Ex Parte McCartney et al

Patent Trial and Appeal Board

Sep 19, 2012

09817808 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JASON McCARTNEY and KEITH M. TOUSSAINT
________________

Appeal 2010-003651
Application 09/817,808
Technology Center 2400
________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, 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 rejection
of claims 1-19, 21-27, 29-47, 51, 55-62, and 69-76. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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STATEMENT OF THE CASE 1, 2
The Invention
This invention relates to methods and systems for processing media
content. (Spec. p. 1, ll. 2-3 (“TECHNICAL FIELD”)).
The embodiments described below provide methods and
systems that enable a user or, more accurately, an enabled
media player that is executing on a computing device or client,
to access, retrieve, and display for a user, so-called metadata
that is associated with specific media content that is being
played on the media player. This is done by matching the
metadata to the specific media content that is being experienced
by a user, and returning the metadata to the user's computing
device. In the examples that are given below, the media content
is described in the context of content that is embodied on a CD
or a DVD. It is to be appreciated and understood that the media

1 Throughout this Decision, we refer to the Non-Final Office Action
(NFOA) mailed Jan. 30, 2007; the Appeal Brief (App. Br.) filed Feb. 25,
2008; the Examiner’s Answer (Ans.) mailed June 23, 2008; the Reply Brief
(Reply Br.) filed Aug. 25, 2008; the Supplemental Examiner’s Answer
(Suppl. Ans.) mailed Dec. 19, 2008 in response to the Reply Brief; and the
original Specification (Spec.) filed Mar. 26, 2001.

2 We note that Appellants’ Reply Brief at page 14 twice alleges that “[t]he
Office has introduced new arguments” in the Answer at pages 7 and 10 with
respect to claims 29-34 and 36-38, and claims 35, 51, and 55. Appellants
request that prosecution of the application be reopened “so that these new
issues may be addressed by the Appellant.” Otherwise, the Reply Brief
merely “reiterates all arguments in favor of allowance . . . as made in the
Appeal Brief.” Reply Br. 15. In response to the Reply Brief, the Examiner
issued a Supplemental Examiner’s Answer conforming to the rejections in
the Non-Final Office Action (see Suppl. Ans. 32-41; 45-46). Appellants did
not file a response to the Supplemental Answer. Thus, Appellants do not
dispute that the Examiner has rendered moot basis of the request for
reopening prosecution.
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content can be embodied on any suitable media, and that the
specific examples described herein are given for purposes that
include assisting the reader in understanding the inventive
principles.

Spec. p. 4, ll. 14-25 (“DETAILED DESCRIPTION”).
Exemplary Claims
Claims 1, 29, 35, 36, 51 and 72 are exemplary claims which are
reproduced below (emphasis added to disputed limitations):
1. A method of processing media content comprising:
receiving a physical ID that corresponds to a specific media
upon which content resides that can be experienced by a user;
attempting to map the physical ID to a logical ID;
if no logical ID is found that corresponds to the physical ID,
attempting to establish a logical ID for the physical ID by
causing a Wizard user interface (UI) to be presented to a user
via a client computer so that information pertaining to the
user's specific media can be collected from the user; and
if a logical ID is found that corresponds to the physical ID,
searching a database that contains metadata associated with the
specific media by using the logical ID as a basis for a search
query, wherein different instances of a specific media with the
same content thereon are associated with different physical IDs
that are mappable to the same logical ID.

29. A method of processing media content comprising:
receiving a physical ID that corresponds to a specific media
upon which content resides that can be experienced by a user;
attempting to map the physical ID to a logical ID by searching a
first table containing physical ID-to-logical ID mappings using
a first search;
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if the first search is unsuccessful, searching a second table
containing physical ID-to-logical ID mappings using a second
search; and
if a logical ID is found that corresponds to the physical ID,
searching a database that contains metadata associated with the
specific media by using the logical ID as a basis for a search
query, wherein different instances of a specific media with the
same content thereon are associated with different physical
IDs that are mappable to the same logical ID.

35. One or more computer-readable media having computer-
readable instructions thereon which, when executed by a
computer, cause the computer to:
receive a physical ID that corresponds to a specific media upon
which content resides that can be experienced by a user;
attempt to map the physical ID to a logical ID by searching a
first table containing physical ID-to-logical ID mappings using
a first search, the first search comprising a low cost search;
if the first search is unsuccessful, search a second table
containing physical ID-to-logical ID mappings using a second
search;
if the second search is unsuccessful, search the first table
using a third search, the third search comprising a higher cost
search than the first search; and
if a logical ID is found that corresponds to the physical ID,
search a database that contains metadata associated with the
specific media by using the logical ID as a basis for a search
query, wherein different instances of a specific media with the
same content thereon are associated with different physical IDs
that are mappable to the same logical ID.

36. A method of processing media content comprising:
providing a canonical table containing physical ID to logical ID
mappings, the physical IDs being associated with specific
media containing content that can be experienced by a user, the
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logical IDs being configured for use in database queries to
locate metadata associated with specific media;
providing a table containing user-provided physical ID to
logical ID mappings;
receiving a physical ID associated with a specific media;
conducting a first low cost search of the canonical table to
determine whether there is a matching physical ID with a
corresponding logical ID;
if the first low cost search is unsuccessful, conducing a second
low cost search of the table containing the user-provided
physical ID to logical ID mappings to determine whether there
is a matching physical ID with a corresponding logical ID;
if the second low cost search is unsuccessful, conducing3 [sic]
a third higher cost search of the canonical table to determine
whether there is a matching physical ID with a corresponding
logical ID; and
if any of the searches are successful, using the corresponding
logical ID to search a database containing metadata associated
with the specific media, wherein different instances of a
specific media with the same content thereon are associated
with different physical IDs that are mappable to the same
logical ID.

51. A system for providing metadata to clients comprising:
a trusted canonical table comprising multiple physical IDs
associated with specific media containing content that can be
experienced by a user;
multiple logical IDs associated with the multiple physical IDs;
individual physical IDs being mapped to individual logical IDs;
at least one other less trusted table containing multiple
physical IDs and multiple logical IDs, individual physical IDs
being mapped to individual logical IDs; and

3 We assume that this word should be “conducting.”
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the logical IDs being configured for use in database queries to
locate metadata associated with specific media, wherein
different instances of a specific media with the same content
thereon are associated with different physical IDs that are
mappable to the same logical ID.

72. A method of providing metadata to a client comprising:
establishing a table that contains user-provided entries that map
physical IDs to logical IDs, the physical IDs corresponding to
specific media upon which content resides that can be
experienced by various users, the logical IDs being configured
for use in querying one or more databases that contain metadata
associated with the specific media, the metadata being
returnable to a client;
statistically evaluating the entries to determine, for each
physical ID, a most likely logical ID match; and
making the most likely logical ID match available so that it can
be used to query the one or more databases.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Meyer US 2001/0031066 A1 Oct. 18, 2001
(filed Jan. 24, 2001)
Milsted US 6,345,256 B1 Feb. 5, 2002
(filed Dec. 1, 1998)
Srivastava US 6,549,922 B1 Apr. 15, 2003
(filed Oct. 1, 1999)
Jaeger US 6,553,379 B1 Apr. 22, 2003
(filed Aug. 16, 2000)
Suganuma US 6,704,748 B1 Mar. 9, 2004
(filed Aug. 30, 2000)
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Rejections on Appeal
A. The Examiner has rejected claims 1-19, 21-27, 39-47, 56-62,
and 69-71 under 35 U.S.C § 103(a) as being unpatentable over Meyer in
view of Srivastava (Suppl. Ans. 5-31).
B. The Examiner has rejected claims 29-34 and 36-38 under 35
U.S.C § 103(a) as being unpatentable over Jaeger in view of Suganuma
(Suppl. Ans. 31-36).
C. The Examiner has rejected claims 35, 51, and 55 under 35
U.S.C § 103(a) as being unpatentable over Jaeger and Suganuma in view of
Srivastava (Suppl. Ans. 36-41).
D. The Examiner has rejected claims 72-76 under 35 U.S.C
§ 103(a) as being unpatentable over Milsted (Suppl. Ans. 41-45).
GROUPING OF CLAIMS
We note that Appellants have set forth arguments in this appeal
without mention of any Appellant-desired claim grouping. Accordingly,
based upon Appellants’ arguments against the rejections (App. Br. 18-42),
we select the following representative claims to decide this appeal in
accordance with those arguments:
Claim 1: Claims 1-19, 21-27, 39-47, 56-62, and 69-71 stand or fall
together with claim 1. (See App. Br. 18 and 22-27).
Claim 29: Claims 29-34 stand or fall together with claim 29 (See
App. Br. 19, 30-34).
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Claim 35: Claim 35 stands alone (See App. Br. 20, 35-38).
Claim 36: Claims 36-38 stand or fall together with claim 36 (See
App. Br. 19, 30-34).
Claim 51: Claims 51 and 55 stand or fall together with claim 51
(See App. Br. 20, 35-38).
Claim 72: Claims 72-76 stand or fall together with claim 72 (See
App. Br. 20-21).
We have only considered those arguments raised by Appellants in the
Briefs. Arguments Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii)(2010).
PRINCIPLES OF LAW
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by applicant.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
In KSR, the Court held the following:
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
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In re Kahn, 441 F. 3d 977, 988 (C.A. Fed. 2006)
(“[R]ejections 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.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
ISSUES AND ANALYSIS
1. 35 U.S.C. § 103(a): Claims 1-19, 21-27, 39-47, 56-62, and 69-71
Appellants’ Contentions
Appellants assert their claimed invention is not obvious over Meyer in
view of Srivastava.4 (App. Br. 16-17, 22). Specifically, Appellants contend
that claims 1, 8-10, 19, 27, 39, 47, 56, 61, and 69 are concerned with
processing media content by attempting to map the media’s physical
identifier to its logical identifier, and if the logical identification is not
found, a computer interface is presented so that the user can input
information pertaining to the media content. (App. Br. 18-19).
Appellants go on to contend that the Examiner argues that “Meyer
discloses a registration process wherein an identifier (i.e., a logical

4 We note that Appellants have stated that “the Office failed to establish a
prima facie case of anticipation in rejecting Claims 1 . . . .” (App. Br. 22,
emphasis added). We assume that this oversight by Appellant was intended
to state “unpatentability,” and we proceed accordingly in reaching our
Decision.
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identifier) is linked with a database record, which associates the identifier
with data.” (App. Br. 29, citing NFOA at 15). Appellants further contend
that, whether or not Meyer teaches or suggests the particular registration
process as the Examiner alleges, Meyer nonetheless fails to teach or suggest
the limitation “if no logical ID is found that corresponds to the physical ID,
attempting to establish a logical ID for the physical ID by causing a Wizard
user interface (UI) to be presented to a user via a client computer so that
information pertaining to the user's specific media can be collected from the
user,” as recited in claim 1. (App. Br. 29).
Appellants further contend that Meyer gives a user the option of
“purchasing or renting a link” and, to do so, a user can “enter input (e.g.,
click on a button,” but that Meyer does not “disclose or suggest attempt[ing]
to establish a logical ID for the physical ID by causing a Wizard user
interface (UI) to be presented to a user via a client computer so that
information pertaining to the user’s specific media can be collected from
the user.” Appellants contend further in this regard that Meyer simply gives
a user the option of purchasing or renting a link, “but does not collect
‘information pertaining to the user’s specific media’ from the user,” as
recited in claim 1. (Id., emphasis in original).
Finally, Appellants contend that claims 2-4, 11-18, 21-26, 40-46, 57-
60, 62, and 70-71 depend from one of independent claims 1, 10, 19,39, 56,
61, and 69 and are allowable as depending from an allowable base claim,
and are also allowable for their own recited features that, in combination
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with those recited in claims 1, 10, 19, 39, 56, 61, and 69, have not been
shown to be anticipated 5 in the Final Office Action. (App. Br. 30).
Issue 1
Did the Examiner err in finding that the combination of Meyer and
Srivastava teaches or suggests a method of processing media content in
which “if no logical ID is found that corresponds to the physical ID,
attempting to establish a logical ID for the physical ID by causing a Wizard
user interface (UI) to be presented to a user via a client computer so that
information pertaining to the user's specific media can be collected from the
user,” as recited by claim 1?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1-19, 21-27, 39-47, 56-62, and 69-71, and
we 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 Suppl. Answer (Suppl.
Ans. 5-31; 47-49) in response to Appellants’ Arguments (App. Br. 18-19,
22-30; Reply Br. 3-13). However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.

5 Here and elsewhere in the Appeal Brief, we assume that Appellants
intended to argue unpatentability rather than anticipation in accordance
with the rejections on appeal.
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We concur with the conclusions reached by the Examiner, particularly
the Examiner’s findings that the combination of Meyer and Srivastava
teaches or suggests the limitation “if no logical ID is found that corresponds
to the physical ID, attempting to establish a logical ID for the physical ID by
causing a Wizard user interface (UI) to be presented to a user via a client
computer so that information pertaining to the user’s specific media can be
collected from the user,” as recited in independent claim 1.
In particular, we agree with the Examiner and find that Meyer teaches
the required mapping between physical IDs and logical IDs, as well as
teaching a user interface “presented to a user via a client computer so that
information pertaining to the user’s specific media can be collected from the
user,” as recited in claim 1 (e.g., see Suppl. Ans. 47-49).
We further note that Appellants have not convinced us of any error in
the Examiner’s characterization of the cited art or in the Examiner’s claim
construction. Accordingly, we sustain the Examiner’s rejection of claims 1-
19, 21-27, 39-47, 56-62, and 69-71.
2. 35 U.S.C. § 103(a): Claims 29-34
Appellants’ Contentions
Appellants assert their claimed invention is not obvious over Jaeger in
view of Suganuma. (App. Br. 30; Reply Br. 14). Specifically, Appellants
contend that the combination of Jaeger with Suganuma does not teach or
suggest the limitation “wherein different instances of a specific media with
the same content thereon are associated with different physical IDs that are
mappable to the same logical ID,” as recited in claim 29.
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Further in this regard, Appellants also contend that “the Office has
failed to present any argument as to how the references teach or suggest
‘wherein different instances of a specific media with the same content
thereon are associated with different physical IDs that are mappable to the
same logical ID,’ as recited in Claim 29 . . .” (emphasis in original), and
that “[t]his feature is simply not addressed in the Office’s rejections or in the
cited portions of the references.” (App. Br. 32).
Appellants also contend that “[c]laims 30-34 depend from Claim 29
and are allowable as depending from an allowable base claim . . . [t]hese
claims are also allowable for their own recited features that, in combination
with those recited in Claim 29 have not been shown to be anticipated in the
Final Office Action.” (App. Br. 33, emphasis added to highlight previously
addressed error, see FN 4, supra).
Finally, Appellants contend that the Examiner has introduced new
arguments with respect to the rejection of independent claim 29. (Reply Br.
14).
Issue 2
Did the Examiner err in finding that the combination of Jaeger and
Suganuma teaches a method of processing media content “wherein different
instances of a specific media with the same content thereon are associated
with different physical IDs that are mappable to the same logical ID,” as
recited by claim 29?
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Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We find that the Examiner’s
Supplemental Answer corrected the appearance that “new arguments” were
introduced in the rejection of claim 29. We disagree with Appellants’
conclusions with respect to claims 29, and we 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 Suppl. Examiner’s Answer (Suppl. Ans. 32-36 and 51-52) in response to
Appellants’ Arguments (App. Br. 30-34). However, we highlight and
address specific findings and arguments regarding claim 29 for emphasis as
follows.
In particular, we concur with the Examiner’s finding that
Jaeger discloses the capability to search a database by using
a physical identifier linked to a logical ID. The retrieval of
multiple database records in response to a query is a
standard and not novel occurrence. If the database contains
multiple records, which satisfy or match the set of terms
utilized for the search query, multiple database records will
be returned. There is nothing novel about this occurrence.
Multiple physical IDs (i.e. information for multiple database
records) can be associated (i.e. mapped) to a single logical
ID.
Suppl. Ans. 51-52.
Contrary to Appellants’ contentions, supra, we find that this
determination of fact by the Examiner addresses Appellants’ contention
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regarding the cited art’s mapping of different physical IDs to the same
logical ID, and further supports the Examiner’s related claim construction.
Appellants’ arguments are unpersuasive, and have not convinced us of
any error in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we agree with the Examiner that Jaeger in
combination with Suganuma teaches “wherein different instances of a
specific media with the same content thereon are associated with different
physical IDs that are mappable to the same logical ID.” Accordingly, we
sustain the Examiner’s rejection of claim 29.
3. 35 U.S.C. § 103(a): Claims 36-38
Appellants’ Contentions
Appellants assert their claimed invention is not obvious over Jaeger in
view of Suganuma. (App. Br. 33-34). Specifically, Appellants contend that
the cited art does not teach or suggest “if the second low cost search is
unsuccessful, conducing a third higher cost search of the canonical table to
determine whether there is a matching physical ID with a corresponding
logical ID,” as recited in independent claim 36.
In support of this contention, Appellants point out that the section of
Jaeger cited by the Examiner in support of the Examiner’s position (see
Jaeger at col. 4, ll. 33-46 and 50-56)
merely discloses certain data structures and the particular
data contained in those structures. Jaeger further discloses
that the data records are assigned physical addresses of IDs
that indicate where the records may be found. (Jaeger at
column 4, lines 44-46). Jaeger does not teach or suggest a
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third higher cost search, much less a third search
comprising a higher cost than a first low cost search.
(Emphasis added). This feature is clearly missing from
Jaeger. Moreover, Suganuma fails to cure the deficiency of
Jaeger.
App. Br. 34.
Finally, Appellants contend that the Examiner has introduced new
arguments with respect to the rejection of independent claim 36. (Reply Br.
14).
Issue 3
Did the Examiner err in finding that the combination of Jaeger and
Suganuma teaches a method of processing media content that teaches or
suggests that, “if the second low cost search is unsuccessful, conducting a
third higher cost search of the canonical table to determine whether there is a
matching physical ID with a corresponding logical ID,” as recited by claim
36?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We find that the Examiner’s
Supplemental Answer corrected the appearance that “new arguments” were
introduced in the rejection of claim 36. Notwithstanding this correction,
however, we agree with Appellants’ conclusions that the Examiner erred
with respect to the rejection of claims 36-38, and we disagree with (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
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the Supplemental Examiner’s Answer (Suppl. Ans. 35-36, 52-53) in
response to Appellants’ Arguments (App. Br. 33-34).
In particular, we agree with Appellants that the cited art does not
teach or suggest “if the second low cost search is unsuccessful, conducting a
third higher cost search of the canonical table to determine whether there is a
matching physical ID with a corresponding logical ID,”, as recited in claim
36. (App. Br. 34).
We agree with Appellants that the Examiner erred because we find the
cited art to be silent on any teaching or suggestion of conducting a third
search with a higher cost, and is particularly silent on a third, higher cost
search being performed after an unsuccessful second search is conducted.
Having found at least one error in the Examiner’s rejection of claim
36, we cannot sustain the rejection of claim 36.
4. 35 U.S.C. § 103(a): Claim 35
Appellants’ Contentions
Appellants assert their claimed invention is not obvious over Jaeger
and Suganuma in view of Srivastava. (App. Br. 35-37). Specifically, and
similar in at least one respect to the rejection of claim 36, Appellants
contend that the cited art does not teach or suggest “if the second search is
unsuccessful, search the first table using a third search, the third search
comprising a higher cost search than the first search,” as recited in
independent claim 35. In support of this contention, Appellants argue that
Jaeger fails to teach or suggest these limitations, which are asserted as
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“simply missing from the cited references,” and that the cited art, either
individually or in combination, fails to cure the deficiency of Jaeger in this
regard. (App. Br. 37).
In addition, Appellants contend that the Examiner has introduced new
arguments with respect to the rejection of independent claim 35. (Reply 14).
Issue 4
Did the Examiner err in finding that the combination of Jaeger and
Suganuma with Srivastava teaches or suggests “if the second search is
unsuccessful, search the first table using a third search, the third search
comprising a higher cost search than the first search,” as recited by claim
35?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We find that the Examiner’s
Supplemental Answer corrected the appearance that “new arguments” were
introduced in the rejection of claim 35. Notwithstanding this correction,
however, we agree with Appellants’ conclusions that the Examiner erred
with respect to the rejection of claim 35, and we disagree with (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 Supplemental Examiner’s Answer (Suppl. Ans. 37-38, 53-54) in
response to Appellants’ Arguments (App. Br. 35-37).
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In particular, we agree with Appellants that the Examiner erred
because the cited art is silent on teaching or suggesting a computer-readable
media in which “if the second search is unsuccessful, search the first table
using a third search, the third search comprising a higher cost search than the
first search,” as recited in claim 35. We find no teaching or suggestion in
the art of record that a third, higher cost search is performed after
unsuccessful first and second searches are conducted.
Having found at least one error in the Examiner’s rejection of claim
35, we cannot sustain the rejection of claim 35.
5. 35 U.S.C. § 103(a): Claims 51 and 55
Appellants’ Contentions
Appellants assert that their claimed invention is not obvious over
Jaeger and Suganuma in view of Srivastava. (App. Br. 38). Specifically,
Appellants contend that the cited art does not teach or suggest “at least one
other less trusted table containing multiple physical IDs and multiple logical
IDs, individual physical IDs being mapped to individual logical IDs,” as
recited in independent claim 51.
In support of this contention, Appellants point out that the portion of
Jaeger cited by the Examiner in support of the rejection (i.e., Jaeger at col. 4,
ll. 33-46 and col. 4, ll. 50-56) provides no teaching or suggestion of a “less
trusted table,” as recited in claim 51. (App. Br. 37-38).
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Appellants further contend that the Examiner has introduced new
arguments with respect to the rejection of independent claim 51. (Reply Br.
14).
Issue 5
Did the Examiner err in finding that the combination of Jaeger,
Suganuma and Srivastava teaches “at least one other less trusted table
containing multiple physical IDs and multiple logical IDs, individual
physical IDs being mapped to individual logical IDs,” as recited in claim 51?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We find that the Examiner’s
Supplemental Answer corrected the appearance that “new arguments” were
introduced in the rejection of claim 51. We disagree with Appellants’
conclusions that the Examiner erred with respect to the rejection of claim 51,
and we 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 Supplemental Examiner’s
Answer (Suppl. Ans. 39-40, 55-57) in response to Appellants’ Arguments
(App. Br. 37-38). However, we highlight and address specific findings and
arguments regarding claim 51 for emphasis as follows.
In particular, we agree with the Examiner’s analysis of Appellants’
disclosed and claimed “less trusted table” with respect to the recitations of
claim 51, as set forth in the Supplemental Answer. (Suppl. Ans. 55-57).
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We find that Appellants’ arguments are unpersuasive, and have not
convinced us of any error in the Examiner’s characterization of the cited art
and related claim construction. Therefore, we agree with the Examiner that
Jaeger in combination with Suganuma and Srivastava teaches “at least one
other less trusted table containing multiple physical IDs and multiple logical
IDs, individual physical IDs being mapped to individual logical IDs,” as
recited in claim 51. Accordingly, we sustain the Examiner’s rejection of
claim 51.
6. 35 U.S.C. § 103(a): Claims 72-76
Appellants’ Contentions
Appellants assert their claimed invention is not obvious over Milsted.
(App. Br. 39-42). Specifically, Appellants contend that Milsted does not
teach or suggest “statistically evaluating the entries to determine, for each
physical ID, a most likely logical ID match,” as recited in independent claim
72. In support of this contention, Appellants argue that Milsted is
completely silent on teaching or suggesting “subject matter that even
remotely resembles the subject matter recited by claim 72.” (App. Br. 41).
In particular, Appellants contend that “Milsted fails to mention either
a logical ID or a physical ID, much less a statistical evaluation of entries to
determine, for each physical ID, a most likely logical ID match.” App. Br.
41 (emphasis in original.)
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Issue 6
Did the Examiner err in finding that Milsted teaches or suggests
“statistically evaluating the entries to determine, for each physical ID, a most
likely logical ID match,” as recited by claim 72?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
conclusions that the Examiner erred with respect to the rejection of claim 72,
and we disagree with (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 Supplemental Examiner’s Answer
(Suppl. Ans. 41-42) in response to Appellants’ Arguments (App. Br. 39-41).
In particular, we agree with Appellants that the Examiner erred
because Milsted is silent on providing any teaching or suggestion of data
collection for statistical generation and analysis. In particular, we find that
Milsted does not teach or suggest “statistically evaluating the entries to
determine, for each physical ID, a most likely logical ID match,” as recited
in claim 72.
Having found at least one error in the Examiner’s rejection of claim
72, we cannot sustain the rejection of claim 72.
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CONCLUSIONS
(1) Appellants have not established that the Examiner erred with
respect to the rejection of claims 1-19, 21-27, 39-47, 56-62, and 69-71 under
35 U.S.C. § 103(a).
(2) Appellants have not established that the Examiner erred with
respect to the rejection of claims 29-34 under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred with
respect to the rejection of claims 36-38 under 35 U.S.C. § 103(a).
(4) Appellants have established that the Examiner erred with
respect to the rejection of claim 35 under 35 U.S.C. § 103(a).
(5) Appellants have not established that the Examiner erred with
respect to the rejection of claims 51 and 55 under 35 U.S.C. § 103(a).
(6) Appellants have established that the Examiner erred with
respect to the rejection of claims 72-76 under 35 U.S.C. § 103(a).
DECISION
(1) The decision of the Examiner to reject claims 1-19, 21-27, 39-
47, 56-62, and 69-71 under 35 U.S.C. § 103(a) as being obvious over Meyer
in view of Srivastava is affirmed.
(2) The decision of the Examiner to reject claims 29-34 under 35
U.S.C. § 103(a) as being obvious over Jaeger in view of Suganuma is
affirmed.
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(3) The decision of the Examiner to reject claims 36-38 under 35
U.S.C. § 103(a) as being obvious over Jaeger in view of Suganuma is
reversed.
(4) The decision of the Examiner to reject claim 35 under 35
U.S.C. § 103(a) as being obvious over Jaeger and Suganuma in view of
Srivastava is reversed.
(5) The decision of the Examiner to reject claims 51 and 55 under
35 U.S.C. § 103(a) as being obvious over Jaeger and Suganuma in view of
Srivastava is affirmed.
(6) The decision of the Examiner to reject claims 72-76 under 35
U.S.C. § 103(a) as being obvious over Milsted 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