Ex Parte Aires et al

Patent Trial and Appeal Board

Mar 15, 2013

10992489 (P.T.A.B. Mar. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEVIN B. AIRES, IAN HUGHES, and DARREN M.
SHAW
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Appeal 2010-010511
Application 10/992,489
Technology Center 2100
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Before: KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

According to Appellants the invention is directed to a system for
preparing data including a server computer system having a store for a first
file comprising data (e.g. audio data) and a plurality of sets of lossy data
generated from the data in the first file. Each of the sets of lossy data is a
stand alone, fully functioning file, providing a lossy version of the first file.
A requesting component requests at least two sets of the plurality of sets of
lossy data which can be combined to generate a second file. The data in the
15 second file is of reduced lossiness with respect to the data in the first file.
Abst. and Claim 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for preparing data, operable with a server computer
system having a store for a first file comprising data and a
plurality of sets of lossy data generated from the data in the first
file, the system comprising:
a requesting component for requesting at least two sets of
the plurality of sets of lossy data, wherein each of the plurality
of sets of lossy data is a stand alone, fully functioning file,
providing a lossy version of the first file;
a first receiving component for receiving the at least two
sets; and
a combining component for combining the at least two
sets of lossy data, in order to generate a second file comprising
data of reduced lossiness with respect to the data in the first file,
wherein, when only two sets of lossy data are initially generated
from the first file, said combining provides a lossless recreation
of the first file.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nayyar
Shu
Miloushev
US 2002/0012471 A1
US 2003/0084020 A1
US 2004/0133607 A1
Jan. 31, 2002
May 1, 2003
Jul. 8, 2004
Fitzhardinge US 7,046,805 B2 May 16, 2006
(filed Jun. 8, 2001)

REJECTIONS
The Examiner made the following rejections:
Claims 10-13 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Ans. 3.
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shu and Nayyar. Ans. 4.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shu, Nayyar, and Fitzhardinge. Ans. 15.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shu, Nayyar, and Miloushev. Ans. 17.

APPELLANTS’ CONTENTIONS1
1. With respect to claims 10-13, “[t]he computer readable medium
recited by the claims does proscribe to tangible recordable type media and,
as such, is within the statutory requirement for such claims.” Reply Br. 4.

1 We note that Appellants’ arguments present additional contentions;
however, we do not reach these contentions, as these contentions are
dispositive of the appeal.
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2. With respect to claims 1-17, “Nayyar does not retrieve multiple
lossy versions of a single file, where each lossy version is a stand alone,
fully functional file.” App. Br. 7.

Rejection Under 35 U.S.C. § 101
For the first time in the Reply Briefs (Repy Brief 4, Second Reply
brief 5), Appellants assert that the rejection under 35 U.S.C. § 101 is
improper, arguing that “[t]he computer readable medium recited by the
claims does proscribe to tangible recordable type media and, as such, is
within the statutory requirement for such claims” (id) . This issue was not
raised in response to a new argument presented by the Examiner and
Appellants have not shown any cause as to why this issue was first raised in
the Reply Briefs. Accordingly, this argument is waived as untimely. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)(Informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.”) Furthermore, Appellants’ argument is merely a conclusory
statement that neither addresses the Examiner’s argument (including citation
to the portion of a Specification disclosing the “medium” as including
[transitory] signals) nor does it provide sufficient rationale or evidence to
persuade us of Examiner error. As such, this statement is not considered to
be an argument for patentability. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
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assertion that the corresponding elements were not found in the prior art.”).
Therefore, we summarily sustain the rejection of claims 10-13 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.

Rejection Under 35 U.S.C. § 103(a)
Appellants argue that “Nayyar does not retrieve multiple lossy
versions of a single file, where each lossy version is a stand alone, fully
functional file.” App. Br. 7. In particular, Appellants argue Nayyar stores
and retrieves a single image along with delta frames that represent the
differences between that image and at least one other image. However, these
are not different lossy versions of a single file but of different files. Id. The
Examiner responds:
The Examiner interprets that an image in figure 1 [of
Nayyar] contain a tree and a house and in figure 6 contain an
image with the tree and an image with the house and according
to paragraph [0010-0011] of Nayyar discloses the compression
process comprises segmenting an image into a plurality of
segments, or regions, analyzing each segment to determine an
optimal compression technique for the segment. Thus, an image
with the house or an image with the tree is a lossy data which is
stand alone and fully functioning file. Therefore, the Examiner
submits that Nayyar discloses the claim limitation “wherein
each of the plurality of sets of lossy data is a stand alone, fully
functioning file providing a lossy version of the first file”.

Ans. 19.

We disagree with the Examiner. Appellants’ Specification discloses
that:
It should be understood that the data in each lossy file
represents the full scope of the original data, but the data in
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each lossy file is of a lower quality (e.g. less detail, lower
resolution etc.) than the original data. Therefore, each lossy file
is a stand alone, fully functioning file.

Spec. p. 11, ll. 15-20.
Thus, Appellants provide a definition of the data in each lossy file as
representing the full scope of the original data but at a lower quality such
that “each lossy file is a stand alone, fully functioning file.” Id, see also
Spec. p. 4, l. 30 – p.5, l. 1. Conversely, in a stand alone, fully functioning
file, the [lossy] data must represent the full scope of the original data. Id,
see also Spec. p. 4, l. 30 – p.5, l. 1. In contrast Nayyar discloses segmenting
an image and separately compressing the segments. The resultant files do
not represent the full scope of the original image data but only segments.
Therefore, Nayyar does not disclose “wherein each of the plurality of sets of
lossy data is a stand alone, fully functioning file, providing a lossy version of
the first file.”
Accordingly, we will not sustain the rejection of claim 1 under 35
U.S.C. § 103(a) as being unpatentable over Shu and Nayyar and, for the
same reason, we will not sustain the rejection of independent claims 9 and
10 and dependent claims 2-8 and 11-17. Furthermore, we will not sustain
the rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Shu, Nayyar, and Fitzhardinge nor will we sustain the
rejection of claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Shu, Nayyar, and Miloushev, as neither the Fitzhardinge nor Miloushev
cures the deficiency in the base rejection addressed supra.

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CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1-20 under 35 U.S.C. § 103(a). Appellants have not persuaded
us of error in the Examiner’s decision to reject claims 10-13 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.

DECISION
The decision of the Examiner to reject claims 1-9 and 14-20 is
reversed. The decision of the Examiner to reject claims 10-13 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-IN-PART

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