Ex Parte 7392283 et al

Patent Trial and Appeal Board

Jun 30, 2015

90012129 (P.T.A.B. Jun. 30, 2015)

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.
90/012,129 02/14/2012 7392283 XXOO-283 9928
108756 7590 06/30/2015
Gutride Safier LLP
100 Pine Street, Suite 1250
San Francisco, CA 94111
EXAMINER
TARAE, CATHERINE MICHELLE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex Parte INNOVATIVE AUTOMATION LLC
Patent Owner and Appellant
____________

Appeal 2015-004279
Reexamination Control 90/012,129
Patent 7,392,283
Technology Center 3900
____________

Before JOHN A. JEFFERY, JENNIFER L. McKEOWN, and
IRVIN E. BRANCH, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on February 6, 2012 of United States Patent 7,392,283 (the “’283 Patent”)
issued to Sungil Lee on June 24, 2008. Reexamination of claims 1-14 was
requested. The rejected claims 1–14, 16–19 and 21–25 are the subject of the
instant appeal. App. Br. 3; Reply Br. 1.1 Claim 15 is cancelled and claim 20
was skipped unintentionally. Br. 3.
The ’283 Patent is the subject of the civil actions, Innovative
Automation LLC v. Amazon.com, Inc. et al., No.6: 12-cv-881 (E.D. Tex.),
Innovative Automation LLC v. Digiboo, Inc., No.6: 13-cv-460 (E.D. Tex.);
and Innovative Automation LLC v. Books-A-Million, Inc., No.6: 13-cv-461
(E.D. Tex.). See Br. 2. While the’283 Patent has not been the subject of any
prior reexamination or reissue proceedings, U.S. Patent No. 7,174,362 (the
“’362 patent”), which is the parent of the ’283 Patent, has been the subject of
two reexaminations: Rex No. 90/012,128 and Rex. No. 90/012,684.
We AFFIRM.

THE INVENTION
The ’283 Patent is directed to
a digital data duplication system that utilizes one or more
computer networks to automate the process from order-taking
to product delivery. More specifically, the invention permits
users of CD duplication services to directly place requests into

1 Our decision will make reference to the Patent Owner’s Opening Brief on
Appeal (“Br.,” filed February 28, 2014) and the Examiner's Answer (“Ans.,”
mailed April 15, 2014).
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a server, which then schedules production, allocates resources,
executes duplication, and sorts the products for shipment.
’283 Patent, col. 1, ll. 9–15.
Claims 1 and 3 are illustrative of the appealed subject matter:
1. (Amended) A computer-implemented method of
digital data duplication comprising:
taking requests at one or more user interfaces;
transmitting said requests through a network to a
computer;
comparing the requirements of each of said request with
the number of digital recording mediums in at least one of a
plurality of output devices;
assigning each of said requests to one of [a] said plurality
of output devices; and
executing the duplication process, wherein said computer
comprises:
at least one first module configured to create
a task log based on incoming requests;
at least one second module configured to
provide data to be duplicated in said duplication
process;
at least one third module configured to
retrieve data for duplication from said second
module and download said data for duplication to
one of said output devices, and further configured
to command said output device to transfer said
data for duplication onto media; and
a connection through which said second
module communicates with said first module and a
connection through which said second module
communicates with said third module.

3. (Amended) [The method of claim 1,] A computer-
implemented method of digital data duplication comprising:
taking requests at one or more user interfaces;
transmitting said requests through a network to a
computer;
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assigning each of said requests to one of a plurality of
output devices; and
executing the duplication process, wherein said computer
comprises:
at least one first module configured to create
a task log based on incoming requests;
at least one second module configured to
provide data to be duplicated in said duplication
process;
at least one third module configured to
retrieve data for duplication from said second
module and download said data for duplication to
one of said output devices, and further configured
to command said output device to transfer said
data for duplication onto media, wherein said
media is selected from the group consisting of:
personal stereo players, laptop computers, and
palm top computers; and
a connection through which said second
module communicates with said first module and a
connection through which said second module
communicates with said third module.
Br., Claims App’x.

PRIOR ART REJECTIONS
The Examiner relies on the following references:
Cooke US 5,860,068 Jan. 12, 1999
Dockes US 6,011,758 Jan. 4, 2000
Patent Owner contends that the Examiner erred in entering the
following grounds of rejection:
1. The rejection of claims 1, 2, and 25 under 35 U.S.C. §112, second
paragraph, as indefinite for failing to particularly point out and
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distinctly claim the subject matter which the inventor regards as
the invention.
2. The rejection of claims 3 and 6–11 under 35 U.S.C. §102(b) as
anticipated by Cook.
3. The rejection of claims 1, 2, 4, 5, 12–14, 16–19, and 21–25 under
35 U.S.C. §103(a) as being unpatentable over Cook and Dockes.

ISSUES
1. Did the Examiner err by rejecting claims 1, 2, and 25 as indefinite?
2. Did the Examiner err by rejecting claims 3 and 6–11 under
35 U.S.C. §102(b) as anticipated by Cook?
3. Did the Examiner err by rejecting claims 1, 2, 4, 5, 12–14, 16–19,
and 21–25 as unpatentable over Cook and Dockes?

ANALYSIS
THE REJECTION UNDER 35 U.S.C. 112, SECOND PARAGRAPH
Claims 1, 2, and 25
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, and 25 as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor regards as the invention.
The Examiner’s indefiniteness conclusion is based on the newly
added limitation, “comparing the requirements of each of said request with
the number of digital recording mediums in at least one of a plurality of
output devices.” Ans. 2–3. Specifically, the Examiner finds that the term
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“the requirements” of a request is unclear and also finds that it is unclear
how these unidentified requirements, which may or may not be a number,
are compared with the number of digital recording mediums. See Ans. 3,
44–45. Further, the Examiner notes that the recited “the requirements” lacks
antecedent basis. Ans. 3.
The Patent Owner, on the other hand, contends that
[a] person of ordinary skill in the art would easily understand
“comparing the requirements of each of said request [sic] with
the number of digital recording mediums in at least one of a
plurality of output devices” as disclosing determining the
number of copies associated with a work request and comparing
that number to the number of blank recording mediums loaded
into the media recorder.
Br. 10. For support, the Patent Owner relies on col. 4, l. 56– col. 5, l. 10 of
the ’283 Patent, which describes checking to see if there are enough blank
recording mediums for a job in a particular output device.
The Patent Owner goes on to argue that a skilled artisan would
recognize, based on disclosures in the Specification, the possibility of
choosing an output device based on a comparison between the number of
copies requested and the number of recording mediums remaining in each
output device. Br. 10–11 (citing ’283 Patent, col. 3, ll. 60–64; col. 4, ll. 41–
50). With respect to the terms “comparing” and “requirements,” the Patent
Owner maintains that
There is no ambiguity how these terms should be applied in
view of the specification; they clearly should be interpreted as
asking for a comparison of the job’s requirements to the
capabilities of the output devices as reflected in the resource
files.
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Br. 11.
The Patent Owner’s arguments, though, fail to consider that the
claims do not recite comparing a single requirement of each request,
but the requirements. It is unclear whether “the requirements” refer to
all requirements of the job request or some lesser combination of
requirements, but the plain language of claims 1 and 25 at least
requires comparing more than one requirement. As such, the Patent
Owner’s proposed interpretation, comparing only the requested order
quantity with the number of blank digital recording mediums,
conflicts with the plain language of the claim. See Ans. 3 (noting the
plurality of the recited “requirements”). As the Examiner also points
out, the claim does recite comparing with the number of blank digital
recording mediums.
Further, while the ’283 Patent may generally describe using
hardware configuration data, such as type of CD writer, cache
contents, and number of drives, to select a particular output device for
a requested job, this description fails to add clarity to the recited
comparing limitation. For example, the ’283 Patent does not disclose
considering the number of blank recording mediums when assigning
the scheduling of job request or whether the number of blank
recording mediums stored on the resource file is hardware
configuration data. The ’283 Patent also at least suggests that the
check for sufficient blank recording mediums is performed after a job
request is scheduled. See, e.g., ’283 Patent, Fig 4 and col. 4, ll. 53–67
(checking whether there are enough recording mediums after creating
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the schedule for each output device and displaying a message if there
are insufficient recording mediums). As such, we are not convinced
that the Specification supports the Patent Owner’s contentions.
Therefore, we agree with the Examiner that the claims, read in
light of the Specification, are not reasonably precise and the Patent
Owner fails to persuasively explain why the recited comparing
limitation, in view of the Specification, is not unclear. See In re
Packard, 751 F.3d 1307 (Fed. Cir. 2014).
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claims 1, 2, and 252 under 35 U.S.C. § 112, second paragraph as
indefinite.
THE ANTICIPATION REJECTION BASED ON COOK
Claims 3 and 6–11
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 3 and 6–11 as anticipated by Cook.
The Patent Owner challenges the Examiner’s finding that Cook
discloses a “third module configured to ... download said data for
duplication to one of said output devices, and further configured to
command said output device to transfer said data. . . onto media. . . . selected
from the group consisting of personal stereo players, laptops computers, and
palm top computers,” as required by claim 3. Br. 13–16. Claims 8 and 11
recite similar limitations.

2 Although not included by the Examiner, we note that claims 21 and 22
depend from claim 1 and therefore should also be rejected under 35 U.S.C. §
112, second paragraph as indefinite.
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Cook discloses transferring the requested data to customers’ own
equipment for the customer to either burn the data directly onto a physical
medium or to otherwise store the data and further teaches that client or
customer machines may include desktop or notebook computers. Cook, col.
5, ll. 37–41, col. 10, ll. 56–63; see also Ans. 46–47. While the Patent Owner
acknowledges that Cook “mentions ‘computers,’” Cook’s disclosures,
according to the Patent Owner, are insufficient to satisfy the claimed
limitation. In particular, the Patent Owner asserts that Cook fails to disclose
the two-step duplication process of the claim because Cook lacks an output
device distinct from recording media. Br. 15. Cook’s “personal computer is
an output device, not a recording medium.” Br. 15. As such, Cook only
discloses a server configured to download data to an output device, not
instructing the output device to duplicate the media onto a recording
medium. Br. 15–16.
The Examiner, on the other hand, finds that Cook’s notebook
computer is both the output device and the media. Ans. 46–47. “Here, the
customer’s computer is the output device as it accepts transfer and download
of the data onto itself. It is also the media in the case where the customer
decides to store the data on his computer.” Ans. 47.
We are not persuaded of error in the Examiner’s findings. The ’283
Patent defines that a skilled artisan would understand “any available media
can be used in the place of CD disks, DVD disks and like media” and further
identifies exemplary types of media, such as different types of memory and
disk drives. ’283 Patent, col. 2, ll. 17–20. The ’283 Patent then discloses
that “[l]ikewise, microprocessor based devices such as ‘palm-top’
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computers, ‘laptop’ computers and the like may function as media in the
instant invention.” ’283 Patent, col. 2, ll. 21–24 (emphasis added). In other
words, the Specification broadly describes that when a microprocessor based
devices, such as a notebook computer, is functioning as the “media,” the
microprocessor will still continue to perform traditional microprocessor
functions, such as being the output device. Moreover, a skilled artisan
would recognize that when a laptop computer is selected as the “media,” the
data would actually be duplicated onto a memory within the laptop computer
and, therefore, the output device would be distinct from the media. As such,
we are not convinced that Cook fails to disclose the disputed limitation.
Next, with respect to claim 6, the Patent Owner contends that Cook
lacks scheduling the duplication of each request. Specifically, Patent Owner
distinguishes Cook’s assigning duplication jobs from scheduling duplication
jobs. Br. 16–19. We disagree. As the Examiner explains,
It is apparent that Appellant intends a particular definition with
the recitation of the term “scheduling” in the current claim
language. However, Appellant does not point out and the
Examiner was unable to find definitions for this term in the
current claim language or in the originally filed disclosure to
support a narrow interpretation of the term “scheduling.” In the
absence of such definitions, the Examiner must give the claim
language the broadest reasonable interpretation. The Examiner
understands the term “scheduling” to include
arranging/planning/assigning in order to perform a
task/job/event.
Ans. 48; see also Ans. 48–51. As the Examiner also points out, at least one
exemplary definition provided by the Patent Owner defines scheduling as
assigning for a fixed time. Ans. 51 (citing Br. 17).
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The Specification is consistent with the Examiner’s interpretation.
For example, the ’283 Patent broadly discloses that job requests may be
scheduled “according to whatever criteria that best suits the business (i.e.
can be programmed).” Ans. 48 (citing col. 4, ll. 28–30). The Patent Owner
cites col. 4, ll. 20–27 as support for the proposed narrower construction (Br.
19), but the ’283 Patent there describes scheduling job requests “in order to
optimize production.” This limitation is notably absent from claim 6.
Next, the Patent Owner argues that “[t]he distinction between
“scheduling” and “assigning” is important because scheduling enables
functionality that is impossible with mere queuing.” Br. 16. However, the
alleged function, allowing a customer to see an estimated delivery date, is
not recited within the claims. The Patent Owner also fails to persuasively
explain how scheduling is required for this function and why this could not
be possible with “mere” assigning. See Br. 16 (providing conclusory
statements that scheduling is required and assigning does not permit
estimated delivery dates). We are not persuaded of error in the Examiner’s
finding that Cook’s assigning of duplication jobs satisfies the claimed
scheduling limitation.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claims 3 and 6–11 as anticipated by Cook. Therefore, we affirm
the rejection.

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THE OBVIOUSNESS REJECTION BASED ON COOK AND DOCKES
Claims 1, 2, 4, 5, 12–19, and 21–25
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, 4, 5, 12–19, and 21–25 as obvious over Cook
and Dockes.
The Patent Owner asserts that Dockes fails to teach the recited
comparing limitation. Br. 19–21, 36–37. According to the Patent Owner,
the recited comparison must precede the assigning of the requests to an
output device. Br. 20–21. Nothing in the claims though limits the order in
which the comparing step is performed. For example, despite the Patent
Owner’s assertion, the claim does not assign requests based on the recited
comparison. Moreover, as discussed above, the recited comparison is not
limited to blank recording mediums.
The Specification also fails to support the Patent Owner’s arguments.
In particular, checking whether enough media are within the CD Writer is
performed after scheduling in the exemplary embodiment. See ’283 Patent,
Fig. 4; col. 4, ll. 53–67.
The Examiner relies on Dockes’s teaching of recognizing when a job
is done, updating the status for the job, and requesting a blank disc and a
new job to satisfy the comparing limitation of claims 1 and 25. Ans. 18; see
also Ans. 51–52. As the Examiner explains, “[i]n order for the CD writer to
know a job is ‘done,’ it must ascertain the number of media required for a
request (via the job file), compared to how many media have been written by
the CD writer.” Ans. 18. We are not convinced then that the Examiner
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erred in finding that Dockes teaches the comparing limitation of claims 1
and 25.
With respect to claim 4, we find the Patent Owner’s argument that
Dockes fails to teach the at least one resource file for each output device
likewise unavailing. Relying on Figure 2, the Patent Owner contends that
Dockes’s configuration files only exist for the relational database
management system, not for each output device. Br. 22–23. The Patent
Owner maintains that the Examiner incorrectly considers the teachings of
Dockes in isolation, rather than considering the reference as a whole. Br. 21.
We disagree.
As the Examiner identifies, Dockes describes
There is usually one configuration file 170 for every machine,
each of which is pointed to by the CONFIGFILE environment
variable (so that it is actually possible to have different
configuration files for different programs). The configuration
files 170 are ASCII files holding statements in the form of
“varname=value”; Where value can be an integer, a floating
point value, a string, or an integer array. The configuration files
170 are mostly used to define system parameters, but the same
format is also used for the job files that describe various tasks
to be performed by the system, and for other purposes.
Dockes, col. 10, ll. 14–25 (emphasis added); see also Ans. 54–55.
We are not persuaded that Dockes’s disclosed “every machine” is
really only limited to every relational database management system as
asserted by the Patent Owner. See Ans. 54. Particularly, the mere fact that a
configuration file is depicted to be within the relational database
management system, as pointed out by the Patent Owner, does not suggest
that no other configuration files exist or that any configuration files stored in
the relational database management system cannot relate to output devices.
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To the contrary, Dockes demonstrates that data stored on the relational
database management system “is accessible to other machines on the
network and further, the configuration files (170) hold variables that point to
machines on the network with which they are associated.” Ans. 55; see also
Ans. 54. Dockes also describes that the data server monitors the writing and
reading claims, which also supports with the Examiner’s interpretation. See
Ans. 55.
Further, Dockes explains that the configuration file defines “system
parameters. Dockes, col. 10, ll. 21–24. We understand the “system” to be
the recording system 100, with the designated sub-systems. See Dockets,
col. 4, ll. 27–36. Moreover, the Patent Owner’s contentions are not
consistent with Dockes’s teaching of a plurality of configuration files
because Dockes’s recording system may only include one relational database
management system. Compare Dockes, col. 10, ll. 6–8, 14–17 with Fig. 2,
col. 11, ll. 55–62. As such, we are not convinced that the Examiner erred in
finding that Dockes teaches the recited resource file for each output device.
With respect to claim 5, Patent Owner argues that “the rejection of
claim 5 should be reversed because Dockes does not disclose ‘tracking the
number of recording mediums pre-loaded in each output device.’” Br. 25. In
particular, the Patent Owner maintains that the disputed limitation is not
nonfunctional, descriptive material, but functional because the recited
“resource files associated with each of the plurality of output devices have a
new and unobvious functional relationship that distinguish the claims over
the prior art.” Br. 31.
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The Patent Owner’s alleged “new and functional relationship,”
though, is not commensurate with the scope of the claim. Particularly, the
Patent Owner relies on use of the resource file during the assignment or
scheduling of each job. Br. 31. This feature is notably absent from claim 4
that merely recites that a resource file in communication with said computer
without further limitation. Similarly, claim 5 lacks any use of the resource
file or data within and instead simply characterizes the data. See Ans. 56–
57.
Further, as discussed above, the ’283 Patent does not support the
Patent Owner’s assertion that the number of recording media in the output
device is used in the scheduling or assigning of job requests. To the
contrary, the ’283 Patent discloses checking the number of recording media
to alert an operator when there is insufficient recording media. ’283 Patent,
col. 65–67. In other words, an operator is alerted so as to request additional
recording media. This function is precisely the function disclosed by
Dockes, where Dockes uses identifies when a writing operation is complete
to request a new recording media. See Ans. 25–26.
We find unpersuasive the Patent Owner’s arguments with respect to
claims 21 and 22. The Examiner’s identifies that Dockes discloses that
“[e]ach temporary track file 164 is kept on the client 122 until the end of the
job, so that the data is reused if multiple copies of the disc are to be
produced.” Ans. 34. We agree with the Examiner that this teaching at least
suggests the checking and deleting limitations of claim 21. Ans. 34.
Namely, a skilled artisan would understand maintaining this
temporary track file for reuse would suggest checking for the output device
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for the requested content. Further, only keeping the temporary track file
until the end of the job would at least suggest to a skilled artisan that the file
will be deleted from the cache at some point to make room for requested
content.
Similarly, we agree with the Examiner that Cook at least suggests
tracking hard drive capacity remaining in said output device. Ans. 35. Cook
describes that each burner machine comprises disk storage and takes on as
much work as it is capable of handling given the network and subgroup load
and other operating conditions, such as burn capability and other
considerations. Together, these teachings would at least suggest to a skilled
artisan tracking the hardware capacity, i.e. disk storage, remaining in an
output device. Namely, it would be readily apparent to a skilled artisan that
disk storage could limit the amount of work a burner machine could handle.
See Ans. 35. The Patent Owner’s assertion that the Examiner improperly
considers Cook’s teachings in isolation does not persuade us of error. See
Br. 34–35.
The Patent Owner presents no separate arguments with respect to
claims 2, 12–14, 16–19, 23, and 24. See, e.g., Br. 33, 35. For the reasons
discussed above, we are not convinced that the Examiner erred in finding
that Cook and Dockes combined teach the limitations of these claims.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claims 1, 2, 4, 5, 12–14, 16–19, and 21–25 under 35 U.S.C.
§103(a) as unpatentable over Cook and Dockes. Therefore, we affirm the
rejection.

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CONCLUSIONS
We conclude that:
(1) the Examiner did not err in rejecting claims 1, 2, and 25 as
indefinite;
(2) the Examiner did not err in rejecting claims 3 and 6–11 under 35
U.S.C. §102(b) as anticipated by Cook; and
(3) the Examiner did not err in rejecting claims 1, 2, 4, 5, 12–14, 16–
19, and 21–25 under 35 U.S.C. §103(a) as being unpatentable over
the Cook and Dockes.

DECISION
The Examiner’s rejections of claims 1–14, 16–19 and 21–25 are
affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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PATENT OWNER:
Gutride Safier, LLP
100 Pine Street
Suite 1250
San Francisco, CA 94111

THIRD-PARTY REQUESTER:

Willi Law Firm, P.C.
100 Congress Ave.
STE. 1530
Austin, TX 78701-4042