Ex Parte Bi et al

Patent Trial and Appeal Board

Sep 26, 2012

10416292 (P.T.A.B. Sep. 26, 2012)

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.
10/416,292 05/06/2003 Depeng Bi 10587.0052-00000 9788
100692 7590 09/27/2012
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
09/27/2012 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
________________

Ex parte DEPENG BI, STEPHEN CHRISTOPHER
GLADWIN, TROY STEVEN DENKINGER, and JEFFREY
JONATHAN SPURGAT
________________

Appeal 2011-012128
Application 10/416,292
Technology Center 2400
________________

Before THOMAS S. HAHN, JEFFREY S. SMITH, and
ANDREW CALDWELL, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 13-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF CASE

Appellants describe the present invention as a system for secure and
non-secure distribution of digital content, such as digital audio or video data,
over the Internet or other computer network starting from a server to a
personal computer or other computing platform and then through conversion
to analog audio or video for listening or viewing on an audio or video player.
Abstract.
Independent claims 13 and 31 are representative1 and are shown
below with key disputed limitations emphasized.
13. A digital content transmission peripheral, comprising:
a digital content processor external to a computing platform, the
digital content processor configured to send status information to the
computing platform to indicate availability;
an interface configured to receive encrypted digital content from the
computing platform in accordance with the status information;

1 Although Appellants nominally argue independent claim 22 separately
from claim 13, Appellants state that while claim 22 is different in scope, it
distinguishes over the prior art for the same reasons as claim 13. App. Br.
13. With respect to dependent claims 14-21, and 22-30, Appellants argue
that the rejection should be reversed because of their dependence on
independent claims 13 and 22. We will therefore treat these claims as a
group and select claim 13 as representative of the grouping. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellants argue independent claim 31 and its dependent
claims separately from claims 13-30.
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wherein the digital content processor is further configured to decrypt
the encrypted digital content to produce raw digital content, the raw
digital content being inaccessible outside of the digital content
transmission peripheral;
a digital to analog converter configured to convert the raw digital
content to analog content; and
a content transmitter configured to transmit the analog content to a
content player for playback.
31. A method performed by a digital content transmission peripheral for
secure distribution of digital content, the method comprising:
exchanging, by a flow control unit executed on a digital content
processor external to a computing platform, a status request and
status information with the computing platform, the computing
platform receiving encrypted digital content over the Internet;
receiving encrypted digital content from the computing platform when
the digital content transmission peripheral is available, as indicated by
the status request and status information;
decrypting the encrypted digital content to produce raw digital
content, the raw digital content being inaccessible outside of the
digital content transmission peripheral;
converting the raw digital content to analog content; and
transmitting the analog content to a content player for playback,
wherein digital content transmission peripheral does not store the raw
digital content after the analog content is transmitted to the content
player.

The Examiner relied on the following as evidence of unpatentability:
Davis

US 6,064,739

May 16, 2000

Appellants’ Admitted Prior Art (AAPA)
Abraham Silberschatz & Peter Baer Galvin, OPERATING SYSTEM
CONCEPTS 397-428 (5th ed. John Wiley & Sons, Inc. 1999).
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THE REJECTION

The Examiner rejected claims 13-35 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA in view of Silberschatz and Davis. Ans. 4-
14.2

EXAMINER’S FINDINGS AND APPELLANTS’ ARGUMENTS
The Examiner concludes that the combination of the AAPA in view of
Silberschatz and Davis teaches or suggests a system as in independent claim
13. Ans. 5-7, 11-13. Regarding claim 13, the Examiner relies upon
Silberschatz to modify the external digital content processor of the AAPA to
configure the external digital content processor to send status information to
the computing platform to indicate availability and also to include an
interface configured to receive encrypted digital content from the computing
platform in accordance with the status information. Ans. 5-6. The Examiner
does not provide a separate rationale for the rejection of claim 31 but,
instead, explains that claim 31 is rejected for the same reasons as claims 13-
22. Ans. 10.
As to claim 13, Appellants argue that the combination of the AAPA in
view of Silberschatz and Davis does not teach or suggest an external digital
content processor to send status information to the computing platform to
indicate availability. App. Br. 12-13; Reply Br. 1-2. As to claim 31,
Appellants argue that the combination of the AAPA in view of Silberschatz

2 Throughout this opinion, we refer to the Appeal Brief filed March 14,
2011; the Examiner’s Answer mailed May 24, 2011; and the Reply Brief
filed July 25, 2011.
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and Davis does not teach or suggest the step of “exchanging, by a flow
control unit executed on a digital content processor external to a computing
platform, a status request and status information with the computing
platform, the computing platform receiving encrypted digital content over
the Internet.” App. Br. 13-14; Reply Br. 3.

ISSUES

Does the combination of the AAPA in view of Silberschatz and Davis
teach or suggest an external digital content processor to send status
information to the computing platform to indicate availability as in claim
13?
Does the combination of the AAPA in view of Silberschatz and Davis
teach or suggest the step of “exchanging, by a flow control unit executed on
a digital content processor external to a computing platform, a status request
and status information with the computing platform, the computing platform
receiving encrypted digital content over the Internet” as recited in claim 31?

ANALYSIS

Claims 13-30
Appellants argue that the combination of the AAPA in view of
Silberschatz and Davis does not teach or suggest an external digital content
processor to send status information to the computing platform to indicate
availability. App. Br. 12-13; Reply Br. 1-2. Appellants explain that
Silberschatz teaches a controller that does not “send” status information
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across a medium to a host but instead merely sets an internal register. App.
Br. 13; Reply Br. 2.
Silberschatz teaches general operating systems concepts used to
integrate peripheral devices with a computer. Silberschatz 397. Silberschatz
provides examples of various types of peripherals that can be integrated with
a computer. Id. The examples include peripherals that are typically
external, such as a mouse or a CD-ROM jukebox, or internal, such as a hard
drive. Id. Based on the examples, evidence exists in the record that
Silberschatz’s teachings are relevant to both internal and external peripherals
as in the AAPA. Silberschatz also states that a device communicates with a
computing system by sending signals over a cable or even through the air.
Id. at 398.
The AAPA clearly teaches that the computing platform and the
external digital content processor communicate but does not specify the
details. Spec. 2:6-9. The Examiner relies upon Silberschatz to supply the
missing details and points to a section of Silberschatz that describes how a
host (i.e., computing platform) communicates with a controller in a
peripheral (i.e., internal component of a peripheral) using polling. Ans. 5
(citing Silberschatz 398 and 401). Silberschatz describes how the host uses
input/output instructions to move bits into and out of a device register in the
controller. Silberschatz 400. Silberschatz explains how the host reads
information from and writes information to the controller during the polling
process. Id. at 401. In view of the evidence, particularly Silberschatz’s
teaching, discussed above, that a peripheral device communicates with a
computing system by sending signals over a cable, we are not persuaded that
Appellants have identified error in the rejection when they argue that
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Silberschatz merely teaches a controller that merely sets an internal register
and therefore does not “send” status information across a medium to a host.
In the Reply Brief, Appellants make two arguments alleging defects in
the Examiner’s prima facie case of obviousness. Reply Br. 1-2. First,
Appellants point to a statement in which the Examiner states:
Specifically, even if the controller within the peripheral device
(i.e. "digital content processor") sets an internal register with
status information, of which is ultimately destined to be
communicated to the host computing platform (i.e. "computing
platform"), such a technical implementation for communicating
status information to the host computing platform does not
preclude the claimed sending of "status information".

Ans. 11-12 (Emphasis added). Appellants argue that the phrase “does not
preclude” is evidence that the Examiner did not apply the correct legal
standard of obviousness. Reply Br. 1-2. After considering the totality of the
Answer, we are not persuaded that the Examiner applied the wrong standard.
We understand this statement as explaining that Appellants are merely
focusing on one teaching of Silberschatz and ignoring the totality of what
the reference teaches. Second, Appellants argue that the Examiner erred by
not providing a citation or evidence of the definition of “send” that appears
on page twelve of the Answer. Appellants state that the Specification
includes no definition of “send”. Reply Br. 2. Siblerchatz, however, teaches
that a device communicates with a computing system by sending signals
over a cable. Silberschatz 398. Appellants have not provided a definition of
“send” that excludes Silberschatz’s common usage of the term. “Absent an
express definition in their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation does not make the
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PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation.” In re Morris, 127 F.3d 1048, 1056 (1997). We
are therefore not persuaded these alleged defects identify error in the
rejection.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 13.
Accordingly, we will also sustain the Examiner’s rejection of claims 14-21
which depend on claim 13 and were not argued separately. We also sustain
the Examiner’s rejection of independent claim 22 and dependent claims 23-
30 that are not argued with particularity. App. Br. 13.
Claims 31-35
Appellants argue that the combination of the AAPA in view of
Silberschatz and Davis does not teach or suggest the step of “exchanging, by
a flow control unit executed on a digital content processor external to a
computing platform, a status request and status information with the
computing platform, the computing platform receiving encrypted digital
content over the Internet.” App. Br. 13-14; Reply Br. 3.
Appellants’ argument is based on two contentions. First, Appellants
state that Silberschatz’s controller does not send anything to the host for the
reasons given with respect to claim 13. App. Br. 14; Reply Br. 3.
Appellants then explain that since Silberschatz’s controller does not “send”
anything, Silberschatz cannot teach the step of “‘exchanging . . . a status
request and status information with the computing platform.’” App. Br. 14.
Since we are not persuaded that Appellants have identified error in the
rejection of claim 13 for the reasons given above, we are also not persuaded
that Appellants have identified error in the rejection of claim 31.
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Secondly, Appellants argue that Silberschatz is silent with respect to
any “flow control” much less any flow control unit. App. Br 13-14; Reply
Br. 3. Appellants also state that Silberschatz is silent with respect to any
“flow.” Reply Br. 3. Appellants’ arguments are unpersuasive for the
reasons given below.
Appellants are essentially arguing that the combination of the AAPA
in view of Silberschatz and Davis does not teach or suggest a flow control
unit because Silberschatz does not explicitly use the term “flow.” A
reference does not have to describe a claim element in precisely the same
words used in the patent claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990). We are not persuaded that Appellants have identified error in the
rejection merely because Silberschatz does not use the word “flow.”
Appellants argue Silberschatz individually, and do not address the
combined teachings of Silberschatz and the AAPA. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). In this case,
the AAPA teaches that video data is transmitted over a network to a personal
computer. Spec. 2:6-7. The personal computer then passes the video data to
an external peripheral. Spec. 2:7-9. The AAPA is silent as to the details of
how the video is communicated between the personal computer and the
external peripheral. The Examiner relies upon Siblerschatz to supply the
missing details. Ans. 5 (citing Silberschatz 398 and 401). Silberschatz
describes how a host uses a protocol using handshaking and a polling loop to
transfer data from a host to a peripheral. Silberschatz 401-402. Silberschatz
explains that the loop is repeated for each byte to be transferred. See Id.
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Appellants have not provided specific arguments or evidence to explain why
the transfer of video information from the host to the external peripheral is
not a flow. Appellants also have not provided specific arguments or
evidence to explain why the handshaking used to control the transfer of
video information in the combination is not flow control. Accordingly, we
are not persuaded of error in the rejection.
Finally, Appellants contend that the combination of the AAPA in
view of Silberschatz and Davis does not teach or suggest a flow control unit.
Appellants have not provided specific arguments or evidence to explain why
the flow control unit of claim 31 differs from what is taught by the
combination of the AAPA in view of Silberschatz and Davis other than
those arguments discussed above. Absent additional arguments or evidence,
we are not persuaded that Appellants have identified error by merely stating
that the combination of the AAPA in view of Silberschatz and Davis does
not teach a flow control unit.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 31.
Accordingly, we will also sustain the Examiner’s rejection of claims 32-34,
which were not argued separately.

CONCLUSION

Appellants have not shown that the Examiner erred in rejecting claims
13-35 under 35 U.S.C. § 103.

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DECISION

The Examiner’s decision rejecting claims 13-35 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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