Ex Parte Cline et alDownload PDFPatent Trial and Appeal BoardApr 9, 201411964487 (P.T.A.B. Apr. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN G. CLINE, JAMES P. GALVIN, and JAMES W. LAWWILL, JR. ____________ Appeal 2012-000058 Application 11/964,487 Technology Center 2400 ____________ Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and IRVIN E. BRANCH, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-7 and 9-20. Claim 8 has been indicated as containing allowable subject matter.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Although the Examiner’s anticipation rejection includes claims 8 and 20 (Ans. 4, 6), the Examiner nonetheless withdrew the anticipation rejection of those claims. Ans. 2-3, 9. Accordingly, the Examiner’s anticipation rejection of claims 8 and 20 is not before us. But because the Examiner maintained the § 101 rejection of claim 20 (Ans. 3), that rejection is before Appeal 2012-000058 Application 11/964,487 2 STATEMENT OF THE CASE Appellants’ invention balances audio server loadability and scalability for Internet Protocol (IP) audio conferencing based on monitored resource consumption. See generally Abstract. Claim 1 is illustrative: 1. A method for balancing audio server loadability and audio server scalability based upon monitored resource consumption, the method comprising: monitoring computing conditions in an audio conferencing server receiving encoded audio packets from coupled Internet Protocol (IP) audio clients and routing the encoded audio packets as a number of audio streams to the IP audio clients; and, responsive to detecting deteriorating computing conditions in the audio conferencing server, directing at least one of the IP audio clients to reduce an amount of the encoded audio packets transmitted by the at least one of the IP audio clients to the audio conferencing server. THE REJECTIONS The Examiner rejected claims 13-20 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 3.2 The Examiner rejected claims 1, 2, 5-7, 9, 10, 12-14, and 17-19 under 35 U.S.C. § 102(b) as anticipated by Spencer (US 2003/0041165 A1; published Feb. 27, 2003). Ans. 4-6. us despite the Examiner’s indication that it contains allowable subject matter. Ans. 9. 2 Throughout this opinion, we refer to (1) the Appeal Brief filed January 3, 2011 (“App. Br.”); (2) the Examiner’s Answer mailed April 14, 2011 (“Ans.”); and (3) the Reply Brief filed June 14, 2011 (“Reply Br.”). Appeal 2012-000058 Application 11/964,487 3 The Examiner rejected claims 3, 4, 11, 15, and 16 under 35 U.S.C. § 103(a) as obvious over Spencer and Liljestrand (US 2005/0152521 A1; published July 14, 2005). Ans. 7. THE § 101 REJECTION The Examiner finds that the computer-usable storage medium recited in independent claim 13 covers transitory media and is, therefore, ineligible under § 101. Ans. 3, 8. Appellants argue that skilled artisans would not reasonably construe the recited storage medium to encompass propagation or transitory media, such as signals, in light of the plain meaning of the terms “storage medium” and “storage.” App. Br. 5-9; Reply Br. 5-8. Appellants add that claim 13 is statutory because the recited program code is also used by a machine (e.g., an audio server). App. Br. 8. ISSUE Has the Examiner erred in rejecting claim 13 by finding that the recited computer-usable storage medium encompasses transitory media to render the claim ineligible under § 101? PRINCIPLES OF LAW Signals are patent-ineligible under § 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office (USPTO) guidelines: A claim that covers both statutory and non-statutory embodiments . . . embraces subject matter that is not eligible for Appeal 2012-000058 Application 11/964,487 4 patent protection and therefore is directed to non-statutory subject matter. . . . . . . Thus, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. MPEP § 2106(I) (emphasis added). The USPTO also provides the following guidance: The broadest reasonable interpretation of a claim drawn to a computer readable medium . . . typically covers forms of non- transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. & Trademark Office 212 (Feb. 23, 2010) (citation omitted). ANALYSIS We sustain the Examiner’s § 101 rejection of claim 13 reciting, in pertinent part, a computer-usable storage medium. This storage, however, is insufficient to limit the claim to non-transitory media. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 because it encompassed transitory media). That paragraph 24 of Appellants’ Specification indicates unambiguously that the medium can be electromagnetic, infrared, or a propagation medium only bolsters the Examiner’s position in this regard. Appeal 2012-000058 Application 11/964,487 5 Although this paragraph lists various forms of non-transitory storage media as non-limiting examples of a computer-readable medium, that alone does not preclude the recited storage medium from encompassing transitory media as the Examiner indicates. Ans. 3, 8. While we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Where, as here, a recited computer-usable storage medium is not claimed as non-transitory, and the disclosure does not expressly and unambiguously limit that medium to solely non-transitory forms via a definition or similar limiting language, the medium encompasses transitory forms and is, therefore, ineligible under § 101. Lastly, although the recited medium and code stored thereon is for balancing audio server loadability and scalability, this intended use alone is insufficient to render the claim eligible under § 101 as the Examiner correctly indicates. Ans. 8. Accordingly, we are not persuaded that the Examiner erred in rejecting representative claim 13 under § 101, and claims 14-20 not argued separately with particularity. THE ANTICIPATION REJECTION The Examiner finds that Spencer’s bandwidth optimizer discloses every recited element of claim 1 including directing at least one IP audio client to reduce an amount of encoded audio packets transmitted by the Appeal 2012-000058 Application 11/964,487 6 client to an audio conferencing server responsive to detecting deteriorating computing conditions associated with the backlog in the server. Ans. 4, 8-9. Appellants argue that Spencer’s bandwidth optimizer’s restricting data transmission therethrough by adjusting packet size and transmission speed is not equivalent to directing clients to reduce an amount of encoded packets that they transmit to the server responsive to detecting deteriorating computing conditions in the server as claimed. App. Br. 11-13; Reply Br. 9- 11. Appellants emphasize that Spencer’s bandwidth optimizer monitors and controls either the servers or clients, but not both. Reply Br. 10-11. Appellants also argue other limitations summarized below. ISSUES Under § 102, has the Examiner erred by finding that Spencer: (1) directs at least one IP audio client to reduce an amount of encoded audio packets transmitted by the client to an audio conferencing server responsive to detecting deteriorating computing conditions in the server as recited in claim 1? (2) monitors reception status reported by the IP audio clients as recited in claim 7? ANALYSIS Claims 1, 2, 5, 6, 9, 10, 12-14, 17, and 18 We sustain the Examiner’s anticipation rejection of representative claim 1 reciting, in pertinent part, directing at least one IP audio client to reduce an amount of encoded audio packets transmitted by the client to an audio conferencing server responsive to detecting deteriorating computing Appeal 2012-000058 Application 11/964,487 7 conditions in the server. Our emphasis above underscores the fact that while the recited clients are directed to reduce an amount of packets that they transmit, the claim lacks an actual reduction step. That is, the “to reduce” language merely recites a desired result of the recited direction that need not occur given the limitation’s scope and breadth.3 Turning to the rejection, the Examiner relies on Spencer’s bandwidth optimizer as teaching this limitation. In Spencer, when a client accesses a group teleconferencing system, a server (1) determines the maximum bandwidth available for the connection to that client, and (2) establishes an appropriate rate of transmission and packet size of transmitted data to utilize the available bandwidth. Spencer ¶ 0009. To this end, Spencer’s bandwidth optimizer 700 adjusts the transmission rate while monitoring actual round- trip transmission times and packet-loss rate to determine the most efficient transmission rate. Spencer ¶¶ 0009, 0055; Fig. 7. If the current data backlog exceeds a predetermined threshold, then the bandwidth optimizer restricts the current bandwidth values to an average transmission rate, and the optimizer’s throttle then adjusts the current packet size and transmission speed based on the rate indicated by those current values. Id. ¶¶ 0055-62; Figs. 7-8. The Examiner finds that this server-based transmission rate adjustment directs the client to reduce the amount of packets that the client transmits as claimed. Ans. 4 (noting that the client “get[s] an adjustable 3 Appellants’ word choice in connection with similar limitations in other claims is telling in this regard. Compare claim 2 (affirmatively reciting increasing the amount of packets transmitted by the clients) with claim 10 (reciting code to direct clients to increase the amount of packets that they transmit). Appeal 2012-000058 Application 11/964,487 8 maximum bandwidth available adjusted by the server”), 9 (noting that Spencer’s clients are directed to reduce an amount of transmitted data by adjusting the transmission rate). We see no error in this position. First, the server’s bandwidth optimizer adjusts the rate of transmission of data packets between a particular client and server. See Spencer ¶ 0009; claims 1, 4 (reciting transmissions on a connection between a client and a server). Second, the server’s transmitting packets at an adjusted rate to the client would effectively direct that client to similarly adjust its rate to comport with the new rate. See Spencer ¶¶ 0009, 0055, 0061 (noting that the throttle uses the transmission rate to determine the optimal packet size and transmission interval for outgoing and incoming data). Nothing in the claim precludes this direction, particularly in view of the fact that the term “direct” is not defined in the Specification and its plain meaning is quite broad. See THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 512 (4th ed. 2006) (defining “direct” in pertinent part as “[t]o show or indicate the way for” or “[t]o cause to move toward a goal; aim”). Therefore, when the server lowers the rate of packets transmitted to a client responsive to detecting a backlog, the server effectively directs the client to correspondingly reduce an amount of packets to be sent to the server to match the adjusted transmission rate. That both the client and server have similar bandwidth optimizers for UDP protocols, and the inbound interval is determined by the remote sender’s throttle, only bolsters Appeal 2012-000058 Application 11/964,487 9 this conclusion. See Spencer ¶¶ 0055, 0061.4 Appellants’ arguments are unavailing and not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2, 5, 6, 9, 10, 12-14, 17, and 18 not argued separately with particularity. Claims 7 and 19 We also sustain the Examiner’s rejection of representative claim 7 reciting, in pertinent part, monitoring reception status reported by the IP audio clients. We see no error in the Examiner’s reliance on the functionality associated with the time stamps in Spencer’s latency timeline in paragraph 55 and Figure 9. Ans. 6, 9. In short, nothing in the claim precludes the receipts that are (1) generated responsive to data being received at the receiver at point 902C, and (2) sent from receiver to the sender at points 902D-E as corresponding to a reception status reported by the clients. That is, these receipts effectively report to the sender that the data sent from the sender was received. Appellants’ arguments regarding Spencer’s lacking client reception status reports (App. Br. 13-14; Reply Br. 11-12) are unavailing and not commensurate with the scope of the claim. 4 See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”) (internal citations, quotation marks, and emphasis omitted). Appeal 2012-000058 Application 11/964,487 10 THE OBVIOUSNESS REJECTION We also sustain the Examiner’s obviousness rejection of claims 3, 4, 11, 15, and 16. Ans. 7. Despite nominally arguing these claims separately, Appellants reiterate similar arguments made in connection with the independent claims and allege that the additional cited references fail to cure those purported deficiencies. App. Br. 15. We are not persuaded by these arguments, however, for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting (1) claims 13-20 under § 101; (2) claims 1, 2, 5-7, 9, 10, 12-14, and 17-19 under § 102; and (3) claims 3, 4, 11, 15, and 16 under § 103. DECISION The Examiner’s decision rejecting claims 1-7 and 9-20 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 msc Copy with citationCopy as parenthetical citation