Ex Parte Harville et al

Patent Trial and Appeal Board

Jun 28, 2013

10613905 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL HARVILLE, MICHELE COVELL, SUSIE WEE,
JOHN ANKCORN, SUMIT ROY, and BO SHEN
____________

Appeal 2012-007535
Application 10/613,905
Technology Center 2400
____________

Before ST. JOHN COURTENARY III, CARL W. WHITEHEAD, JR. and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-24. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

INVENTION
Appellants' claimed invention is a method for managing a streaming
media service. Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A method for managing a streaming media service, said
method comprising:
[a] receiving, at a service portal, a request for a streaming
media service from a mobile client, said streaming media
service comprising a plurality of media services components;
[b] communicating said request from said service portal to a
service location manager that is separate from said service
portal;
[c] determining, at said service location manager, which media
service component of said plurality of media services
components to assign to a service node of a plurality of service
nodes of a network;
[d] said service location man[a]ger informing said each
assigned service node assigned to perform a media service
component of said plurality of media services components;
[e1] said service location manager redirecting said client to
each of said assigned service nodes by informing said client of
said assigned service nodes, [e2] enabling said streaming media
service to be performed by said each assigned service node on a
streaming media during a media session established with said
each assigned service node and a content server; and
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[f] in response to said mobile client moving, reassigning said
media session to a different service node selected from said
plurality of service nodes while continuing to provide said
streaming media to said client,
[g] wherein said streaming media is provided to said client
directly from said different service node,
[h] wherein said reassigning does not require domains and
[i] wherein said different service node is selected based on its
physical location with respect to said client.

REJECTIONS
R1. The Examiner rejected claims 1-24 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 5-7.
R2. The Examiner rejected claims 1-24 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Ans. 7-8.
R3. The Examiner rejected claims 1-3, 6-9, 13-15, and 18-21 under
35 U.S.C. § 103(a) as being unpatentable over Lai (U.S. Patent No.
6,407,680 B1) and Wu (U.S. Patent Application Publication No.
2002/0082015 A1). Ans. 8-15.
R4. The Examiner rejected claims 4 and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Lai, Wu, and Trossen (U.S. Patent Application
Publication No. 2003/0204599 A1). Ans. 15-16.
R5. The Examiner rejected claims 5 and 17 under 35 U.S.C. § 103(a)
as being unpatentable over Lai, Wu, and Knauerhase (U.S. Patent No.
6,345,303 B1). Ans. 16-17.
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R6. The Examiner rejected claims 10 and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Lai, Wu, and Coile (U.S. Patent No.
6,473,406 B1). Ans. 18-19.
R7. The Examiner rejected claims 11, 12, 23, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Lai, Wu, Coile, and Ooi (Wei Tsang
Ooi & Robbert Van Renesse, Distributing Media Transformation Over
Multiple Media Gateways: International Multimedia Conference,
Proceedings of the 9th ACM International Conference on Multimedia, 159-
168 (2001)) (hereinafter “Ooi”). Ans. 20-22.

PRIOR DECISION
Appeal No. 2009-006591 (Application No. 10/613,905) mailed July
29, 2010. The Examiner's decision rejecting claims 1 through 24 was
affirmed.

ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. We 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 set forth by the Examiner in the Answer in response to
arguments made in Appellants' Appeal Brief. (Ans. 22-40). We highlight
and address specific findings and arguments below.

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OBJECTION TO SPECIFICATION
The Examiner objected to the Specification as failing to provide
proper antecedent basis for the claimed subject matter. (Ans. 5) (citations
omitted). Appellants respond in the Appeal Brief. (App. Br. 10-11).
However, this objection is a petitionable matter and is therefore not
before us.1
R1. WRITTEN DESCRIPTION REQUIREMENT
We address below the Examiner's § 112 written description rejection
R1 involving three claim limitations. (Ans. 5-7).
R1 - A
The Examiner finds the Specification lacks written description support
under § 112 for the claim 1 limitation [e1] “redirecting said client to each of
said assigned service nodes by informing said client of said assigned service
nodes.” (Ans. 6, 24) (emphasis added).

1 MPEP § 1002.02(c) Petitions and Requests Decided by the Technology
Center Directors [R-2] states:
4. Petitions under 37 CFR 1.113 relating to objections or requirements
made by the examiners.
MPEP 1000-8 Rev.2, May 2004.

37 CFR 1.113 Final rejection or action.
(a) . . . Petition may be taken to the Director in the case of
objections or requirements not involved in the rejection of any claim
(§ 1.181).
MPEP R-77 Rev. 9, August 2012.

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Appellants contend:
In particular, at page 13, lines 21-24, the specification states
that “[b ]ased on the collected status information, the SLM
[(Service Location Manager)] 302 dynamically generates a
SMIL [(Synchronized Multimedia Interface Language)] file,
redirecting the client to the appropriate service node by
embedding its URL, along with any negotiated parameters, in
that newly generated SMIL response (Figure 5).”
(App. Br. 13) (emphasis added).
Appellants’ contentions are not persuasive because Appellants’ cited
section “redirecting the client to the appropriate service node” only supports
a singular node, not the claimed plural nodes (“said assigned service
nodes”).2 (App. Br. 13). Therefore, on this record, we are not persuaded of
Examiner error.
R1 - B
The Examiner finds the Specification lacks § 112 written description
support for the claim 1 limitation [g] “wherein said streaming media is

2 New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA
1971). While there is no in haec verba requirement, newly added claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. The fundamental factual inquiry is whether the
Specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, Applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991)). When an explicit limitation in a claim is not present in the
written description it must be shown that a person of ordinary skill would
have understood that the description requires that limitation. Hyatt v.
Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998).

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provided to said client directly from said different service node.” (Ans. 6,
25).
Appellants contend the claim 1 limitation [g] is:
[A]t minimum, implicit to the disclosure of the specification, in
particular at page 25, lines 19-21, where the specification states
that “[u]pon transcoder 602 receiving notification that
electronic device 120 is moving towards another cell,
transcoder 602 initiates a handoff operation with another
transcoder serving the new cell.”
(App. Br. 14).
The Examiner disagrees:
Appellant[s] point[] to a discussion in the specification which
describes a handover process from one service node to a
different service node, but does not indicate that the different
service node provides streaming media directly to the client.
Although the specification mentions communicating "handoff
information directly to that service node," this does not imply or
suggest “streaming media” being “provided to said client
directly.” In fact, as discussed in the Final Office Action, the
specification actually implies that the media is provided
indirectly. See Fig. 2 and lines 1-4 of p. 10, describing that the
client communicates with the network through a wireless base
station.
(Ans. 25).
Even if arguendo the Specification might suggest streaming media
being provided to the client directly (id.), our reviewing court guides “it is
‘not a question of whether one skilled in the art might be able to construct
the patentee’s device from the teachings of the disclosure.... Rather, it is a
question whether the application necessarily discloses that particular
device. . . . A description which renders obvious the invention for which an
earlier filing date is sought is not sufficient.” Lockwood v. American
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Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v.
Coleman, 314 F.2d 533, 536 (CCPA 1963)). See also Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (“We have repeatedly stated that actual ‘possession’ or reduction to
practice outside of the specification is not enough. Rather, . . . it is the
specification itself that must demonstrate possession.”).
This reasoning is applicable here. Moreover, in the Reply Brief,
Appellants fail to respond to the Examiner's findings. For these reasons, on
this record, we are not persuaded of Examiner error.
R1-C
The Examiner finds that the Specification lacks §112 written
description support for the claim 1 limitation [h] “wherein said reassigning
does not require domains” and the commensurate claim 13 limitation (Ans.
7).
Appellants contend the limitation [h] is:
implicit to the disclosure of the specification, in particular at
page 31, lines 3-6, where the specification states that “[i]n our
architecture, this function [redirection] is performed completely
at the application level by dynamic SMIL rewriting;” and that
“[t]his eliminates the need for DNS-redirection capabilities
from the infrastructure.” Thus, at page 31, lines 3-6, the
specification implies that reassigning does not require domains
as the “need for DNS-redirection capabilities from the
infrastructure” is “eliminate[d].”
(App. Br. 15-16, emphasis added).
The Examiner disagrees:
Appellant[s] first point[] to a discussion in the specification
which mentions that the disclosed invention “eliminates the
need for DNS redirection capabilities.” Although DNS is the
“Domain Name System,” not requiring DNS redirection is
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insufficiently specific to imply or suggest excluding the concept
of “domains” in general. For example, the specification
describes that SMIL rewriting is an alternative to DNS
redirection, but is silent as to whether SMIL rewriting requires
or does not require “domains” in general. Appellant[s] next
point[] to a statement in the specification that “CSN [(Content
Services Network)],” allegedly in contrast to the present
invention, “requires independent overlay infrastructure,” and
that this somehow implies not requiring domains. The
Examiner disagrees. Not requiring an “independent overlay
infrastructure” does not imply or suggest not requiring domains.
(Ans. 26).
In the Reply Brief, Appellants fail to respond to the Examiner's findings that
we agree with. For these reasons, on this record, we are not persuaded of
Examiner error.
Accordingly, we affirm the rejection R1 of claims 1 and 13, and of
dependent claims 2-12 and 14-24, which depend from claims 1 and 13.
R2. INDEFINITENESS
Regarding the indefiniteness rejection (Ans. 7-8, 27-28) of the claim 1
limitation [h] term “domain” and commensurate limitation in claim 13:
Appellants respectfully point out that the metes and bounds are
clear since the Claims 1 and 13 directly state the claimed
embodiment (emphasis added), "wherein said reassigning does
not require domains," because the term, "domains," has the
meaning “that the term would have to a person of ordinary skill
in the art.”
(App. Br. 18).
We are persuaded by Appellants’ contentions. We conclude the term
“domains” would have the plain meaning to one skilled in the art of “a
subdivision of the Internet consisting of computers or sites usu. with a
common purpose (as providing commercial information) and denoted in
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Internet addresses by a unique abbreviation (as com or gov); also DOMAIN
NAME” (See Ans. 28; citing Merriam-Webster's Collegiate Dictionary).
We reverse the Examiner's rejection R2 of claims 1 and 13 and of claims 2-
12 and 14-24, which depend therefrom.

R3.
R3 - A
Regarding claim 1’s limitation “[e1] said service location manager
redirecting said client to each of said assigned service nodes by informing
said client of said assigned service nodes” and the commensurate claim 13
limitation, the Examiner finds that Wu would have taught or suggested the
limitation. (Ans. 10-11; 32-33).
Appellants contend:
As Appellants understand Wu, Wu is teaching an “initialization
of the mobile device 104,” and not Appellants’ claimed
embodiment “redirecting a client to assigned service nodes by
informing said client of assigned service nodes.” Appellants
respectfully submit it is not possible to "redirect" a mobile
device which has yet to be “initialized;” and, therefore, Wu is
teaching an “initialization” and not a “redirecting” in
paragraphs [0048]-[0050] cited by the Office Action.
(App. Br. 29).
Appellants further contend:
Wu teaches as recited above that: “the mobile device initiates
the transfer and selects the transcoding proxy to which the
communication session is best transferred,” in contrast with
Appellants’ claimed embodiment, “said service location
manager redirecting said client to each of said assigned service
nodes by informing said client of said assigned service nodes”
(emphasis added), as claimed in Claim 1, and similar
embodiments as recited in Claim 13.
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(App. Br. 28).
Appellants’ contentions are not commensurate with the broader scope
of the claim. Limitation “[e1] said service location manager redirecting said
client to each of said assigned service nodes by informing said client of said
assigned service nodes,” only requires that the service location manager
“inform[] said client of said assigned service nodes.” This informing
constitutes the claimed “redirecting.” Contrary to Appellants’ contentions
(App. Br. 28-33), the claims do not preclude “initializing the mobile device”
and the mobile device initiating the transfer and selecting the transcoding
proxy.
Moreover, Appellants fail to rebut the Examiner's specific finding
(Ans. 32) that Wu's MAS (“service location manager”) “redirect[s] the client
to” neighboring transcoding proxies (“each of said assigned service nodes”)
by sending information of the neighboring transcoding proxies in a message
to the client (“informing said client of said assigned service nodes”). For
these reasons, on this record, we are not persuaded of Examiner error.
R3 - B. References teach away from their combination
Appellants contend:
Appellants understand Lai to teach a media transcoding
engine 106 that is centrally located between the content
provider client 104 and the viewer client 102. In contrast,
Appellants understand Wu to teach transcoding proxies 111 and
112 that are geographically distributed. Therefore, Appellants
submit that (emphasis added) Wu teaches away from Lai's
transcoding engine 106 that is centrally located between the
content provider client 104 and the viewer client 102, by
teaching transcoding proxies 111 and 112 that are
geographically distributed.
(Reply Br. 3).
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Appellants’ contention are not persuasive because Appellants fail to
present evidence or substantive argument to support the conclusion that Lai's
media transcoding engine 106 is centrally located between the content
provider client 104 and the viewer client 102. (See Reply Br. 3; App.
Br. 30-31). We agree with the Examiner's findings:
Lai describes that the media transcoding engine 106 is
comprised of components, such as “transcoder servers 218,
transmitter servers 220, and streaming servers 222,” which are
connected by a network, including “any other type of
communication infrastructure for connecting remote
components including ... packet switched networks, as well as
wireless networks” (emphasis added; see col. 8, lines 1-19). In
other words, Lai expressly indicates that the components of its
system may be “remote” from one another, much like the
components in the system of Wu. Finally, Appellant[] ha[ve]
not identified, nor do Lai and Wu contain, any particular
disclosure which criticizes, discredits, or otherwise discourages
the solution claimed. . . .
(Ans. 33-34).3 In the Reply Brief, Appellants fail to rebut the Examiner’s
findings. For these reasons, on this record, we are not persuaded of
Examiner error.
R3-R7
Although Appellants present nominal separate arguments for rejected
claims not addressed above, we affirm the Examiner’s rejections R3-R7 of

3 Teaching an alternative or equivalent method does not teach away from
the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA
1965). Thus, “[t]he prior art's mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed. . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(emphasis added).

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all rejected claims for the reasons set forth by the Examiner in the Answer
and for the reasons discussed above regarding commensurate limitations and
issues. (See App. Br. 33-46, Ans. 34-40). Accordingly, we affirm the
Examiner’s rejections R3-R7 of claims 1-24.

DECISION
We affirm the Examiner's rejection R1 of claims 1-24 under § 112,
first paragraph.
We reverse the Examiner's rejection R2 of claims 1-24 under § 112,
second paragraph.
We affirm the Examiner's rejections R3-R7 of claims 1-24 under
§ 103.
No time period for taking any action connected with this appeal may
be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

ORDER
AFFIRMED

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