Ex Parte Waites

Patent Trial and Appeal BoardMay 13, 2014

11303481 (P.T.A.B. May. 13, 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. 11/303,481 12/16/2005 Nigel Waites 3412 7004 12755 7590 05/13/2014 Beck & Tysver, P.L.L.C. 2900 Thomas Avenue S., Suite 100 Minneapolis, MN 55416 EXAMINER SERRAO, RANODHI N ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 05/13/2014 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 NIGEL WAITES ___________ Appeal 2012-000932 Application 11/303,481 Technology Center 2400 ____________ Before ERIC B. CHEN, JOHNNY A. KUMAR, and MICHAEL J. STRAUSS, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000932 Application 11/303,481 2 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-4 and 21. Claims 5-20 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention relates to a router that makes digital media content on a home local area network accessible over a wide area network (e.g., Internet). The router can provide automated services for local files (e.g., photolab) processing of digital images or file backups. (Abstract.) Independent claims 1 and 21 are exemplary, with disputed limitations in italics: 1. A system for remote processing of digital files, comprising: a) a file server connected to a local area network (LAN) containing a designated folder for digital files; b) a media content server containing trigger logic to notify a media content router when a file requiring processing is placed into the designated folder; and c) the media content router containing: (i) router logic to manage the LAN and provide connectivity to a wide area network (WAN) for a digital device on the LAN; and (ii) upload logic to transmit the file requiring processing across the WAN to a remote service facility upon receipt of the notification from the media content server. 21. A media content router apparatus, comprising: a) router logic to manage a local area network (LAN) and provide connectivity to a wide area network (WAN) for a digital device on the LAN; and Appeal 2012-000932 Application 11/303,481 3 b) upload logic to transmit a file across the WAN to a remote location upon receipt of notification from a media content server that a file requiring. Claim 21 stands rejected under 35 U.S.C. §101 as directed to non- statutory subject matter.1 Claims 1-4 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious over Jones (US 2002/0188841 A1; Dec. 12, 2002) and Sparrell (US 7,529,263 B1; May 5, 2009). ANALYSIS § 101 Rejection We are persuaded by Appellant’s arguments (Reply Br. 4) that independent claim 21 complies with 35 U.S.C. § 101 as statutory subject matter. The Examiner found that the recited “apparatus consists of logic which is software alone and is not tied to any hardware” and thus, “the claimed invention does not fall within at least one of the four categories of patent eligible subject matter . . . .” (Ans. 5.) We do not agree. The preamble of claim 21 is directed towards “[a] media content router apparatus” and the body recites “a local area network (LAN)” and “a wide area network (WAN).” Appellant’s Figure 1 illustrates a home LAN 126 connecting, for example, a media content router 105 to a digital computer 16, with the home LAN 126 having remote access to a WAN 160. One technical definition of a “LAN” is “[a] group of computers and other 1 The Examiner has withdrawn the rejection of claims 1-4 under 35 U.S.C. § 101. (Ans. 9.) Appeal 2012-000932 Application 11/303,481 4 devices dispersed over a relatively limited area and connected by a communications link that enables any device to interact with any other on the network.” MICROSOFT® COMPUTER DICTIONARY 304 (5th ed. 2002). Similarly, one technical definition of a “WAN” is “[a] geographically widespread network, one that relies on communications capabilities to link the various network segments.” Id. at 561. Based on the Specification and the common understanding of “LAN” and “WAN” within the context of networking, the broadest reasonable construction of the recited “LAN” and “WAN” includes computers and associated devices, or hardware. Accordingly, we are persuaded by Appellant’s argument that “in addition to the media content router itself, the LAN and WAN necessarily involve hardware.” (Reply Br. 4.) Therefore, claim 21 is directed towards the statutory class of a “machine” under 35 U.S.C. § 101. Accordingly, we do not sustain the rejection of independent claim 21 under 35 U.S.C. § 101. § 103 Rejection We are unpersuaded by Appellant’s arguments (App. Br. 13-15) that the combination of Jones and Sparrell would not have rendered obvious independent claim 1, which includes the limitation “the media content router containing . . . upload logic to transmit the file requiring processing across the WAN to a remote service facility upon receipt of the notification from the media content server.” The Examiner acknowledged that Jones does not disclose the limitation “the media content router containing . . . upload logic to transmit Appeal 2012-000932 Application 11/303,481 5 the file requiring processing across the WAN to a remote service facility” (Ans. 6) and thus, relied upon Sparrell for teaching a media server that provides routing between a LAN and a WAN (Ans. 6; Sparrell, col. 9, l., 63 to col. 10, l. 1). The Examiner concluded that “[i]t would have been obvious . . . to modify Jones . . . [to] allow information transfers among non-QoS devices that require high bandwidth, without degradation in the normal performance of either the QoS or non-QoS devices . . . ” (Ans. 6-7). We agree with the Examiner. Jones relates to digital asset management of media content (Abstract), in particular “managing digital content using watermarks to link the content to related metadata” (¶ [0008]). For example, advertising and marketing firms can access databases of images and other media content via an extranet, a website, or other file transfer transactions. (¶ [0004].) Jones explains that when an image stored on a content database 102 is watermarked with metadata (e.g., a location at which the image was taken such as a beach name) stored on a metadata database system 116, “[t]he image is watermarked with an Image ID, establishing a link between the Image ID and the [corresponding] metadata database entry.” (¶ [0052].) Jones also explains that when a user acquires watermarked content from a metadata database system 116, a watermark reader application (¶ [0016]) “extracts a watermark message embedded in the content within the file and sends it to a routing application” (¶ [0017]). Thus, Jones teaches generating a “notification from the media content server.” Sparrell relates to “networked systems . . . for controlling and distributing digital video recording and playback functions . . .” (col. 1, ll. 18-21) such as controlling high bandwidth usage of non-QoS (Quality of Appeal 2012-000932 Application 11/303,481 6 Service) legacy devices (Abstract). Figure 1 of Sparrell includes a network system 100 (col. 5, ll. 37-39) that includes a media server 120 that “performs the centralized video recording and storage functions, as well as the primary routing, gateway, and traffic control functions for limiting bandwidth of the communications over the network system 100” (col. 5, ll. 63-67). Sparrell further explains that the media server 120 provides “routing between the LAN and external information sources, e.g., WAN, MAN, and/or Internet.” (Col. 9, l. 63 to col. 10, l. 1.) Because the media server of Sparrell routes (i.e., expedites the delivery of messages or files) between the LAN and WAN, Sparrell teaches the limitation “the media content router containing . . . upload logic to transmit the file requiring processing across the WAN to a remote service facility . . . .” One of ordinary skill would have recognized that incorporating the media server of Sparrell with the digital asset management of Jones would improve Jones by providing the advantage of controlling high bandwidth traffic content. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). In the alternative, combining Sparrell with Jones is no more than combining the known media server of Sparrell with the known digital asset management of Jones, to yield predictable results. See id. Accordingly, we agree with the Examiner (Ans. 6-7) that modifying Jones to include the media server of Sparrell would have been obvious. Appellant argues that “the objectives of Jones (identifying a watermark in a file to access remote databases to grab associated metadata) and Sparrell (allocating bandwidth on a LAN between competing devices) are unrelated.” (App. Br. 14.) However, as discussed previously, the combination of Jones and Sparrell is based on the improvement of a similar Appeal 2012-000932 Application 11/303,481 7 device in the same way as in the prior art, or in the alternative, by combining known elements to achieve predictable results. Furthermore, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant further argues that “the media server includes a gateway / router that (1) connects the LAN to an external network and (2) regulates communications of QoS and non-QoS devices on the LAN to nicely share the bandwidth” and Appellant “fails to see any relevance to uploading, across a WAN, by a router, of a file that has been identified by notification from a media content server as requiring processing.” (App. Br. 15.) However, as discussed previously, the media server of Sparrell routes (i.e., expedites the delivery of messages or files) between the LAN and the WAN. Thus, we agree with the Examiner that the combination of Jones and Sparrell would have rendered obvious independent claim 1, which includes the limitation “the media content router containing . . . upload logic to transmit the file requiring processing across the WAN to a remote service facility upon receipt of the notification from the media content server.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Claims 2-4 depend from claim 1, and Appellant has not presented any substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 2-4 under 35 U.S.C. § 103(a), for the same reasons discussed with respect to independent claim 1. Appeal 2012-000932 Application 11/303,481 8 Independent claim 21 recites limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any substantive arguments with respect to this claim. We sustain the rejection of claim 21, for the same reasons discussed with respect to claim 1. DECISION The Examiner’s decision to reject claim 21 under 35 U.S.C. § 101 is reversed. The Examiner’s decision to reject claims 1-4 and 21 under 35 U.S.C. § 103(a) is 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 ke