Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Jun 16, 2011

10675653 (B.P.A.I. Jun. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEYHAN KARAOGUZ and JAMES BENNETT
____________
Appeal 2009-007207
Application 10/675,653
Technology Center 2400
___________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-30. We have jurisdiction under 35
U.S.C. § 6(b).
We Affirm.

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Invention
Appellants’ invention relates generally to information storage. (Spec
1). More particularly, the invention on appeal is directed to a media
processing system offering access to newly available media in a media
exchange network. (Id.).
Representative Claim 1
A method for communication of information in a
distributed media network, the method comprising:

detecting availability by at least one media processing
system in the distributed media network, of one or more of
newly available media, data and service within the distributed
media network;

comparing by said at least one media processing system,
said one or more of said newly available media, data and
service with data in a media profile associated with said at least
one media processing system; and

requesting at least a portion of said one or more of said
newly available media, data and service from the distributed
media network based on said comparison by said at least one
media processing system.

Rejections
1. Claims 1-7, 9, 11-17, 19, 21-27, and 29 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Kikinis (US Pat. 5,644,714).
2. Claims 8, 10, 18, 20, 28, and 30 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Kikinis and
Schwartz (US Pat. 5,913,032).

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GROUPING OF CLAIMS
1. Appellants argue claims 1, 11, and 21 as a group (App. Br. 8 et seq.).
We select representative claim 1 to decide the appeal for this group.
See 37 C.F.R. § 41.37(c)(1)(vii).
2. Appellants argue claims 2, 12, and 22 as a group (App. Br. 11 et
seq.). We select representative claim 2 to decide the appeal for this
group.
3. Appellants argue claims 3, 13, and 23 as a group (App. Br. 12 et
seq.). We select representative claim 3 to decide the appeal for this
group.
4. Appellants argue claims 4, 14, and 24 as a group (App. Br. 13 et
seq.). We select representative claim 4 to decide the appeal for this
group.
5. Appellants argue claims 5, 15, and 25 as a group (App. Br. 15 et
seq.). We select representative claim 5 to decide the appeal for this
group.
6. Appellants argue claims 8, 18, and 28 as a group (App. Br. 17 et
seq.). We select representative claim 8 to decide the appeal for this
group.
7. Appellants argue claims 10, 20, and 30 as a group (App. Br. 19 et
seq.). We select representative claim 10 to decide the appeal for this
group.
8. All claims not argued separately fall with the respective base claim
from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii).

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ANALYSIS
We consider Appellants’ arguments seriatim as presented in the
principal Brief at page 8 et seq.

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
representative claim 1:
1. Under § 102, did the Examiner err in finding that Kikinis
discloses the following argued limitations:
comparing by said at least one media
processing system, said one or more of said
newly available media, data and service with
data in a media profile associated with said at
least one media processing system,

within the meaning of representative claim 1?

FINDINGS OF FACT (FF)
1. Kikinis discloses that “[p]aying clients of the video service, at the
time of subscription, specify the topics of their particular interest and
provide details of their local receiving equipment, which must be of a
type compatible with the worldwide network. Each time a new
clipping is made available, file servers in each area send a message to
clients who have subscribed to the categories appropriate to the new
clipping.” (Col. 4, ll. 10-16).

2. Kikinis discloses that “[c]lients can monitor their service as often as
they like for newly available video in the areas of interest they have
indicated, and can then select clippings they wish to see.” (Col. 4, ll.
17-19).

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ANALYSIS
Independent claims 1, 11, and 21
Appellants present the following principal argument in opposition:
As clearly seen from the above Final Office Action
citation, the Examiner has equated Kikinis' file
servers 1-7 to Applicant's "media processing
system." However, as clarified above, Kikinis'
"profile" relates to the subscribing clients
17-39, and the "profile" does not relate to, and
it is not associated with, the file servers 1-7
(equated to "media processing systems").
Therefore, Kikinis does not disclose "comparing
by said at least one media processing system, said
one or more of said newly available media, data
and service with data in a media profile associated
with said at least one media processing system," as
recited by the Applicant in independent claim 1.

(App. Br. 9-10).

The Examiner disagrees, as follows:
[I]t is noted that the claim language "associated
with said at least one media processing system" is
very broad. Almost anything related to the media
processing system in any way is "associated with"
it. In this case, Kikinis teaches that clients of the
video service provide information to the file
servers, including the details of their receiving
equipment and topics of interest (col. 4, ll. 10-13).
This information is subsequently used, by the file
servers, to determine when to notify a particular
subscriber of newly available media (col. 4, ll. 14-
16; col. 5, ll. 34-36).
(Ans. 8).

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At the outset, we conclude that nothing in the language of
representative claim 1 limits the “media processing system” to reading on
only a server. Instead, we conclude that the claimed “media processing
system” broadly but reasonably reads on any element in a distributed media
network that performs the claimed functions of detecting and comparing.
(Claim 1). Moreover, we broadly but reasonably construe the claim term
“associated with” as reading on any nexus between a media profile and
media processing system – even an attenuated nexus.1 Given this
construction, we agree with the Examiner that “[a]lmost anything related to
the media processing system in any way is ‘associated with’ it.” (Ans. 8).
Therefore, we find unpersuasive each of Appellants arguments that is
premised on the view that there is no anticipation because the profile in
Kikinis is only associated with the subscribing clients. (e.g., App. Br. 9). On
this record, we agree that the Examiner’s claim construction falls well within
the broadest reasonable interpretation of Appellants’ claim 1.
For these reasons, we find Appellants have not met their burden of
showing reversible error in the Examiner’s prima facie case of anticipation

1 Appellants’ claims are given their broadest reasonable interpretation
consistent with the Specification, and the claim language is read in light of
the Specification as it would have been interpreted by one of ordinary skill
in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citations omitted). Because “applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citation omitted).

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for claim 1.2 Therefore, we sustain the §102 rejection of representative
claim 1, and claims 11 and 21 which fall therewith. See 37 C.F.R.
§41.37(c)(1)(vii).

Claims 2, 12, and 22
Representative claim 2 recites:
The method according to claim 1,
comprising receiving said requested at least a
portion of said one or more of said newly available
media, data and service by said at least one media
processing system, if said one or more of said
newly available media, data and service matches
said data in said media profile associated with said
at least one media processing system.

(emphasis added).
As pointed out by the Examiner, Appellants’ arguments for these
claims are substantially identical to those previously presented for claim 1,
which we did not find to be persuasive. (Ans. 9). Moreover, we find a

2 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

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matching of the paying client profile (i.e., topics of their particular interest)
must inherently occur in order for “[e]ach time a new clipping is made
available, file servers in each area send a message to clients who have
subscribed to the categories appropriate to the new clipping.” (Kikinis - FF
1).
For these reasons, we find Appellants have not met their burden of
showing reversible error in the Examiner’s prima facie case of anticipation
for claim 2. Therefore, we sustain the §102 rejection of representative claim
2, and claims 12 and 22 which fall therewith. See 37 C.F.R.
§41.37(c)(1)(vii).
Claims 3, 13, and 23
Representative claim 3 recites: “The method according to claim 1,
wherein said data in said media profile associated with said at least one
media processing system is predefined.” (emphasis added).
Appellants contend that Kikinis does not disclose that the data in the
media profile associated with the media processing system is predefined.
(App. Br. 12). However, we disagree, as the medial profile of Kikinis is at
least initially “predefined” when “[p]aying clients of the video service, at the
time of subscription, specify the topics of their particular interest and provide
details of their local receiving equipment . . . .” (FF 1)(emphasis added).
For this reason, we find Appellants have not met their burden of
showing reversible error in the Examiner’s prima facie case of anticipation
for claim 3. Therefore, we sustain the §102 rejection of representative claim
3, and claims 13 and 23 which fall therewith. See 37 C.F.R.
§41.37(c)(1)(vii).

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Claims 4, 14, and 24
Representative claim 4 recites: “[t]he method according to claim 1,
comprising dynamically updating data in said media profile associated with
said at least one media processing system.”
Appellants aver that “[e]ven if we assume for the sake of argument
that Kikinis discloses a media profile associated with at least one media
processing system . . . the Examiner's argument is still deficient. Namely,
Kikinis only discloses that the profile is only set up at the time of
subscription and Kikinis does not disclose any dynamic updating of the
profiles, as recited in Appellant's claims 4, 14, and 24.” (App. Br. 14)..
However, we find the evidence supports the Examiner’s position that
“[s]ince there are numerous clients server by Kikinis' system (fig. 1), each
time a new subscriber joins, their subscription information is added to the
media server's profile, dynamically updating it with the information needed
to notify the new subscriber of new content.” (Ans. 9; see also FF
1)(emphasis added).
We also observe that Appellants do not directly respond to the
Examiner’s findings in the Reply Brief. Instead, Appellants merely restate
that there is no anticipation because the profile in Kikinis is only associated
with the subscribing clients. (Reply Brief, 7). We find this argument
unpersuasive for the same reasons discussed above regarding claim 1.
On this record, we find Appellants have not met their burden of
showing reversible error in the Examiner’s prima facie case of anticipation
for claim 4. Therefore, we sustain the §102 rejection of representative claim
4, and claims 14 and 24 which fall therewith. See 37 C.F.R.
§41.37(c)(1)(vii).
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Claims 5, 15, and 25
Representative claim 5 recites: “The method according to claim 1,
comprising polling at least one of a plurality of network components in the
distributed media network for said one or more of said newly available
media, data and service.” (emphasis added).
Appellants point to the portions of the reference relied on by the
Examiner and contend that “Kikinis, including col. 4, lines 17-20, does not
disclose any polling for newly available media, data and/or service, as
recited by the Applicant in claims 5, 15, and 25.” (App. Br. 15).
The Examiner disagrees. The Examiner finds that
Kikinis discloses that clients monitor their service
"as often as they like" for newly available video
(col. 4, ll. 17-20[; see also FF 2]). Monitoring the
service "as often as they like" requires that the
clients control the monitoring frequency, which
requires that the client poll for newly available
content.
Furthermore, Kikinis also discloses that the
clients can select clippings they wish to see, which
will cause the video data to be sent to the client
(col. 4, II. 19-20). This requesting of a media item
is also "polling ... for said newly available media".

(Ans. 9-10).

Appellants provide no additional response to the Examiner’s findings
in the Reply Brief. (p. 7).
We conclude that claim 5 places no restriction on who or what
performs the claimed polling. Therefore, for essentially the same reasons
argued by the Examiner (Ans. 9-10; FF 2), we agree that the disputed polling
is performed when the clients in Kikinis “monitor their service as often as
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they like for newly available video in the areas of interest they have
indicated, and can then select clippings they wish to see.” (FF 2).
On this record, we find Appellants have not met their burden of
showing reversible error in the Examiner’s prima facie case of anticipation
of claim 5. Therefore, we sustain the §102 rejection of representative claim
5, and claims 15 and 25 which fall therewith. See 37 C.F.R.
§41.37(c)(1)(vii).
Claims 8, 18, and 28 (§ 103)
Representative claim 8 recites: “The method according to claim 1,
wherein said detecting comprises searching by said at least one media
processing system of at least another media processing system in the
distributed media network for said one or more of said newly available
media, data and service.”
Appellants aver that
[w]hile Schwartz discloses that the Object
Exchange facilitates exchange of shared data,
Schwartz, including col. 6, lines 36-40 and col. 11,
lines 21-26, does not disclose that a media
processing system (or a user) can search another
media processing system (or another user) for
newly available media, data and/or service, as
recited by the Applicant in claims 8, 18, and 28.

(App. Br. 18-19).
The Examiner disagrees. The Examiner notes that
the rejection is based on the combination of
Kikinis and Schwartz. When considered in
combination with Kikinis' sharing of media files
by sending files at regular intervals (Kikinis: col.
3, l. 66 to col. 4, l. 5), the object exchange system
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of Schwartz would have suggested to one of
ordinary skill in the art that would have been
advantageous to allow the media servers to search
other servers to locate newly available media, to
provide an additional means for locating media
and allowing servers to locate media files using
specific criteria, rather than simply receiving a
bulk delivery of all newly available media.
Appellants arguments attack the references
individually, concentrating exclusively on
Schwartz.
(Ans. 10-11).
We agree with the Examiner that Appellants are attacking Schwartz in
isolation when the rejection is based upon the combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references.).
Therefore, we find Appellants have not met their burden of showing
reversible error in the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for representative claim 8. Accordingly, we
sustain the §103 rejection of claim 8, and claims 18 and 28 which fall
therewith. See 37 C.F.R. §41.37(c)(1)(vii).

Claims 10, 20, and 30 (§ 103)
Representative claim 10 recites:
The method according to claim 1, wherein
said detecting comprises polling at least another
media processing system for said one or more of
said newly available media, data and service
within the distributed media network, and wherein
said at least another media processing system is
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authorized for said polling by said at least one
media processing system.

Appellants contend that the combination of Kikinis and Schwartz does
not teach or suggest the claimed authorized polling of another media
processing system. (App. Br. 20-21).
We have addressed the monitoring (polling) feature of Kikinis supra.
We also observe that Schwartz expressly teaches polling in col. 6, ll. 36-40,
as pointed out by the Examiner. (Ans. 7). Because any monitoring or
polling that actually occurs is necessarily authorized, we do not find
Appellants’ arguments persuasive in light of the combined teachings of
Kikinis and Schwartz.
On this record, we find Appellants have not met their burden of
showing reversible error in the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for representative claim 10.
Therefore, we sustain the §103 rejection of representative claim 10, and
claims 20 and 30 which fall therewith. See 37 C.F.R. §41.37(c)(1)(vii).

All remaining claims not argued separately fall with the base claim
from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii).

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DECISION
We affirm the Examiner’s § 102 rejection of claims 1-7, 9, 11-17, 19,
21-27, and 29.
We affirm the Examiner’s § 103 rejection of claims 8, 10, 18, 20, 28,
and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

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