Ex Parte Benno et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613019741 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/019,741 02/02/2011 Steven A. Benno 807370-US-NP 1019 59978 7590 12/27/2016 Chiesa Shahinian & Giantomasi PC (ALU) Attn: Jeffrey M. Weinick One Boland Drive West Orange, NJ 07052 EXAMINER HESS, MICHAEL J ART UNIT PAPER NUMBER 2481 NOTIFICATION DATE DELIVERY MODE 12/27/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patent @ csglaw. com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN A. BENNO, JAIRO O. ESTEBAN, and IVICA RIMAC Appeal 2016-002606 Application 13/019,7411 Technology Center 2400 Before HUNG H. BUI, WILLIAM M. FINK, and AMBER L. HAGY, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action rejecting claims 1—5, 7—13, and 15—34. Claims 6 and 14 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellants, the real party in interest is Alcatel-Lucent USA Inc. App. Br. 1. 2 Our Decision refers to Appellants’ Appeal Brief filed June 22, 2015 (“App. Br.”); Reply Brief filed January 4, 2016 (“Reply Br.”); Examiner’s Answer mailed November 5, 2015 (“Ans.”); Final Office Action mailed January 23, 2015 (“Final Act.”); and original Specification filed February 2, 2011 (“Spec.”). Appeal 2016-002606 Application 13/019,741 STATEMENT OF THE CASE Appellants’ invention relates to “systems and methods for managing cache storage in an adaptive video streaming system.” Spec. 1. Claims 1,9, 16, 22, 26, and 31 are independent. Claim 1 is illustrative of Appellants’ invention, as reproduced below with disputed limitations in italics: 1. A method for managing data in a cache memory, the method comprising: storing, in a cache memory, a plurality of sequences of encoded video segments corresponding to a video program, wherein each respective sequence includes a plurality of encoded video segments comprising an encoded version of the video program encoded at a respective encoding rate; for each respective encoded video segment in each respective sequence, determining a respective cost measure representing a measure of a time required for a client device to download the respective encoded video segment from the cache memory; selecting, from each respective sequence, an encoded video segment by the cost measure of the encoded video segment and by a comparison of the cost measure with cost measures of other encoded video segments in the respective sequence; and moving the selected encoded video segments from a first cache storage device to a second cache storage device within the cache memory. App. Br. 23 (Claims App’x) (emphasis added). 2 Appeal 2016-002606 Application 13/019,741 Examiner’s Rejections3 and References (1) Claims 1—5, 7—13, and 15—34 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 2—10. (3) Claims 1—5, 7—13, and 15—34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Visharam et al. (US 2010/0235542 Al; published Sept. 16, 2010; “Visharam”). Ans. 10-23. ANALYSIS 35 U.S.C. § 112, 2ndparagraph: Claims 1—5, 7—13, and 15—34 With respect to claims 1—5, 7—13, and 15—34, the Examiner finds the term “cost” associated with respective encoded video segment in a video program is “unclear” and, as such, is indefinite under 35 U.S.C. § 112, second paragraph. Final Act. 10-11; Ans. 4. Appellants contend: one of ordinary skill in the art would readily understand that the “cost” in claim 1 refers to “a cost measure representing a measure of a time required for a client device to download the respective encoded video segment from the cache memory,” as explicitly provided in the claims. App. Br. 9. 3 In the Final Office Action mailed January 23, 2015 (“Final Act.”), (1) claims 26—34 were rejected under 35U.S.C§ 101, and (2) claims 26—34 were also rejected under 35 U.S.C § 112, 2nd paragraph. Final Act. 7—8, 11. However, in response to Appellants’ Appeal Brief filed June 22, 2015, the Examiner has withdrawn these rejections. As such, these rejections are now moot and need not be reviewed. 3 Appeal 2016-002606 Application 13/019,741 The Examiner responds that “the term cost is used for a wide variety of concepts ... is indefinite in the context of the independent claims.” Ans. 4. According to the Examiner, [i]t is unclear whether (1) the determined cost is a measure of time; or (2) more broadly a measure merely representing a measure of a time, as recited in claim 1; or (3) even something else completely different like that claimed in claim 2 or described in Appellants’] Specification. Id. at 28. We disagree with the Examiner. Whether a claim is indefinite is an issue of law. Credle v. Bond, 25 F.3d 1566, 1576 (Fed. Cir. 1994). The second paragraph of 35 U.S.C. § 112 requires that a patent’s claims, viewed in light of the Specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. See Nautilus, Inc. v. Biosig, Instruments, Inc., 134 S. Ct. 2120, 2129—30 (2014). Indefmiteness is to be evaluated from the perspective of a person with ordinary skill in the relevant art at the time of the invention—when the patent application was filed. Id. at 2128. As recognized by Appellants, the cost measure is expressly defined in each of independent claims 1,9, 16, 22, 26, and 31 as “a measure of a time required for a client device to download the respective encoded video segment from the cache memory.” We find a skilled artisan would understand the meaning of the cost measure in the context of the claims and Appellants’ Specification, i.e., the cost (not the measure), as “a measure of a time required for a client device to download the respective encoded video segment from the cache memory.” There is no basis for the Examiner to question the meaning of that term under 35 U.S.C. § 112, second paragraph. 4 Appeal 2016-002606 Application 13/019,741 Accordingly, we do not sustain the Examiner’s rejection of claims 1—5, 7— 13, and 15—34 relative to the term “cost measure.” Claims 26—34 Independent claims 26 and 31 each recite “[a]n apparatus for managing data . . . comprising: [1] a processor; and [2] a memory to store computer program instructions . . . when executed on the processor cause the processor to perform operations comprising [several functions recited].” (Emphasis added). The Examiner, relying on our informative decision in Ex Parte Lakkala, Appeal 2011-001526 (PTAB March 13, 2013), finds the term “processor” non-structural and, as such, has interpreted “processor” as a non-structural term used to substitute for the term “means-plus-fimction” thus invoking the application of § 112, sixth paragraph. Ans. 3^4. In particular, the Examiner finds several “means-plus-fimction” limitations recited in claims 26—34, including what the Examiner has characterized as: (1) “means for determining” limitation of claim 26; (2) “means for selecting” limitation of claim 26; (3) “means for dividing” limitation of claim 28; (4) “means for selecting” limitation of claim 29; (5) “means for determining” limitation of claim 31; (6) “means for selecting” limitation of claim 31; (7) “means for dividing” limitation of claim 33; and (8) “means for selecting” limitation of claim 34. Ans. 5—9. According to the Examiner, because Appellants’ Specification does not disclose sufficient corresponding structure, i.e., an algorithm for performing the functions recited in the “processor” limitation, claims 26—34 are indefinite under 35 U.S.C. § 112, second paragraph. 5 Appeal 2016-002606 Application 13/019,741 Appellants contend claims 26—34 do not invoke the application of 35 U.S.C. § 112, sixth paragraph. App. Br. 10. In particular, Appellants, relying on Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), contend “[t]he ‘processor’ and ‘memory’ in claim 1 are not non- structural nonce words” and “[o]ne of ordinary skill in the art would recognize a ‘processor’ and a ‘memory’ as having sufficiently definite meaning as the name for structures.” App. Br. 7—8; Reply Br. 2—3. Appellants also argue our decision in Ex Parte Lakkala is merely informative and is not binding precedent and, as such, “the Examiner’s interpretation of claims 26 and 31 under 35 U.S.C. § 112, [s]ixth [paragraph is improper” and should be withdrawn. Id. at 8. We disagree with Appellants. At the outset, we note 35 U.S.C. § 112, sixth paragraph is invoked to interpret a claim when there is a “means-plus- fimction” limitation recited therein. Under 35 U.S.C. § 112, sixth paragraph, the “means-plus-fimction” limitation must be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Personalized Media Comm ’ns, LLC v. Int 7 Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998). If the “means-plus-function” limitation recited in the claim does not have an adequate supporting disclosure, then the claim fails to particularly point out and distinctly claim the invention as required under 35 U.S.C. § 112, second paragraph. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (“[I]f one employs means-plus-fimction language in a claim, one must set forth in the specification an adequate disclosure showing what is meant.... If an applicant fails to set forth an adequate disclosure, the applicant has in effect 6 Appeal 2016-002606 Application 13/019,741 failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.”) In the context of software, the disclosed structure is a general purpose computer programmed to perform a disclosed algorithm. WMS Gaming, Inc. v. Inti Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (“In a means- plus-fimction claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”). A general purpose computer alone is insufficient if the Specification fails to disclose an algorithm for performing the claimed function. Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). Generic terms such as “mechanism,” “element,” “device,” and other nonce words used in a claim can also be considered as a substitute for the “means-plus-function” limitation and, as such, may invoke the application of 35 U.S.C. § 112, sixth paragraph because these generic terms or nonce words “typically do not connote sufficiently definite structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (en banc). In Ex Parte Lakkala, we concluded that the term “processor” is used as merely a substitute for the “means-plus-fimction” limitation and thus invokes the application of § 112, sixth paragraph. In addition, we also concluded because the Specification fails to disclose an algorithm for performing the functions recited in the “processor” limitation, the claim fails to describe sufficient corresponding structure as required for a limitation interpreted under 35 U.S.C. § 112, sixth paragraph, and, as such, is indefinite under 35 U.S.C. § 112, second paragraph. 7 Appeal 2016-002606 Application 13/019,741 In this case, the correct analysis of claims 26—34 under 35 U.S.C. § 112, second paragraph involves two questions: (1) whether the term “processor” recited in claims 26—34 is used as a substitute for the “means- plus-fimction” limitation and, as such, invokes the application of 35 U.S.C. § 112, sixth paragraph; and (2) once the term “processor” is treated as a “means-plus-function” limitation, whether Appellants’ Specification discloses sufficient corresponding structure, i.e., an algorithm for performing the functions recited in the “processor” limitation. See Ex Parte Lakkala, Appeal 2011-001526 (PTAB March 13, 2013); Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). In other words, Appellants’ Specification must sufficiently disclose an algorithm to transform the general purpose computer or processor to a special purpose processor programmed to perform the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Inti Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008). An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary 23 (5th ed. 2002). An applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). An indefmiteness rejection under § 112, second paragraph, is appropriate if the Specification discloses no corresponding algorithm associated with a computer or processor. Aristocrat, 521 F.3d at 1337—38. However, mere reference to a general purpose computer or processor with appropriate programming without providing an explanation of the 8 Appeal 2016-002606 Application 13/019,741 appropriate programming, or to “software” without providing detail about the means to accomplish the software function, is not an adequate disclosure. Id. at 1334; Finisar, 523 F.3d at 1340-41. Likewise, simply reciting the claimed function in the Specification, while saying nothing about how the computer or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). Because Appellants’ contentions fail to address the Examiner’s findings and to account for the Federal Circuit’s en banc decision in Williamson v. Citrix Online, LLC, and our informative decision involving functional claiming in Ex Parte Lakkala, we agree with the Examiner that (1) the term “processor” is used as merely a substitute for the “means-plus- fimction” limitation and thus invokes the application of § 112, sixth paragraph; and (2) Appellants’ Specification fails to disclose an algorithm for performing the functions recited in the “processor” limitation and, as such, fails to describe sufficient corresponding structure as required for the “processor” limitation. Accordingly, we sustain the Examiner’s rejection of claims 26—34 as indefinite under 35U.S.C. § 112, second paragraph. 35 U.S.C. § 103(a): Claims 1—5, 7—13, and 15—34 based on Visharam Independent claims 1 and 9 each recite, inter alia: selecting, from each respective sequence, an encoded video segment by the cost measure of the encoded video segment and by a comparison of the cost measure with cost measures of other encoded video segments in the respective sequence. 9 Appeal 2016-002606 Application 13/019,741 Independent claims 16, 22, 26, and 31 (emphasis added) each further require, inter alia: determining, for each encoded video segment within each of a plurality of sequences of encoded video segments that are of a video program and stored in a cache memory, a normalized cost measure representing a measure of a time required for a client device to download the respective encoded video segment from the cache memory, the normalized cost measure being determined by the sequence to which the encoded video segment belongs; [and] selecting one or more encoded video segments from among the encoded video segments in the plurality of sequences, by the normalized cost measures. Appellants acknowledge Visharam teaches “a method and apparatus for dynamically transcoding and delivering variable bit rate media files [to client systems]” including a system that “dynamically adapts the bit rate of the video to match the effective last mile bandwidth and to adapt to changing network conditions for the client.” App. Br. 11 (citing Visharam || 52, 66, 250, 257—258, 261). Appellants also acknowledge: (1) “paragraph [0250] of Visharam discusses a video file encoded with different sequences having different bit rates,” and (2) paragraph 263 of Visharam describes: [client player] has the ability to tell the MFD [(media flow director)] to switch between bit rates. In a possible embodiment, an application exists on the client that can monitor resources on the client such as: the bandwidth, the CPU resources, memory resources, etc. This monitoring application can detect if the client is having a shortage of bandwidth or if the bandwidth has increased, for example. The client can then tell the MFD 1601 to switch bit rates via an HTTP request (containing the UID previously created by the UID generator 1603). App. Br. 11—13 (citing Visharam || 250, 263) (emphasis added). 10 Appeal 2016-002606 Application 13/019,741 Appellants contend Visharam’s decision to switch bit rates may involve a comparison between the bit rates of video files, but does not teach or suggest Appellants’ claimed “selecting, from each respective sequence, an encoded video segment by the cost measure of the encoded video segment and by a comparison of the cost measure with cost measures of other encoded video segments in the respective sequence” as recited in claims 1 and 9. Id. at 12—13 (emphasis added); Reply Br. 4—5. According to Appellants, “the comparison in the cited portions of Visharam is NOT between segments that are both ‘in the respective sequence.’” App. Br. 12. Appellants also argue Visharam’s disclosure of “switching] between bit rates” does not teach or suggest Appellants’ claimed “selecting, from each respective sequence, an encoded video segment.” Id. at 13. Similarly, Appellants contend “selecting one of two files encoded at two different bit rates for transcoding, as discussed in the cited portions of Visharam, does not teach or suggest a ‘normalized cost measure’ . . . ‘being determined by the sequence to which the encoded video segment belongs’” as recited in Appellants’ claims 16, 22, 26, and 31. Id. at 14—15. We do not find Appellants’ arguments persuasive. Rather, we find the Examiner has provided a comprehensive response to Appellants’ arguments supported by a preponderance of evidence. Ans. 30-38. Therefore, we adopt the Examiner’s findings and explanations provided therein. Id. For additional emphasis, we note Appellants’ claimed “video segments” and Visharam’s disclosed “video portions” as “chunks” are interchangeable. Ans. 30 (citing Spec. Tflf 32—33; Visharam || 95, 250, 257—258, 261). As correctly recognized by the Examiner, Appellants’ claimed “cost measure” can be interpreted to encompass Visharam’s adaptive “bit rate of the video, 11 Appeal 2016-002606 Application 13/019,741 i.e., the size of the video file on the cache server.” Id. at 32. Similarly, Appellants’ claimed “normalized cost measure” is well known and within the level of skill in the art. Id. at 34. Obviousness under 35 U.S.C. § 103(a) is not a rigid concept. In such an obviousness analysis, it is not necessary to find precise teachings directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. SeeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In that regard, the Supreme Court has indicated that: [It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem... . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S. at 420 (citation omitted). In addition, a person skilled in the art is presumed to know the relevant prior art, including various approaches of cost measures (normalized or variations of high or low cost measures) when encoding video segments using different bit rates. Custom Accessories, Inc. v. Jeffrey- Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). 12 Appeal 2016-002606 Application 13/019,741 Appellants have not presented sufficient evidence or argument that an artisan would not have found the variations of cost measure features obvious when encoding video segments using different bit rates. Likewise, Appellants have not presented sufficient evidence or argument that alleged distinguishing features of claims 1,9, 16, 22, 26, and 31 would have been “uniquely challenging or difficult for one of ordinary skill in the art” or otherwise beyond the level of an ordinarily skilled artisan and would have “represented an unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161—62 (Fed. Cir. 2007); cf. Anderson’s-BlackRock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 60 (1969). For the foregoing reasons, Appellants have not demonstrated Examiner error. Accordingly, we sustain the Examiner’s obviousness rejection of independent claims 1,9, 16, 22, 26, and 31 based on Visharam, and their respective dependent claims 2—5, 7, 8, 10-13, 15, 17—21, 23—25, 27—30, and 32—34, which Appellants do not argue separately. App. Br. 20- 21. CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting: (1) claims 26—34 under 35 U.S.C. § 112, second paragraph, and (2) claims 1—5, 7—13, and 15—34 under 35 U.S.C. § 103(a). However, we conclude Appellants have demonstrated the Examiner erred in rejecting claims 1—5, 7—13, and 15—25 under 35 U.S.C. § 112, second paragraph. 13 Appeal 2016-002606 Application 13/019,741 DECISION As such, we AFFIRM the Examiner’s final rejection of (1) claims 26— 34 under 35 U.S.C. § 112, second paragraph, and (2) claims 1—5, 7—13, and 15—34 under 35 U.S.C. § 103(a). However, we REVERSE the Examiner’s final rejection of claims 1—5, 7—13, and 15—25 under 35 U.S.C. § 112, second paragraph. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (l)(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation