Ex Parte Gleichauf

Board of Patent Appeals and Interferences

Apr 26, 2011

10212689 (B.P.A.I. Apr. 26, 2011)

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.
10/212,689 08/07/2002 Paul Harry Gleichauf 95-482 2724
23164 7590 04/27/2011
Cisco
c/o Leon R Turkevich
2000 M STREET NW
7TH FLOOR
WASHINGTON, DC 20036-3307
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
04/27/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL HARRY GLEICHAUF
____________________

Appeal 2009-006843
Application 10/212,689
Technology Center 2400
____________________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006843
Application 10/212,689
2
STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1-28, 31-39, and 42-47. We have jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The Appellant describes the invention at issue on appeal as follows.
A broadband network device is configured, in a
broadband network, for dynamically controlling an upstream
link bandwidth of a user node configured for downloading
content via a downstream link having a prescribed bandwidth
and uploading content through the broadband network via an
upstream link according to the upstream link bandwidth. The
broadband network device sets the upstream link bandwidth to
a bandwidth value optimized for minimal-size data (e.g.,
message-based) transfers and that substantially restricts
transfers of media-based (e.g., digital video or audio) data
transfers to substantially long time intervals. The broadband
network device is configured for dynamically increasing the
upstream link bandwidth to an increased bandwidth value
optimized for media-based data transfers, based on an identified
authorization.

(Abstract, ll. 1-9.)

ILLUSTRATIVE CLAIM
1. A method in a broadband network device
configured for providing an ingress network connection for a
user node to send data into a broadband network, the method
comprising:
configuring, by the broadband network device, the
ingress network connection to a default data rate having a first
data rate that substantially restricts transfer of a media data file
into the broadband network by the user node; and
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selectively setting the ingress network connection, by the
broadband network device and for a prescribed interval, from
the default data rate to a second data rate enabling unrestricted
transfer of the media data file into the broadband network by
the user node, based on a determined content protection
attribute associated with the media data file and the transfer of
the media data file by the user node.

REFERENCES AND REJECTIONS
Epstein WO 01/57869 A2 Aug. 9, 2001
Peled US 2002/0129140 A1 Sep. 12, 2002

Claims 1-28, 31-39, and 42-47 stand rejected under 35 U.S.C. § 112,
¶ 2, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Claims 1-6, 8-10, 12-17, 19, 20, 22-27, 31, 33-38, 42, and 44-47 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Peled.
Claims 7, 11, 18, 21, 28, 32, 39, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Peled and Epstein.

REJECTION UNDER § 112, ¶ 2
The issue before us is whether the Examiner erred in concluding that
claims 1-28, 31-39, and 42-47 are indefinite for reciting the word
"substantially."
The Examiner concludes that "[t]he term 'substantially' is not defined
by the claim[s], the [S]pecification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention." (Ans. 5.)
"It is well established that when the term 'substantially' serves
reasonably to describe the subject matter so that its scope would be
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Application 10/212,689
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understood by persons in the field of the invention, and to distinguish the
claimed subject matter from the prior art, it is not indefinite." Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed.Cir. 2002).
Expressions such as "substantially" are used in patent
documents when warranted by the nature of the invention, in
order to accommodate the minor variations that may be
appropriate to secure the invention. Such usage may well
satisfy the charge to "particularly point out and distinctly claim"
the invention, 35 U.S.C. § 112, and indeed may be necessary in
order to provide the inventor with the benefit of his invention.
In Andrew Corp. v. Gabriel Elecs. Inc., 847 F.2d 819, 821-22
(Fed. Cir. 1988) the court explained that usages such as
"substantially equal" and "closely approximate" may serve to
describe the invention with precision appropriate to the
technology and without intruding on the prior art. The court
again explained in Ecolab Inc. v. Envirochem, Inc., 264 F.3d
1358, 1367 (Fed. Cir. 2001) that "like the term 'about,' the term
'substantially' is a descriptive term commonly used in patent
claims to 'avoid a strict numerical boundary to the specified
parameter,'" quoting Pall Corp. v. Micron Separations, Inc., 66
F.3d 1211, 1217 (Fed. Cir. 1995).
Id. (internal parallel citations omitted).
Here, we agree with and adopt the Appellant's explanation on pages 8-
11 of his Amended Appeal Brief why the usage of the term "substantially"
serves reasonably to describe the subject matter so that its scope would be
understood by persons in the field of the invention. We find the following
explanation particularly persuasive regarding independent claims 1, 12, 22,
and 33.
[O]ne having ordinary skill in the art would be able to ascertain
the scope of the claims from the guidelines described in the
[S]pecification based on recognizing that the default data rate
having a "first data rate that substantially restricts transfer of a
media file into the broadband network by the user node" should
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be interpreted as a data rate that: (1) is substantially less than
the encoding rate of the media file (e.g., 10kbps relative to the
64kbps encoding rate), and (2) results in a substantially long
time interval that would deter most users from engaging in
unauthorized content redistribution (e.g., 45 minutes for
transfer of a 28MB audio file via a 10 kbps transfer rate; several
hours for an audio CD [i.e., Compact Disc] or DVD [i.e.,
Digital Versatile Disc or Digital Video Disc]); in contrast, the
second data rate could be substantially at the encoding rate, in
order to permit playback of streaming data.
(Amended App. Br. 9.)
Likewise, we find the following explanation particularly persuasive
regarding dependent claims 11, 21, 32, and 43.
[T]he [S]pecification provides the explicit example of setting
the default data rate 32 at 1.5 to 10 kbps as opposed to the
encoding bit rate of the audio file of 64kbps, resulting in the
default rate being set to less than one sixth the encoding rate
(1.5 to 10 kbps first data rate vs. 64 kbps encoding rate).
Further, one having ordinary skill in the art would appreciate
that the transfer time is inversely proportional to the first data
rate and that the prescribed play duration directly corresponds
to the encoding rate multiplied by the file size. From the
foregoing example in the [S]pecification of setting the default
data rate to less than one sixth the encoding rate (10 kbps vs. 64
kbps), therefore, one skilled in the art would readily recognize
that setting the default data rate to less than one sixth the
encoding rate would result in the claimed time interval
"substantially exceeding" by more than six times the prescribed
play duration of the media data file.

(Id. at 10-11.)
Therefore, we conclude that the Examiner erred in concluding that
claims 1-28, 31-39, and 42-47 are indefinite for reciting the word
"substantially."

Appeal 2009-006843
Application 10/212,689
6
REJECTIONS UNDER § 103(a)
The issue before us is whether the Examiner erred in finding that
Peled teaches configuring a user node's ingress connection to a broadband
network to a default data rate that substantially restricts transfer of a media
data file into the network by the user node as required by independent
claims 1, 12, 22, and 33.

FINDINGS OF FACT
Peled describes its invention as follows.
[0011] The present invention seeks to provide a novel method
and system for the mitigation of illegal and unauthorized
transport of digital content, without otherwise interfering with
rightful usage and the privacy of the users. Specifically, the
current invention provides methods that allow inspection and
analysis of digital traffic in computer networks and automatic
detection of unauthorized content within the inspected traffic.
The detection method is generally based on extraction of
features from the transportation itself that carry information
about the specific content (or information which can be used in
order to gather such information.) A comparison is then
performed with a database that contains features that have been
extracted from the copyrighted or confidential items that are to
be protected. . . .
[0012] Upon detection of illegal transport, the system
preferably audits the transport details and enforces transport
policy, such as blocking the transport or reduction of the
bandwidth available for this transport. . . .
(Peled, ¶¶ [0011] and [0012].)

ANALYSIS
The Examiner finds that Peled "discloses a predefined setting that is
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automatically selected by a system, absent any manual override, for all
illegitimate traffic (e.g. see Peled, par. 170, lines 3,4). Thus, Peled discloses
'a default data rate'." (Ans. 22.)
"[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) (citations omitted). The "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." Id. at 1313.
Here, we agree with and adopt the Appellant's construction that "[t]he
term 'default' is notoriously well known by those skilled in the art to be the
setting that is maintained absent any specific instruction to change that
setting." (Amended App. Br. 13.)
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted).
Here, we agree with and adopt the Appellant's following explanation
why Peled's setting for illegitimate traffic is not a default data rate.
[P]aragraph 79, interpreted in view of paragraphs 77 and 78,
demonstrate that the reduced bandwidth is not a default setting,
as claimed, but to the contrary is a specific output that must be
performed by the policy determinator and that is distinct from
the default of "taking no action":
[0079] Preferably, the policy determinator is operable to
use the rule-based decision making unit to select between
a set of outputs including at least some of: taking no
action, performing auditing, outputting a transcript of the
content, reducing bandwidth assigned to the transport,
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using an active bitstream interference technique, stopping
the transport, preventing printing, preventing
photocopying, reducing quality of the content, removing
sensitive parts, altering the content, adding a message to
the the [sic] content, and preventing of saving on a
portable medium, [sic][.]
(Amended App. Br. 16.)
The Examiner does not allege, let alone show, that the addition of
Epstein cures the aforementioned deficiency of Peled. Therefore, we
conclude that the Examiner erred in finding that Peled teaches configuring a
user node's ingress connection to a broadband network to a default data rate
that substantially restricts transfer of a media data file into the network by
the user node as required by independent claims 1, 12, 22, and 33.

DECISION
We reverse the indefiniteness rejection of claims 1-28, 31-39, and 42-
47 under 35 U.S.C. § 112. We also reverse the obviousness rejection of
independent claims 1, 12, 22, and 33 the obviousness rejections of claims 2-
11, 13-21, 23-28, 31, 32, 39, and 42-47 under § 103(a), which depend
therefrom.

REVERSED

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