Ex Parte KambhatlaDownload PDFPatent Trial and Appeal BoardJun 29, 201612821306 (P.T.A.B. Jun. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/821,306 06/23/2010 47795 7590 07/01/2016 TROP, PRUNER & HU, P.C. c/o CPA Global 900 2nd A venue South, Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR Srikanth Kambhatla 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. ITL.2322US (P34958) 3730 EXAMINER SCOTT, RANDY A ART UNIT PAPER NUMBER 2453 NOTIFICATION DATE DELIVERY MODE 07/01/2016 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): tphpto@tphm.com Inteldocs _ docketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SRIKANTH KAMBHATLA Appeal2015-001239 Application 12/821,306 Technology Center 2400 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. uECISION ON APPEAL Appeal2015-001239 Application 12/821,306 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-24: Claims 1-3, 5, 6, 10-12, and 19-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ichimura (US 2010/0188567 Al; published July 29, 2010) 1 and Jiang2 (US 2011/0047260 Al; published Feb. 24, 2011 (effectively filed Apr. 2 8, 2009) ). Final Act. 3-8. 3 Claims 4, 13-15, and 22-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ichimura, Jiang, and Bayyapu (US 2004/0243617 Al; published Dec. 2, 2004). Final Act. 8-10. 1 We note that Ichimura's U.S. application publication does not qualify as prior art. The present application on appeal was filed June 23, 2010, which is prior to the July 29, 2010, publication oflchimura's U.S. application. l\1oreover, Ichimura is a U.S. application publication of an international application after national-stage entry. Ichimura's international application was filed after November 29, 2000, but it was published in Japanese, not English. See World Intellectual Property Organization ("WIPO") Publication WO 2009/001880 Al (filed June 26, 2008). Accordingly, Ichimura's U.S. application publication is not afforded a 35 U.S.C. § 102(e) date. See MPEP § 706.02(±)(1) III (9th ed. Rev. 07.2015, Nov. 2015) (providing instructions for determining § 102( e) dates). However, Ichimura's international application was published on December 31, 2008 as WIPO Publication WO 2009/001880 Al. We therefore presume that the Examiner intends to reject the cited claims over WO 2009/001880 Al in view of Jiang, and relies on Ichimura's U.S. application publication as an English-language translation of WO 2009/001880 Al. 2 The Jiang patent document lists the inventor's last name as "Jiang." 3 Throughout this opinion, we refer to (1) the Final Rejection mailed January 16, 2014 ("Final Act."); (2) the Appeal Brief filed July 2, 2014 ("App. Br."); (3) the Examiner's Answer mailed September 10, 2014 ("Ans."); and (4) the Reply Brief filed October 29, 2014 ("Reply Br."). 2 Appeal2015-001239 Application 12/821,306 Claims 7-9 and 16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ichimura, Jiang, Bayyapu, and Lesartre (US 2005/0152386 Al; published July 14, 2005). Final Act. 10-12. We have jurisdiction under 35 U.S.C. § 6(b ). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We reverse. Pursuant to our authority under 37 C.F.R. § 41.50(b ), we enter a new ground of rejection. SUMMARY OF THE INVENTION Appellant's invention streams video in a device topology. Spec. 1. Specifically, source, sink, and branch devices form a topology. Id. at 2. A source streams video to one or more sinks through zero or more branch devices. Id. The topoiogy may have iimited avaiiabie resources to support the stream. Id. at 2-3. Appellant's invention is directed to a way to manage resources and communicate errors. See id. at 5; Abstract. For example, source and sink devices exchange messages to coordinate action. Spec. 5. THE OBVIOUSNESS REJECTION OVER ICHIMURA AND JIANG Claims 1-3, 5, 6, and 10 Independent claim 1, reproduced below with our emphasis, is illustrative: 1. A method comprising: enabling transmitters in a plurality of video devices in a topology of devices to transfer a message between an origin device in the topology and a destination device in the topology 3 Appeal2015-001239 Application 12/821,306 via at least one intermediate device in the topology; and enabling a hardware processor in each of the devices to take an action specified in the message transmitted by an origin device to a destination device, depending on an indicator within the message that indicates the message's type among a plurality of possible message types. Contentions The Examiner finds that Ichimura teaches every limitation of claim 1 except for transferring messages between an origin and a source device via an intermediate device. Final Act. 3. The Examiner cites Jiang as disclosing this feature and concludes the combination would have rendered claim 1 obvious. Id. at 3--4. Regarding the recited message, the Examiner finds that Ichimura's devices take actions specified in the consumer electronics control (CEC) message. Id. at 3 (citing Ichimura i-f 394); see also Ans. 4 (citing Ichimura i1294). In turning to Jiang, the Examiner finds that Figure 2 shows the recited three devices. Final Act. 3; Ans. 5 (citing Jiang i-fi-115-16). According to the Examiner, Jiang's devices also take an action based on a message. Final Act. 3 (citing Jiang i-fi-151-52); see also Ans. 5 (discussing Jiang's message event variable in paragraph 53). Appellant argues that Ichimura lacks an intermediate device that takes the action recited in claim 1. App. Br. 7. According to Appellant, Ichimura uses the CEC to determine the transmission and reception sides, but the CEC would not be executed by an intermediate device. Reply Br. 2 (citing Ichimura i-f 394). Appellant further argues that Jiang also lacks an intermediate device that takes the action recited in claim 1. App. Br. 7. According to Appellant, 4 Appeal2015-001239 Application 12/821,306 Jiang' s messages relate to device failures and are not sent through intermediate devices. Id. Issue Has the Examiner established by a preponderance of the evidence that Ichimura and Jiang collectively would have taught or suggested an intermediate device taking an action specified in the message transferred between the three devices, as recited in claim 1? Analysis We are persuaded by Appellant's argument that the Examiner has erred in rejecting claim 1 (App. Br. 7). The Examiner identifies a message in each reference: ( 1) Ichimura' s CEC message, and (2) Jiang's message sent by first device M. See Final Act. 3--4 (citing Ichimura if 394 and Jiang iii! 51-52). But the Examiner has not shown a corresponding intermediate device that takes an action based on either of these messages. See App. Br. 7. First, Ichimura's CEC message is exchanged between devices connected with (High Definition Multimedia Interface (HDMI). Ichimura i-f 394, cited in Final Act. 3. Specifically, an HDMI source and sink in two-way communication exchange commands or responses for control. Ichimura i-f 294, cited in Ans. 4. Ichimura's disclosure of two-way communication (Ichimura i-f 294) is notable because the claim requires a third device to take an action based on the message. On this record, we agree that the Examiner has not identified a 5 Appeal2015-001239 Application 12/821,306 third device in Ichimura's two-way communication that executes the CEC message. See Final Act. 3--4. Even under the proposed addition of a third device from Jiang, the Examiner has not explained how Ichimura's CEC message could be executed by a third device. To be sure, both Ichimura and Jiang disclose three-device configurations. See, e.g., Ichimura Fig. 22 (showing devices 900, 901, and 903); Jiang Fig. 2 (showing a server, router, and player). But in Ichimura's second embodiment, the CEC messages are used to determine which device is the transmission side and which is the reception side. Ichimura i-f 394. So even if a third device were involved in CRC message transmission, the Examiner has not explained what action the third device would take in Ichimura's determination. Id. The Examiner also cites Jiang' s messages. Final Act. 3--4 (citing Jiang i-fi-151-52). The Examiner does not explain whether Jiang's messages are to repiace Ichimura's CEC messages under the proposed combination. See Final Act. 4. Nevertheless, like Ichimura's CEC messages, the Examiner has not shown that an intermediate device would take any action specified in Jiang' s message. In the embodiment cited by the Examiner, Jiang describes a set a traffic streams transmitted in a network. Jiang i-fi-137--41. Although Jiang attributes the network's description to Figure 3, that figure only shows a flowchart. Id. On the other hand, Figure 5, shown below, is closer to the description in paragraphs 3 7 through 41. See id. 6 Appeal2015-001239 Application 12/821,306 De .. VlteJ ----"tl------1 Devi=ce m [.. t1 _..· ___ 0e_v_ice_·_i ___. ---- t1 w-1 Device n L. t1 ___ .,.. ~-------•---t2---_ ~ r Devicek FIG., 5 Jiang's Figure 5 showing the configuration described in paragraphs 37 through 41 with different device letters. In mapping Figure 5 to Jiang's corresponding description, Figure S's "device i" corresponds to "device H," as described, and the remaining device letters in Figure 5 are capitalized in the description. See id. Referring to the configuration above, a specific device may be arranged to check the failure status of the remaining devices. Jiang i-f 48. In this embodiment, device "M" (or "m" as shown above) detects whether a device or multiple devices have failed. Id. i-fi-150, 54. If so, device M will issue an event message or a broadcast message. Id. An event variable records which device has failed. Id. i-f 53, cited in Ans. 5. 7 Appeal2015-001239 Application 12/821,306 But the Examiner has not shown that an intermediate device---e.g., Jiang's Device i shown in Figure 5-transmits and takes an action specified in device m's messages, as required by the claim. Rather, Jiang provides an example where device H ("Device i" in Figure 5) fails and device M sends the message. Id. i-f 54. That is, we can infer that device M's messages need not be transmitted via device H because device M sends messages communicating H's failure to non-adjacent devices J, N, and K. Id. On this record, we agree with the argument (App. Br. 7) that the Examiner has not shown an intermediate device that takes an action specified in the messages sent by device M. The Examiner also cites Jiang's Figure 2 to show a source and sink. Final Act. 3. Figure 2 shows a configuration of a source, intermediate, and sink device. Jiang i-f 15. We note that Jiang's traffic streams are transmitted from a source to a sink via intermediate device 202. Id. But the Examiner has not identified an action is taken by device 202 specified in the messages or event variables cited in paragraphs 51through53. See Final Act. 3; Ans. 5. In the topology corresponding to the cited paragraphs, Jiang describes that device K receives a first message from device M. Jiang i-f 63. Device K is the control point. Id. i-f 62. The device in Figure 2 corresponding to Device K is labeled "Control Point." See id. Fig. 2. So the configuration shown Figure 2 weighs against the Examiner's findings (Final Act. 3; Ans. 5) that the cited message is sent from the Media Server (Source Device) via the Router (Intermediate Device) to the Media Player (Sink Device). In particular, Jiang's control point, not the sink, receives the messages cited by the Examiner. Final Act. 3 (citing Jiang i-fi-151-52). 8 Appeal2015-001239 Application 12/821,306 Lastly, the Examiner cites Jiang's paragraph 26 discussing expiration times. Final Act. 4. As described by Jiang, devices must announce periodically that they are on-line. Jiang i-f 83. Devices are deemed off-line if the time between announcement messages exceeds an expiration time. Id. i-fi-183-84. Jiang's method determines a transmission lease-the amount of time that network resources can be used-based on a device's associated expiration times. Id. i-f 26. The Examiner does not explain, nor do we find, that these expiration times imply that an intermediate device takes an action based on the messages. Final Act. 4. On the contrary, Jiang's on-line announcements are multicast messages sent to a specific network address. Jiang i-f 83. We are constrained by this record to find that the Examiner has not established that Ichimura and Jiang collectively would have taught or suggested an intermediate device that takes the action recited in claim 1. For the foregoing reasons, we wiH not sustain the Examiner;s rejection of claim 1, or of claims 2, 3, 5, 6, and 10, which depend from claim 1. Claims 11, 12, and 19-21 We likewise do not sustain the rejections of independent claims 11 and 21, which recite claim 1 's step as a function that at least one intermediate device and destination device is configured to perform. Like claim 1, the Examiner rejects claims 11 and 21 as being obvious over Ichimura and Jiang. Final Act. 4--6. Despite providing an analysis discussing an intermediate device in the Final Rejection (see id. (citing Jiang Fig. 2, i-fi-1 26, 51) ), the Examiner states in the Answer that claims 11 and 21 9 Appeal2015-001239 Application 12/821,306 do not require that the intermediate device "'is performing the action' specified in the message." Ans. 5. Even assuming, without deciding, that this is the case, claims 11 and 21, like claim 1, require taking an action specified in a message transferred between origin, destination, and intermediate devices. For the reasons discussed in connection with claim 1, we agree with Appellant's argument (Reply Br. 3) that the Examiner has not established that either reference alone or collectively teaches the recited message and the corresponding action. Specifically, the Examiner identifies (1) Ichimura' s CEC message and (2) Jiang's message sent by first device M. See Final Act. 4---6 (citing Ichimura i-fi-1294, 394 and Jiang i-fi-126, 51 ). As discussed above, the Examiner has only identified scenarios where two machines transfer and take actions on these messages. See Final Act. 4--6. Further discussed above, the Examiner has not identified an intermediate switch or device in Jiang that transfers the messages from device M in either Figure 5 or Figure 2. See Ans. 5. Accordingly, we do not sustain the Examiner's rejection of claims 11 and 21. We, likewise, do not sustain the obviousness rejection of claims 12, 19, and 20, which depend from claim 11. THE OTHER OBVIOUSNESS REJECTIONS We do not sustain the Examiner's rejection of dependent claims 4, 7- 9, 13-18, and 22-24 for the same reasons discussed above in connection with claim 1. The additional references, Bayyapu and Lesartre, were not relied upon to teach above-described features missing from Ichimura and 10 Appeal2015-001239 Application 12/821,306 Jiang. See Final Act. 8-12. Accordingly, these additional references do not cure this deficiency explained previously on the record. NEW GROUND OF REJECTION Pursuant to our discretionary authority under 3 7 C.F .R. § 41. 50(b ), we enter a new ground of rejection for independent claims 1, 11, and 21 under 35 U.S.C. § 102(e). We begin by emphasizing that our rejection is based upon an embodiment in Jiang that is different from the one cited by the Examiner. Unlike the Examiner's rejection, our rejection is based on the embodiment described in Jiang's Background section. See Jiang i-fi-13---6. Regarding claim 1, Jiang discloses a topology of devices comprising media server, wireless router, and television corresponding to the recited origin, intermediate, and destination video devices. Jiang i1 3; Fig. 1. These devices reasonabiy may be interpreted as constituting "video devices" because they transmit and receive a video stream. See id. The devices' transmitters are enabled to transmit packets corresponding to the recited messages. Id. Therefore, Jiang transfers a message between the media server ("origin device") and television ("destination device") via wireless router ("intermediate device"). Id. Jiang's data packets are marked according to user-requested priorities. Id. i16. For example, packets marked with a high priority are transmitted in preference to those marked with a lower priority. Id. This priority marker (id.) corresponds to the recited indicator within the message. And the message's priority (id.) corresponds to the message's type. That is, "low" and "high" are possible priority types. Id. 11 Appeal2015-001239 Application 12/821,306 Although not expressly stated, one skilled in the art would understand that Jiang's media server, television, and wireless router inherently have a "hardware processor" to perform the disclosed media streaming. Id. i-f 3. As described by Jiang, media streaming involves processing digital data and network communications that would not be possible without at least one hardware processor. See id. i-fi-1 3---6. Therefore, Jiang enables a hardware processor in the media server, wireless router, and television ("the devices") to prioritize transmissions ("take an action") specified in a marked packet ("the message") transmitted by the media server ("origin") to the television ("destination"), depending on the priority marker ("indicator") within the packet ("the message") that indicates the priority ("the message's type") among a plurality of possible priorities from low to high ("message types"). See id. We reject claims 11 and 21 under the same rationale as claim 1 because the steps of claim 1 correspond to the recited functions in claims 11 and 12. Although disputed by the Examiner (see Ans. 5), we adopt the construction that the intermediate device is configured to perform the recited function of taking an action specified in the message, as suggested by Appellant's remarks (see App. Br. 7; Reply Br. 2). Even under this construction, claims 11 and 21 are anticipated by Jiang for the above-described reasons. Although we decline to reject the remaining claims under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean that the remaining claims are necessarily patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. 12 Appeal2015-001239 Application 12/821,306 DECISION The Examiner's decision rejecting claims 1-24 is reversed. Pursuant to our discretionary authority under 37 C.F .R. § 41.50(b ), we enter a new ground of rejection for independent claims 1, 11, and 21 under 35 U.S.C. § 102(e). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new 13 Appeal2015-001239 Application 12/821,306 ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214. 01. REVERSED 37 C.F.R. § 41.50(b) 14 Copy with citationCopy as parenthetical citation