Ex Parte Iwamura

Patent Trial and Appeal Board

Feb 28, 2013

10951739 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RYUICHI IWAMURA
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Appeal 2010-010467
Application 10/951,739
Technology Center 2400
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 5-16, 18, and 19. Claims 3, 4, and 17 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
The claims are directed to communication between a client and a
server in a home entertainment system. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A home entertainment system, comprising:

at least one server; and

at least one client component communicating with the
server on a network path,

wherein the client component buffers data received from
the server and monitors the amount of buffered data, wherein if
it is determined that the amount of buffered data falls below an
underflow threshold, the client component sends a request to
the server to raise the rate at which data is transmitted, wherein
a transcoder in the server is used for automatic bit rate control
of data transmitted to the client component, and further wherein
under unfavorable network conditions the transcoder transcodes
a data stream to a lower bit rate stream and sends the lower bit
rate stream faster than a normal operating data transfer rate.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zimmermann

Kingsley
US 2003/0161302 A1

US 6,961,377 B2
Aug. 28, 2003

Nov. 1, 2005

REJECTIONS
Claims 15, 16, 18, and 19 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1, 2, 5-16, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Zimmermann and Kingsley.

ANALYSIS
The Indefiniteness Rejection
The Examiner finds that Appellant’s Specification does not describe
sufficient corresponding structure for the “means for monitoring a data
buffer” and “means for comparing an amount of data in the buffer to an
underflow threshold” recited in claim 15, which is therefore indefinite (Ans.
3-4).1 Specifically, the Examiner finds that “CPU 90 constitutes a general
purpose compute[r] but lacks an algorithm to constitute a special purpose
computer as corresponding structure” (Ans. 4). Appellant contends that the
Examiner’s finding is “factually wrong” because “[t]he specification could
not be clearer that the CPU 90 has special structure by virtue of being

1 The Examiner’s Answer mailed May 21, 2010, is referenced throughout
the Opinion.
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programmed with the algorithm of Figure 4” (Reply Br. 3).2 That is,
Appellant argues the structure that performs the recited “means for
monitoring” and “means for comparing” is CPU 90 which is programmed
with logic elements for performing the steps in the flow chart of Figure 4, as
described on page 10 of the Specification (see Reply Br. 2-3).

When dealing with a “special purpose computer-
implemented means-plus-function limitation,” we require the
specification to disclose the algorithm for performing the
function. The “specification can express the algorithm in any
understandable terms including as a mathematical formula, in
prose, or as a flow chart, or in any other manner that provides
sufficient structure.”

Function Media, L.L.C. v. Google Inc., 2013 WL 516366, *4 (Fed. Cir.
2013) (citation omitted). In this case, Appellant relies on both the text of the
Specification and the flow chart in Figure 4 for allegedly disclosing the
algorithm for the recited “monitoring” and “comparing” functions (see
Reply Br. 2-3). Namely, the Specification discloses that “at block 100 in
Figure 4 the client TV CPU 90 monitors the amount of buffering in the
client TV HDD 88. If it is determined at decision diamond 102 that the
amount of buffered data falls below an underflow threshold, the logic
proceeds to block 104 . . . .” (Spec. 10:14-16). Figure 4 shows a flow chart
with block 100 labeled “TV CPU monitors TV HDD” followed by decision
diamond 102 labeled “underflow threshold violated?”. As cited here,
however, the Specification and Figure 4 merely describe what functions are

2 The Supplemental Reply Brief filed May 24, 2010, is referenced
throughout the Opinion.
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performed by CPU 90 without explaining how the functions are performed.
The fact that CPU 90 can be programmed with logic elements for
performing the recited “monitoring” and “comparing” functions (see Reply
Br. 2-3) does not explain how the functions are performed because
Appellant has not shown that the Specification describes specific logic
elements including how they operate to perform these functions.
Accordingly, CPU 90 “is essentially a black box that performs a recited
function. But how it does so is left undisclosed.” Blackboard, Inc. v.
Desire2Learn Inc., 574 F.3d 1371, 1383 (Fed. Cir. 2009). We thus agree
with the Examiner (Ans. 4) and find that the Specification does not describe
specific corresponding structure for the recited “means for monitoring” and
“means for comparing” because it does not disclose the algorithms by which
CPU 90 performs the “monitoring” and “comparing” functions. We further
note that Appellant
cannot avoid providing specificity as to structure simply
because someone of ordinary skill in the art would be able to
devise a means to perform the claimed function. To allow that
form of claiming under section 112, paragraph 6, would allow
[Appellant] to claim all possible means of achieving a function.

Function Media, 2013 WL 516366, at *6.
We are therefore not persuaded that the Examiner erred in rejecting as
indefinite claim 15, and claims 16, 18, and 19 not separately argued.

The Obviousness Rejections
Claims 1, 2, 5-8, 15, 16, 18, and 19
The Examiner finds that Zimmermann and Kingsley collectively
would have taught or suggested claim 1, including that Kingsley discloses
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the limitation wherein under “unfavorable network conditions the transcoder
transcodes a data stream to a lower bit rate stream and sends the lower bit
rate stream faster than a normal operating data transfer rate” (Ans. 5-6).
Appellant contends that while “Kingsley teaches that a cable head end can
receive from a satellite MPEG-2 compressed at 9Mb/s, and transcode it to
the lower bit rate of 5Mb/s to adhere to the lower bandwidth of the cable
system,” Kingsley fails to provide “any teaching or suggestion of then
sending the 5Mb/s transcoded stream faster than a normal operating data
transfer rate” (App. Br. 5).3 We agree with Appellant for the following
reasons.
The portion of Kingsley the Examiner relies upon (Ans. 6) describes
an example where a digital video program originally compressed in MPEG-
2 format at 9Mb/s for transmission on a satellite channel must be relayed by
a cable headend over a cable channel at a lower bit-rate, for example 5 Mb/s
(Kingsley, col. 1, ll. 41-48). “To achieve this, the headend can perform
transcoding on the input video to lower its bitrate so that the video bit-stream
can be transmitted via the cable channel” (Kingsley, col. 1, ll. 48-50). This
suggests that Kingsley would only lower the encoding rate enough to meet
the 5 Mb/s bandwidth constraint of the cable channel, and that any
subsequent increase in the transfer rate of the data would then likely exceed
the 5 Mb/s bandwidth, which would be contrary to Kingsley’s reason for
transcoding the digital video program. Thus, while the example in Kingsley
describes transcoding to a lower encoding rate, it does not disclose that the
transcoder then “sends the lower bit rate stream faster than a normal

3 The Revised Appeal Brief filed January 26, 2009, is referenced throughout
the opinion.
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operating data transfer rate,” as recited in claim 1. Merely lowering the
encoding rate for a digital video program will reduce the amount of data to
be sent, which thus reduces the bandwidth required to send the program in
the same amount of time (see, e.g., Zimmermann, ¶ [0057] (“MPEG-4
generally provides a higher compression ratio than MPEG-2. For example, a
typical 6 Mb/s MPEG-2 media file may only require a 800 Kb/s delivery rate
when encoded with MPEG-4.”)), but it will not alone achieve sending the
program at a faster rate.
The Examiner’s reference to Hagler (US 7,012,899 B1) for support
that it is known in the art that cable channels send data faster than satellite
channels (Ans. 14) is unavailing. The fact that Hagler discloses that cable
channels can have higher data rates than satellite channels (Hagler, col. 1, ll.
31-57) does not change the fact that the prior art references actually relied on
for the rejection describe a system where data is transcoded from a higher bit
rate satellite channel to a lower bit rate cable channel (Kingsley, col. 1, ll.
36-54). Further, the Examiner’s reference to Hyun (US 2005/0177848 A1)
for support that “sending data in a compressed form achieves faster
transmission rate” (Ans. 15) is also unavailing. As discussed above, merely
lowering the encoding rate of data, i.e., further compressing the data, does
not alone achieve sending the data at a faster rate. To the extent that the
Examiner seeks to rely on Hyun for providing a suggestion to modify the
combination of Zimmermann and Kingsley—“data is often compressed prior
to the transmission for a faster transmission” (Hyun, ¶ [0005])—the
Examiner has not clearly stated this is part of the grounds of rejection, and
thus we decline to consider it in this appeal.
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We are therefore constrained by the record to find that the Examiner
erred in rejecting claim 1, claims 2 and 5-8 for similar reasons, and claims
15, 16, 18, and 19, which recite commensurate limitations.

Claims 9-14
Appellant presents no specific arguments regarding claims 9-14 (see
App. Br. 4-6; Reply Br. 3-6). We therefore affirm pro forma the
obviousness rejection of these claims.

CONCLUSION
Under 35 U.S.C. § 112, second paragraph, the Examiner did not err in
rejecting claims 15, 16, 18, and 19.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1, 2,
5-8, 15, 16, 18, and 19, but did not err in rejecting claims 9-14.

DECISION
For the above reasons, we reverse the rejection of claims 1, 2, 5-8, 15,
16, 18, and 19 under obviousness; we affirm the rejection of claims 9-14
under obviousness, and we affirm the rejection of claims 15, 16, 18, and 19
under indefiniteness.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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