Chang Tang et al.

Patent Trials and Appeals Board

Dec 2, 2020

2020003726 (P.T.A.B. Dec. 2, 2020)

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.
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Application 11/830,493

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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,
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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
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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.
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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
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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
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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.
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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
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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.
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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