10734647 (P.T.A.B. Apr. 29, 2014)

Ex Parte Hillis et al

Patent Trial and Appeal BoardApr 29, 2014

10734647 (P.T.A.B. Apr. 29, 2014)

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. 10/734,647 12/11/2003 W. Daniel Hillis SE1-0002-US 9050 80118 7590 04/29/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER SAVLA, ARPAN P ART UNIT PAPER NUMBER 2188 MAIL DATE DELIVERY MODE 04/29/2014 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 2011-008811 Application 10/734,647 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008811 Application 10/734,647 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 50. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to reception of spatial-to-temporal translated data. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving a request for at least one specific content; obtaining one or more temporal addresses corresponding to the at least one specific content by associating the specific content with one or more times of one or more transmitted data portions, in response to the request for the at least one specific content; and selecting data from at least one data stream having spatial-to-temporal translated data, in response to the one or more temporal addresses, the spatial-to-temporal translated data being from a hardware spatial data storage system. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ma US 5,926,649 Jul. 20, 1999 Yao US 5,938,734 Aug. 17, 1999 Jaeger US 6,345,028 B1 Feb. 5, 2002 IEEE, IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 590, 1198 (7th ed. 2000). Appeal 2011-008811 Application 10/734,647 3 REJECTIONS The Examiner made the following rejections: Claims 26-50 stand rejected under 35 U.S.C. § 101 as directed towards non-statutory subject matter. Claims 1-6, 12-31, and 37-50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jaeger in view of IEEE and Yao. Claims 7-11 and 32-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jaeger in view of IEEE and Yao as applied above, and further in view of Ma. ANALYSIS 35 U.S.C. § 101 The Examiner has rejected claims 26-50 as directed to non-statutory subject matter. (Ans. 4). “Appellant[s] appeals the rejections of claims 1-50 under 35 U.S.C. §103(a)” and “Appellant[s] will eagerly and cooperatively work with the Examiner to resolve the Examiner’s rejections under 35 U.S.C. §101, after the issues in this appeal have been resolved.” (App. Br. 5 & n.1). MPEP § 1205.02 (8th ed., Oct. 2005) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). Appellants have not presented substantive arguments on the merits with respect to the rejection of claims 26-50 rejected under §101. Therefore, we summarily affirm the rejection of claims 26-50 as directed to non-statutory subject matter. In this decision, we have considered only those arguments actually made by Appellants. Arguments which Appellants could have made but did not make in the Brief Appeal 2011-008811 Application 10/734,647 4 have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). 35 U.S.C. § 103 Appellants present lengthy discussions on the legal standards for patentability, including anticipation, which is not an issue in this appeal. (App. Br. 17-41). Appellants’ arguments regarding patentability of claim 1 begin at page 42 of the Appeal Brief. We limit our review to Appellants’ arguments. Appellants repeat the language of independent claim 1, repeat the Examiner’s rejection, and generally maintain: the Cited References do not recite “obtaining one or more temporal addresses corresponding to the at least one specific content by associating the specific content with one or more times of one or more transmitted data portions, in response to the request for the at least one specific content” as recited in clause [b] of Independent Claim 1. (App. Br. 44-49 (brackets in original)). Appellants reproduce the cited portions of the references and maintain each of the references does “not recite or suggest the text of at least clause [b] as recited in Independent Claim 1.” (Id. (brackets in original)). We find Appellants’ general arguments for patentability to be unavailing to show error in the Examiner’s reasoned conclusion of obviousness and are not specific arguments for patentability. Merely reciting the language of the claim is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Merely alleging that the references fail to support a rejection (e.g., Appeal 2011-008811 Application 10/734,647 5 App. Br. 45-48) or that the references do not recite or suggest the text of at least clause [b] (e.g., id.) is insufficient to persuade us of Examiner error. Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf . Appellants maintain that the Examiner has relied upon impermissible hindsight and the Examiner has provided no objectively verifiable evidence to support the Examiner’s assertions. (App. Br. 49-50). We disagree with Appellants and find Appellants’ general arguments for patentability to be unavailing. We find Appellants’ arguments are conclusory in nature and fail to address the thrust of the Examiner’s obviousness rejections. Therefore, we sustain the rejection of independent claim 1 and its respective dependent claims not separately argued. (Id. at 50). The Examiner provides further discussion of the prior art rejection and combination of teachings, which render claim 1 unpatentable based upon obviousness. (Ans. 23-25). Appellants have not filed a Reply Brief to further respond to the Examiner’s clarifications and responses. Therefore, Appellants have not shown error in the Examiner’s conclusion of obviousness of the prior art as applied by the Examiner. With respect to dependent claim 7, Appellants set forth a separate heading with respect to dependent claim 7 and present the same line of reasoning with regards to the addition of the Ma reference. (App. Br. 50- Appeal 2011-008811 Application 10/734,647 6 54). Again, we find these general arguments for patentability to be unavailing, and we sustain the rejection of dependent claim 7 and group dependent claims 8-11 and 32-36 with claim 7 because they were not separately argued. With respect to independent claim 26, Appellants present the same line of reasoning and arguments advanced with claim 1. (App. Br. 54-67). See id. (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Additionally, we note that Appellants identify the same scope of disclosure for the “means” limitation as set forth with respect to the method steps in independent claim 1 with no corresponding structure. (App. Br. 11- 12). Therefore, we group this claim and its dependent claims as falling with representative independent claim 1. CONCLUSIONS The Examiner did not err in rejecting claims 26-50 under 35 U.S.C. § 101. The Examiner did not err in rejecting claims 1-50 under 35 U.S.C. § 103. Appeal 2011-008811 Application 10/734,647 7 DECISION For the above reasons, the Examiner’s rejection of claims 26-50 is affirmed, and the Examiner’s rejections of claims 1-50 are affirmed. 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). AFFIRMED bab