Ex Parte Salt

Patent Trials and Appeals BoardApr 28, 2016

10501488 - (D) (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/501,488 0412212005 Bryan Salt 35690 7590 05/02/2016 MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C. P.O. BOX 398 AUSTIN, TX 78767-0398 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 6257-31902 2505 EXAMINER MIRZA, ADNAN M ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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): patent_docketing@intprop.com ptomhkkg@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRYAN SALT Appeal2014-002179 Application 10/501,488 Technology Center 2400 Before JASON V. MORGAN, MELISSA A. HAAPALA, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from a non-final rejection (Non-Final Act., Nov. 16, 2012) of claims 52-55 and 118-137. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. STATEMENT OF THE CASE The Examiner rejects claims 118-126 and 137, under 35 U.S.C. Â§ 101, as encompassing transitory signals. Non-Final Act. 2-3. The Examiner rejects claims 52-55 and 118-137, under 35 U.S.C. Â§ 103(a), as obvious over Xu (US 7,050,646 B2; May 23, 2006) and Pulier (US 2002/0091840 Al; July 11, 2002). Non-Final Act. 3-7. Appeal2014-002179 Application 10/501,488 REJECTION OF CLAIIvIS 118-126 AND 137 UNDER 35 U.S.C. Â§ 101 Claims 118-126 and 137 are directed to an "article of manufacture including a computer readable medium" (independent claims 118 and 137). Focusing on the recitation of "computer readable medium," the Examiner rejects these claims under 35 U.S.C. Â§ 101, as encompassing transitory signals. Ans. 4-5; Non-Final Act. 2-3. As argued by Appellant, the Examiner does not address the "article of manufacture" language and does not explain why the claim as a whole, would be understood as encompassing transitory signals. App. Br. 7. Notably, the Examiner cites In re Nuiljen (Ans. 4-5; Non-Final Act. 3), yet omits the discussion of legal and ordinary meanings for "article," "manufacture," and "article of manufacture" (500 F.3d 1346, 1356-57 (Fed. Cir. 2007)). Nuiljen 's discussion evidences that, at Appellant's time of invention, an "article of manufacture" was understood as excluding transitory signals. See id. Because the claim recites that it is directed to an "article of manufacture," the elements are non-transitory. For the foregoing reasons, we do not sustain theÂ§ 101 rejection of claims 118-126 and 137. REJECTION OF CLAIMS 118-126 AND 137 UNDER 35 U.S.C. Â§ 103(A) Claims 52-55 and 118-137 are rejected as obvious over Xu and Pulier. Appellant argues, inter alia, the Examiner has not shown Xu and Pulier suggest the claimed invention's selective apportioning of an image's construction between a client and server. App. Br. 10-14, 16-18, 20; see 2 Appeal2014-002179 Application 10/501,488 also Spec., abst. ("apportions the processing between the server and the mobile telephone"). We concur for the reasons below. Arguments Appellant's argument principally addresses independent claim 52. Appellant argues Xu's cited teachings do not suggest claim 52's "the server selecting a first set of the plurality of operations" because: To the extent that Xu FIG. 4 steps 402, 404, 406, 408, 410, and 412 are interpreted as the claimed plurality of operations, a first set of those operations is not selected at all in Xu . . . . Instead, each of those operations appears to be performed each time Xu's image segmentation is performed. App. Br. 11. And, Appellant argues Pulier's cited teachings do not suggest claim 52' s "the server sending the processed image element to the first client ... configured to perform remaining ones of the plurality of operations" because: [Pulier's] "MPH sniffer module is a client-side application" that calculates bandwidth as part of the "provider selection process[]" . . . to select the best streaming media provider to deliver the media content . . . . Choosing a provider from which to stream media has nothing to do with [claim 5 2' s above limitation.] App. Br. 12 (emphases omitted). Appellant's arguments for remaining independent claims 118, 127, 134, and 137 also address recitations for selective apportioning of image re/construction between a client and server. App. Br. 13, 16-17, 20. Appellant argues the Examiner has neglected: claim l 18's "determining a first portion of the plurality of tasks to be performed by the computer system, ... based [on a] characteristic associated with the client" (id. at 13); 3 Appeal2014-002179 Application 10/501,488 claim 127's "selecting between the processed version of the image and the unprocessed version of the image, ... based [on a] characteristic associated with the client" (id. at 16); and, claim 134's and claim 137's "receiving from the server a plurality of image elements processed to an extent determined [by a] characteristic associated with the client" (id. at 17, 20). 1 Further, for these claims, Appellant also argues that the Examiner has failed to provide a primafacie rejection. App. Br. 13, 16, 17, and 20. Appellant further argues, for all claims, the Examiner's findings do not present the combination of Xu's and Pulier's teachings with sufficient particularity. Reply Br. 6-7. Analysis The above arguments are persuasive insofar as the Examiner does not articulate how Xu's and Pulier's cited teachings are combined to reach the claimed invention's selective apportioning of an image's construction between a client and server. Rather, the Examiner ambiguously speaks of modifying Xu's client-server interactions (i.e., between one client and one server) to incorporate Pulier's media provider selection (i.e., from amongst multiple servers). Non-Final Act. 4-5. We understand the Examiner's proposed combination as follows. Xu' s image processor and device are implemented as a server and client. Id. at 4 ("image processor in XU as a server and the image device as a client"). Xu selects an operation based on an image forming data value. Id. (stating Xu' s image forming data values are the same as the parameter required to 1 Claim 118 further recites "transmitting the partially processed version of the image to the client[.]" Claim 127 further recites "transmitting the selected version of the image to the client." 4 Appeal2014-002179 Application 10/501,488 generate an image element); see also Xu col. 7, 11. 6-31 (cited). And, the client switches between multiple media servers via Pulier' s teachings. Non-Final Act. 5 ("[Pulier's] sniffer module gives the [multiple provider hosting] process an initial of where to start in the provider selection process."). Even assuming the above combination, there is still no indication of selectively apportioning, between a client and a server, operations used in an image reconstruction process. Further, we agree with the Appellant that for claims 118, 127, 134, and 137 the Examiner has not addressed all limitations because the Examiner's rejection only maps the limitations recited in claim 52 (Non- Final Act. 3-5) and these claims recite features that are not present in claim 52. Therefore, the Examiner has failed to present a prima facie case of obviousness for these claims. For the foregoing reasons, we do not sustain theÂ§ 103(a) rejection of claims 52-55 and 118-137. DECISION The Examiner's rejection of claims 52-55 and 118-137 is reversed. REVERSED 5