Ex Parte Birks et al

Board of Patent Appeals and Interferences

Jun 30, 2011

10386152 (B.P.A.I. Jun. 30, 2011)

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.
10/386,152 03/11/2003 David Birks 60136.0146USU1 4828
94140 7590 06/30/2011
Merchant & Gould - Cox
PO Box 2903
Minneapolis, MN 55402
EXAMINER
LEWIS, JONATHAN V
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
06/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID BIRKS and MICHAEL E. LEIMER
________________

Appeal 2009-006129
Application 10/386,152
Technology Center 2400
________________

Before MAHSHID D. SAADAT, THOMAS S. HAHN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006129
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SUMMARY
Claims 12-16 stand rejected under 35 U.S.C. § 112, ¶ 1 for failing to
comply with the written description requirement. Claims 1, 2, and 11 stand
rejected under 35 U.S.C. § 103(a) as obvious over Ellis (US 2003/0149988
A1; published Aug. 7, 2003) in view of Garfinkle (US 5,530,754; issued
June 25, 1996) and Lerman (WO 00/59145 A1; published Oct. 5, 2000).
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as obvious over Ellis
in view of Garfinkle, Lerman and Sato (US 5,566,174; issued Oct. 15,
1996). Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as obvious over
Ellis in view of Garfinkle, Lerman, and Youden (US 5,606,359; issued Feb.
25, 1997). Claims 12-16 stand rejected under 35 U.S.C. § 103(a) as obvious
over Ellis in view of Garfinkle and Taylor (WO 00/14953 A1; published
Mar. 16, 2000). Appellants appeal under 35 U.S.C. § 134(a) from these
rejections.
We affirm.

STATEMENT OF THE CASE
Appellants describe their invention as follows:
The subject invention utilizes the combination of
centralized storage (i.e., server-side storage such as a mass
storage device associated with a stream server) and localized
storage (i.e., client-side storage, such as a mass storage device
associated with a set-top box (STB)) for efficiently providing a
[personal video recorder] functionality.
(Spec. 1).
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Independent claims 1 and 12 are illustrative:
1. A method, comprising:
receiving a plurality of content streams from a content
provider;
receiving user requests for the plurality of content
streams and services related to the plurality of content streams,
each request for a service comprising a request for a specific
type of a plurality of different types of services;
encoding each of the plurality of content streams to
provide a plurality of substantially constant bit rate (CBR)
content streams;
determining first and second portions of each of the
plurality of CBR encoded content streams;
storing the first portion of each CBR encoded content
stream in a user memory of a client device and storing the
second portion of each CBR encoded content stream in a user
memory of a server; and
inserting, into electronic program guide imagery
associated with the plurality of content streams, icons indicative
of available user memory stored CBR encoded content streams
and related services.
12. A method, comprising:
determining initial and remaining portions of each of a
plurality of constant bit rate (CBR) encoded content streams
requested by a user;
storing the initial portion of the CBR encoded content
stream in a general memory area of a server mass storage
device; and storing, in a portion of the server mass storage
device allocated to the user, the remaining portion of a CBR
encoded content stream requested by the user; and
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inserting, into electronic program guide imagery adapted
for the user, an icon indicative of requested and stored content
streams and related services; and
providing requested content to the user in response to a
user service request.

THE 35 U.S.C. § 112, ¶ 1 REJECTION OF CLAIMS 12-16
Contentions and Issues
The Examiner maintains in the GROUNDS OF REJECTION TO BE
REVIEWED ON APPEAL section of the Examiner’s Answer that the rejection of
claims 12-16 under 35 U.S.C. § 112, ¶ 1has not been withdrawn by the
Examiner, but that the rejection is not under review on appeal because
Appellants’ Appeal Brief fails to set forth any arguments (Ans. 3).
Appellants acknowledge that their Appeal Brief did not request
review of the § 112, ¶ 1 rejection (Reply Br. 2). Appellants contend, though,
that the reason for this omission is that they believed the rejection to have
been previously withdrawn (id., citing the Advisory Action mailed Sep. 25,
2007 (stating that “Applicant’s reply has overcome [the rejection] of claims
12-16 under 35 USC 112 1st para.”)).
Turning to the merits of the rejection, the Examiner maintains that
“[claims 12-16] contain subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention” (Ans. 4). Specifically, the Examiner
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maintains that the passage of claim 12 setting forth that the particular
determination and storage of “an initial portion of the CBR encoded content
stream” was not supported by the originally filed Specification (id., citing
claim 12). But, rather, the Specification only contains the broader language
used in claim 1: “a first portion” (id., citing Spec. 7, lines 15-18).
Appellants, on the other hand, argue that the originally filed
Specification does explicitly support the language of claim 12 (Reply Br. 2).
Appellants particularly point to the following passage:
In another embodiments [sic] of the invention, only a
portion of the client's content streams are stored at the server.
In this embodiment, each client stores an initial portion of
desired content in its respective local storage device 176. A
remaining portion of the content is stored in the respective
client portion 132 of the mass storage device 130. In this
manner, a greater apparent number of content streams may be
stored for a particular client than the local storage capacity
associated with that client would otherwise indicate.
(Reply Br. 2-3, citing Specification, 4:15-21) (emphasis added in the Reply
Brief).
The following two issues are, therefore, before us:
I. Were Appellants justified in delaying their traversal of the § 112, ¶ 1
rejection until the filing of their Reply Brief?
II. Does Appellants’ originally filed Specification convey that the
inventors, at the time the application was filed, had possession of the
invention as recited in claim 12, including the language “an initial
portion”?
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Analysis
We find that Appellants were justified in delaying their traversal of
the § 112, ¶ 1 rejection until the filing of their Reply Brief. The Examiner’s
above-noted statement in the Advisory Action served as a reasonable basis
for Appellants to believe that the § 112, ¶ 1 rejection had been withdrawn.
Turning to the merits of the rejection, the cited passage of page 4 of
the originally filed Specification reasonably evidences that Appellants’ did,
at the time the application was filed, have possession of the invention as
recited in claim 12, including the language “an initial portion.”
Accordingly, we will not sustain the rejection of claims 12-16 under
35 U.S.C. § 112, ¶ 1.

THE 35 U.S.C. § 103(a) REJECTIONS OF CLAIMS 1-4, 7-9, AND 11
Contentions and Issue
Appellants contend that the combination of Ellis, Garfinkle, and
Lerman fails to teach or suggest the following limitation of representative
claim 1:1 “inserting, into electronic program guide imagery associated with
the plurality of content streams, icons indicative of available user memory
stored CBR encoded content streams and related services” (App. Br. 11).
More specifically, Appellants initially argue that “[a]ccording to Ellis, only

1 Appellants argue claims 1, 2, and 11 as a single claim group (App. Br. 11-
13). Accordingly, we treat these claims as a single claim group, and select
claim 1 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii).
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an interactive program guide, not the programs listed in the program guide,
may be stored on the user’s television equipment” (App. Br. 12). Appellants
subsequently change their position, though, acknowledging that “Ellis
discloses that a program may be recorded locally or remotely” (Reply Br. 4).
But they maintain, “Ellis does not teach or suggests [sic] that a user should
be provided with information indicating whether the program is recorded
locally or that an icon should indicate such information (id.). “That a
program may be recorded at [sic: a] local media server does not mean that
the icon identifying such a program as non-regular (i.e., recorded or to be
recorded) identifies that the program is in fact is [sic] recorded at the local
media” (id.).
Appellants contentions present us with the following issue:2 Does the
claim language, “inserting, into electronic program guide imagery associated
with the plurality of content streams, icons indicative of available user
memory stored CBR encoded content streams and related services,” require

2 Appellants additionally contend in the Reply Brief that, in contrast to
Appellants’ invention wherein the user memory may store at least portions
of CBR encoded content streams not even requested by a user, Ellis entails a
user selecting which programs should be recorded (Reply Br. 5). These
arguments were not presented in the Appeal Brief, though. Furthermore,
Appellants have not explained what good cause there might be to consider
these newly raised arguments (id.). Accordingly, we decline to consider
these belated arguments. See Ex Parte Bordin, 93 USPQ2d 1473, (BPAI
2010) (informative) (“conclud[ing] that the regulations set out in 37 C.F.R.
§ 41, Practice Before the Board of Patent Appeals and Interferences, do not
require the Board to consider such belated arguments”).
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that icons, which identify programs were recorded, further indicate whether
the programs were recorded locally?
Analysis
The argued requirement, that the icons further provide information
indicating whether the programs were recorded locally, does not appear in
the language of independent claim 1. The last limitation of claim 1 merely
requires that icons be “indicative of available user memory stored CBR
encoded content streams and related services.” The penultimate limitation
provides further explanation of what it means for content streams and
related services to be stored in “user memory.” The penultimate limitation
requires storing one portion of a content stream “in a user memory of a
client device” and another portion of the content stream “in a user memory
of a server.” That is, the server, as well as the local client device, each
contain a “user memory.” As such, the last limitation’s general reference to
“user memory” does not distinguish between user memories of a client
versus those of a server. It only requires that icons indicate that content has
been stored in memory, regardless of what specific memory may be used
for storing the content. A fortiori, the claim contains no recitation that the
icons further provide information indicating in which specific user
memories programs are stored.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 1.
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Accordingly, we will sustain the Examiner’s rejection of that claim and
dependent claims 2 and 11, which were not separately argued.
With respect to the remaining rejections of claims 3, 4, and 7-9,
Appellants provide no patentability arguments directed to the additional
references of Sato (for claims 3 and 4) or Youden (for claims 7-9). Rather,
Appellants repeat arguments directed to claims 1, 2, and 11 and apply them
to the remaining rejections (App. Br. 13-14). For the reasons discussed
above, then, we also sustain the rejections of dependent claims 3, 4, and 7-9.

THE 35 U.S.C. § 103(a) REJECTION OF CLAIMS 12-16
Contentions and Issues
The Examiner finds that claims 12-16 are rendered obvious by the
combination of Ellis, Garfinkle, and Taylor (Ans. 10-12). Appellants
contend that “Appellants’ claim 12 recites determining the remaining portion
[of a program] and subsequently storing the determined portion” (Reply Br.
6, see generally, App. Br. 14-16; Reply Br. 6-7). Appellants further contend
that the Examiner erred in concluding that Garfinkle teaches storing initial
and remaining portions of a program (Reply Br. 6-7). They argue that
Garfinkle, which stores a lead-in portion of a program at the client and stores
a complete version of the program at the server, does not store an initial
portion and a remaining portion, as initial and remaining portions must each
be less than the full program (id.).
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Appellants’ arguments are not persuasive because they are not
commensurate in scope with the actual language of independent claim 12.
Claim 12 does not recite the step of determining initial and remaining
portions of a program. It instead recites the step of “determining initial and
remaining portions of each of a plurality of constant bit rate (CBR) encoded
content streams requested by a user” (claim 12, emphasis added).
Appellants have provided no arguments or evidence that the term “content
stream” must be interpreted to be synonymous with the term “program.”
Appellants have provided no arguments or evidence to explain why it would
be improper to interpret a lead-in portion of a program downloaded to a
client as constituting an initial portion of a content stream and a full program
stored on a server as constituting the remainder of a content stream (as
opposed to initial and remaining portions of a program).
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 12.3
Accordingly, we will sustain the Examiner’s rejection of that claim and
dependent claims 13-16 which are not argued separately.

3 Appellants argue claims 12-16 as a single claim group (App. Br. 14-16;
Reply Br. 6-7). Accordingly, we treat these claims as a single claim group,
and select claim 12 as representative of this group. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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CONCLUSIONS
We do not sustain the rejection of claims 12-16 under 35 U.S.C.
§ 112, ¶ 1 for failing to comply with the written description requirement.
We do sustain the obviousness rejections of claims 1-4, 7-9, and 11-
16 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-4, 7-9, and 11-16 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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