Ex Parte 6601104 et al

Board of Patent Appeals and Interferences

Oct 7, 2011

90009428 (B.P.A.I. Oct. 7, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,428 04/07/2009 6601104 2855.003REX0 5648
26111 7590 10/07/2011
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HENEGHAN, MATTHEW E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/07/2011 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 REALTIME DATA LLC.
____________________

Appeal 2011-003299
Application 90/009,428
United States Patent 6,601,104 B1
Technology Center 3900
____________________

Before RICHARD TORCZON, ALLEN R. MACDONALD, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed May 18, 2011, Appellant requests a rehearing under
37 C.F.R. § 41.52 from the Opinion of the Board of Patent Appeals and
Interferences (hereinafter Board), dated March 18, 2011. In the Opinion, we
affirmed the Examiner’s rejection of claims 1, 2, 12, 13, 18, 24, and 25.

Appeal 2011-003299
Application 90/009,428
U.S. Patent No. 6,601,104 B1

2
Appellant argues that the Board erred by misapprehending or
overlooking Appellant’s arguments previously raised in the Briefs for
claim 1 and dependent claims 2 and 12 only (Req. Reh’g 1).
As we stated in the Opinion, Ohkubo, for example, discloses
“instructions” (i.e., from the CPU, that contains a “storage device” – e.g.,
“main memory”), the instructions being executable by a “machine” (i.e.,
device 6) (see, e.g., Opinion 5) to compress and store data. Similarly,
claim 1 recites a storage device having instructions that are executable by
the machine to compress and store data.
Appellant argues that the Board misapprehended the meaning of the
preamble of claim 1 (Req. Reh’g 2). Specifically, Appellant presents
various grammatical theories (Req. Reh’g 3-4) in an attempt to demonstrate
that claim 1 does not require the machine to perform the claimed method.
We disagree for the reasons set forth in the Opinion. First of all, claim 1 is
directed to a storage device, not a program of instructions or a machine. In
any event, claim 1 explicitly recites instructions executable by the machine
to perform the method. The plain language of the claim requires activity on
the part of the machine. Appellant does not demonstrate that the method is
performed by software instructions alone such that claim 1 only includes
software and requires no input from the machine at all or that the “machine”
as recited is only software with no part of the machine being hardware.
In addition, Appellant argues that Ohkubo discloses a method
performed only in hardware (Req. Reh’g 9, citing Ohkubo, col, 3, ll. 49-65)
Appeal 2011-003299
Application 90/009,428
U.S. Patent No. 6,601,104 B1

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but does not indicate how the cited passages of Ohkubo signifies that only
hardware (and no software at all) is used. For example, Appellant cites
Ohkubo as disclosing “[i]n the device 6, the image data compressed by one-
dimensional coding are expanded . . .” and “the . . . device 6 employs a one-
dimensional run length coding system” (Req. Reh’g 9). Appellant does not
further explain how any of these disclosures indicates that Ohkubo utilizes
only hardware and does not utilize any software at all. Rather, Ohkubo
discloses a machine (i.e., device 6) performing “one-dimensional coding.”
While the “device” of Ohkubo may be a hardware device, not only does this
device perform the method based on an “instruction,” as we pointed out in
the Opinion, but Ohkubo also discloses other “instructions” that various
components (presumably hardware components) use to operate (e.g., a “read
instruction” – col. 3, l. 38). This demonstrates that the hardware
components of Ohkubo operate via the execution of instructions.
Appellant does not adequately demonstrate how any of the
“instructions” that components of Ohkubo utilize to perform functions are
hardware components only and do not constitute any software at all. Indeed,
one of ordinary skill in the art would have understood that “instructions”
include software, at least in part. Conversely, regardless of whether the
“instructions” of Ohkubo are hardware components or software instructions,
claim 1 recites “instructions” which Appellant has not adequately
demonstrated to be distinct from the “instructions” of Ohkubo.
Appeal 2011-003299
Application 90/009,428
U.S. Patent No. 6,601,104 B1

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Thus, as we stated in the Opinion, we cannot agree with Appellant’s
contention that Ohkubo, for example, discloses performing a method using
only hardware and using no software at all or that the claimed “instructions”
are different from the “instructions” disclosed by Ohkubo. Most
importantly, however, as we stated in the Opinion, we still agree with the
Examiner that Ohkubo discloses instructions executable by a machine (i.e., a
machine such as device 6 that executes instructions) to perform the method.
We are also not persuaded by Appellant’s arguments pertaining to
Aakre for the reasons previously set forth in the Opinion (Req. Reh’g 7-9)
and reasons set forth above. Appellant argues that Aakre discloses the use
of “other compression or encryption routines” but that these other routines
“would also be implemented in hardware” (Req. Reh’g 10-11). We cannot
agree with Appellant at least because Appellant provides insufficient support
for this interpretation, which appears to contradict the Aakre disclosure.
Aakre discloses the use of the “other routines” but that “[t]he
particular routine described [in the preceding paragraphs of the Aakre
reference] is implemented in hardware” (col. 5, ll. 4-5). Since the
“particular” routine described by Aakre is explicitly disclosed as being
implemented in hardware, one of ordinary skill in the art would have
understood the “other routines” to be different from the “particular” routine
that Aakre previously described. Since the feature emphasized by Aakre of
the disclosed routine is that it is implemented in hardware, one of ordinary
skill in the art would have understood that the “other routines” not only
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Application 90/009,428
U.S. Patent No. 6,601,104 B1

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differ from the “particular” routine but that the “other routines” differ from
the “particular” routine by the stated feature – i.e., being implemented in
software as opposed to hardware.
Appellant also argues that “hardware and software encoders are not
interchangeable” and that “any additional latency introduced in Aakre’s
compression scheme would be fatal to the design objective of Aakre’s
system” (Req. Reh’g 11). However, as we pointed out in the Opinion (see,
e.g., Opinion 7-9), Aakre discloses a computer (that includes a controller and
compressor) that would execute computer instructions to perform the
method, which is the same feature recited in claim 1. Appellant does not
provide sufficient additional arguments or evidence indicating otherwise.

CONCLUSION
For at least the foregoing reasons and those expressed in our Opinion,
we have considered Appellant’s Request for Rehearing but find no points
that we have misapprehended or overlooked. Therefore, the Request for
Rehearing is DENIED.
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).

DENIED
Appeal 2011-003299
Application 90/009,428
U.S. Patent No. 6,601,104 B1

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For Patent Owner
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 New York Ave, NW
Washington, DC 20005-79970

For Third Party Requester
MCDERMOTT, WILL, & EMERY LLP
600 13th Street, NW
Washington, DC 20005-3096

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