Ex Parte Mail et al

Patent Trial and Appeal BoardJan 7, 2014

10589417 (P.T.A.B. Jan. 7, 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. 10/589,417 11/07/2006 David Mail 7251/94662 8225 24628 7590 01/07/2014 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER CHAO, MICHAEL W ART UNIT PAPER NUMBER 2492 MAIL DATE DELIVERY MODE 01/07/2014 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 DAVID MAIL, HILLEL SOLOW, EREZ WAISBARD, ANATOLY SELDIN, and CARMI BOGOT ____________________ Appeal 2011-009140 Application 10/589,417 Technology Center 2400 ____________________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and THOMAS F. SMEGAL, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009140 Application 10/589,417 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3-14, 17-21, 26-29, 31-42, 45-49, and 58-60. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM.1 BACKGROUND Appellants’ invention “relates to communications systems in general, and more particularly to techniques for adapting multimedia content for playback on mobile subscriber devices” (Spec. 1, ll. 11-13). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method for distributing multimedia content, the method comprising: storing an item of multimedia content as stored multimedia content at a multimedia message center (MMSC); firstly transcoding said multimedia content for playback on a first multimedia device, thereby producing a firstly transcoded version of said multimedia content; generating a content ID of said firstly transcoded version of said multimedia content; storing said content ID of said firstly transcoded version of said multimedia content, as a stored first content ID, in association with said stored multimedia content; receiving, at said MMSC via a multimedia message service (MMS) message, an instruction to forward said item of 1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed December 6, 2010) and Reply Brief (“Reply Br.,” filed April 11, 2011), and the Examiner’s Answer (“Ans.,” mailed February 15, 2011). Appeal 2011-009140 Application 10/589,417 3 multimedia content to a second multimedia device, said instruction comprising a copy of said firstly transcoded version of said multimedia content; and performing the following in response to said instruction: accessing said stored content using said stored first content ID of said firstly transcoded version of said multimedia content, said accessing comprising: generating a received content ID of said copy of said firstly transcoded version of said multimedia content; and looking up said stored multimedia content by comparing said received content ID with said stored first content ID; and transcoding said stored multimedia content for playback on said second multimedia device. THE REJECTIONS The following rejections are before us for review: Claims 1, 3-14, 29, and 31-42, are rejected under 35 U.S.C. § 103(a) as unpatentable over Warsta (US 2004/0181550 A1, pub. Sep. 16, 2004) in view of Malik (US 7,003,551 B2, iss. Feb. 21, 2006). Claims 17-21, 26-28, and 45-49 are rejected under 35 U.S.C. § 103(a) as unpatentable over Warsta in view of Malik, and further in view of Kobata (US 2002/0077986 A1, pub. Jun. 20, 2002). Claims 58-60 are rejected under 35 U.S.C. § 103(a) as unpatentable over Warsta in view of Malik, and further in view of Mattis (US 6,128,623, iss. Oct. 3, 2000). Appeal 2011-009140 Application 10/589,417 4 ANALYSIS Independent claims 1, 26, and 29 Appellants argue independent claims 1, 26, and 29 as a group (App. Br. 8). We select claim 1 as representative. The remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). We are not persuaded by Appellants’ argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because the combination of Warsta and Malik fails to disclose or suggest “transcoding the original version of the content . . . rather than the previously transcoded version . . . that was included in the instruction to forward the content to the second device,” i.e., “performing . . . in response to said instruction . . . transcoding said stored multimedia content for playback on said second multimedia device,” as recited in claim 1 (App. Br. 9-11). Instead, we agree with the Examiner that Warsta discloses this feature (Ans. 5 and 19-23, citing Warsta, paragraphs [0024], [0029], [0061], and [0062]). Warsta is directed to a system and method for adapting and storing multimedia content for network devices based on the respective capabilities of each device (Warsta, Abstract). Warsta describes a pre-adaptation method in paragraphs [0024], [0029], and [0061] in which content adaptations for all known network device types are generated and cached, i.e., stored, for subsequent use. Thus, when a content request is received from a network device, the corresponding adapted content is retrieved and provided to the requesting device (see Warsta, para. [0061]). In an alternative embodiment, described in paragraph [0062], content is adapted and stored as needed, i.e., as network device requests are received, rather than being pre-adapted for all known device types. Thus, in this Appeal 2011-009140 Application 10/589,417 5 embodiment, when a request for content is received, the capabilities of the requesting device are compared to previous requesting device capabilities. If a match is found, the previously adapted content is fetched from cache and provided to the current requesting device. Otherwise, if no match is found, a new content adaptation is performed and provided to the current requesting device. We agree with the Examiner that there is nothing in Warsta that suggests that content is transcoded twice, as Appellants assert, i.e., that previously transcoded content for a first device is re-transcoded for a second device. Instead, Warsta makes clear that the original content is transcoded in all cases, i.e., content adaptation is prepared for each device capability (Ans. 20). In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of independent claims 26 and 29, which stand or fall with claim 1. Dependent claims 3-14, 17-21, 27, 28, and 31-60 Each of claims 3-14, 17-21, 27, 28, and 31-60 ultimately depends from one of independent claims 1, 26, and 29. Appellants do not present any arguments for the separate patentability of these dependent claims. Therefore, we will sustain the Examiner’s rejection of claims 3-14, 17-21, 27, 28, and 31-60 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to the independent claims. Appeal 2011-009140 Application 10/589,417 6 DECISION The Examiner’s rejections of claims 1, 3-14, 17-21, 26-29, 31-42, 45-49, and 58-60 under 35 U.S.C. § 103(a) are affirmed. 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 mls