Ex Parte Chalfin et alDownload PDFBoard of Patent Appeals and InterferencesApr 9, 200910112392 (B.P.A.I. Apr. 9, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ALEX CHALFIN and JOE ROJAS ____________________ Appeal 2008-3440 Application 10/112,3921 Technology Center 2100 ____________________ 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). Appeal 2008-3440 Application 10/112,392 2 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 Appeal 2008-3440 Application 10/112,392 3 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 Application 10/112,392 4 (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). Appeal 2008-3440 Application 10/112,392 5 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 Appeal 2008-3440 Application 10/112,392 6 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 Appeal 2008-3440 Application 10/112,392 7 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. Appeal 2008-3440 Application 10/112,392 8 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: Appeal 2008-3440 Application 10/112,392 9 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). Appeal 2008-3440 Application 10/112,392 10 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. Appeal 2008-3440 Application 10/112,392 11 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 rwk BAKER BOTTS L.L.P. 2001 ROSS AVENUE SUITE 600 DALLAS TX 75201-2980 Copy with citationCopy as parenthetical citation