 incorporate all the limitations of claims 1 and 5 are reversed for the same reasons. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 9, 10, 12–14 103 Gordon, Thomas 1–7, 9, 10, 12–14 11 103 Gordon, Thomas, Morrison 11 Overall Outcome 1–7, 9–14 REVERSED Copy with citationCopy as parenthetical citation