Ex Parte Drang et al

Patent Trial and Appeal BoardMar 29, 2017

12531320 (P.T.A.B. Mar. 29, 2017)

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. 12/531,320 09/15/2009 Nir Drang P47598-US2 8657 27045 7590 03/31/2017 F.RTrSSON TNC EXAMINER 6300 LEGACY DRIVE LIN, JASON K M/SEVR 1-C-ll PLANO, TX 75024 ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): kathryn.lopez@ericsson.com michelle. sanderson @ eric sson .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIR DRANG and RAM BEN-YAKIR Appeal 2017-000024 Application 12/531,32c1 Technology Center 2400 Before STEPHEN C. SIU, LARRY J. HUME, and SCOTT E. BAIN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1â€”7, 10â€”15, 17â€”20, and 25â€”36. Appellants have canceled claims 8, 9, 16, and 21â€”24. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Ericsson Media Solutions Ltd. App. Br. 1. Appeal 2017-000024 Application 12/531,320 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions "relate[] to communication apparatus, for example to video servers for video-on- demand services." Spec. 1,11. 10â€”11. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitations): 1. A data streaming server, comprising: (a) at least one data storage device; (b) at least one controller configured to: receive a request from a client for a video packet stream; retrieve metadata which indicates, in addition to an identification of video content, storage locations for storage data packets for producing said video packet stream, said metadata including data for determining disk locations and on-disk storage locations for the storage data packets; produce control instructions, including the metadata for retrieving the storage data packets for producing said video packet stream, for at least one of data transmission to- and reception ffom- said data storage device; and 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Mar. 22, 2016); Reply Brief ("Reply Br.," filed Sept. 14, 2016); Examiner's Answer ("Ans.," mailed July 27, 2016); Non-Final Office Action ("Non- Final Act.," mailed Apr. 10, 2015); and the original Specification ("Spec.," filed Sept. 15, 2009). 2 Appeal 2017-000024 Application 12/531,320 send the control instructions to a packet processor; and (c) at least one packet processor adapted to: accept said control instructions from said controller; use the metadata provided with the control instructions to determine a data storage device for the storage data packets; send requests for the storage data packets to the data storage device, including said metadata for determining on-disk storage locations for the storage data packets; receive the storage data packets from said data storage device without passing said data through said controller; convert said storage data packets to a video packet stream; and send said video packet stream to said client. Prior Art The Examiner relies upon the following prior art as rejecting the claims on appeal: evidence in Kobayashi US 6,108,728 Aug. 22, 2000 Rege US 6,128,467 Oct. 3, 2000 Robinett et al. ("Robinett") US 2002/0131443 Al Sept. 19, 2002 Son et al. ("Son '993") US 2003/0149993 Al Aug. 7, 2003 Lebizay et al. ("Lebizay") US 2004/0085985 Al May 6, 2004 Chen et al. ("Chen") US 6,925,499 B1 Aug. 2, 2005 Ben Nun et al. ("Ben Nun") US 6,928,482 B1 Aug. 9, 2005 Son et al. ("Son '235") US 7,159,235 B2 Jan. 2, 2007 Suonsivu et al. ("Suonsivu") US 2008/0240161 Al Oct. 2, 2008 3 Appeal 2017-000024 Application 12/531,320 Rejections on Appeal Rl. Claims 1-6, 10-13, 15, 17-19, 27, 28, 30, 31, and 33-36 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen and Rege. Ans. 12; Non-Final Act. 6. R2. Claim 7 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen, Rege, and Son '993. Ans. 58; Non-Final Act. 54. R3. Claim 14 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen, Rege, Lebizay, and Suonsivu. Ans. 59; Non-Final Act. 59. R4. Claims 20 and 25 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen, Rege, and Ben Nun. Ans. 60; Non-Final Act. 60. R5. Claim 26 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen, Rege, and Kobayashi. Ans. 62; Non-Final Act. 62. R6. Claim 29 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen, Rege, and Jarvis. Ans. 64; Non-Final Act. 64. R7. Claim 32 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Son '235, Chen, Rege, and Robinett. Ans. 66; Non-Final Act. 66. 4 Appeal 2017-000024 Application 12/531,320 CLAIM GROUPING Based on Appellants' arguments (App. Br. 5â€”12), we decide the appeal of obviousness Rejection R1 of claims 1â€”6, 10â€”13, 15, 17â€”19, 27, 28, 30, 31, and 33â€”36 on the basis of representative claim 1. Remaining claims 7, 14, 20, 25, 26, 29, and 32 in rejections R2 through R7, not argued separately, stand or fall with the respective independent claim from which they depend.3 ISSUES Appellants argue (App. Br. 5â€”12; Reply Br. 1â€”6) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Son '235, Chen and Rege is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a data streaming server that includes, inter alia, limitation (c) which recites: 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). In addition, when Appellants do 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) ("'Since neither of the parties argue separately the patentability of each of the rejected claims, the dependent claims will stand or fall with [the] independent claims.' In re Burckel, 592 F.2d 1175, 1178-79, 201 U.S.P.Q. 67, 70 (Cust. & Pat.App. 1979)." 5 Appeal 2017-000024 Application 12/531,320 at least one packet processor adapted to: accept said control instructions from said controller; use the metadata provided with the control instructions to determine a data storage device for the storage data packets; send requests for the storage data packets to the data storage device, including said metadata for determining on-disk storage locations for the storage data packets; receive the storage data packets from said data storage device without passing said data through said controller; convert said storage data packets to a video packet stream; and send said video packet stream to said client, as recited in claim 1? Analysis In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1â€”7, 10â€”15, 17â€”20, and 25â€”36, 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 in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise 6 Appeal 2017-000024 Application 12/531,320 noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. First, Appellants generally contend the cited reference combination fails to teach or suggest the contested limitation of claim 1. App. Br. 6. Appellants further argue it was not predictable to one of ordinary skill in the art at the time of the invention to modify Son in view of Chen-Rege to teach all aspects of the claimed invention including at least claim l's technical feature "at least one packet processor adapted to . . . ." App. Br. 7. Further, "[i]n particular, the Applicant respectfully submits that the Examiner's obviousness rejection cannot be reached on the basis of the facts gleaned from the prior art." App. Br. 7â€”8. We find Appellants' arguments to be mere allegations that the cited prior art does not teach or suggest the contested limitations, without any evidence of record that the Examiner erred, and with no analysis of the cited prior art. See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art."). Arguments not made are therefore waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Appellants also assert the Examiner engaged in impermissible hindsight because "the Examiner's legal conclusion cannot be reached on the 7 Appeal 2017-000024 Application 12/531,320 basis of the facts gleaned from the prior art." App. Br. 8. In addition, Appellants allege the Examiner combined distinct and mutually exclusive features from Son, Chen and Rege to make up the combination of features as recited in claim 1 while using hindsight when setting as a target the claimed invention. However, Son, Chen and Rege do not teach the claimed invention, nor provide a reason to strive for the claimed invention. Id. Appellants continue their argument by hypothesizing how a person with skill in the art with knowledge of Son, Chen, and Rege would be motivated to use the packet processor of Son with Chen and Rege. App. Br. 8â€”9. We find Appellants' arguments are not persuasive, because Appellants are arguing the references separately when the rejection is for obviousness under Â§ 103 over a combination of references. The test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner provides a useful summary of the rejection, and how the references were relied upon in making a prima facie case of obviousness. Chen and Rege were used to teach the "additional functions such as use the metadata provided with the control instructions to determine a data storage device for the storage data packets; send requests for the storage data packets to the data storage device, including said metadata for determining on-disk storage locations for the storage data packets; receive the storage data packets from said data storage device." Chen and Rege, similarly with Chen teach systems that provide for the retrieval and provision of video data. Ans. 68â€”69. 8 Appeal 2017-000024 Application 12/531,320 The Examiner further provides reasoned statements of motivation to combine Son with Chen, and Son and Chen in view of Rege which we find meets the requirements of KSR.4 Ans. 69-70. Appellants also argue that the proposed modification of Son's processor "would not only require a substantial reconstruction and redesign of its elements but the modification would also change the basic principle under which Son was designed to operate . . . App. Br. 10. Additionally, "the proposed Son-Chen-Rege combination fails to disclose the unique combination of the claimed data streaming server's controller and packet processor." App. Br. 11. This unique combination in the claimed invention is "counterÂ intuitive" in that normally the controller itself would retrieve the content from the data storage device and then send the 4 As the Supreme Court has held: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) ("[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). As our precedents make clear, however, the 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. KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 9 Appeal 2017-000024 Application 12/531,320 content to another device (packet processor) as required in Son (e.g., see Son's col. 4, lines 27â€”32) rather than perform the extra steps of creating control instructions for retrieving the content and sending those control instructions to another device (packet processor) as required in claim 1. Stated another way, the Examiner has at a minimum failed to consider the claimed invention "as a whole" as is required per MPEP 2142 .... Id. In response, the Examiner finds: The combination of reference would result in some modification, as stated in the Office Action, "obvious to a person of ordinary skill in the art to modify". The "substantial reconstruction and redesign of elements" as asserted by the Appellant would entail modifying Son's system where the controller would be able to generate metadata, send the metadata to the packet processor, and the packet processor using the metadata to request content. In the system of Son, the controller already determines where the requested content is stored, so there would be the added step of generating the metadata with that information to inform another device of the whereabouts of the requested content. Generating known information to be shared with other devices are well known and easily implemented and would not require a substantial reconstruction and redesign. Ans. 71. The Examiner further finds, and we agree, "the combination is not 'counter-intuitive', but rather improves upon Son, as already reasoned above in part (Al)." Ans. 72. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's 10 Appeal 2017-000024 Application 12/531,320 resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2â€”6, 10-13, 15, 17â€”19, 27, 28, 30, 31, and 33â€”36 which fall therewith. See Claim Grouping, supra. Rejections R2 â€” R7 of Claims 7, 14, 20, 25, 26, 29, and 32 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 through R7 of claims 7, 14, 20, 25, 26, 29, and 32 under Â§ 103 (see App. Br. 12â€”14), we sustain the Examiner's rejection of these claims. Arguments not made are waived.5 REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1â€”7) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examinerâ€™s Answer will not be considered except for good cause (see 37 C.F.R. Â§ 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 through R7 of claims 1â€”7, 10-15, 17â€”20, and 25â€”36 under 35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. 5 Appellants merely present a pattern of argument that alleges the dependent claims are allowable based upon the alleged allowability of independent claim 1. App. Br. 12â€”14. 11 Appeal 2017-000024 Application 12/531,320 DECISION We affirm the Examiner's decision rejecting claims 1â€”7, 10â€”15, 17â€” 20, and 25â€”36. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§41.50(f). AFFIRMED 12