Ex Parte Hillis et alDownload PDFPatent Trial and Appeal BoardJun 21, 201310734659 (P.T.A.B. Jun. 21, 2013) Copy Citation 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. 10/734,659 12/11/2003 W. Daniel Hillis SE1-0002C2-US 9023 80118 7590 06/21/2013 Constellation Law Group, PLLC P.O. Box 220 Tracyton, WA 98393 EXAMINER SAVLA, ARPAN P ART UNIT PAPER NUMBER 2188 MAIL DATE DELIVERY MODE 06/21/2013 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 W. DANIEL HILLIS, EDWARD K. Y. JUNG, NATHAN P. MYHRVOLD, and LOWELL L. WOOD, JR. ____________ Appeal 2010-007389 Application 10/734,659 Technology Center 2100 ____________ Before ROBERT E. NAPPI, JEAN R. HOMERE, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-007389 Application 10/734,659 2 BACKGROUND Appellants invented a method and system for organizing content of a spatial data storage system and scheduling of content transmission in response to the organization of the content of the spatial data storage device. Abstract. Independent claims 1 and 17 are illustrative and are reproduced below: 1. A method comprising: determining an organization of at least one content of at least one spatial data storage system; defining a schedule of content transmission in response to the organization of the at least one content of the at least one spatial data storage system, the schedule expressly identifying the content by one or more transmission times; and transmitting the content according to the schedule, wherein the content is addressable at the one or more transmission times. 17. A system comprising: means for determining an organization of at least one content of at least one spatial data storage system; means for defining a schedule of content transmission in response to the organization of the at least one content of the at least one spatial data storage system, the schedule expressly identifying the content by one or more times; and means for transmitting the content according to the schedule, wherein the content is addressable at the one or more transmission times. EVIDENCE CONSIDERED The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2010-007389 Application 10/734,659 3 Matthews US 5,644,789 July 1, 1997 Yao US 5,938,734 Aug. 17, 1999 Jaeger US 6,345,028 B1 Feb. 5, 2002 REJECTIONS Claims 17-32 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Answer 3-4. Claims 1-3, 5-7, 10-13, 17-19, 21-23, and 26-29 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Yao. Answer 4-12. Claims 14-16 and 30-32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yao and Matthews. Answer 12-15. Claims 4, 8-9, 20, and 24-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yao and Jaeger. Answer 15-18. ISSUES Claims 1-3, 5-7, and 10-13 Appellants argue on pages 26 through 32 of the Appeal Brief that the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) is in error. These arguments present us with the following issues: 1) Did the Examiner err in finding that Yao discloses “defining a schedule of content transmission . . . the schedule expressly identifying the content by one or more transmission times” as recited in independent claim 1? 2) Did the Examiner err in finding that Yao discloses “transmitting the content according to the schedule, wherein the content is addressable at the one or more transmission times,” as recited in independent claim 1? Appeal 2010-007389 Application 10/734,659 4 Claims 17-19, 21-23, and 26-29 With respect to Appellants’ arguments on pages 33 through 40 of the Appeal Brief regarding the Examiner’s rejection of independent claim 17 under 35 U.S.C. § 102(b), Appellants repeat the same arguments presented with respect to claim 1. Thus, these arguments present us with the same issues as discussed with respect to claim 1. Appellants also argue on pages 51 and 52 of the Appeal Brief that the Examiner’s rejection of claims 17-32 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is in error. These arguments present us with the following additional issue: 3) Did the Examiner err in finding that claims 17-32 are directed to non-statutory subject matter? Claims 4, 8, 9, 14-16, 20, 24, 25, and 30-32 With respect to claims 4, 8, 9, 14-16, 20, 24, 25, and 30-32, Appellants rely on the arguments presented with respect to claim 1. Appeal Brief 41-51. Thus, these arguments present us with the same issues as discussed with respect to claim 1. ANALYSIS We have reviewed Appellants’ arguments in the Briefs, Examiner’s rejection and the Examiner’s response to Appellants’ arguments. We disagree with Appellants’ conclusion that the Examiner erred in finding that claims 1-3, 5-7, 10-13, 17-19, 21-23, and 26-29 are anticipated by Yao. We also disagree with Appellants’ conclusion that the Examiner erred in finding that claims 4, 8-9, 14-16, 20, 24-25, and 30-32 are unpatentable under 35 Appeal 2010-007389 Application 10/734,659 5 U.S.C. § 103(a). We concur with Appellants’ conclusion that the Examiner erred in finding that claims 17-32 are directed to non-statutory subject matter. Claims 1-3, 5-7, and 10-13 1) First Issue We are not persuaded by Appellants’ arguments that neither the cited text nor the cited figure of Yao recites defining a schedule of content transmission or the schedule expressly identifying the content by one or more transmission times. Appeal Brief 28. While the exact claim language is not word for word or ipsis verbis recited by Yao, the Examiner reasonably recognizes that Yao describes the disputed limitations (Answer 4, 19-20). We agree with the Examiner (Answer 4, 19) that Yao’s disclosure of carrying out the scheduling discloses defining a schedule of content transmission by describing, for example, that “the scheduling unit 22 carries out the scheduling including a selection of transfer start timings for the unit streams . . . .” (Yao col. 7, ll. 33-35 (emphasis added)). Additionally, to the extent that Appellants argue that Yao fails to disclose, “the schedule expressly identifying the content by one or more transmission times” (Appeal Brief 28 (emphasis in original)), we note that the claim language recites “one or more,” so claim 1 reasonably encompasses identifying content by one transmission time. Nonetheless, we agree with the Examiner that Yao discloses this limitation by describing “‘transfer start timings’ for each of the unit streams S0 to Sm-1.” Answer 19 (citing Yao col. 7, ll. 33- 35, Fig. 5). Appeal 2010-007389 Application 10/734,659 6 Appellants additionally argue that Yao does not describe the disputed limitations because Yao discloses reading the disk device for the top block before the selected transfer start time. Appeal Brief 29. However, as the Examiner correctly finds, Appellants refer to Yao’s taking into account accessing the disk. Answer 19-20. Notwithstanding that the disk is accessed prior to the selected transfer start time, as discussed supra Yao discloses the disputed limitations. Thus, Appellants’ arguments directed to the first issue have not persuaded us of error in the Examiner’s rejection of independent claim 1. 2) Second Issue We are not persuaded by Appellants’ arguments that Yao fails to describe transmitting the content according to the schedule, wherein the content is addressable at the one or more transmission times. Appeal Brief 31. Appellants state: Although Yao teaches “Each one of the unit streams S0 to Sm-1 so connected is then scheduled as an independent unit stream for which the block transfer time for one block is T/m, that is, scheduled according to the block transfer period T, the block size L, the time-slot interval I, and the block transfer time T/m,” Yao fails to show or suggest “transmitting the content according to the schedule, wherein the content is addressable at the one or more transmission times” as recited in clause [c] of Appellant’s Independent Claim 1. Appeal Brief 31 (emphasis in original). Appellants point to one sentence of Yao. However, as the Examiner correctly finds, Yao also discloses transmitting the content according to the schedule by describing, for example, “[s]upply each unit stream to client according to schedule.” Appeal 2010-007389 Application 10/734,659 7 Answer 20 (citing Yao Fig. 5 (referring to “element S26”)). Additionally, we agree with the Examiner’s findings (Answer 4 (citing Yao col. 7, ll. 60- 65, Fig. 5), 20-21 (citing Yao col. 4, ll. 6-20, Fig. 5)) that Yao discloses that the content is addressable at the one or more transmission times. As Yao describes, “[t]hen according to this scheduling, each block is read out from the buffer memory 4 from the recording position of each block on a disk device which is indicated by the directory information, and supplied to the client from the data transfer unit 5 (step S26).” Yao col. 7, ll. 60-65. Thus, Appellants have not persuaded us of error in the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) and, therefore, we sustain that rejection. Appellants have not separately argued claims 2, 3, 5- 7, and 10-13 (Appeal Brief 32), which depend upon claim 1. Accordingly, we, for the reasons discussed supra with respect to claim 1, sustain the rejection of claims 2, 3, 5-7, and 10-13. Claims 17-19, 21-23, and 26-29 Although Appellants argue the 35 U.S.C. 102 (b) rejection of independent claim 17 separately (Appeal Brief 33-40), the arguments repeat the same arguments presented with respect to claim 1. Thus, for the reasons discussed supra with respect to claim 1, Appellants have not persuaded us of error in the Examiner’s rejection of independent claim 17 under 35 U.S.C. § 102(b), and, therefore, we sustain that rejection. Appellants have not separately argued claims 18, 19, 21-23, and 26-29 (Appeal Brief 40), which depend upon claim 17. Accordingly, for the reasons discussed supra with respect to claim 1, we sustain the rejection of claims 18, 19, 21- 23, and 26-29. Appeal 2010-007389 Application 10/734,659 8 3) Third Issue The Examiner finds that Appellants’ claims can be embodied as entirely software. Answer. 28. However, Appellants chose to use means- plus-function language. Therefore, in accordance with the Director’s guidance, claims 17-32 should not be construed as covering a pure software implementation. The language of § 112, ¶ 6 requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke § 112, ¶ 6, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation. 76 Fed. Reg. 7168 (Feb. 9, 2011). Therefore, we will not sustain the Examiner’s rejection of claims 17-32 under 35 U.S.C. § 101. Claims 4, 8, 9, 14-16, 20, 24, 25, and 30-32 Although Appellants argue the rejection of dependent claims 4, 8, 9, 14-16, 20, 24, 25, and 30-32 separately (Appeal Brief 40-51), the arguments do not point out with particularity or explain why the limitations of these dependent claims are separately patentable. Instead, Appellants argue that the additional cited prior art “does not cure the deficiency of Yao,” (Appeal Brief 41, 44, 46, 49) and that the dependent claims “are patentable for at least the reasons” argued for patentability of the independent claim (Appeal Brief 42, 45, 48, 50). We are not persuaded by these arguments for the reasons discussed supra with respect to independent claim 1. Accordingly, Appeal 2010-007389 Application 10/734,659 9 we sustain the rejection of claims 4, 8, 9, 14-16, 20, 24, 25, and 30-32 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejection of claims 17-32 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We affirm the Examiner’s rejection of claims 1-3, 5-7, 10-13, 17-19, 21-23, and 26-29 under 35 U.S.C. § 102(b). We affirm the Examiner’s rejection of claims 4, 8-9, 14-16, 20, 24-25 and 30-32 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ke Copy with citationCopy as parenthetical citation