Ex Parte Dvir et al

Patent Trial and Appeal Board

Jan 30, 2017

14462414 (P.T.A.B. Jan. 30, 2017)

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.
14/462,414 08/18/2014 Tomer Dvir 35976-0015002 1001
26181 7590 02/01/2017
FISH & RICHARDSON P.C. (SV)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMER DVIR, OMRI HAIM, OMRI BRUCHIM, OR YAGEL,
and JONATHAN RAUCH
Appeal 2016-0055041
Application 14/462,414
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
BAER, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Asurion, LLC as the real party in interest. Appeal
Br. 1.
Appeal 2016-005504
Application 14/462,414
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1—21 and 31—39, which are all the
pending claims. Appeal Br. 1. Claims 22—30 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
A. The Invention
Appellants’ invention is directed to “service discovery and media
sharing.” Abstract. Claims 1, 2, 7, 31, and 32 are representative and
reproduced below, with emphasis added to the disputed elements:
1. A method comprising:
receiving, at a first device, service information for a
streaming service provided by a second device, the first device
and second device being on different first networks, the first
networks being different local multicast networks;
inserting an entry in a multicast domain name system
(mDNS) cache of the first device based on the service
information such that the streaming service is (i) discoverable
by the first device via a mDNS query and (ii) accessible through
a second network that interconnects the first networks', and
sending streaming information from the first device to the
second device through the second network for the streaming
service.
2. The method of claim 1, comprising:
receiving a request to share a display of the first device
with the second device, wherein inserting the entry is
conditional based on an acceptance of the request.
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7. The method of claim 1, wherein receiving the service
information comprises receiving, over a unicast connection
through the second network, a version of a mDNS service
record that was published by the second device on a
corresponding one of the first networks.
31. A method comprising:
receiving, at a first device over a unicast connection,
service information for a streaming service provided by a
second device, the first device and second device being on
different first networks, the first networks being different local
multicast networks;
using, at the first device, the service information to
internally publish multicast domain name system (mDNS)
information regarding the streaming service such that the
streaming service is (i) discoverable by an application on the
first device via a mDNS query and (ii) accessible through a
second network that interconnects the first networks;
operating the application to perform the mDNS query to
discover one or more devices associated with the streaming
service; and
sending streaming information from the application on the
first device to the second device through the second network for
the streaming service, wherein sending the information
comprises using an network address that is returned by the
mDNS query and is associated with the second device.
32. The method of claim 31, comprising:
receiving a request to share a display of the first device
with the second device, wherein using the service information
to internally publish the mDNS information is conditional
based on an acceptance of the request.
Appeal Br. 19-20, 23 (Claims App.).
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B. The Rejections on Anneal
The Examiner provisionally rejects claims 1—21 under 35 U.S.C.
§ 101 as claiming the same invention as that of claims 1—30 of co-pending
Application No. 14/305,791. Final Act. 5.
The Examiner provisionally rejects claims 31—39 on the ground of
non-statutory double patenting as being unpatentable over claims 1—30 of
co-pending Application No. 14/305,791 in view of Apple Inc., Bonjour
Overview, Apr. 23, 2013,
https:// developer, apple, com/library/content/documentation/ Cocoa/ Conceptu
al/NetServices/Introduction.html (“Bonjour”). Final Act. 7.
The Examiner rejects claims 1, 8—10, 12, 15, and 18—20 under
35 U.S.C. § 103 as unpatentable over Song (US 2008/0263124 Al; Oct. 23,
2008), in view of Wengrovitz (US 2013/0094423 Al; Apr. 18, 2013). Final
Act. 8.
The Examiner rejects claims 2-4, 13, and 14 under 35 U.S.C. § 103 as
unpatentable over Song, in view of Wengrovitz, and further in view of
Metzler (US 2004/0102977 Al; May 27, 2004). Final Act. 13.
The Examiner rejects claims 5—7, 16, and 17 under 35 U.S.C. § 103 as
unpatentable over Song, in view of Wengrovitz, and further in view of
Bonjour. Final Act. 15.
The Examiner rejects claims 11 and 21 under 35 U.S.C. § 103 as
unpatentable over Song, in view of Wengrovitz, and further in view of
Khanna (US 2007/0113275 Al; May 17, 2007). Final Act. 17.
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The Examiner rejects claims 31, 34—36, 38, and 39 under
35 U.S.C. § 103 as unpatentable over Song, in view of Wengrovitz, and
further in view of Bonjour. Final Act. 18.
The Examiner rejects claims 32, 33, and 37 under 35 U.S.C. § 103 as
unpatentable over Song, in view of Wengrovitz, in view of Bonjour, and
further in view of Metzler. Final Act. 25.
ANALYSIS
A. Double Patenting Rejections of Claims 1—21 and 31—39
Appellants do not provide substantive arguments regarding the
double-patenting rejections of claims 1—21 and 31—39. See Ans. 2. If a
ground of rejection stated by the Examiner is not addressed in the
Appellants’ Appeal Brief, Appellants have waived any challenge to that
ground of rejection and the Board may summarily sustain it. See Manual of
Patent Examining Procedure (MPEP) § 1205.02. We summarily sustain the
provisional statutory double patenting rejection of claims 1—21 and the
provisional non-statutory double patenting rejection of claims 31—39.
B. Obviousness Rejection of Claims E 5, 6, 8—12, and 15—21
Appellants argue the combination of Song and Wengrovitz fails to
teach or suggest “inserting an entry in a multicast domain name system
(mDNS) cache of the first device based on the service information such that
the streaming service is (i) discoverable by the first device via a mDNS
query,” as recited in independent claim 1, and similarly recited in
independent claim 12. See Appeal Br. 4, 7. More specifically, as argued by
Appellants, Song’s M-search message is not equivalent to the claimed
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“query” because Song teaches a remote proxy intercepting an M-search
message that originates from a control point and creating a response to the
M-search message, where the control point is not aware of the remote proxy
or an underlying device list. See Appeal Br. 5—6. Appellants further argue
one of ordinary skill in the art would not have been motivated to modify
Song’s Universal Plug and Play (UPnP) system and associated service
discovery protocol (SSDP) with Wengrovitz’s mDNS protocol because the
proposed modification would amount to extra work for no apparent reason.
See Appeal Br. 6—7; see also Reply Br. 2—3.
We do not find Appellants’ argument persuasive. We agree with the
Examiner that Appellants’ argument regarding Song’s M-search message is
not commensurate with the scope of independent claims 1 and 12, as the
claims do not explicitly prohibit interception of the claimed “query,” as
taught by Song, and do not require “awareness” of one element by another.
See Ans. 3. Appellants’ argument also does not address the Examiner’s
finding that Song teaches the remote proxy initially sending an M-search
message to a local proxy, rather than intercepting the message, and inserting
entries in a created device list based on the device responses received from
the local proxy. See Ans. 4; see also Song || 62—63. We further agree with
the Examiner that Appellants’ argument is not persuasive because it
addresses Song individually, rather than the combination of Song and
Wengrovitz. See Ans. 3. We also agree with the Examiner that Appellants
have failed to show why the Examiner’s articulated motivation to combine
Song with Wengrovitz (i.e., “to retain the wide-area latency reduction of
Song while allowing users to conduct remote presentations using [devices]
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that are compatible with mDNS but not necessarily UPnP”) is insufficient.
See Ans. 4—5 (citing Final Act. 9).
Thus, we are not persuaded that the Examiner erred in finding the
combination of Song and Wengrovitz teaches all the claim elements of
independent claims 1 and 12. Accordingly, we sustain the Examiner’s
rejection of independent claims 1 and 12 under 35U.S.C. §103. We further
sustain the rejection of dependent claims 5, 6, 8—11, and 15—21, not argued
separately.2 See Appeal Br. 7, 10-11.
C. Obviousness Rejection of Claims 2-4, 13, and 14
Appellants argue the combination of Song, Wengrovitz, and Metzler
fails to teach or suggest “receiving a request to share a display of the first
device with the second device, wherein inserting the entry is conditional
based on an acceptance of the request,” as recited in claim 2, and similarly
recited in claim 13. See Appeal Br. 8. More specifically, Appellants argue,
Metzler merely describes a capabilities exchange between devices including
commands a device is capable of accepting, and fails to teach or suggest
“wherein inserting the entry is conditional based on an acceptance of the
request,” as recited in claim 2, and similarly recited in claim 13. See id.
Appellants further argue Metzler merely describes a device receiving a
request and fails to teach the device accepting the request, and the Office
2 Appellants’ argument that claims 5, 6, 16, and 17 are patentable for at least
the reasons noted for claims 1 and 12 is not a separate argument of
patentability. See Appeal Br. 10. Similarly, Appellants’argument that
claims 11 and 21 are patentable because Khanna fails to cure the alleged
deficiencies of Song and Wengrovitz with respect to claim 1 is not a separate
argument of patentability. See Appeal Br. 10-11.
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Action conflates the claimed “acceptance” with Metzler’s receiving. See
Reply Br. 4.
We find Appellants’ argument persuasive. We agree with Appellants
that Metzler merely describes a controlling application receives a user
request for list of capabilities and then transmits a capabilities query to a
UPnP device (see Metzler 123), and that Metzler does not teach the control
application accepting (or denying) the request. See Appeal Br. 8; see also
Reply Br. 4.
Thus, we are persuaded that the Examiner erred in finding the
combination of Song, Wengrovitz, and Metzler teaches all the claim
elements of claims 2 and 13. Accordingly, we do not sustain the Examiner’s
rejection of claims 2 and 13 under 35 U.S.C. § 103. We also do not sustain
the Examiner’s rejection of claims 3, 4, and 14, which depend upon one of
claims 2 and 13.
D. Obviousness Rejection of Claim 7
Appellants argue Bonjour fails to teach or suggest a “unicast
connection,” as recited in claim 7. See Appeal Br. 9; see also Reply Br. 5—6.
Appellants further argue the Office Action uses “hindsight reconstruction to
pick and choose among isolated disclosures in the prior art in an attempt to
arrive at the claimed invention.” See Appeal Br. 9-10.
We do not find Appellants’ arguments persuasive. We agree with the
Examiner that Bonjour clearly teaches, as an alternative to multicast DNS,
advertising and discovering services over unicast DNS (see Bonjour, 19),
and we also agree with the Examiner that one of ordinary skill in the art
would understand unicast DNS involves a unicast connection. See Ans. 8.
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We further agree with the Examiner that Song, Wengrovitz, and Bonjour are
not “isolated disclosures” as they all relate to network discovery protocols,
and, in light of Bonjour’s explicit suggestion of using unicast DNS as an
alternative to multicast DNS, we conclude the Examiner’s combination of
the cited references is proper. See Ans. 9; see also Bonjour, 19.
Thus, we are not persuaded the Examiner erred in finding the
combination of Song, Wengrovitz, and Bonjour teaches all the claim
elements of claim 7. Accordingly, we sustain the Examiner’s rejection of
claim 7 under 35 U.S.C. § 103.
E. Obviousness Rejection of Claims 31, 34—36, 38, and 39
Appellants argue the combination of Song, Wengrovitz, and Bonjour
fails to teach or suggest “using, at the first device, the service information to
internally publish multicast domain name system (mDNS) information
regarding the streaming service such that the streaming service is (i)
discoverable by an application on the first device via a mDNS query and (ii)
accessible through a second network that interconnects the first networks,”
and a “unicast connection,” as recited in independent claim 31, and similarly
recited in independent claim 36. See Appeal Br. 11, 16. Essentially,
Appellants’ argument regarding claims 31 and 36 incorporates both
Appellants’ argument regarding claims 1 and 12 and Appellants’ argument
regarding claim 7. See Appeal Br. 11—16; see also Reply Br. 6—9.
Appellants’ arguments are not persuasive for the reasons described above.
Accordingly, we sustain the Examiner’s rejection of independent claims 31
and 36 under 35 U.S.C. § 103. We further sustain the rejection of dependent
claims 34, 35, 38, and 39, not argued separately. See Appeal Br. 16.
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F. Obviousness Rejection of Claims 32, 33, and 37
Appellants argue the combination of Song, Wengrovitz, Bonjour, and
Metzler fails to teach or suggest “receiving a request to share a display of the
first device with the second device, wherein using the service information to
internally publish the mDNS information is conditional based on an
acceptance of the request,” as recited in claim 32, and similarly recited in
claim 37. See Appeal Br. 17. Essentially, Appellants’argument regarding
claims 32 and 37 incorporates their argument regarding claims 2 and 13.
See id', see also Reply Br. 9—11. We find Appellants’ argument persuasive
for the reasons previously discussed above with respect to claims 2 and 13.
Accordingly, we do not sustain the Examiner’s rejection of claims 32 and 37
under 35 U.S.C. § 103. We also do not sustain the Examiner’s rejection of
claim 33, which depends upon claim 32.
DECISION
We affirm the Examiner’s provisional statutory double patenting
rejection of claims 1—21.
We affirm the Examiner’s provisional non-statutory double patenting
rejection of claims 31—39.
We affirm the Examiner’s rejection of claims 1, 5—12, 15—21, 31, 34—
36, 38, and 39 under 35 U.S.C. § 103.
We reverse the Examiner’s rejection of claims 2-4, 13, 14, 32, 33, and
37 under 35 U.S.C. § 103.
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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)(l)(iv).
AFFIRMED
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