Ex Parte 7,640,320 et al

Patent Trial and Appeal Board

Oct 27, 2014

95001794 (P.T.A.B. Oct. 27, 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.
95/001,794 10/26/2011 7,640,320 126990-207318 8661
76058 7590 10/27/2014
YAHOO! INC. C/O GREENBERG TRAURIG, LLP
MET LIFE BUILDING
200 PARK AVENUE
NEW YORK, NY 10166
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/27/2014 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
____________

AUGME TECHNOLOGIES, INC.
Requester and Appellant

v.

Patent of YAHOO! INC.
Patent Owner and Respondent
____________

Appeal 2014-007049
Reexamination Control No. 95/001,794
Patent 7,640,320 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2014-007049
Reexamination Control No. 95/001,794
Patent 7,640,320 B2

2
Third Party Requester, Augme Technologies, Inc., appeals under
U.S.C. §§ 134 and 315 (2002) the Examiner’s decision to withdraw the
Examiner’s adoption of Requester’s rejection of claims 1–4 and 6–10
1
under
certain grounds, as discussed below. We have jurisdiction under 35 U.S.C.
§§ 134 and 315 (2002).

STATEMENT OF THE CASE
This proceeding arose from a request by Augme Technologies, Inc.
for an inter partes reexamination of U.S. Patent 7,640,320 B2, titled
“Method and System for Managing Digital Content, Including Streaming
Media,” and issued to Madison et al. on December 29, 2009 (the “’320
patent”).
The ’320 patent describes a method of providing access to digital
content.
Claim 1, on appeal, was not amended during reexamination and reads
as follows:
1. A method comprising:
receiving, by an ingest server, digital content from a
client;
storing, by a repository server, the digital content, the
digital content having an associated server hostname and
a filename;
assigning a unique identifier to the digital content, and
associating the unique identifier, server hostname and
filename;

1
Claims 5 and 11 are not subject to reexamination. Examiner’s Right of
Appeal Notice (“RAN”) at 1.
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providing the client with a link containing the unique
identifier but not the server hostname and filename
associated with the digital content’s unique identifier;
receiving, by a playlist server, a request for the
content, the request based on activation of the link, the
request including the unique identifier but not the server
hostname and filename associated with the digital
content’s unique identifier;
determining, by the playlist server, the server
hostname and filename based on the unique identifier
received with the request;
creating, by the playlist server, a redirector file, the
redirector file including the server hostname and
filename associated with the digital content’s unique
identifier, the redirector file is returned in response to the
request.

Requester proposes rejections of the claims over the following prior
art references:
Perkowski US 6,064,979 May 16, 2000

van Zoest US 6,496,802 B1 Dec. 17, 2002

Adrangi US 6,687,846 B1 Feb. 3, 2004

Requester appeals the Examiner’s withdrawal of the adoption of the
following rejections:
2

Claims 1, 2, 4, 6–8, and 10 under 35 U.S.C. § 103(a) as obvious over
the combination of Perkowski and Adrangi.
Claims 1–4 and 6–10 under 35 U.S.C. § 103(a) as obvious over the
combination of van Zoest and Adrangi.

2
Third Party Requester’s Appeal Brief filed Oct. 31, 2012 (“3PR App. Br.”)
at 7.
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ISSUES
Did the Examiner err in finding that the combination of Perkowski
and Adrangi does not teach or suggest “digital content,” as required by
independent claims 1 and 7?
Did the Examiner err in finding that the combination of van Zoest and
Adrangi does not teach or suggest “associating the unique identifier, server
hostname, and filename,” as recited in independent claim 1 and similarly
recited in independent claim 7?
3

ANALYSIS
Obviousness – Perkowski and Adrangi
Claim 1 recites “storing, by a repository server, the digital content, the
digital content having an associated server hostname and a filename.”
Requester contends that the combination of Perkowski and Adrangi teaches
this limitation.
4
Specifically, Requester argues that the claim should be
interpreted broadly to only require that the digital content be “associated
with” the server hostname and filename as opposed to requiring the digital
content be stored in a specific server or in a file named with the filename.
3PR App. Br. 17; 3PR Reb. Br.
5
12. Additionally, Requester contends that
digital content includes a URL and Perkowski teaches a URL that contains a

3
Requester makes additional arguments with respect to the rejection over
van Zoest and Adrangi. 3PR App. Br. 14-15. We will not address the
additional arguments as resolution of this issue is dispositive of the Appeal
regarding the rejections over van Zoest and Adrangi.
4
Request for Inter Partes Reexamination filed Oct. 26, 2011 (“Req. for
Reexam”) at 95-100.
5
Third Party Requester’s Rebuttal Brief filed April 15, 2013.
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hostname server and filename. 3PR App. Br. 17. As a result, Requester
contends that while the filename and server hostname do not refer to where
the URL is stored, they are nonetheless “associated with” the URL. 3PR
App. Br. 17.
We initially note that there is no dispute that a URL could be digital
content because, as indicated by the Examiner, Patent Owner’s Specification
does not preclude digital content from including any information in a
database or table. RAN 8. However, the Examiner finds that Perkowski’s
URL does not qualify as digital content, as claimed. RAN 9. Perkowski’s
URL does not have an associated server hostname or filename because the
server hostname and filename in Perkowski’s URL refers to other content,
not the location of the URL itself. RAN 9. Thus, the Examiner interprets
the claim to require the digital content itself to have a server hostname and
filename where the digital content can be found. RAN 10. Because
Perkowski’s URL does not have a server hostname and filename indicating
where the URL is located, the Examiner decided not to adopt Requester’s
proposed rejection. Patent Owner agrees with the Examiner’s findings and
interpretation of the claim and contends that Requester ignores the full
language of the claim. PO Br.
6
21-23. We agree with the Examiner and
Patent Owner.
When reading the entire language of claim 1 and interpreting it
broadly in light of Patent Owner’s Specification, we are not persuaded by
Requester that Perkowski’s URL qualifies as the claimed “digital content.”
We agree that Perkowski’s URL is not associated with a server hostname or

6
Patent Owner’s Respondent Brief filed November 30, 2012.
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filename. Instead, Perkowski’s URL contains a server hostname and
filename that are associated with digital content to which the URL
references. For instance, Perkowski’s URL from Figure 2A1,
http://www.sony.com./pc, contains a server hostname, e.g., sony.com, and a
filename, e.g., pc, which are both associated with digital content regarding a
Sony, Inc. personal computer, not the URL itself. Patent Owner’s arguments
and the Examiner’s findings are further supported by the Webster’s New
World Dictionary of American English definition which defines the term
“associate” as “to connect in the mind [to associate rain with grief].”
WEBSTER’S NEW WORLD DICTIONARY OF AMERICAN ENGLISH 83 (3d College
ed. 1993). Using this definition, it is illogical that the server hostname and
filename would be connected in the mind with the URL rather than the
content to which the URL refers.
Requester makes similar arguments with respect to claim 7 as with
claim 1. 3PR App. Br. 19-20; 3PR Reb. Br. 11-12. Additionally, Requester
does not argue any of dependent claims 2, 4, 6, 8, or 10 with particularity.
As such, for the reasons discussed supra, we agree with the Examiner’s
decision not to adopt Requester’s rejection of claims 1, 2, 4, 6-8, and 10
under 35 U.S.C. § 103(a) as obvious over Perkowski and Andrangi.
Obviousness – van Zoest and Adrangi
Claim 1 recites “assigning a unique identifier to the digital content,
and associating the unique identifier, server hostname and filename.”
Requester argues that the combination of van Zoest and Adrangi teaches the
disputed limitation. Req. for Reexam 113-118. Specifically, Requester
contends that van Zoest teaches a database that contains information about a
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work that includes a “unique identifier, title, . . . or any information helpful
to identify, categorize, locate, or track the work.” 3PR App. Br. 10.
Requester additionally contends that van Zoest teaches using the unique
identifier of the work to locate the server where the work is stored and, if
found in one of the servers, it can be accessed by the user. 3PR App. Br. 10;
3PR Reb. Br. 9.
The Examiner disagrees with Requester and finds that van Zoest
cannot teach the disputed limitation because van Zoest’s system requires a
user to enter a unique identifier and then the system searches multiple
servers until it is found. RAN 11-12. Thus, the Examiner finds that van
Zoest’s unique identifier is not associated with a server hostname, as
required. Patent Owner agrees with the Examiner’s finding. PO Br. 12-13.
Requester states that it was well-known to provide users with the
hostname and filename of content in response to a request to access the
content. 3PR App. Br. 11. In support of this assertion, Requester cites
Adrangi which teaches searching for a work using a unique identifier and
then sending the hostname and filename associated with the unique identifier
to the user. 3PR App. Br. 11. Requester also argues that the broadest
reasonable interpretation of the claim does not preclude searching for
content based on the unique identifier in order to determine the server
hostname. 3PR App. Br. 12-13; 3PR Reb. Br. 8.
We are not persuaded by Requester’s arguments. Requester’s broad
interpretation of the claim that does not preclude searching for the server
hostname effectively renders various other limitations in claim 1
superfluous. That is, if the system were to search for the filename using a
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unique identifier and return the server hostname in order to satisfy the above
recited limitation, there would be no need for claim 1 to recite “determining,
by the playlist server, the server hostname and filename based on the unique
identifier received with the request.” It would be sufficient to leave that
limitation out of the claim because otherwise the limitation would be
superfluous. “A claim construction that gives meaning to all the terms of the
claim is preferred over one that does not do so.” Merck & Co. v. Teva
Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005). As such, we
agree with the Examiner and Patent Owner that neither van Zoest nor
Adrangi teaches or suggests “associating the unique identifier, server
hostname and filename” as required by claim 1.
Regarding claim 7, Requester makes similar arguments as claim 1.
3PR App. Br. 13. However, claim 7 differs somewhat from claim 1. Claim
7 recites “the digital content having a server hostname and a filename when
stored, the unique identifier of the digital content being associated with the
digital content’s server hostname and filename.” Requester again argues
that the claim does not preclude searching for the server hostname. 3PR
App. Br. 13. However, if a search is being conducted using the unique
identifier and the filename to find the server where the file is located, as
Requester indicates is taught by van Zoest (3PR App. Br. 13), then it is not
the server hostname that is associated with the unique identifier, but rather
only the filename.
As such, for all of the reasons stated supra, we agree with the
Examiner’s decision not to adopt Requester’s rejection of claims 1 and 7,
and claims 2–4, 6, and 8–10 that were not argued with particularity, under
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Patent 7,640,320 B2

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35 U.S.C. § 103(a) as obvious over the combination of van Zoest and
Adrangi.

CONCLUSIONS
The Examiner did not err in finding that the combination of
Perkowski and Adrangi fails to teach or suggest “digital content,” as
required by independent claims 1 and 7.
The Examiner did not err in finding that the combination of van Zoest
and Adrangi fails to teach or suggest “associating the unique identifier,
server hostname, and filename,” as recited in independent claim 1 and
similarly recited in independent claim 7.

DECISION
We affirm the Examiner’s decision to not adopt the following
rejections:
claims 1, 2, 4, 6–8, and 10 under 35 U.S.C. § 103(a) as obvious over
the combination of Perkowski and Adrangi; and
claims 1–4 and 6–10 under 35 U.S.C. § 103(a) as obvious over the
combination of van Zoest and Adrangi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

Appeal 2014-007049
Reexamination Control No. 95/001,794
Patent 7,640,320 B2

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Patent Owner:

Yahoo! Inc.
c/o Greenberg Traurig, LLP
Met Life Building
200 Park Avenue, 20
th
Floor
New York, NY 10166

Third Party Requester:
Goodwin Procter, LLP
901 New York Avenue, NW
Washington, D.C. 20001