Ex Parte Hayhurst

Patent Trial and Appeal Board

Feb 25, 2013

10491511 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/491,511 04/01/2004 William Hayhurst 1270-002-PWH 5967
60597 7590 02/26/2013
HANCOCK HUGHEY LLP
P.O. BOX 6553
PORTLAND, OR 97228
EXAMINER
HICKS, CHARLES N
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
02/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM HAYHURST
____________

Appeal 2010-007527
Application 10/491,511
Technology Center 2400
____________

Before JEFFREY S. SMITH, STANLEY M. WEINBERG, and JOHN A.
EVANS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-007527
Application 10/491,511

2
Appellant’s Request for Rehearing (filed Feb. 6, 2013) contends that
we erred in our Decision on Appeal entered Dec. 6, 2012 (“Decision”), in
which we affirmed the Examiner’s decision to reject claims 1-13, 16, 17, and
19-21.

DISCUSSION
Appellant contends that the Board misapprehends and adopts the
Examiner’s misstatement of Appellant’s argument concerning “teaching
away” by Bushmitch. Request 3. In particular, Appellant contends that
Bushmitch expressly identifies as a problem to be solved the notion of
sending data grams or packets that require all such segments for displaying
the file that was so segmented (as claimed). Request 4. The Examiner finds
that Bushmitch teaches that greater resolution is achieved when all of the
segments of the media file are received. Ans. 9. Appellant has not provided
a definition of “complete media file” recited in claim 1 that excludes the
high resolution media file reconstructed from all of the segments as taught
by Bushmitch. Because Bushmitch teaches assembly of all segments is
required for displaying the high resolution file, we find that Bushmitch does
not “teach away” from “assembly of all of the plurality of segments is
required for displaying the complete media file.”
Appellant contends that the Examiner’s finding that adding a switch to
allow viewing only when maximum resolution is reached is not supported by
Bushmitch. Request 4. We agree that Bushmitch does not appear to teach
adding a switch to view only the maximum resolution. However, even
without the switch, the maximum resolution, or “complete media file,” of
Bushmitch can only be viewed when all segments of the media file are
Appeal 2010-007527
Application 10/491,511

3
received, as discussed in the preceding paragraph. Therefore, the
Examiner’s finding that greater resolution is achieved when all segments of
the media file are received (Ans. 9) is supported by the teachings of
Bushmitch. See, e.g., Abstract; col. 3, ll. 32-46, 58-63; col. 4, ll. 30-37; col.
7, l. 55 to col. 8, l. 8; col. 8, ll. 33-54; col. 9, ll. 29-36; and Fig. 9, which
teach that assembly of all of the plurality of segments is required for
displaying the high quality, or “complete media file.” Appellant has not
provided persuasive evidence or argument to distinguish “assembly of all of
the plurality of segments is required for displaying the complete media file”
as recited in claim 1 from requiring assembly of all of the plurality of the
segments of the media file for displaying the maximum resolution as taught
by Bushmitch.
Appellant contends that the cumulative findings of the Board
misapprehend the premise of Appellant. Request 4-6. We understand
Appellant’s premise that reconstructing a low resolution display of the
original media file from one substream, rather than all substreams, as taught
by Bushmitch does not teach reassembling the “complete media file” from
“all of the plurality of segments.” However, we disagree with Appellant’s
conclusion that reconstructing a low resolution representation of the original
media file from one substream teaches reassembling the high resolution, or
“complete,” media file.
Appellant contends the cumulative findings by the Board confuse the
notion of the media stream taught by Bushmitch with segments as recited in
claim 16. We do not confuse the notion of media stream with the segments
as recited in claim 16. Rather, we find the scope of the “segments” recited
in claim 16 encompasses multiple media streams as taught by Figure 2 of
Appeal 2010-007527
Application 10/491,511

4
Bushmitch. The scope of the “segments” also encompasses the content
segments 418 taught by Novak in Figure 4 and the corresponding description
in paragraph 99. Segmenting a file into segments as taught by the
combination of Bushmitch and Novak teaches “each segment comprising a
sequence of the media file and having a duration that is substantially shorter
than the media file duration” within the meaning of claim 16.
Appellant contends that the Board misstates Appellant’s contention
that Novak alone does not suggest streaming segments of a data file from
multiple sources. Request 6-7. The Examiner finds that the combination of
Novak and Bushmitch teaches streaming segments of a data file from
multiple sources. Ans. 3-4, 9-10. We agree with the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Circ. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellant contends that there is no basis for combining the teachings
of Bushmitch with the teachings of Novak, because Novak alone does not
suggest streaming segments of a data file from multiple sources. See
Request 7 (“the incorrect reading of Novak as discussed above in Section 3
fails to provide the required rational underpinning….”). However,
Bushmitch teaches streaming segments of a data file from multiple sources
as shown in Fig. 2. Novak teaches multiple sources that can stream a data
file as discussed in paragraph 35. Appellant has not provided persuasive
evidence or argument to show that streaming segments of a data file from
multiple sources was “uniquely challenging or difficult for one of ordinary
skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
Appeal 2010-007527
Application 10/491,511

5
1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007)).
Appellant contends that the Board’s finding that Novak teaches
segmenting a movie misapprehends the teachings of Novak. In particular,
Appellant contends that a content segment of Novak is shown in Figure 4 as
element 404, which is a movie, television show, or performance, rather than
a segment of a movie. Request 8-9. However, element 404 is not a content
segment. Element 404 is content. Element 418 is a content segment.
Appellant has not distinguished content segment 418 shown in Figure 4 and
the corresponding description in paragraph 99 from the claimed “segments.”
Further, Appellant’s contention that Novak does not teach segmenting a file
such as a movie file is inconsistent with the entire Novak reference
beginning with the abstract and ending with the claims. See, e.g., Novak
Abstract; content segment 418 shown in Figs. 4, 5, 11; and ¶¶ 31, 35, 36, 99,
101, 126, 131, 133-135, 146, and 147. Therefore, we find Appellant’s
contention unpersuasive.

DECISION
We decline to change our Decision. Appellant’s request for rehearing
is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REQUEST FOR REHEARING DENIED
rwk