Ex Parte Ellis

Patent Trial and Appeal Board

Sep 29, 2014

10808894 (P.T.A.B. Sep. 29, 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.
10/808,894 03/24/2004 Gregory Duane Ellis 73591.000004 7403
21967 7590 09/29/2014
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
EXAMINER
FOSSELMAN, JOEL W
ART UNIT PAPER NUMBER
2662
MAIL DATE DELIVERY MODE
09/29/2014 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 GREGORY DUANE ELLIS
____________

Appeal 2012–000359
Application 10/808,894
Technology Center 2600
____________

Before CARLA M. KRIVAK, LARRY J. HUME, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–12 and 60–115. Claims 13–59 are withdrawn (App. Br. 3). We have
jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments on
September 18, 2014, and a transcript will be entered into the electronic
record in due course.
We affirm-in-part.

STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a remotely accessible virtual
recording room (Spec. 1:11–12).
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Claim 1, which is illustrative, reads as follows:
1. An Internet-based recording method for recording
audio and video material over an Internet browser connection
established between a user front end and a host back end, the
method comprising:
delivering browser-executable code over the Internet for
use in an Internet browser, wherein:
the browser-executable code is executed through
the Internet browser at the user front end and initiates the
streaming of audio and video material from a recording
device on the user front end to the host back end over the
Internet, and
the audio and video material is streamed over the
Internet as it is being captured with the recording device,
not as a complete video file on the user front end, without
using any recording software stored on the user front end;
recording the audio and video material on the host back
end and storing the recorded audio and video material as a
complete video file; and
providing access to the recorded audio and video
material.
Rejections on Appeal
Claims 1–12 and 60–115 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement (see
Ans. 4–5).
Claims 1–12 and 60–115 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter Appellant regards as the invention (see
Ans. 5–6).
Claims 1, 2, 4–9, 11, 12, 64, 65, 67–72, 74, 75, 80, 81, 83–87, 92, 93,
95–99, and 105–115 stand rejected under 35 U.S.C. § 103(a) as being
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unpatentable over Liwerant (US 2002/0056123 A1; May 9, 2002) and
Ludwig (US 2001/0044826 A1; Nov. 22, 2001) (see Ans. 6–16).
Claims 3, 10, 60–63, 66, 73, 76–79, 82, 88–91, 94, and 100–104 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Liwerant,
Ludwig, and Official Notice (see Ans. 16–19).
Issues on Appeal
Does the Specification adequately support the following claim
limitations: “without using any recording software stored on the user front
end”; “not by any recording software stored on the user front end”;
“browser-executable code”; “user interface code”; “the Flash recording
application . . . causes audio and video material to be streamed from a
recording device on the user front end to the host back end over the Internet
in response to a user interaction with the user interface”; and “the streaming
from the recording device is controlled by the Flash recording application
being executed through the Internet browser, not by any recording software
stored on the user front end”?
Does the phrase “without using any recording software stored on the
user front end” in claims 1, 64, 80, 92, 104, and 105, and the phrase “not by
any recording software stored on the user front end” in claims 114 and 115,
render those claims indefinite?
Does the combination of Liwerant and Ludwig teach or suggest:
delivering browser-executable code over the Internet for use in
an Internet browser, wherein: the browser-executable code is
executed through the Internet browser at the user front end and
initiates the streaming of audio and video material from a
recording device on the user front end to the host back end over
the Internet, and the audio and video material is streamed over
the Internet as it is being captured with the recording device,
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not as a complete video file on the user front end, without using
any recording software stored on the user front end,
as recited in claim 1?
Does the combination of Liwerant and Ludwig teach or suggest “a
Flashing recording application,” as recited in claims 106–109, 114, and 115?

ANALYSIS
We refer herein to Appellant’s Appeal Brief filed February 9, 2011
(“App. Br.”), the Examiner’s Answer mailed May 10, 2011 (“Ans.”), and
Appellant’s Reply Brief filed July 8, 2011 (“Reply Br.”).
Rejections under 35 U.S.C. § 112, First Paragraph
The Examiner finds the Specification lacks support for the phrase
“without using any recording software stored on the user front end” in
claims 1, 64, 80, 92, 104, and 105, and the phrase “not by any recording
software stored on the user front end” in claims 114 and 115 (Ans. 4).
Appellant argues (App. Br. 19) the Specification supports the above-
referenced claim limitations because it states, inter alia, the recording “is
accomplished without requiring recording functionality on the user front
end” (Spec. 2:18–26). We agree with Appellants that the recording
functionality described in the Specification is broad enough to include the
recording software recited in the claims and thus there is adequate support in
the Specification for the above-referenced claim limitations.
The Examiner finds the Specification lacks support for the phrase
“browser-executable code” in claims 1, 64, 76, 80, 88, 92, 100, and 106–
109, and the phrase “user interface code” in claim 104 (Ans. 4). Appellant
argues (App. Br. 20, 32) the Specification supports the above-referenced
claim limitations because it discloses a user interface that is accessed
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through a web browser (Spec. 7:16–21) and provides an example of such
software, namely a Flash recording application (Spec. 11:19–20). The
portions of the Specification cited by Appellant describe a user interface that
is executed in a browser using software code such as a Flash recording
application. Therefore, we agree with Appellant that there is adequate
support for the above-referenced claim limitations in the Specification.
The Examiner finds the Specification lacks support for the limitation
“the Flash recording application . . . causes audio and video material to be
streamed from a recording device on the user front end to the host back end
over the Internet in response to a user interaction with the user interface” and
“the streaming from the recording device is controlled by the Flash
recording application being executed through the Internet browser, not by
any recording software stored on the user front end” in claims 114 and 115
(Ans. 5). Specifically, the Examiner finds the Specification only discloses
using the Flash recording application for purchasing multiple videos, not
streaming audio and video over the Internet (Ans. 24). Appellant points out
(App. Br. 39), however, that the Specification states “[a] preferred
embodiment of the audio/video recording, storage, and delivery system 10
utilizes a Flash recording application” (Spec. 11:19–20). We agree with
Appellant that this portion of the Specification describes the Flash recording
application as being used for the broader invention, such as streaming the
audio and video material, not just purchasing multiple videos.
For the foregoing reasons, we find the written description reasonably
conveys to one of ordinary skill in the art the inventor had possession of the
claimed subject matter as of the filing date. See Synthes USA, LLC v. Spinal
Kinetics, Inc., 734 F.3d 1332, 1341 (Fed. Cir. 2013) (“The ‘level of detail
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required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.’” (Citation omitted.)). Therefore, we do not
sustain the Examiner’s rejection of claims 1–12 and 60–115 under 35 U.S.C.
§ 112, first paragraph.
Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner finds claims 1, 64, 80, 92, 104, 105, 114, and 115 are
indefinite because the claims recite software that is executed at the user front
end to initiating streaming of audio and video material, but then recite that
the audio and video material is streamed without using recording software
stored on the user front end (Ans. 5–6). For example, claim 1 recites:
the browser-executable code is executed through the Internet
browser at the user front end and initiates the streaming of
audio and video material from a recording device on the user
front end to the host back end over the Internet, and
the audio and video material is streamed over the Internet as it
is being captured with the recording device, not as a complete
video file on the user front end, without using any recording
software stored on the user front end
(App. Br. 108 (emphasis added).) According to the Examiner, the claim
language is contradictory because it first requires delivery to and execution
of browser-executable code on the front end, but then states that no
recording software stored on the front end is used (Ans. 5–6, 25–29).
Appellant argues, inter alia, there is no contradiction in the claims
because the browser-executable code is not stored on the user front end
(App. Br. 44–45; Reply Br. 4). Appellant admits the claims recite the
“browser-executable code is delivered to and executed at the user front
end . . . ” (Reply Br. 4). Appellant’s claims do not, however, expressly
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recite that the browser-executable code is stored at the user front end. Thus,
the Examiner’s rejection is based on the conclusion that, in order to deliver
and then execute code at the user front end, that code is stored at the user
front end. But, the Examiner does not provide any rationale or evidence to
support that conclusion (Ans. 5–6, 25–29). On this record, the Examiner
does not make a prima facie showing that the browser-executable code
recited in the claims is stored at the user front end.
1
Therefore, the Examiner
does not make a prima facie showing that the recited “browser-executable
code . . . executed through the Internet browser at the user front end”
contradicts the limitation “without using any recording software stored on
the user front end.” Accordingly, we do not sustain the Examiner’s rejection
of claims 1–12 and 60–115 under 35 U.S.C. § 112, second paragraph.
Rejection of Claims 1–12, 60–105, and 110–113 under 35 U.S.C. § 103(a)
With respect to the Examiner’s rejection of independent claims 1, 64,
80, 92, 104, and 105 under 35 U.S.C. § 103(a), Appellant presents the same
arguments for each of those claims (App. Br. 58–87). Therefore, we address
Appellant’s arguments regarding those claims together.
Appellant argues Liwerant does not teach streaming audio and video
material as it is being captured with the recording device because Liwerant
only teaches uploading a complete video file (App. Br. 59–60). Appellant’s
argument is not persuasive because it addresses Liwerant individually, not
the combination cited by the Examiner. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references

1
For the same reasons, the Examiner does not make a prima facie showing
that the “user interface code” in claims 104 and 105 or the “Flash recording
application” in claims 114 and 115 are stored at the user front end.
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individually where, as here, the rejections are based on combinations of
references.”). The Examiner cites to Ludwig as teaching the above-
referenced limitation, namely the streaming of audio and video material as it
is being captured with the recording device, not as a complete video file on
the user front end (see, e.g., Ans. 9–10, 35). Therefore, Appellant’s
argument does not address the combined teachings of the references as they
apply to the disputed claim limitation.
Appellant also argues Liwerant does not teach delivering browser-
executable code that is executed through the Internet browser at the user
front end
2
because the Examiner only points to “the use of a typical personal
computer with an Internet browser in Liwerant” (App. Br. 60). Appellant’s
argument is not persuasive. The Examiner points to the VideoShare
Producer software in Liwerant as being the browser-executable code
(Ans. 7, 30). Figure 3 of Liwerant shows the VideoShare Producer software
being executed in Microsoft Internet Explorer (Liwerant Fig. 3), which is an
Internet browser. Therefore, we are not persuaded the Examiner erred in
finding the VideoShare Producer software in Liwerant corresponds to the
claimed browser-executable code.
Appellant argues Ludwig does not specifically relate to Internet
browsers or streaming over the Internet (App. Br. 61). Appellant’s argument
is not persuasive because it addresses Ludwig individually, not the
combination cited by the Examiner. See Keller, 642 F.2d at 426. As
discussed above, the Examiner cites to Liwerant as teaching browser-

2
Claims 104 and 105 recite “user interface code,” not “browser-executable
code.” Nonetheless, Appellant’s argument regarding Liwerant is the same
(see App. Br. 79–80, 84–85).
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executable code that is executed through the Internet browser and transmits
audio and video material over the Internet (see, e.g., Ans. 6–7, 30).
Therefore, Appellant’s argument does not address the combined teachings of
the references as they apply to the disputed claim limitation.
Appellant also argues Ludwig uses recording software stored on a
user front and thus does not teach “without using any recording software
stored on the user front end” (App. Br. 61). Specifically, Appellant contends
the workstation software stored on the client multimedia workstation
(“CMW”) in Ludwig “is responsible for capturing and sending video over a
network” (App. Br. 61). First, Appellant’s argument is not commensurate
with the scope of the claims. Claim 1 recites “without using any recording
software stored on the user front end.” Appellant argues the software stored
on the user front end in Ludwig captures and sends video over a network,
but does not argue or point to evidence indicating that the software records
video (see App. Br. 61). Moreover, Ludwig expressly teaches that recording
can be performed by a server on the back end, rather than at the CMW. For
example, Ludwig teaches, “[a]lthough storage and recording services could
be provided at each CMW, it is preferable to employ a centralized server
502 coupled to MLAN 10, as illustrated in FIG. 31” (Ludwig ¶ 200).
Therefore, we are not persuaded the Examiner erred in finding Ludwig
teaches “without using any recording software stored on the user front end.”
3

Appellant argues one of ordinary skill in the art would not have
combined the teachings of Liwerant and Ludwig because Liwerant is

3
Appellant repeats this same argument for dependent claims 110–113 (App.
Br. 91–95). For the same reasons, we are not persuaded the Examiner erred
with respect to claims 110–113.
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directed to uploading complete video files over the Internet, while Ludwig is
directed to videoconferencing over LANs and WANs (App. Br. 62). In
other words, Appellant argues Liwerant and Ludwig are not in the same field
of endeavor, see In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011), because
Liwerant uploads video over the Internet and Ludwig transmits video over a
LAN or WAN. Appellant’s argument is not persuasive. Liwerant and
Ludwig both relate to transmitting video material from a user’s computer to
a remote server for storage (Liwerant ¶ 5; Ludwig ¶ 226), and thus are
directed to the same field of endeavor.
Appellant also argues one of ordinary skill in the art would not have
combined the teachings of Liwerant and Ludwig because “there is no reason
to believe that one could simply add in features of one system to features of
the other” (App. Br. 62). However, “[t]o justify combining reference
teachings in support of a rejection it is not necessary that a device shown in
one reference can be physically inserted into the device shown in the other.”
Keller, 642 F.2d at 425. “[T]he test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” Id.
Therefore, Appellant’s argument does not persuade us the Examiner erred.
In sum, we are not persuaded the Examiner erred in finding Liwerant
teaches browser-executable code executed through the Internet browser at
the user front end for transmitting audio and video material over the Internet
(Ans. 6–8, 29–32; Liwerant Fig. 3; id. at ¶¶ 5, 78, 83). We are also not
persuaded the Examiner erred in finding Ludwig teaches initiating and
streaming audio and video material from a recording device on the user front
end as it is being captured with the recording device to the host back end,
not as a complete file, without using any recording software on the user front
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end (Ans. 9–10, 35, 76; Ludwig ¶ 200). Therefore, we are not persuaded the
Examiner erred in finding the combination of Liwerant and Ludwig teaches
the claim limitations disputed by Appellant.
Because Appellant’s arguments regarding independent claims 1, 64,
80, 92, 104, and 105 are not persuasive, we sustain the Examiner’s rejection
of those claims under 35 U.S.C. § 103(a). Appellant presents no other
arguments for claims 2–12, 60–63, 65–79, 81–91, 93–103, and 110–113, and
relies on the same reasons for patentability stated for claims 1, 64, 80, 92,
104, and 105. As a result, we also sustain the Examiner’s rejection of those
claims under 35 U.S.C. § 103(a).
Rejection of Claims 106–109, 114, and 115 under 35 U.S.C. § 103(a)
Appellant presents an additional argument for independent claims 114
and 115 and dependent claims 106–109 (App. Br. 87–91, 97, 103).
Specifically, Appellant argues Liwerant does not teach a Flash recording
application as recited in those claims (App. Br. 87–91, 97, 103). We agree
with Appellants. The Examiner does not find that Liwerant or Ludwig
teaches a Flash recording application (Ans. 79). Instead, the Examiner
concludes the VideoShare Producer software in Liwerant “performs the
same function as the claimed ‘Flash recording application’” (Ans. 79–80).
Even assuming arguendo that the VideoShare Producer in Liwerant
performs the same function as a Flash recording application, the Examiner
does not make a prima facie showing that Liwerant teaches or suggests the
recited Flash recording application. Therefore, we do not sustain the
Examiner’s rejection of claims 106–109, 114, and 115 under 35 U.S.C.
§ 103(a).

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DECISION
The decision of the Examiner rejecting claims 1–12 and 60–115 under
35 U.S.C. § 112, first paragraph, is reversed.
The decision of the Examiner rejecting claims 1–12 and 60–115 under
35 U.S.C. § 112, second paragraph, is reversed.
The decision of the Examiner rejecting claims 1–12, 60–105, and
110–113 under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner rejecting claims 106–109, 114, and 115
under 35 U.S.C. § 103(a) is reversed.
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-IN-PART

ELD