Ex Parte de Vries

Patent Trial and Appeal Board

Dec 23, 2016

11388381 (P.T.A.B. Dec. 23, 2016)

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.
11/388,381 03/23/2006 Jeffrey de Vries 33PG-157105 8938
69849 7590 12/28/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
GEORGANDELLIS, ANDREW C
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
12/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
svpatents @ sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY DE VRIES
Appeal 2014-009306
Application 11/388,381
Technology Center 2400
Before THU A. DANG, JEFFREY A. STEPHENS, and
SCOTT B. HOWARD, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1, 4, 6—8, 10—
14, and 16—24, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest is identified as Numecent Holdings, Inc. App. Br.
2.
Appeal 2014-009306
Application 11/388,381
Claimed Subject Matter
Claim 1, reproduced below, illustrates the claimed subject matter.
1. A method, comprising:
virtually representing a file associated with a streaming
software program on a streaming client;
streaming a segment of the file to the streaming client;
tracking modifications to the segment of the file at the
streaming client;
writing, at the streaming client, tracked modifications to
the virtual file into a diff-file, the diff-file residing on the
streaming client;
combining, at the streaming client, the segment of the file
with the diff-file to create a locally modified virtual file;
virtually representing, on the streaming client, the locally
modified virtual file.
Rejections2,3
1. Claim 24 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to satisfy the enablement requirement. Final Act. 4.
2. Claims 1, 6, 8, 11, 12, 14, 17, 18, and 21—24 stand rejected
under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 6.2 3 4
2 The Examiner withdrew the rejections of claims 1,8, and 14 under 35
U.S.C. § 112, first paragraph, for failing to satisfy the written description
and enablement requirements. Ans. 3.
3 The Appeal Brief presents as grounds of rejection to be reviewed on appeal
only the rejections of claims 1, 8, 14, and 24 (App. Br. 5), and neither the
Appeal Brief nor the Reply Brief includes arguments directed to pending
claims 4, 6, 7, 10-13, and 16—23. Although Appellants should expressly
group claims together for purposes of appeal or exclude claims from appeal
if they are intended to be excluded, in this case we will consider these claims
to stand or fall with their respective independent claims.
4 The summary of the rejection (Final Act. 6) includes claim 5, which is
canceled (see Final Act. 1; App. Br. 26).
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3. Claims 1, 4, 6, 14, 16—18, 20, 21, and 23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Liou et al. (US 2004/0036912 Al,
published Feb. 26, 2004) and Somalwar et al. (US 6,985,915 B2, issued Jan.
10,2006). Final Act. 7-8.
4. Claims 7 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Liou, Somalwar, and Hedge et al. (US 6,925,495 B2,
issued Aug. 2, 2005). Final Act. 8—9.
5. Claims 8, 10-12, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Liou, Somalwar, and Kuwata et al. (US
7,246,119 B2, issued July 17, 2007). Final Act. 9-11.
6. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Liou, Somalwar, Kuwata, and Hedge. Final Act. 11.
ANALYSIS
Section 112 Rejections of Claim 24 (Rejections 1 and 2)
Claim 24 recites, among other things, “a means for downloading the
file if the file is associated with an application in which an append is
determined to be atypical.” The Examiner concludes that the claim phrase
“if the file is associated with an application in which an append is
determined to be atypical” is unclear (Final Act. 6), and also not enabled for
the scope of the claim {id. at 3—4).
Appellant argues the Specification defines when an append is atypical
and gives examples of when an append is both typical and atypical, and thus
no undue or unreasonable experimentation would be necessary to practice,
by one of ordinary skill in the art, the above-recited limitations of claim 24.
App. Br. 10, 16—17 (citing Spec. 125).
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Appellant’s Specification provides:
By way of example but not limitation, many games have data
files that are modified over time. Typically, the data files include
saved state. As the game progresses, additional saved state is
appended to the data file. Thus, a game file may be associated
with an application in which an append is typical. Other files,
such as Word documents, may not typically be appended to
(modifications may occur with reasonable frequency anywhere
in the file).
Spec. 125.
Where the Examiner “identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention,” and Appellant does not provided a
satisfactory response, an indefiniteness rejection under 35 U.S.C. § 112,
second paragraph, is appropriate. In re Packard, 751 F.3d 1307, 1311 (Fed.
Cir. 2014). Here, we agree with the Examiner that the scope of claim 24 is
unclear in view of the phrase “if the file is associated with an application in
which an append is determined to be atypical,” and thus properly rejected
under § 112, second paragraph. Final Act. 6.
Paragraph 25 of the Specification provides a possible example of
typical and atypical appends: “a game file may be associated with an
application in which an append is typical,” but “[ojther files, such as Word
documents, may not typically be appended to.” In this context, the existence
of one example of each fails to provide a standard by which one of skill in
the art could determine whether a file should be considered one or the other.
Moreover, the examples are not definitive, and leave open the possibility
that some game files “may” not be associated with an application in which
an append is typical, and some word-processing documents “may” be
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typically appended to. The cited portion of the Specification fails, for
example, to inform one of ordinary skill in the art how to determine whether
a particular game perhaps does not append frequently enough for appends of
its data files to be considered “typical.” The Specification provides that an
append is atypical if “modifications may occur with reasonable frequency
anywhere in the file.” Spec. 125. There is no indication, however, that
occurrence with “reasonable frequency” provides to one of ordinary skill in
the art a standard any more informative in this context than “atypical.”
Appellant’s response does not satisfactorily explain what objective standard
one of ordinary skill in the art may rely on to make the claimed
determination.
In view of the foregoing, we sustain the rejection of claim 24 under 35
U.S.C. § 112, second paragraph, and adopt as our own the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and set forth in the Advisory Action relating to this rejection.
Appellant argues the disputed phrase of claim 24 is enabled for the
same reasons it is allegedly not unclear. Compare App. Br. 10 with App. Br.
16—17. We agree with the Examiner that although one of ordinary skill in
the art would be able to determine whether a file is a game or word­
processing file, one of ordinary skill in the art would not be enabled to make
the claimed determination with other types of files without a standard for
determining whether an append is “atypical.” Final Act. 3^4; see also
Advisory Act. 2. Thus, despite differing standards for determining
enablement and definiteness, we agree with the Examiner that claim 24 is
not enabled for similar reasons that the claim is unclear.
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In view of the foregoing, we sustain the rejection of claim 24 under 35
U.S.C. § 112, first paragraph.
Section 112, second paragraph, Rejection of Claims 1, 8, and 14
(Rejection 2)
The Examiner determines that claim 1 ’s step of “combining, at the
streaming client, the segment of the file with the diff-file to create a locally
modified virtual file” (hereinafter, “combining step”), renders the claim
indefinite. Final Act. 6. In particular, the Examiner determines “it is not
clear whether ‘the segment of the file’ refers to the segment of the file 504
stored at the server 502 or to the streamed segment itself.” Id. The
Examiner finds the Specification supports the interpretation that the claimed
“segment” refers to the copy of the segment stored at the server rather than
the copy of the segment stored at the client. Paragraph 28 of the
Specification indicates that server 502 stores file 504 and states that “diff-
file integration engine 514 combines the file 504 and the diff-file,” thereby
referring back to the file stored on server 502. Ans. 4—5.
Appellant argues one of ordinary skill in the art would understand the
claimed “combining” step in view of the Specification. App. Br. 14.
Appellant contends the Examiner is incorrect in stating that the Specification
supports the interpretation that the claimed “segment” in the combining step
refers to the copy of the segment stored at the server. Reply Br. 4.
Appellant contends that Figure 5, which is described at paragraph 28 of the
Specification, shows that file 504 or a segment of file 504 is sent to the diff-
file integration engine 514 residing at the client 510, as indicated by an
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arrow pointing from file 504 at the server to the diff-file integration engine
514 at the client. Reply Br. 4.
We conclude that claim 1 ’s failure to limit the origin of “the segment
of the file” in the combining step does not render the claim indefinite. The
combining step refers back to the same segment of the file referenced earlier
in the claimed “streaming” step, and must be the same segment. The
Examiner’s rejection, in concluding that one of ordinary skill in the art
would not know which copy of the segment is being used, acknowledges
that one of ordinary skill in the art would recognize that a copy of “the
segment of the file” would still be considered “the segment of the file.”
Whether the segment is a copy that resides entirely on the client just prior to
being combined “at the streaming client” with the diff-file or is combined as
a copy is received from a server is not specified in the claim. Without
stronger indication in the language of the claim or the Specification that the
claim is intended to be limited to a copy of the segment of the file from a
particular location that is not specified, we do not consider the potential
breadth of this aspect of the claim to require clarification. The
Specification’s reference to “file 504,” which is stored at the server, being
combined with the diff-file is not inconsistent with the understanding that
“file 504” may be combined with the diff-file by using a copy of “file 504”
residing at the client.
In view of the foregoing, we do not sustain the rejection of claim 1
under 35 U.S.C. § 112, second paragraph. For the same reasons, we do not
sustain the rejection of independent claims 8 and 14, which are rejected on
the same basis (Final Act. 6) for reciting similar limitations, and we do not
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sustain the rejection of dependent claims 6, 11, 12, 17, 18, and 21—23, which
are rejected on the same basis.
Section 103(a) Rejections of Claims 1, 8, and 14 (Rejections 3 and 5)
Appellant argues the Examiner errs in finding Somalwar teaches the
combining step of claim 1 (i.e., “combining, at the streaming client, the
segment of the file with the diff-file to create a locally modified virtual
file”). App. Br. 19-20. Appellant notes column 7, lines 41—43 of Somalwar
states that “data from the log record store 72 is applied to the copy of the file
maintained on the server computer 50.” App. Br. 20. Appellant contends
that applying changes to the copy of the file on the server does not “create a
locally modified virtual file” as claimed. Id.
The Examiner responds that Somalwar alone was not relied on for
teaching the combining step, and that the Examiner relies on the
combination of Liou and Somalwar. Ans. 9. From the Examiner’s findings
in the Final Action and Answer, however, it is evident that the Examiner
relies on Somalwar’s teachings of combining a locally stored log record with
a segment of the file on the server. See Final Act. 7 (finding Somalwar
“combines the segments of the file with the log record 72 to create a locally
modified file 80”); Ans. 9 (finding Somalwar suggests “combining the
locally stored log record with the server segment”). The Examiner finds the
resulting file is “locally modified” because the client synchronization
process resides on the client. Ans. 11 n.5.
We agree with Appellant that the cited portions of Somalwar do not
support the Examiner’s finding that Somalwar teaches, or even suggests, the
combining step of claim 1. In view of the claim’s language requiring the
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combing to take place “at the streaming client,” it is unreasonable to
interpret the “locally modified virtual file” as encompassing a file residing
remotely at a server. Combining the segment with the diff-file at the client
would be expected to result in a combined file at that same location. It is not
sufficient that some portion of the synchronization process, such as the log
in Somalwar, is present on the client.
In view of the foregoing, we do not sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as obvious over Liou and Somalwar.
Corresponding limitations of claims 8 and 14 are worded differently, but
present the same issue as claim 1. Thus, for the same reasons, we do not
sustain the rejections under 35 U.S.C. § 103(a) of: (1) claim 8 as obvious
over Liou, Somalwar, and Kuwata, and (2) claim 14 as obvious over Liou
and Somalwar. For the same reasons, we do not sustain the rejections under
§ 103(a) of dependent claims 4, 6, 7, 10-13, and 16—23.
DECISION
We affirm the Examiner’s decision to reject claim 24 under 35 U.S.C.
§112, first and second paragraphs.
We reverse the Examiner’s decision to reject claims 1, 6, 8, 11, 12,
14, 17, 18, and 21—23 under 35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision to reject claims 1, 4, 6—8, 10-14,
and 16-23 under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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