Ex Parte Crayford

Patent Trial and Appeal Board

Nov 20, 2014

11830823 (P.T.A.B. Nov. 20, 2014)

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.
11/830,823 07/30/2007 Aaron Crayford 40428-0009 3434
20480 7590 11/21/2014
STEVEN L. NICHOLS
Van Cott, Bagley, Cornwall & McCarthy
36 South State Street
SUITE 1900
SALT LAKE CITY, UT 84111
EXAMINER
VU, NGOC K
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
11/21/2014 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 AARON CRAYFORD
____________________

Appeal 2012-004078
Application 11/830,823
1

Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
Rejection of claims 1–24 which stand twice rejected. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1
According to Appellant, the real party in interest is Clarendon Foundation,
Inc. App. Br. 2.
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STATEMENT OF THE CASE
2

The Invention
Appellant's invention relates to "a system and method for improved
distribution of content on a communication network." Abstract.
Exemplary Claims
Claims 1, 4, 9, 19, and 24, reproduced below, are representative of the
subject matter on appeal (emphases added to disputed limitations):
1. A method comprising:
receiving a request for video from a user on a network;
streaming a first portion of the video to the user from a
first node in the network;
separating a remaining portion of the video into one or
more subsection portions;
searching one or more other nodes in the network for the
subsection portions of the video; and
streaming one or more of the subsection portions of the
video to the user from one or more other nodes in the network.

4. The method of claim 3, wherein the one or more
overlay nodes comprise one or more other users in the network
that are adapted to communicate with the user.

2
Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
July 8, 2011); Reply Brief ("Reply Br.," filed Dec. 14, 2011); Examiner's
Answer ("Ans.," mailed Oct. 14, 2011); Non-Final Office Action ("Non-
Final Act.," mailed Apr. 12, 2011); and the original Specification ('Spec.,"
filed July 30, 2007).
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9. The method of claim 1, wherein separating the
remaining portion of the video into a plurality of subsection
portions comprises fragmenting data related to the video into
subsection portions smaller than the first portion of the video
streamed to the user.

19. The method of claim 1, further comprising
identifying an overload condition of resource contention
between the one or more other nodes in the network.

24. Logic encoded in one or more tangible media for
execution and when executed operable to:
receive a video request from a user on a network;
stream a first portion of the video to the user from a first
node in the network;
separate a remaining portion of the video into a plurality
of subsection portions;
search one or more other nodes in the network for the
subsection portions of the video; and
stream one or more of the subsection portions of the
video to the user from one or more other nodes in the network.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Conrath US 2001/0037461 A1 Nov. 1, 2001
Sim et al.
("Sim")
US 2002/0078174 A1 June 20, 2002
Miller US 7,849,303 B2 Dec. 7, 2010
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Rejections on Appeal
R1. Claim 24 stands rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 4.
R2. Claims 1–6, 8–13, and 17–24 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sim. Ans. 5.
R3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Sim and Conrath. Ans. 9.
R4. Claims 14–16 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Sim and Miller. Id.
GROUPING OF CLAIMS
We address Rejection R1 of claim 24, argued separately, infra.
Based on Appellant's arguments (App. Br. 11–20), we decide the
appeal of Rejection R2 of claims 1, 2, 3, 5, 6, 8, 10–13, 17, 18, and 20–24 on
the basis of representative claim 1; and each of claims 4, 9, and 19, argued
separately, stand or fall by themselves.
We address remaining claims 7 and 14–16 in rejections R3 and R4,
not argued separately, infra.
ISSUES AND ANALYSIS
We only considered those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(iv).
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We have reviewed the Examiner’s rejections in light of Appellant's
contentions the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments.
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments with respect to claims
1–24, and we incorporate herein and adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons and rebuttals set forth by the Examiner in the
Examiner's Answer in response to Appellant's Arguments. We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. We highlight and address specific findings and arguments regarding
claims 1, 4, 9, 19, and 24 for emphasis as follows.
1. § 101 Rejection R1 of Claim 24
Issue 1
Appellant argues (App. Br. 10–11) the Examiner's rejection of claim
24 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is
in error. These contentions present us with the following issue:
Did the Examiner err in concluding the recited "tangible media" as
recited in claim 24 reads on a transitory, propagating medium, thus
rendering claim 24 unpatentable by encompassing non-statutory subject
matter?
Analysis
Appellant contends "claim 24 expressly recites logic 'encoded in one
or more tangible media' . . . [and c]onsequently, claim 24 recites an article of
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manufacture and is statutory subject matter under 35 U.S.C. § 101." App.
Br. 10. Appellant further contends, "any broader definition for 'computer
readable medium'" in the Specification has "no[] impact on the broadest
reasonable interpretation of the actual claim term . . . 'tangible' media." Id.
We disagree with Appellant's contentions. Under our jurisprudence,
the scope of the recited "tangible media" encompasses transitory media such
as signals or carrier waves, where, as here, the Specification does not limit
the medium to non-transitory forms.
3
See Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential) (holding recited machine-readable storage
medium ineligible under § 101 since it encompasses transitory media).
Here, the recited "tangible media" is not claimed as non-transitory, and the
disclosure does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting disclaimer.
Therefore, the medium encompasses transitory forms and is ineligible under
§ 101 such that we sustain the rejection of claim 24.
2. Rejection R2 of Claims 1, 2, 3, 5, 6, 8, 10–13, 17, 18, and 20–24
Issue 2
Appellant argues (App. Br. 11–13; Reply Br. 5) the Examiner's
rejection of claims 1, 2, 3, 5, 6, 8, 10–13, 17, 18, and 20–24 under 35 U.S.C.

3
We note the word "tangible" only appears in originally-presented
claim 24. However, the Specification expressly discusses the various forms
of computer readable media envisioned, which include non-statutory forms.
See Spec. ¶ 113 ("Logic may be encoded in a computer readable medium . . .
[which] may take many forms, including but not limited to . . . transmission
media . . . [including] acoustic or light waves, such as those generated during
radio wave and infrared data communications.").
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§ 102(b) as being anticipated by Sim is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination
discloses a method that includes, inter alia, the steps of "streaming a first
portion of the video to the user from a first node in the network; . . . and;
streaming one or more of the subsection portions of the video to the user
from one or more other nodes in the network," as recited in claim 1?
Analysis
Appellant contends Sim does not disclose:
a first node receiving a request for a file streams a first portion
of the requested file to the requesting user and that other nodes
stream the remaining portions of the requested file to the
requesting user. Again, Sim teaches that a single node receives
a request for a large file, downloads missing portions of the file
from other nodes on the network, and streams the entire file to
the requesting user.
App. Br. 13 (citing Sim ¶¶ 39–42, and 115). Appellant further contends
other nodes in Sim that supply missing portions of a large file do not directly
stream the missing portions to the end user, but instead supply the missing
portions to a central node, i.e., a Virtual File Control System (VFCS). The
VFCS of Sim receives the missing portions of the large file and then streams
the entire file directly to the user. App. Br. 13.
In response, the Examiner finds Appellant's arguments are not
commensurate with the scope of claim 1 because it "does not explicitly
recite that a first node receives a request for file (or 'video'), and one or more
other nodes in the network directly stream missing portions of the file (or
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'one or more of the subsection portions of the video') to the user."
Ans. 11–12.
We agree with the Examiner and note claim terms are to be given
their broadest reasonable interpretation, as understood by those of ordinary
skill in the art and taking into account whatever enlightenment may be had
from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We note claim 1 only requires "streaming a first portion of the video
to the user from a first node," and "streaming one or more of the subsection
portions of the video to the user from one or more other nodes." We also
note Appellant does not provide any definition of "streaming" in their
Specification that would preclude the Examiner's broad but reasonable
interpretation that intermediate nodes between a server and the user, or other
"indirect" streaming techniques, including file reassembly as in Sim, may be
used. Further in this regard, we note Appellant's Specification discloses
"indirect" streaming of content from a server to a client/user, i.e., in an
embodiment, Appellant discloses:
As discussed herein, in an attempt to access a video that is
available on the video distribution system 100, the client 104
may first download the service module 108 from the streaming
server 142 of the infrastructure node 102, and once the service
module is installed, the client 104 is adapted to download one
or more portions of the video from one or more overlay nodes
106.
Spec. ¶ 25 (emphasis added). Although we decline to narrowly construe
claim 1 as being limited by this particular disclosed embodiment, we also
fail to find any other description or definition in Appellant's disclosure that
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would support an interpretation that requires direct streaming from a
server to a user, as argued by Appellant.
4

Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the Examiner's resulting
finding of anticipation. Therefore, we sustain the Examiner's anticipation
rejection under 35 U.S.C. § 102(b) of independent claim 1, and claims 2, 3,
5, 6, 8, 10–13, 17, 18, and 20–24 which fall therewith.
§ 103(a) Rejection of Claims 7 and 14–16
In view of the lack of any substantive or separate arguments directed
to the obviousness rejections of claims 7 and 14–16 under § 103 (see App.
Br. 19–20), we sustain the Examiner's unpatentability rejections of these
claims, as they fall with their respective independent claim 1. Arguments
not made are considered waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir 2008) ("When the appellant fails to contest a ground of rejection to
the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(iv))] imposes no
burden on the Board to consider the merits of that ground of rejection . . .

4
"In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998). "[A]bsent an express intent to impart a novel
meaning to the claim term, the words . . . take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art." Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
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[T]he Board may treat any argument with respect to that ground of rejection
as waived."). Further, when Appellant does not separately argue the
patentability of dependent claims, the claims stand or fall with the claims
from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Accordingly, we sustain
the rejection of claims 7 and 14–16.
3. Rejection R2 of Claim 4
Issue 3
Appellant argues (App. Br. 14–15) the Examiner's rejection of claim 4
under 35 U.S.C. § 102(b) as being anticipated by Sim is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination
discloses a method "wherein the one or more overlay nodes comprise one or
more other users in the network that are adapted to communicate with the
user," as recited in claim 4?
Analysis
Appellant contends Sim Figure 1 relied upon by the Examiner in
rejecting claim 4 (Non-Final Act. 5) does not disclose "that different users
stream portions of video files to each other," but instead teaches each of the
multiple users in Sim's system in Figure 1 requests and receives data content
through origin server 100. App. Br. 14 (emphasis added). Appellant does
not cite any other portion of Sim in support of this interpretation.
To aid in our analysis, we note claim 3, from which claim 4 depends,
recites "[t]he method of claim 1, wherein the network comprises a video
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distribution network, and wherein the one or more other nodes comprise one
or more overlay nodes in communication with the user via the video
distribution network." Claim 3. Thus, we find claim 4 requires
communication between one or more other user(s) at [a] different node(s)
("overlay node(s)") with the user over a network, i.e., a video distribution
network.
We agree with the Examiner's finding that Sim teaches "one or more
other users in the network that are adapted to communicate with the user."
Ans. 6; and see Sim Fig. 1, elements 104–107 (Users 1–4) are all capable of
communication with each other over LAN A/LAN B and/or through
Router 101).
In addition, the Examiner finds, and we agree, Appellant's argument is
not commensurate with the scope of claim 4 because the claim does not
require that "different users stream portions of video files to each other," as
argued. We also note Appellant has not rebutted the Examiner's specific
findings in the Reply Brief.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the Examiner's resulting
finding of anticipation. Therefore, we sustain the Examiner's anticipation
rejection under 35 U.S.C. § 102(b) of dependent claim 4.
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4. Rejection R2 of Claim 9
Issue 4
Appellant argues (App. Br. 15–16) the Examiner's rejection of claim 9
under 35 U.S.C. § 102(b) as being anticipated by Sim is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination
discloses a method "wherein separating the remaining portion of the video
into a plurality of subsection portions comprises fragmenting data related to
the video into subsection portions smaller than the first portion of the video
streamed to the user," as recited in claim 9?
Analysis
Appellant contends Sim's disclosure cited by the Examiner (Non-Final
Act. 9 (citing Sim ¶¶ 83 and 85)) teaches "dividing a large video into blocks
and piecing the video together from those blocks at a streaming server," but
does not disclose " the first portion of a video streamed to the user is larger
than all subsequent portions of the video streamed to the user." App. Br. 15.
The Examiner responds to Appellant's allegation (Ans. 13 (citing Sim
¶ 116)) by providing an example of how Sim does disclose the disputed
limitation. We agree with the Examiner's finding, and adopt it as our own
herein. We also note Appellant has not rebutted the Examiner's specific
factual finding in the Reply Brief.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the Examiner's resulting
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finding of anticipation. Therefore, we sustain the Examiner's anticipation
rejection under 35 U.S.C. § 102(b) of dependent claim 9.
5. Rejection R2 of Claim 19
Issue 5
Appellant argues (App. Br. 13–14) the Examiner's rejection of
claim 19 under 35 U.S.C. § 102(b) as being anticipated by Sim is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination
discloses a method that includes, inter alia, the step of "identifying an
overload condition of resource contention between the one or more other
nodes in the network," as recited in claim 19?
Analysis
Appellant contends Sim does not disclose "the overload condition of
resource contention between the one or more other nodes of the network
recited in claim 19 . . . [and i]t is unclear why the Examiner has chosen to
cite these portions of Sim in response to claim 19." App. Br. 17 (citing Non-
Final Act. 10, and Sim ¶¶ 39–46, 115, 191, 231–232; and Figs. 6, 12–15,
and 18A–21G). Appellant also argues Sim's teaching "that a node decides
where to download missing content so as to minimize latency and bandwidth
demands on other distribution server nodes based on performance
information" does not "expressly or inherently teach or suggest an overload
condition of resource contention or the identification thereof." App. Br. 17
(citing Non-Final Act. 7 and Sim Abstract, ¶¶ 42, 44, 45, 117, 118, and 166).
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In response, the Examiner finds, and we agree the term "overload
condition of resource contention" is to be given its broadest reasonable
interpretation as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the Specification.
We further agree with the Examiner that claim 19 does not "preclude the
interpretation of locating the nearest and least congested node(s) by DS
[Distribution Server] to download the missing portions of the file so as to
minimize latency and bandwidth demands on other distribution server nodes
based on performance information as disclosed by Sim." Ans. 13–14 (citing
Sim Abstract, ¶¶ 42, 44, 45, 117, 118, and 166). We note Appellant has not
rebutted the Examiner's specific factual finding in the Reply Brief.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the Examiner's resulting
finding of anticipation. Therefore, we sustain the Examiner's anticipation
rejection under 35 U.S.C. § 102(b) of dependent claim 19.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 5) not in response to a shift in the Examiner's position in the
Answer, we note "[a]ny bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived." Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl"ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
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CONCLUSIONS
(1) The Examiner did not err with respect to the non-statutory
subject matter rejection of claim 24 under 35 U.S.C. § 101 and we sustain
the rejection.
(2) The Examiner did not err with respect to the anticipation
rejection of claims 1–6, 8–13, and 17–24 under 35 U.S.C. § 102(b) over
Sim, and we sustain the rejection.
(3) The Examiner did not err with respect to the obviousness
rejections of claims 7 and 14–16 under 35 U.S.C. § 103(a) over the various
combinations of the prior art of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–24.
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).
AFFIRMED

ELD