Ex Parte 6208804 et al

Board of Patent Appeals and Interferences

Jul 1, 2010

90008097 (B.P.A.I. Jul. 1, 2010)

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.
90/008,097 06/09/2006 6208804 45403-28003.00 4566
25224 7590 07/01/2010
MORRISON & FOERSTER, LLP
555 WEST FIFTH STREET
SUITE 3500
LOS ANGELES, CA 90013-1024
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/01/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ECHOSTAR TECHNOLOGIES L.L.C.1
____________

Appeal 2010-002222
Reexamination Control No. 90/008097
United States Patent 6,208,804 B1
Technology Center 3900
____________

Before ROBERT E. NAPPI, KARL D. EASTHOM, and KEVIN F.
TURNER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL2

1 Appellant, EchoStar Technologies L.L.C., is the real party in interest for
this appeal and assignee of record.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

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Reexamination Control 90/008,097
Patent 6,208,804

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Patent Owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-11 and 13-28. Claim 12 has been
confirmed. (App. Br. 1.)3 We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306.
We REVERSE.

STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination (filed June 9, 2006) by TiVo Inc. of United States Patent
6,208,804 B1, titled “Multimedia Direct Access Storage Device and
Formatting Method” and issued to Hal Hjalmar Ottesen, Gordon, J. Smith,
and George Willard VanLeeuwen on March 27, 2001. Appellant’s Brief
indicates that the ‘804 patent, along with U.S. Patent Nos. 6,529,685 and
5,774,186, were the subject of co-pending litigation styled as EchoStar
Technologies Corp. v. Tivo, Inc. et al., Case No. 5:05-00081-DF-CMC (E.D.
Tex., filed Apr. 29, 2005). The litigation has been stayed pending the
outcome of the reexamination of all three patents. (App. Br. 1.) (The ’186
patent reexamination proceeding has terminated with a certificate issuing
Feb. 3, 2009 (USPTO EDAN system)). An oral hearing involving the
remaining two patents was conducted at the USPTO on May 5, 2010. A
decision in the appeal of the reexamination of the ‘685 patent (95/000,173)
is being issued concurrently.

3 This opinion employs the following abbreviations: Examiner’s Answer
(“Ans.”), Appellant’s Appeal Brief (“App. Br.”), and Appellant’s Reply
Brief (“Reply Br.”).
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One disclosed embodiment in the ‘804 patent provides for local set-
top control and buffering of compressed program segments for subsequent
presentation thereof on a local display monitor. Some of the segments (e.g.,
A1, A3, A2, A4, A5, A7) are non-sequentially ordered (i.e., non-
chronologically ordered (see claim 1)) and transmitted to and received by the
buffer system, and are sequentially ordered (i.e., chronologically ordered
(see claim 1)) upon presentation on the display monitor. (Abstract, Fig. 6.)
Claim 1 on appeal reads as follows:
Claim 1: A direct access storage device for buffering at
least a chronological portion of a multimedia program defined
by non-chronologically ordered source program
segments, each of the source program segments being
representative of a unique portion of the
chronological multimedia program portion, the direct access
storage device comprising:
at least one data storage disk having a plurality of data
storing regions disposed on any of
a lower disk surface and an upper disk surface;
a spindle motor for rotating the at least one data storage
disk;
a common actuator having elongated arms;
a transducer comprising read and write elements disposed
on each of the elongated arms;
and
a controller that coordinates writing of the non-
chronologically ordered source program segments to the
plurality of data storing regions using the write elements of the
transducers, and coordinates reading of the non-chronologically
ordered source program segments from the data storing regions
as chronologically ordered local program segments using the
read elements of the transducers.

The Examiner relied upon the following prior art references:
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Lang US 5,057,932 Oct. 15, 1991
Hooper US 5,442,390 Aug. 15, 1995
Russo US 5,701,383 Dec. 23, 1997
Sedlmayr US 5,761,166 June 2, 1998

Quantum 2000 Series Low-cost 8-inch Fixed Disk Drives (Product
Advertisement) (1982) [hereinafter Quantum].

Sierra, Hugh M., An Introduction to Direct Access Storage Devices
(Academic Press 1990) [hereinafter Sierra].

Ruemmler, Chris & Wilkes, John (Hewlett-Packard Laboratories), Unix Disk
Access Patterns (1993 Usenix Winter Technical Conference
Proceedings)[hereinafter HP].

Claims 1-4, 9-11, 13-16, 21-25 and 28 stand rejected under 35 U.S.C.
103(a) as obvious based on Lang, Sedlmayr, Sierra, and Quantum.
Claims 1-7, 11, 13-19, 23-25, 27 and 28 stand rejected under 35
U.S.C. 102(b) as anticipated based Hooper.
Claims 8, 20 and 26 stand rejected under 35 U.S.C. 103(a) as obvious
based on Hooper and Russo.
ISSUE
Appellant and the Examiner primarily disagree over whether known
prior art disk systems, including those employing fragmentation processes,
satisfy the controller limitation recited in independent claim 1 and a similar
limitation in claims 14 and 24. (See App. Br. 11-17.) Thus, this appeal
involves the following issue:
Did the Examiner show that the applied prior art either discloses or
suggests a controller that coordinates writing non-chronologically ordered
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source program segments to data storing regions and reading the segments as
chronologically ordered local program segments?

FINDINGS OF FACT
1. Figure 9 of Sedlmayr shows the writing of data on different parts
of a disk as fragmented portions. (Col. 32, ll. 11-13.)
2. Figure 10 of Sedlmayr shows a disk that has been de-fragmented.
(Col. 32, ll. 14-17.)
3. Hooper discloses a memory buffer in a segment cache 14 storing a
segment of video which has frames which can be viewed as selected in
different modes including forward, reverse, and jump. (Col 3 ll. 55-58; Col.
14, ll. 55-65.) The window segments are typically five minutes long. If a
customer desires to see a video segment that has been previously viewed but
is no longer in the local window, the window is fast-filled from a remote
server. (Col. 10, ll. 9-53.)
PRINCIPLES OF LAW
Appellant has the burden on appeal to show reversible error by the
Examiner in maintaining the rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Under § 102, Appellant
may sustain this burden by showing that the prior art reference relied upon
by the Examiner fails to disclose an element of the claim. It is axiomatic
that anticipation of a claim under § 102 can be found only if the prior art
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reference discloses every element of the claim. See In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986).
“‘[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.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted). Obviousness is determined on the basis of the evidence
as a whole and the relative persuasiveness of the arguments. See Oetiker,
977 F.2d at 1445.
ANALYSIS
Lang, Sedlmayer, and Sierra or Quantum- Obviousness
Appellant’s arguments focus on independent claims 1, 14, and 24
(which are of similar scope) as representative of claims 1-4, 9-11, 13-16, 21-
25 and 28 rejected as obvious based on Lang, Sedlmayr, and Sierra or
Quantum. (App. Br. 5-13.) Accordingly, claim 1 is selected to represent
this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that Sedlmayer’s disk fragmentation and de-
fragmentation (see FF 1, 2) does not satisfy the controller coordination of
writing and reading of the segments as required by claim 1. (App. Br. 7-8,
13.) Appellant explains that even if Sedlmayer teaches contemporary disk
fragmentation, the controller would merely read the segments as they are
written and thereby fail to satisfy or render obvious claim 1. (Reply Br. 13.)
In other words, the controller would not satisfy the claim 1 recitation of
coordinating “reading of the non-chronologically ordered source program
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segments from the data storing regions as chronologically ordered local
program segments.”
The Examiner reasons that any disk reader inherently would write
segments that happen to arrive non-chronologically as non-chronological.
(Ans. 4). However, the Examiner has not explained clearly how reading
non-chronological segments as chronological segments would occur in
Sedlmayr, or in any other reference of record.4
The Examiner alternatively interprets claim 1 as merely requiring
writing of segments so as to make them non-chronologically ordered as
written. (See Ans. 9-10.) In response to the Examiner’s claim
interpretation, Appellant argues that claim 1 requires the segments to be, or
arrive in, non-chronological order before they are written. (App. Br. 8.)
Appellant’s claim construction appears more reasonable based on the “non-
chronologically ordered source program segments” clause as introduced in
the preamble of claim 1. The subsequent clause in the claim body, “a
controller that coordinates writing of the non-chronologically ordered source
program segments,” refers back to the clause in the preamble, thereby
defining the type of segments to be written as non-chronologically ordered.
The Examiner has not demonstrated that the relied-upon prior art
controllers of record coordinate writing and reading as recited in claim 1,
because, as Appellant argues, those controllers would read any non-

4 The Examiner also cited the HP document supra as teaching asynchronous
disk access. The Examiner appears to rely on this document as evidentiary
and cumulative to Sedlmayr. (See Ans. 10.) Accordingly, HP is considered
to be cumulative to Sedlmayr.
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chronologically ordered segments as non-chronological, contrary to the
requirement of claim 1.
In sum, the Examiner has not established how writing and reading as
recited in claim 1 is rendered obvious by the references cited. Similar
remarks apply to independent claims 14 and 21 which recite similar
limitations. As such, we will not sustain the Examiner’s rejection of claims
1-4, 9-11, 13, 15, 16, 22-25, and 28 which stand with claims 1, 14 and 21.

Hooper - Anticipation
With respect to the anticipation rejection of claims 1-7, 11, 13-19, 23-
25, 27, and 28 based on Hooper, the Examiner offers two main rationales to
show that Hooper satisfies the same disputed writing and reading clause of
claim 1 as discussed supra. First, similar to the Examiner’s rationale supra,
the Examiner here relies on Sedlmayer’s or HP’s teachings for disk
fragmentation or asynchronous access. The Examiner asserts that these
references show inherency in the type of disk reading and writing involved
in Hooper’s disk controller system. The Examiner’s analysis relies on HP’s
teaching that 25-50% of all disk accesses are asynchronous or Sedlmayr’s
similar teaching that prior art disk systems “typically fragment data.” (Ans.
36; accord Ans. 39-40.)
These teachings of what is possible or probable in prior art systems do
not show that Hooper’s system necessarily involves these systems as
required to support anticipation under an inherency theory. In re Oelrich,
666 F.2d 578, 581 (CCPA 1981) (“‘Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
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form a given set of circumstances is not sufficient.’” (Citation omitted)). In
any case, even if such a system were implicit in Hooper, as discussed supra,
neither Sedlmayr’s disk fragmentation teachings nor HP’s asynchronous
disk access teachings satisfy the writing and reading function of independent
claims 1, 14, and 21.
Second, the Examiner also found that Hooper discloses fast forward
operations in which prior-viewed data can be written over current data, and
that Hooper teaches removal of data segments. Based on these underlying
factual findings, the Examiner reasoned that Hooper discloses the disputed
clause in claim 1 of coordinating the writing and reading of data in the
fashion claimed. (Ans. 18-19; 35-40.) While these underlying factual
findings appear correct and are not particularly challenged by Appellant (see
also FF 3), Appellant maintains that Hooper does not teach coordinating the
reading of non-chronologically ordered data as chronologically ordered as
set forth in the disputed clause. According to Appellant, the data would be
read in the same order as they are written (presumably into the window
segment – see FF 3), i.e., in whatever non-chronological order the user
intends to view the data. (App. Br. 15-16.)
The Examiner does not directly respond to Appellant’s argument
about Hooper’s teachings or fully explain in the rejection with sufficient
clarity how this disputed phrase in claim 1 reads on Hooper’s disclosed
system, especially when viewed in light of the argument presented. Rather,
the Examiner characterizes claim 1 as not requiring the data segments to be
read in chronological order as recited because, according to the Examiner,
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no support exists in the ‘804 patent disclosure for a DASD (direct access
storage device) controller performing the recited coordination. (Ans. 76-77.)
Appellant’s explanation shows how the disclosed device involves
controllers 64 and 67, which act together to perform the writing and reading
coordination recited. (See App. Br. 5-6; Reply Br. 7-8.) The Examiner
maintains that the controller in claim 1 is limited by the disclosed DASD
controller 67 in Figure 11 of the ‘804 patent. (Ans. 4-8.) Apparently, the
Examiner focuses on the preamble language in claim 1 which requires a
“direct access storage device for buffering” and reasons that this allows for
only a DASD controller as disclosed.
Appellant’s claim construction, in which the independent claims are
not limited to the disclosed DASD controller, is consistent with the ‘804
patent disclosure. Moreover, there does not appear to be any dispute that
both controllers, as disclosed, work together to perform the reading and
writing functions recited in the independent claims. However, either the
disclosed set-top controller 64 or controller 67 reasonably “coordinates
writing and . . . reading” (emphasis added) with the other controller and
thereby corresponds to the controller set forth in claim 1 (assuming for the
sake of argument that claim 1 requires only one controller, which is not
necessarily so).5 Similarly, claim 14 recites “a controller means” which is
broad enough to encompass two controllers acting in cooperation. Claim 21
recites a method without reciting a controller.

5 The Examiner does not explicitly argue that claim 1is limited to only one
controller, while Appellant argues it is not (Reply Br. 8).
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Therefore, the Examiner has not established how coordination of
writing and reading as set forth in claim 1 is met by Hooper. Similar
remarks apply to independent claims 14 and 24 which recite similar
limitations. As such, we will not sustain the Examiner’s anticipation
rejection of claims 1, 14, and 24 and of claims 2-7, 11, 13, 15-19, 23, 25, 27,
and 28 which depend from claims 1, 14 and 24.

Hooper and Russo- Obviousness
Appellant argues that claims 8, 20, and 26 are patentable based on the
deficiencies of Hooper which Russo does not cure. (App. Br. 18.) Based on
the foregoing discussion of claims 1, 14, and 24, we also will not sustain the
obviousness rejection of dependent claims 8, 20, and 26 based on the
additional reference to Russo because the Examiner does not employ Russo
to cure the deficiencies noted supra. (Ans. 63-65.)
CONCLUSION
The Examiner did not show that the applied prior art either discloses
or suggests a controller that coordinates writing non-chronologically ordered
source program segments to data storing regions and reading the segments as
chronologically ordered local program segments.

DECISION
The Examiner’s decision to reject appealed claims 1-11 and 13-28 is
reversed.
REVERSED

ack
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Patent 6,208,804

12

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