Ex Parte Forsman et al

Patent Trial and Appeal Board

Feb 23, 2017

14271201 (P.T.A.B. Feb. 23, 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.
14/271,201 05/06/2014 Robert Hammond Forsman P34892-US2 2844
27045 7590 02/27/2017
F.RTrSSON TNC EXAMINER
6300 LEGACY DRIVE VU, VIET D
M/SEVR 1-C-ll
PLANO, TX 75024 ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
kathryn.lopez@ericsson.com
michelle. sanderson @ eric sson .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT HAMMOND FORSMAN,
CHRIS PHILLIPS, JENNIFER ANN REYNOLDS,
CHARLES HAMMETT DASHER, and STEVE MARTIN
Appeal 2016-003550
Application 14/271,2011
Technology Center 2400
Before LARRY J. HUME, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—12, 15—18, 21, and 22. The Examiner indicates that
claims 13, 14, 19, and 20 are objected to, but are otherwise allowable if
rewritten in independent form. Final Act. 3. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Ericsson Television
Inc. App. Br. 1.
Appeal 2016-003550
Application 14/271,201
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed invention relates to servers, methods, and
systems that create "a content stream to be delivered to one or more clients
by segmenting the content into data structures which are stored in random
access memory (volatile storage) rather than segmenting the content into
segment files which are stored on a disk or database (non-volatile storage)."
Spec. 1,11. 6-9.
Exemplary Claims
Claims 1, 2, and 3, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A streaming server comprising:
a processing unit;
a random access memory unit coupled to the processing
unit; and
wherein the streaming server is configured to receive a
request to play a content stream, receive the content stream,
segment the content stream into a plurality of data structures,
and store the plurality of data structures in the random access
memory unit.
2. The streaming server of claim 1, wherein the
streaming server is configured to segment the content stream
into the plurality of data structures rather than into a plurality
of segment files.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 24, 2015); Reply Brief ("Reply Br.," filed Feb. 17, 2016); Examiner's
Answer ("Ans.," mailed Jan. 20, 2016); Final Office Action ("Final Act.,"
mailed July 16, 2015); and the original Specification ("Spec.," filed
May 6, 2014).
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Application 14/271,201
3. The streaming server of claim 1, wherein the
plurality of data structures encompass (1) a reference to the
content stream and (2) pointers which correspond to time codes
to the content stream.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Vahalia et al. ("Vahalia") US 5,933,603 Aug. 3, 1999
Hodapp US 2013/0304916 Al Nov. 14, 2013
Rejection on Appeal
Claims 1—12, 15—18, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hodapp and Vahalia.
Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5—13), we decide the
appeal of the obviousness rejection of claims 1, 4—6, 9—11, 15—17, 21,
and 22 on the basis of representative claim 1; we decide the appeal of the
obviousness rejection of claims 2, 7, 12, and 18 on the basis of
representative claim 2; and we decide the appeal of the obviousness rejection
of claims 3 and 8 on the basis of representative claim 3.3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv)
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to claims 2, 7, 12, and 18 for the specific reasons discussed below.
However, we disagree with Appellants' arguments with respect to
representative claims 1 and 3 and claims grouped therewith, and with respect
thereto we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. We highlight and
address specific findings and arguments regarding claims 1—3 for emphasis
as follows.
1. $103 Rejection of Claims E 4—6, 9—11, 15—17, 21, and 22
Issue 1
Appellants argue (App. Br. 5—9; Reply Br. 1—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hodapp and Vahalia is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a streaming server that includes a processor and memory,
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"wherein the streaming server is configured to . . . segment the content
stream into a plurality of data structures," as recited in claim l?4
Analysis
Appellants contend:
The claimed streaming server is configured to segment
the content stream into a plurality of data structures whereas
Hodapp's media stream server is configured to segment the
content into segment files and then use data structures (e.g.,
linked lists) to map the segment files into a virtual file ....
Hence, Hodapp's teachings are manifestly different than claim 1
because Hodapp's media stream server segments the content
stream into segment files rather than the data structures as
required in claim 1. Vahalia does not correct Hodapp's
deficiency.
App. Br. 7 (citing Hodapp 18—22). "Stated another way, Hodapp does not
segment the content stream into a plurality of data structures as required in
claim 1 but instead uses data structures (e.g., linked lists) to map the
segment files into a virtual file (i.e. a virtual file is not a data structure)."
App. Br. 9.
4 Appellants note for the record:
[T]he pending patent application has a priority date of
December 19, 2011 while Hodapp's US 2013/0304916 has a
filing date of December 28, 2011 but claims the benefit of
priority to Hodapp's provisional application 61/429,559 filed on
January 4, 2011. Hence, the Examiner should [have referred] to
Hodapp's provisional application 61/429,559.
App. Br. 5 n.2.
We disagree with Appellants' observation and find the Examiner properly
cites to the Hodapp '916 reference because the provisional application to
Hodapp merely provides benefit of an earlier effective filing date for the
cited Hodapp '916 reference. See 35 U.S.C. § 119(e)(1).
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"In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.").
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
In response to Appellants' contentions, the Examiner finds, and we
agree, because Hodapp teaches "segmenting the content stream into a
plurality of segment fields," Hodapp teaches or suggests the contested "data
structure" term. The Examiner finds, under a conventional definition, a data
structure merely "describes a format for organizing and storing data . . .
[such that] a simply claimed data structure would include any conventional
data object and/or data file." Ans. 5.
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The Examiner refers to Appellants' Specification (Ans. 5—6)5 to
ascertain the disclosure of any definition of "data structure" that would
preclude his broad interpretation, but notes Appellants rely upon the
"segmenting function" in support of their preferred claim interpretation. See
also App. Br. 2 ("Summary of Claimed Subject Matter") (see the first table
providing a Specification Reference for the recited "wherein" clause).6 We
therefore note Appellants have not cited to a definition of "data structure" in
the Specification that would preclude the Examiner's broader reading.
The Examiner also properly finds the exemplary data structure
disclosed in Appellants' Specification "cannot be read into the claims since it
would not and should not be used as scope and bound of the claimed
invention." Ans. 6; see also Van Geuns, 988 F.2d at 1184.
5 Spec. 5,11. 10-17 discloses:
In one aspect. . . [t]he segmenting unit is configured to receive
the content stream and segment the content stream into a
plurality of data structures, where the plurality of data structures
encompass pointers which correspond to time codes and a
reference to the unsegmented content stream. The random
access memory unit is configured to store the plurality of data
structures and the pointers.
6 As cited in the Appeal Brief, Spec. 8,11. 23—27 discloses:
The segmenting unit 210 is further configured to segment the
file or each of the multiple files into a plurality of data
structures (not segment files) which encompass pointers which
correspond to time codes and a reference to the unsegmented
content stream (step 3). The random access memory 211
(volatile memory) is configured to store the data structures of
the file or the multiple files of the content stream 203 (step 4).
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We further note, while claim 1 recites "segmenting] the content
stream into a plurality of data structures," claim 1 does not preclude
segmenting the content stream into segmented files.
In further support of the Examiner's findings, and acknowledging the
recitation of dependent claim 2,7 we note the doctrine of claim
differentiation informs us "the presence of a dependent claim that adds a
particular limitation raises a presumption that the limitation in question is
not found in the independent claim." Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed. Cir. 2004). "When different words or phrases are
used in separate claims, a difference in meaning is presumed." Nystrom v.
TREXCo., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005). Under the doctrine
of claim differentiation, "the presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim." Phillips v. AWH Corp,
415 F.3d 1303, 1315 (Fed. Cir. 2005). This presumption is "especially
strong when the limitation in dispute is the only meaningful difference
between an independent and dependent claim, and one party is urging that
the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298,
1303 (Fed. Cir. 2003).
Thus, under this alternative supporting rationale, we do not find error
in the Examiner's findings and legal conclusions.
7 Claim 2 recites, "[t]he streaming server of claim 1, wherein the streaming
server is configured to segment the content stream into the plurality of data
structures rather than into a plurality of segment fdes." (Emphasis added).
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 4—6, 9—11, 15—17, 21, and 22 which fall therewith. See Claim
Grouping, supra.
2. $103 Rejection of Claims 2, 7, 12, and 18
Issue 2
Appellants argue (App. Br. 9—11; Reply Br. 6—7) the Examiner's
rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hodapp and Vahalia is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he streaming server of claim 1, wherein the streaming server
is configured to segment the content stream into the plurality of data
structures rather than into a plurality of segment files," as recited in claim 2?
Analysis
Appellants contend "Hodapp's media stream server is required to
segment the content into a plurality of segment files . . . whereas claim 2
requires that the claimed streaming server segment the content stream into
the plurality of data structures rather than into a plurality of segment files.
Vahalia does not correct Hodapp's deficiency." App. Br. 10 (citing Hodapp
1118-22).
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In light of the discussion above regarding Issue 1, claim 1, and in full
consideration of Appellants' arguments, we are persuaded of at least one
error in the Examiner's reliance on the combined teachings and suggestions
of the cited prior art combination to teach or suggest the disputed limitation
of claim 2, such that we find error in the Examiner's resulting legal
conclusion of obviousness. Therefore, we do not sustain the Examiner's
obviousness rejection of dependent claim 2, and grouped claims 7, 12, and
18, which fall therewith. See Claim Grouping, supra.
2. $103 Rejection of Claims 3 and 8
Appellants argue (App. Br. 11—12) the Examiner's rejection of claim 3
under 35 U.S.C. § 103(a) as being obvious over the combination of Hodapp
and Vahalia is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he streaming server of claim 1, wherein the plurality of data
structures encompass (1) a reference to the content stream and (2) pointers
which correspond to time codes to the content stream," as recited in claim 3?
Analysis
Appellants contend:
Hodapp's media stream server is required to use data structures
(e.g., linked list) to map the segment files into a virtual file
There is no disclosure where Hodapp's data structures (e.g.,
linked list) themselves encompass (1) a reference to the content
stream and (2) pointers which correspond to time codes to the
content stream as required per dependent claim 3. Vahalia does
not correct Hodapp's deficiency.
App. Br. 12 (citing Hodapp 18—22).
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In response, the Examiner cites to the structured segment file (Hodapp
121) as teaching or suggesting the contested limitations of dependent
claim 3. In particular, the Examiner finds Hodapp's "data structure includes
a reference (segment start) to the content stream and/or pointer which
corresponds to time code or time play to the content stream, e.g., offset field
and length field." Ans. 3.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 3, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 3, and grouped
claim 8, which falls therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1—7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see
37 C.F.R. §41.41(b)(2)).
CONCLUSIONS
(1) The Examiner did not err with respect to the obviousness
rejection of claims 1, 3—6, 8—11, 15—17, 21, and 22 under 35 U.S.C. § 103(a)
over the cited prior art combination of record, and we sustain the rejection.
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(2) The Examiner erred with respect to the obviousness rejection of
claims 2,1, 12, and 18 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we do not sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3—6, 8—11, 15—
17, 21, and 22.
We reverse the Examiner's decision rejecting claims 2, 7, 12, and 18.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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