Ex Parte Homer

Patent Trial and Appeal Board

Sep 19, 2016

13011688 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/011,688 0112112011
75180 7590
Gregg Homer, JSD
668 North Coast Highway
Suite 1371
Laguna Beach, CA 92651
09/21/2016
FIRST NAMED INVENTOR
Gregg S. Homer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OPNSP105 5164
EXAMINER
ALAM, SHAHID AL
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
09/2112016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
gregg@homerlabs.com
ghomer@entlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGG S. HOMER
Appeal2015-006903
Application 13/011,688
Technology Center 2100
Before LARRY J. HUME, DAVID C. McKONE,
and LINZY T. McCARTNEY, Administrative Patent Judges.
McKONE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 2, 5, 7, 9, 16, 18, 23, 25, 45, 47, 50, 52, 54, 56, 58, 65,
67, 72, 74, 94, 96, and 99-105, which constitute all the claims pending in
this application. See App. Br. 2. Claims 1, 3, 4, 6, 8, 10-15, 17, 19-22, 24,
26-44,46,48,49,51,53,55,57, 59---64,66,68-71, 73, 75-93,95,97,98,
and 106-109 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-006903
Application 13/011,688
THE INVENTION
The disclosed and claimed invention relates to downloading media
over a communication network. Spec. ,-r 1. In one embodiment, a
distribution system includes a service facility implemented as a server
computer, which is connected to an electronic communication network. The
system also includes a plurality of user facilities, such as a customer facility
implemented as a customer computer. A plurality of source or vendor
facilities are also connected to the network. These vendor facilities are
operated by holders of works to be distributed. Id. ,-r 30. The service facility
includes a web server program and a library server program. Id. ,-r 31.
According to an embodiment, "kiosks can be provided for dispensing and/or
recharging standalone devices that serve in place of at least some of the
customer computer." Id. ,-r 65.
Claim 2, which is illustrative of the invention, reads as follows:
2. A system for distributing a digital file from a
remote source facility to a standalone device comprising:
means for providing a kiosk,
wherein the standalone device can be connected to the
kiosk,
the kiosk does not contain its own library server, and
at least a portion of the digital file can be delivered to the
standalone device by way of the kiosk.
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THE REFERENCES and REJECTIONS
Claims 2, 5, 7, 9, 16, 18, 23, 25, 45, 47, 50, 52, 54, 56, 58, 65, 67, 72,
74, 94, 96, and 99-105 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen (US 6,195,694 Bl, issued Feb. 27, 2001) and Doerr
(US 5,949,411, issued Sept. 7, 1999). See Final Act. 5-7. 1
ANALYSIS
SCOPE AND CONTENT OF THE PRIOR ART
Chen describes a computer network with configurable kiosks. Chen,
1: 10-13. In one embodiment, a kiosk includes a computer, such as a
personal computer, with a network interface. Id. at 4:7-12. The kiosk also
includes input/output devices and one or more memories, such as hard disk
drives and CD-ROM drives. Id. at 4:20-26. A user uses the input/output
devices to transfer information through the computer of the kiosk to and/ or
from other clients and servers connected to the network. Id. at 4:28-33.
One specific implementation of a kiosk is for the application of a
travel agent. Id. at 6:66-7:4. In that example, the kiosk can request entry, at
an input/output device of personal information from a user, such as a PIN
code or a credit card. Id. at 7:4-8. The user's personal information is
passed to the server, at which a profile specific to the user is accessed. Id. at
7:8-13.
Doerr relates to systems and methods for previewing movies, music,
etc., using kiosks. Doerr, 1: 12-19. A host computer is connected via a
1 The statement of the rejection at page 5 of the Final Action also lists claims
106-109 as rejected. Nevertheless, claims 106-109 are cancelled. App.
Br. 2.
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modem pool with one or more remote kiosks and one or more media
companies. Id. at 3 :59---62. Data from the media companies can be
transmitted to the host network via a telecommunications system and the
modem pool. Id. at 5:66---6:3. Videos, photographs, etc., received in non-
digitized format can be digitized and loaded into a master database. Id. at
6:11-16. The master databases are then transmitted via a database work
station and the host modem pool to the remote kiosks. Id. at 6:22-26.
In one embodiment, the kiosks can be arranged in different levels.
Data can be transmitted from the host network to a first level of remote
kiosks, which then would transmit or forward the data to a next level of
kiosks. Id. at 6:34--39.
For instance, the host network could transmit data to ten remote
kiosks, for example, in level 13A, and each of the kiosks in that
level could retransmit the data to an additional ten kiosks, etc.
Information may be transmitted from the host network to
the remote kiosks at any suitable time, e.g., during off hours,
and at any suitable frequency, i.e., daily, weekly, etc.
Id. at 6:39--46.
REJECTION OF CLAIMS 2, 5, 7, 9, 16, 18, 23, 25, 45, 47, 50, 52, 54, 56, 58, 65,
67, 72, 74, 94, 96, AND 99-105 UNDER 35 U.S.C. § 103(a)
Claims 2, 5, 7, 9, 16, 25, 52, 54, 56, 58, 65, and 74
Regarding claim 2, the Examiner finds that Chen teaches a system
with a kiosk and a standalone device, wherein the kiosk can be connected to
the standalone device. Final Act. 5. The Examiner also finds that Chen's
kiosk does not contain its own library server. Id. The Examiner concedes,
however, that Chen does not teach "at least a portion of the digital file can
be delivered to the standalone device by way of the kiosk," as recited in
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claim 2. Id. at 5---6. Nevertheless, the Examiner finds that Chen teaches that
a digital file can be delivered to a standalone device by way of a kiosk.
Id. at 6. The Examiner finds that the system of Chen, modified by the
teachings of Doerr, would have provided flexibility for customers and
companies desiring to promote goods and services. Id.
Appellant argues that the combination of Chen and Doerr would not
teach "at least a portion of the digital file can be delivered to the standalone
device by way of the kiosk," "distributing a digital file from a remote source
facility to a standalone device," or "the standalone device can be connected
to the kiosk," as recited in claim 2. App. Br. 9. Appellant's argument is
based on the contention that "Chen and Doerr teach essentially the same
invention: a server system (host processor) connected to a communication
network that serves files over the network to remote kiosks in order to
configure and reconfigure the kiosks to perform various applications defined
by the application files." Id. at 8.
In other words, Appellant argues that, while both Chen and Doerr
teach serving files over a network to a remote kiosk, neither teaches the next
step, distributing those files from the kiosk to a standalone device. See also
Reply 7-8 ("Chen teaches only two primary devices: (1) either a server or a
proxy server; and (2) a kiosk. ... Doerr teaches media company computers
that transmit raw preview data to host servers, which host servers reformat
the data and transmit it to kiosks for display to users. Doerr therefore does
not teach the delivery of the digital file from the kiosk to the standalone
device as claimed. It teaches the reverse: the delivery of the digital file from
the standalone device (i.e., the media company computers or the host
servers) to the kiosk.").
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We are not persuaded by Appellant's argument. Rather, the evidence
shows that Chen and Doerr teach each limitation of claim 2. Specifically,
Appellant admits that Chen teaches providing a kiosk (kiosk 100) and
distributing a digital file from a remote source facility (server 19 5) to the
kiosk. App. Br. 9 ("[Chen] discloses the service of application files from a
server to a kiosk. Item 195 is the server, and item 100 is the kiosk.");
Reply 3 ("Chen discloses a system whereby a server 195/195A serves
application files 175 to a kiosk 100 over a communications network 150.").
Appellant does not contest the Examiner's finding that Chen's kiosk "does
not contain its own library server," as recited in claim 2. Doerr teaches
delivering at least a portion of a digital file from a network, by way of a first
kiosk, to a second kiosk, which constitutes a standalone device.
Doerr, 6:35--46.2
Appellant argues that the Examiner's stated reason to combine, to
provide additional flexibility, is too conclusory to be an articulated reason,
with rational underpinning, to combine Chen and Doerr. App. Br. 8.
Appellant expands on this argument in the Reply, arguing that "[t]he
rationale alleges what the proposed combination would do, but it says
nothing about the predictability or expectation of results." Reply 7.
According to Appellant, the examiner's rationale is based on impermissible
hindsight. Id. at 9.
2 The Examiner cites column 5, lines 35--46, of Doerr as supporting the
finding that Doerr teaches delivering at least a portion of a digital file to a
standalone device via a kiosk. Final Act. 6; Ans. 8. Nevertheless, based on
the Examiner's stated finding, which most closely aligns with the disclosure
of column 6, lines 35--46, of Doerr, it is clear that the rejection is based on
column 6, lines 35--46, rather than column 5, lines 35--46.
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We disagree with Appellant. The Examiner has stated a reason to
combine the references, to provide additional flexibility, rather than merely a
description of the features the combination would have. This reason has
some rational underpinning. Although Appellant argues that this reason is
insufficient, Appellant does not argue that it is incorrect. Nor does
Appellant demonstrate that the Examiner's proffered combination of
references would have been "uniquely challenging or difficult for one of
ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007). Moreover, in further support, Doerr
expressly states that its technique of sending files from one kiosk to another
has the advantage that it "can be utilized to increase the speed and ease with
which data can be transmitted from the host network 11 to a large number of
remote kiosks." Doerr, 6:32-35. A skilled artisan would have recognized
that Chen's system would have benefited in a similar manner.
In sum, Appellant has not shown that the Examiner erred in rejecting
claim 2. Appellant asserts that claim 52 stands or falls with claim 2.
Accordingly, Appellant has not shown that the Examiner erred in rejecting
claim 52. Appellant does not argue claims 5, 7, 9, 16, 25, 54, 56, 58, 65, and
74 separately. Accordingly, Appellant has not shown that the Examiner
erred in rejecting claims 5, 7, 9, 16, 25, 54, 56, 58, 65, and 74.
Claims 18 and 67
Appellant asserts that claims 18 and 67 stand or fall together. App.
Br. 6. Claim 18 recites that the digital file is encoded. The Examiner finds
that Chen teaches an encoded digital file. Final Act. 7. Appellant argues
that the digital file transmitted in Chen is not transmitted to a standalone
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device. App. Br. 9 ("The digital file allegedly disclosed by the examiner's
reference is transmitted in the opposite direction, to wit, from the standalone
device to the remote source facility."). As explained above, the Examiner
finds, and we agree, that Doerr teaches transmitting a digital file from a
server to a standalone device by way of a kiosk. Thus, Appellant's argument
is not persuasive. Appellant has not shown that the Examiner erred in
rejecting claims 18 and 67.
Claims 23 and 72
Appellant asserts that claims 23 and 72 stand or fall together. App.
Br. 6. Claim 23 recites "the availability of the file for download does not
require authorization." The Examiner finds that this is taught in Chen. Final
Act. 7 (citing Chen, 9:48-10:3, 24:35--45).
Appellant admits that the column 9 citation to Chen "might disclose
requiring an authorization," but argues that "the authorization is not
associated with the availability of a file for download." App. Br. 10. As to
the Examiner's citation to column 24 of Chen, Appellant admits that it
"might disclose the availability of a file for download," but argues that "the
download is not associated with an authorization." Id.
Although Appellant expresses disagreement with the Examiner's
findings, Appellant does not provide any evidence or argument explaining
why they are incorrect. Thus, Appellant's arguments are not persuasive.
Appellant has not shown that the Examiner erred in rejecting claims 23 and
72.
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Application 13/011,688
Claims 45, 47, 50, 94, 96, and 99
Appellant asserts that claims 45 and 94 stand or fall together, that
claims 47 and 96 stand or fall together, and that claims 50 and 99 stand or
fall together. App. Br. 6. Claim 45 recites "wherein the standalone device
comprises a hard drive." Claim 4 7 recites "wherein the standalone device
comprises a removable drive medium." Claim 50 recites "wherein the
standalone device comprises a computer." The Examiner finds that Chen's
kiosk can include a hard disk drive, a removable drive medium, and/or a
computer. Final Act. 7.
For each of these claims, Appellant argues that "the reference [Chen]
does not disclose a standalone device as the last device in a three-device
series comprising the remote source facility, the kiosk, and the standalone
device." App. Br. 10-11.
As explained above, the Examiner finds, and we agree, that Doerr
teaches transmitting a digital file from a server to a standalone device by
way of a kiosk, i.e., the third part of the alleged three-device series Appellant
references. Thus, Appellant's arguments are not persuasive. Appellant has
not shown that the Examiner erred in rejecting claims 45, 4 7, 50, 94, 96,
and 99.
Claims 100--105
Each of claims 100-105 recites a system or a method for delivering a
digital file to a kiosk, wherein at least a portion of the digital file is available
for download from the kiosk to the standalone device, and wherein the
digital file lacks a certain property. Specifically, claims 100 and 103 recite
"the digital file is not scrambled"; claims 101 and 104 recite "the digital file
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is not encrypted"; and claims 102 and 105 recite "the digital file is not
compressed."
The Examiner finds that these claims are taught by Chen and Doerr
for the same reasons as given for claim 2. Final Act. 7.
For each of these claims, Appellant incorporates his arguments as to
claim 2 and, as to each recited missing property of the digital file, argues
that the Examiner's "blanket rejection" is too conclusory to meet the
requirements for showing obviousness. App. Br. 11-14.
In response, the Examiner finds that Chen teaches communicating
using HTML files. Ans. 10. The Examiner further finds that such HTML
files are "standard or normal files and they are not scrambled, encrypted or
compressed." Id. Appellant does not dispute this finding. As explained
above, Appellant's arguments as to claim 2 are not persuasive. Appellant
has not shown persuasively that the Examiner erred in rejecting claims 100-
105.
DECISION
We affirm the Examiner's decision rejecting claims 2, 5, 7, 9, 16, 18,
23,25,45,47,50,52, 54,56,58,65, 67, 72, 74,94,96,and99-105.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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