Ex Parte Chalfin et al

Board of Patent Appeals and Interferences

Apr 9, 2009

10112392 (B.P.A.I. Apr. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALEX CHALFIN and JOE ROJAS
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Appeal 2008-3440
Application 10/112,3921
Technology Center 2100
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Decided2: April 9, 2009
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 29, 2002. The real party in interest is Silicon
Graphics, Inc.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail date (paper delivery) or Notification Date (electronic Delivery).

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Application 10/112,392

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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1, 4-8, 11-15, and
18-20 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals
and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to system, method, and apparatus for
reducing traffic flow on a network link without adversely affecting a stream
of image data transported over the link by using a technique called frame
spoiling. More specifically, frame spoiling, which involves removing
frames from the stream when congestion occurs, ensures that only the most
recent image updates are sent, allowing a visual application that generates
images to operate in real time and be interactive even on low bandwidth
networks. The user, with this invention, can view images smoothly, that is,
without the real-time image skipping or jumping due to loss of frames by
means of the interframe compression that discards unnecessary image
frames. In the words of the Appellants:
An image pipeline (60) provides image data to a capture
unit (61). The capture unit (61) generates a frame from the
image data for compression by a compression unit (64). A
frame spoiler (62) determines whether the frame is to be
discarded prior to compression by the compression unit (64).
An output buffer (66) to a network link provides an output
indication to the frame spoiler (62) indicating that the output
buffer (66) is congested. The frame spoiler (62) discards the
frame in accordance with the output indication. Similarly, an
input buffer (63) to the compression unit (64) provides an input
indication to the frame spoiler (62) indicating that the input
buffer (63) is congested. The frame spoiler (62) may discard the
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frame in accordance with the input indication or in accordance
with a combination of the input indication and the output
indication.
(Abstract, Spec. 30).

Claim 1 is exemplary:
1. A system for discarding frames of an image during transport across a
network link, comprising:

a capture unit operable to generate a frame associated with an image;

a compression unit operable to compress the frame in preparation for
transport;

an input buffer operable to queue the frame prior to compression, the
input buffer operable to provide an input value used in generating an input
congestion indication in response to a number of frames being queued in the
output buffer;

an output buffer operable to queue the frame prior to transport, the
output buffer operable to provide an output value used in generating an
output congestion indication in response to a number of frames being queued
in the output buffer;

a frame spoiler operable to discard the frame in response to either the
input or output congestion indication prior to the frame being compressed by
the compression unit.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Morikawa US 2002/0089928 A1 Jul. 11, 2002
Appeal 2008-3440
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(filed Jan. 07, 2002)
Thalanany US 2002/0196743 A1 Dec. 26, 2002
(filed Jun. 20, 2001)
REJECTION
The Examiner rejects the claims as follows:

R1: Claims 1, 4-8, 11-15, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Morikawa in view of Thalanany.

Appellants contend that the claimed subject matter is not rendered
obvious by Morikawa in combination with Thalanany, for failure of the
references to teach a key limitation of the claims. The Examiner contends
that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that 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).3

3 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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We affirm the rejection.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
there is a legally sufficient justification for combining the disclosures of
Morikawa and Thalanany and on whether the combination of Morikawa and
Thalanany discloses or suggests a frame spoiling limitation that discards the
frame in response to either the input or output congestion indication prior to
the frame being compressed by the compression unit, as claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ invention relates to a system to realize a smooth viewing
experience of real-time images via a network without data loss or
jumping or skipping associated with network congestion. (Spec. 2, ll. 13-
18). “By restricting the flow of image updates from a server, all image
updates need not be sent as some may be discarded.” (Spec. 2, ll. 4-6).
Dropping (or discarding) frames prior to compression is a means of
controlling the stream of image updates that reach the client across the
network link, thus preventing a bottleneck of image data output by the
server. (Spec. 18, top). Frames can be dropped prior to compression
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when there is either input congestion, such that image data the client is
receiving is discarded when redundant, or, in the alternative, frames can
be dropped when there is output congestion, such that image data being
sent through the pipeline is dropped when redundant. (Claim 1 and
Abstract).
2. The reference Thalanany is concerned with discarding frames (packets)
in response to input congestion. (para. [0014]).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under 35 U.S.C. § 103] by showing insufficient evidence of prima
facie obviousness or by rebutting the prima facie case with evidence of
secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under [35 U.S.C. § 103].” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an
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improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740.
“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1732.
“A court must ask whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1731.
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application.” Phillips v. AWH
Corp., 415 F.3d at 1313.

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejection of Appellants’
claims under 35 U.S.C. § 103. The prima facie case is presented on pages 3
to 5 of the Examiner’s Answer.
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In opposition, Appellants present two main arguments. The first
argument contends that “there is no objective reason provided by the
Examiner to combine the [Morikawa and Thalanany] applications as [the
Examiner] proposed.” (App. Br. 7, ll. 14-16).
Concerning the first argument, the Appellants express their contention
as follows:
The Examiner has not cited any objective reason showing any
capability for [Morikawa and Thalanany] to be combined. … The
rationale provided by the Examiner for [Morikawa’s and Thalanany’s]
combination is purely subjective conjecture and speculation with no
objective reasoning being provided to support combining the
references as has been proposed.
(App. Br. 7, ll. 23-25 and 28-32).
The Examiner points out in the Final Rejection that Morikawa and
Thalanany are both directed to packet-based communications. (See Final
Rej. 5, l. 15 to 6 l. 4). In view of KSR, we accept the Examiner’s argument
that a person of ordinary skill in the art would have combined the references,
which are from the same field of endeavor, as proposed and both address the
same problem of frame transfer congestion. (See KSR, cited above).
The second argument contends that Thalanany does not disclose or
suggest discarding frames prior to compression in response to output
congestion. (App. Br. 10, top).
Concerning the second argument, the Appellants express their
contention as follows:
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The Examiner seems to indicate that by only discarding frames prior
to compression in response to input congestion, the Thalanany, et al.
application meets the terms of the claimed invention. However, the
Examiner is not taking into account the full feature of the claimed
invention which requires discarding of frames prior to compression in
response to either input or output congestion.
(App. Reply Br. 12, ll. 5-12).
The Examiner points to paragraph [0014], where Thalanany describes
his Packet Data Serving Node (PDSN), which has the capability of
compressing packets received and dropping packets when the associated
buffer is full. (Answer 12, middle). In the cited example, frames are
discarded prior to compression when the input buffer is full. (See FF#2).
The Examiner regards a full input buffer as being a type of input congestion.
The Examiner reasons that because the claim is written in the alternative
(“either the input congestion or output congestion indication”), the Examiner
only needs to show that Thalanany discards frames in response to input
congestion, and not in response to output congestion. (Answer, 12,
l. 8).
Reading the claims in a broad but fair manner, we find that the
Examiner has not erred with respect to that logic, as the claim is constructed
such that a frame is either discarded in response to input congestion or a
frame is discarded in response to output congestion. The claim does not
require that both the input buffer and the output buffer be able to perform the
frame discarding function. (See FF#1 above).
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We note that Appellants’ Abstract discloses that the frame spoiler may
discard the frame “in accordance with a combination of the input indication
and the output indication.” However, Appellants have instead argued
repeatedly the “either/or” alternative claim language in the Briefs and during
the course of prosecution. The Examiner interpreted the “or” recited in
exemplary claim 1 to mean that only one of the two alternatives is necessary.
If only one of the two claim alternatives is necessary, then Appellants’
exemplary claim 1 reads on Thalanany. We agree with the Examiner’s
reasoning, in so much as the disjunctive term “or” should be given its
ordinary and customary meaning. (See Phillips, cited above).
Thus, Thalanany discloses or suggests the recited “frame spoiler
operable to discard the frame in response to either the input or output
congestion indication” because the limitation “in response to … the input …
congestion indication” reads on Thalanany’s discarding of frames (packets)
in response to input congestion. Accordingly, the alternative language of
claim 1 is met by Thalanany.
Appellants have based their appeal on the argument presented above.
(App. Br. 10, ll. 8-10 and ll. 26-28). We find no error in the Examiner’s
rejection.
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Application 10/112,392

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1, 4-8, 11-15, and 18-20 under
35 U.S.C. § 103(a) for being obvious over Morikawa in view of Thalanany.

DECISION
The Examiner’s rejection of claims 1, 4-8, 11-15, and 18-20 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

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