Ex Parte Hursey

Board of Patent Appeals and Interferences

Nov 19, 2010

10417194 (B.P.A.I. Nov. 19, 2010)

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.
10/417,194 04/17/2003 Neil John Hursey 03.009.01 6130
7590 11/19/2010
Zilka-Kotab, PC
P.O. Box 721120
San Jose, CA 95172-1120
EXAMINER
PEARSON, DAVID J
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
11/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NEIL JOHN HURSEY
____________

Appeal 2009-006073
Application 10/417,194
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006073
Application 10/417,194

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 5-14, 17-26, and 29-40, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellant’s invention relates to examining video codec identifiers in
computer data containing compressed video data. The identifiers may be
correlated with banned computer data, such as pirated or copyright-
infringing video material. See Abstract.

Representative Claim
1. A computer program product embodied on a
tangible computer readable medium having a computer
program for controlling a computer to detect computer data
containing compressed video data as being banned computer
data, said computer program product comprising:

identifier reading code operable to read from said
computer data an identifier of a decoder operable to decompress
said compressed video data;

identifier comparing code operable to compare said
identifier with one or more predetermined characteristics
indicative of whether said identifier is associated with banned
computer data; and

triggering code operable if said identifier is associated
with banned computer data, to trigger a banned computer data
action;

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wherein said identifier is a decoder identifying field
embedded within said compressed video data;

wherein said decoder identifying field is a key used by an
operating system to associate said computer data with a decoder
registered to said operating system.

Prior Art
Schmelzer U.S. 2003/0037010 A1 Feb. 20, 2003
Nwe Nwe Hlaing, Browser Security: A Requirements-based Approach
(Master’s thesis), Queensland University of Technology (March 2003)
(“Hlaing”).

Examiner’s Rejections
Claims 1, 2, 5-14, 17-26, and 29-38 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Hlaing.
Claims 1, 39, and 40 stand rejected under 35 U.S.C. § 102(e) as being
unpatentable over Schmelzer.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 10, 39, and 40. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
We refer to, and rely on, the Examiner’s findings set out in the Final
Rejection and the Answer.

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PRINCIPLES OF LAW
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Our
reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

ANALYSIS
Hlaing
Appellant alleges that the Examiner has relied “on the following
excerpt” (§ 6.4.1.1) from Hlaing to show a limitation that is expressed in
claim 1 as: “identifier reading code operable to read from said computer data
an identifier of a decoder operable to decompress said compressed video
data.” See App. Br. 10. Appellant then reproduces the cited portion of
Hlaing and adds the following remarks.
Appellant respectfully asserts that the excerpt from Hlaing
relied upon by the Examiner merely teaches that “to filter users’
requests . . . [t]he browser checks the file extension against the
list” to determine “[i]f the requested file is a permitted file
type” (emphasis added). However, merely checking the file
extension against a list in order to determine if it is a permitted
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type, as in Hlaing, fails to suggest “reading from said computer
data an identifier of a decoder operable to decompress said
compressed video data ” (emphasis added), as claimed by
appellant. Clearly, a file extension, as in Hlaing, simply fails to
suggest “an identifier of a decoder,’ in the manner as claimed
by appellant.

App. Br. 10 (alteration in original).

Appellant’s remarks thus take the following form.
Appellant respectfully asserts that the excerpt from Hlaing
relied upon by the Examiner merely teaches that “to filter users’
requests . . . [t]he browser checks the file extension against the
list” to determine “[i]f the requested file is a permitted file
type” . . . . However, merely checking the file extension against
a list in order to determine if it is a permitted type, as in Hlaing,
fails to suggest “reading from said computer data an identifier
of a decoder operable to decompress said compressed video
data ” . . . as claimed by appellant. Clearly, a file extension, as
in Hlaing, simply fails to suggest “an identifier of a decoder,’ in
the manner as claimed by appellant.

App. Br. 10 (emphasis changed from original).
The bulk of Appellant’s remarks in the briefs are of a similar structure
-- cite from text in an applied reference, allege that the text “merely teaches”
the cited text, allege that the literal language of the reference “fails to
suggest” or “does not meet” language quoted from the instant claims, and
conclude that “clearly” the teachings of the reference “simply fails to
suggest” the language quoted from the claims.
Appellant’s remarks do little to persuade us of error in any of the
Examiner’s findings.
Appellant’s main contention, with respect to instant claim 1, appears
to be that the “identifier” the Examiner points to in Hlaing is not an
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“identifier” as claimed. In particular, Appellant contests the finding that
Hlaing uses a “file extension” as an identifier for all that the claim requires.
Hlaing describes a browser that checks the file extension of a received
file to determine if the particular type of file is to be restricted or permitted.
Hlaing at 83-84. The browser may also check a file type indicator, encoded
in MIME format, from the HTTP header of a file provided from a server. Id.
at 83-84. As the Examiner correctly notes, the file extensions and file type
indicators are used to determine the type of file (id. at 9). “[B]rowsers use a
list of the registered file types and associated applications to determine the
downloaded file type.” Id. at 85. The file types include those for files which
are passed to particular plug-in or helper applications, such as “Windows
Media Player,” “QuickTime,” and “RealNetworks,” to decompress and play
audio or video content. Id. at 17-19. As the Examiner also correctly notes,
Appellant’s claimed “decoder identifying field embedded within said
compressed video data” does not distinguish over the file extension or file
type indicator (“Content-type”) in Hlaing, which is contained in MIME
format along with the audio or video content (see, e.g., Hlaing at 17).2 Nor
does the decoder identifying field claimed as a “key used by an operating
system to associate said computer data with a decoder registered to said
operating system” distinguish over the browser using the operating system’s
registered file types to find the associated helper application for the
particular file type (id. at 85).

2 As the Examiner also indicates, the identifier in Hlaing is “embedded
within said compressed video data” at least to the extent that the “identifier”
in the header portion of the file is “embedded within” the compressed video
data, as depicted in Appellant’s Figure 2 (header portion 28). See Spec. 8:6-
9.
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Thus, while Hlaing does not use the word “identifier” or “key” when
referring to the file extension or MIME file type indicator, we do not see
how instant claim 1 might distinguish over the steps of permitting or
restricting file types based on the file extension or file type indicator
associated with a particular file, as described by the reference. For a prior
art reference to anticipate in terms of 35 U.S.C. § 102, every element of the
claimed invention must be identically shown in a single reference.
However, this is not an “ipsissimis verbis” test. In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990).
With respect to claim 10, we agree with the Examiner that the
modified Lynx browser as described by Hlaing (at 82-85) is an “Internet
content scanner.”3 Hlaing thus anticipates claim 10.
We are thus not persuaded that any claim rejected over Hlaing has
been rejected in error. We sustain the § 102(a) rejection of claims 1, 2, 5-14,
17-26, and 29-38.

Schmelzer
Rather than repeat the Examiner’s rejection of claim 1 over
Schmelzer, we simply note that Appellant’s remarks in the briefs do not
persuade us of error to any extent in the rejection. With respect to claims 39
and 40, we agree with the Examiner that Schmelzer describes comparing the
file type identifier with characteristics that are “associated with known
suspicious video handler identifiers” (¶ [0012] -- e.g., DivX) and that the

3 See pages 1 through 4 of the reference for a general discussion of how
browsers and servers interact via the Internet.
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comparison may be made on a server (¶ [0033]), as further explained at
pages 13 through 15 of the Answer.
We therefore sustain the § 102(e) rejection of claim 1 over Schmelzer,
and that of dependent claims 39 and 40.

DECISION
The rejection of claims 1, 2, 5-14, 17-26, and 29-38 under 35 U.S.C.
§ 102(a) as being anticipated by Hlaing is affirmed.
The rejection of claims 1, 39, and 40 under 35 U.S.C. § 102(e) as
being unpatentable over Schmelzer is 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

msc

Zilka-Kotab, PC
P.O. Box 721120
San Jose CA 95172-1120