Ex Parte Breiter et al

Board of Patent Appeals and Interferences

Mar 17, 2009

10210506 (B.P.A.I. Mar. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERD BREITER, WINFRIED BRUEGMANN,
PETER TAUBE, and HENDRIK WAGNER
____________

Appeal 2008-3256
Application 10/210,506
Technology Center 2100
____________

Decided: March 17, 2009
____________
Before HOWARD B. BLANKENSHIP, JAY P. LUCAS,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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THE INVENTION
The disclosed invention relates generally to distribution of
information. More particularly, the present invention relates to organizing
the transmittal of digital information from a customer to a client via a
distributed information system by employing a mediator and a handler.
(Spec. 1, para. [0001]).
Independent claim 1 is illustrative:
1. A method for organizing the transmittal of digital
information from a media e-service customer to a client via a
distributed information system by employing a mediator and a
handler, the method comprising the following steps performed
by said mediator:

receiving from said media e-service customer a message
requesting the registration of digital information;

making available said digital information to said handler;

receiving from said handler a media key identifying said
digital information; and

sending said media key to said media e-service customer.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the anticipation and obviousness rejections:
Wiser US 6,385,596 B1 May 7, 2002
(filed Feb. 6, 1998)
Nakamura US 2002/0019743 A1 Feb. 14, 2002
(filed Jul. 26, 2001)
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Jennings US 2004/0064579 A1 Apr. 1, 2004
(filed Apr. 20, 2001)

THE REJECTIONS
The Examiner rejected claims 1 and 14 under 35 U.S.C. § 102(e) as
being anticipated by Nakamura.

The Examiner rejected claims 2-6 and 15-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Nakamura in view of Wiser.

The Examiner rejected claims 7-13 and 19-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Nakamura in view of Wiser and
further in view of Jennings.

Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

GROUPING OF CLAIMS
The claims are grouped as follows:
(1) Appellants argue claims 1 and 14 as a group. We will,
therefore, treat claim 14 as standing or falling with claim 1.
(2) Appellants argue claims 2-5 and 15-18 as a group. We will,
therefore, treat claims 3-5 and 15-18 as standing or falling
with claim 2.
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(3) Appellants separately argue claim 6.
(4) Appellants argue claims 7-13 and 19-25 as a group. We
will, therefore, treat claims 8-13 and 19-25 as standing or
falling with claim 7.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence.
Appellants’ Specification
1. Appellants state that the claimed mediator (also referred
to as a media e-utility provider) offers media services in
the form of a customizable application template together
with all the infrastructure required. (See para. [0006] and
[0011]).
2. Appellants describe the function of the claimed handler
(also referred to as the e-service provider), as taking care
of the respective treatment of the digital information.
(See para. [0006] and [0008]).
Nakamura
3. Namura discloses an information accumulation section
12. The information accumulation section accumulates
various information pieces. (Para. [0027] and Fig. 1).
4. Nakamura discloses a control section 11. The control
section supplies the information accumulation section
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with information supplied from the creator terminal 20 or
the client terminal 30. (Para. [0026]).
5. Nakamura discloses that the music database 12c,
transmits the registration number to the control section
11. (See Fig. 4).
Wiser
6. Wiser teaches that the delivery server 118 contacts the
content manager 112 to obtain the media information
from the media information database. (Col. 15 ll. 44-47).

Jennings
7. Jennings teaches that the RTSMS (real time switch
management system) receives initial signaling from a
viewer in the form of a “request for media.”
(Para. [0051] ).
8. Jennings teaches that a customized play list for the
requested presentation is generated. (Para. [0052]).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellants’ Briefs to show error in the
proffered prima facie case.
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Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).

Obviousness
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
Appellants’ Contentions
In the Briefs, Appellants’ arguments contest the Examiner’s findings
regarding specific claim limitations that we have incorporated in our
statements of issues, infra.
Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
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As noted above, Appellants define the claimed “mediator” as a media
e-utility provider who offers media services in the form of a template
together with all the infrastructure required. (App. Br.14). Appellants also
define the claimed “handler” as a media e-service provider that takes care of
the respective treatment of the digital information (id).
Based on Appellants’ description, we broadly but reasonably interpret
the claimed handler to encompass any device that takes “care of the
respective treatment of the digital information processes” (i.e., stores,
accumulates, or distributes digital information). (See FF 2).
We further note Appellants’ attempts to read limitations from the
Specification into the claims. For example, Appellants attempt to define the
claimed mediator and handler by pointing to portions of the Specification
that describe a relationship between the mediator and handler (See App. Br.,
12, ¶2). We view the proffered description as an embodiment of the
invention and will not read the description into the claims. Appellants also
assert that the mediator performs the steps recited in claim 1. However,
because the mediator is recited only in the preamble, we conclude that the
scope of the claim not so limiting.1
Section 102 rejection of claims 1 and 14
We consider the Examiner’s rejection of claims 1 and 14 under

1 Cf. When limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention. See, e.g., Electro Sci. Indus.
v. Dynamic Details, Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002); Rapoport v.
Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001); Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999).
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35 U.S.C. § 102(e) as being anticipated by Nakamura. Appellants contend
that Nakamura fails to teach the feature of organizing the transmittal of
digital information from a media e-service customer to a client via a
distributed information system by employing a mediator and a handler.
(App. Br. 11).

Issue: Have Appellants shown the Examiner erred in determining that
Nakamura discloses the claimed “mediator” and “handler?”

Appellants contend that the distribution server disclosed in Nakamura,
is not the same as the claimed mediator and handler. (Id. 12). Nakamura
discloses an information accumulation section 12 and a control section 11.
The information accumulation section and the control section are separate
entities that collectively are a part of the distribution server 10. (See FF 1-2
and Fig. 1). The Examiner determined that the claimed handler reads upon
the information accumulation section of Nakamura, and that the claimed
mediator reads upon the control section of Nakamura. (Ans. 3).
Consistent with Appellants’ Specification, we have broadly but
reasonably construed the claimed “handler” as an entity that takes care of the
treatment of digital information (see FF 2). Given this construction, we
agree with the Examiner’s determination that the claimed handler reads on
Nakamura’s information accumulation section that “takes care of the
treatment” of the digital information by “accumulating various information
pieces.” (See FF 1). We also find that the claimed mediator broadly but
reasonably reads on Nakamura’s control section 11 essentially for the same
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reasons set forth by the Examiner on pages 9-10 of the Answer (See also FF
2). Thus, it is our view that the Examiner appropriately mapped the claimed
mediator and handler to the disclosure of Nakamura.

Appellants further contend that Nakamura fails to disclose the
limitation of receiving from said handler a media key identifying said digital
information, as recited in claim 1 (App. Br. 12-13).

Issue: Have Appellants shown the Examiner erred in determining that
Nakamura discloses the limitation of “receiving from said handler a media
key identifying said digital information?”

Appellants contend that the Examiner failed to identify the mediator,
thus, Nakamura fails to disclose the limitation of “receiving from the
handler. . . .” We agree with the Examiner’s determination that Nakamura
teaches that the media key (registration number) is allotted by the handler
(12c) to the mediator (control section 11), as shown in Fig. 4. (Ans. 3 and
10).
Based on the record before us, we are not persuaded of error in the
Examiner’s rejection of representative claim 1, and thus sustain the rejection
of claims 1 and 14 under 35 U.S.C. § 102(e) as being anticipated by
Nakamura.

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Section 103 rejection of claims 2-5 and 15-18
We next consider the Examiner’s rejection of claims 2-5 and 15-18 as
being unpatentable over Nakamura and Wiser. Appellants’ initial contention
is that Wiser fails to cure the deficiencies of Nakamura previously discussed
regarding claim 1. (App. Br. 16-18). We have fully addressed Appellants’
arguments with respect to Nakamura (and claim 1) supra, which we did not
find to be persuasive.
Appellants further contend that the cited references fail to teach or
suggest the limitation of forwarding a respective request to said handler, as
recited in claim 2.2 (App. Br. 18).

Issue: Have Appellants shown the Examiner erred in determining that
the cited references teach or suggest the limitation of forwarding a respective
request to said handler?

As stated above, Wiser discloses content manager 112 which stores a
list of delivery servers it operates with. (Col. 15 ll. 1-3). Thus, we interpret
the content manager as a handler because it takes care of the list of delivery
servers. We note that the content manager is contacted by the delivery
server 118 to obtain media information from a media information database.

2 We note that with regard to the remaining limitations of claim 2,
Appellants did not provide any meaningful analysis to distinguish the
remaining portions of claim 2 from the cited references. See 37 C.F.R. §
41.37(c)(vii)(“A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim.”). See
also 37 C.F.R. § 1.111(b).

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(FF 6). Thus, it is our view that Wiser teaches a request (receipt of the
voucher ID and media ID) that is forwarded to the handler (content manager
112).
Based on the record before us, we are not persuaded of error in the
Examiner’s rejection of representative claim 2, and thus sustain the rejection
of claims 2-5 and 15-18 under 35 U.S.C. § 103(a) as being unpatentable over
Nakamura and Wiser.
Section 103 rejection of claim 6
We next consider the Examiner’s rejection of claim 6 as being
unpatentable over the combination of Nakamura and Wiser. Appellants
contend that the cited references, most notably Wiser, fail to disclose or
suggest the limitation of “wherein the step of forwarding a respective request
to said handler includes the step of forwarding the client’s address to said
handler for said handler to prepare said descriptor to identify the components
of said handler topologically close to said client.” (claim 6; see also App.
Br. 19). The Examiner determined that Wiser discloses that a content
manager checks for the first available delivery server and is therefore
topologically the closest server. (Ans. 12).

Issue: Have Appellants shown the Examiner erred in determining that
the cited references teach the limitation of the handler being topologically
close to the client?

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Appellants contend that the first available server taught in Wiser, is
not the same as being “topologically close” as recited in claim 6. (App. Br
19). However, we do not find Appellants’ argument to be persuasive.
We note that Appellants have not defined what is meant by
“topologically close.” Thus, we find the Examiner’s interpretation
reasonable because the system of Wiser allocates the stream to the first
available server within the context of a network topology. Thus, where there
is only one available server (i.e., handler), the one server is inherently
(topologically) close because it is the only server available.
Based on the record before us, we are not persuaded of error in the
Examiner’s rejection of claim 6, and thus sustain the rejection of claim 6
under 35 U.S.C. § 103(a) as being unpatentable over Nakamura and Wiser.

Section 103 rejection of claims 7-13 and 19-25
We next consider the Examiner’s rejection of claims 7-13 and 19-25
as being unpatentable over the combination of Nakamura, Wiser, and
Jennings. Appellants’ initial contention is that Wiser fails to cure the
deficiencies of Nakamura previously discussed regarding claim 1. (App. Br.
20-21). We have fully addressed Appellants’ arguments with respect to
Nakamura (and claim 1) supra, which we did not find to be persuasive.
Appellants further contend that the cited references, most notably Jennings,
fail to disclose or suggest the limitation of receiving from said media e-
service customer an inquiry for the services offered by said mediator. (Id. at
22). The Examiner determined that Jennings teaches receiving from the
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customer a selection of services that the client wants to make use of. (Ans.
7).
Issue: Have Appellants shown the Examiner erred in determining that
the cited references teach receiving from said media e-service customer an
inquiry for the services offered by said mediator?

Appellants argue that Jennings does not determine if the selection of
services is available because prior to selection, the mediator returns a list of
services offered and the customer selects from the list. Thus, there is no pre-
determination of available services. (App. Br. 22). We do not find
Appellants’ arguments to be persuasive.
As discussed above, we find that Jennings teaches an inquiry for
services offered in the form of a “request for media.” After the request, a
customized play list for the requested presentation is generated. (FF 7-8).
Thus, it is our view that Jennings teaches a predetermination of available
services after receiving an inquiry from the e-service customer.
Based on the record before us, we are not persuaded of error in the
Examiner’s rejection of claim 7, and thus sustain the Examiner’s rejection of
claims 7-13 and 19-25 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Nakamura, Wiser, and Jennings.

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CONCLUSIONS
Based on the findings of facts and analysis above, we conclude the
following:
Appellants have not shown the Examiner erred in determining that
Nakamura discloses the claimed “mediator” and “handler.”
Appellants have not shown that the Examiner erred in determining
that Nakamura discloses the limitation of “receiving from said handler a
media key identifying said digital information.”
Appellants have not shown the Examiner erred in determining that the
cited references teach and/or suggest the limitation of “forwarding a
respective request to said handler.”
Appellants have not shown the Examiner erred in determining that the
cited references teach and/or suggest the limitation of the handler being
“topologically close” to the client.
Appellants have not shown the Examiner erred in determining that the
cited references teach and/or suggest the limitation of “receiving from said
media e-service customer an inquiry for the services offered by said
mediator.”
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DECISION
The decision of the Examiner rejecting claims 1 and 14 under
35 U.S.C. § 102(e) is affirmed.
The decision of the Examiner rejecting claims 2-6 and 15-18 under
35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner rejecting claims 7-13 and 19-25 under
35 U.S.C. § 103(a) 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

pgc

DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS TX 75380