Ex Parte Khan et al

Patent Trial and Appeal Board

Sep 27, 2013

11295769 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHABBIR KHAN and ALEXANDER COHEN
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Appeal 2011-005355
Application 11/295,769
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-7, 10-14, 24-30, 33-37, 47-50, 52, 53,
56-58, 60, 70-72, 76-78, 81-83, 88-90, 92, 94, and 96-98. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We reverse.

BACKGROUND
Appellants’ invention is directed to the transmission of digital content
in a data transmission network. (Spec., para. [0001]).
Claim 1 is illustrative:
1. A method, comprising:
a computing platform receiving an upload request to
upload digital content including at least a first digital object,
wherein the upload request includes information indicating the
first digital object is divisible into a plurality of smaller sub-
objects, and wherein the upload request also includes
information regarding requested upload quality of service;
the computing platform generating, based at least in part
on the information indicating the first digital object is divisible,
an upload request price quote specifying a quote to upload a
first of the plurality of smaller sub-objects at the requested
quality of service;
the computing platform transmitting the upload request
price quote over a network to a node; and
the computing platform receiving a price quote
acceptance of the transmitted upload request price quote.

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Appellants appeal the following rejections:
Claims 1-3, 11-14, 24- 26, 33-37, 47- 49, 56-58, 60, 70-72, 76, 81, 82,
89, 90, 92, and 94 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Karaoguz (U.S. 2004/0114605 A1, pub. Jun. 17, 2004) and Aaltonen
(U.S. 2005/0209927 A1, pub. Sep. 22, 2005).1
Claims 4-7, 10, 27-30, 50, 52, 53, 77, and 88 are rejected under 35
U.S.C. § 103(a) as unpatentable over Karaoguz, Aaltonen, and Official
Notice.2
Claims 78, 83, and 96-98 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Karaoguz, Aaltonen, and Ishii (U.S. 6,778,493 B1, iss.
Aug. 17, 2004).

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. The Examiner finds:
Karaoguz and Aaltonen do not explicitly teach the computing
platform generating, based at least in part on the information
indicating the first digital object is divisible, an upload request
price quote specifying a quote to upload a first of the plurality
of smaller sub objects at the requested quality of service.
(Ans. 7).
2. The Examiner reasons:
[I]t would have been obvious to one of ordinary skill at the time
of the to modify Karaoguz in view Aaltonen to include this

1 We infer from the analysis at page 8 of the Answer that claims 3, 26, and
49 are inadvertently excluded from the statement of rejection at page 6.
2 We infer from the analysis at pages 8-10 that the Official Notice evidence
is inadvertently omitted from the statement of rejection of these claims at
page 6.
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feature such that when the digital content is divisible into
plurality of smaller objects as taught by Aaltonen, an upload
request price quote specifying a quote to upload a sub object at
a requested quality of service (rather than the entire digital
content itself) is generated in instances in which only a portion
of the content is to be uploaded to the recipient.
(Id.)
3. The Examiner finds a motivation for the combination as follows:
One would have been motivated to do so[,] so that the user is
able receive a price quote for each sub object and also to
compare the various cost associated with each sub objects and
prioritize the sub objects based on cost benefits to the requester.
Examiner notes that in the e commerce environment, it is well
known to receive quote for individual items that forms a
collection as well as a “collective price” for the “package”.
(Id.)
4. The Examiner further reasoned that:
The entire media content file in Karaoguz is considered a
package/product/service while Aaltonen teaches that the
package (entire media content) is divisible into smaller sub
objects. Therefore, it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify
Karaoguz to include [generating, based at least in part on the
information indication the first digital object is divisible, an
upload request price quote specifying a quote to upload a first
of the plurality of smaller sub-object] for the obvious reason of
allowing the user to purchase only a portion of the digital
content instead of the entire content if indeed the
package/product/service is divisible.
(Ans. 11).

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ANALYSIS
Rejections of Claims 1-7, 10-14, 24-30, 33-37, 47-50, 52, 53, 56-58,
60, 70-72, 76-78, 81-83, 88-90, 92, and 94 under 35 U.S.C. § 103(a)
Each of independent claims 1, 24, and 47 recite language substantially
identical to “generating, based at least in part on the information indicating
the first digital object is divisible, an upload request price quote specifying a
quote to upload a first of the plurality of smaller sub-objects at the requested
quality of service.”
We are persuaded of error by Appellants’ argument that the
combination of Karaoguz and Aaltonen does not disclose the claim language
set forth above, because the combination discloses “a system where a ‘cost
to transfer’ is provided for an entire ‘media content file’ (according to
Karaoguz), and subsequently the ‘media content file’ is broken into ‘a
plurality of portions’ for transmission (according to Aaltonen).” (Reply Br.
2-3; see also App. Br. 13-16).
The Examiner acknowledges that the combination does not disclose
this limitation (FF 1). However, the Examiner reasons it would be an
obvious modification for “instances in which only a portion of the content is
to be uploaded to the recipient.” (FF 2). No citation to the references, or
explanation by the Examiner, is provided of conditions leading to those
instances argued. The motivation for the combination is variously given as
to compare and prioritize costs for each sub-object (FF 3), and for “allowing
the user to purchase only a portion of the digital content ....” (FF 4). We do
not find the Examiner provides a reason one of ordinary skill would be
concerned about comparing upload costs at the sub-object level. In addition,
we construe “uploading” as sending a file by a user, not downloading a file
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to a user. Therefore, we do not see a connection between a price quote to
upload only a portion of content, as claimed, and that user purchasing only a
portion of content, as argued.
A rejection based on 35 U.S.C. § 103(a) must rest on a factual basis.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In making such a
rejection, the Examiner has the initial duty of supplying the requisite factual
basis and may not, perhaps because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. Id.
Given the lack of adequate supporting evidence, we conclude that the
Examiner's determination that it would have been obvious to modify the
references to arrive at a price quote to upload a first of the plurality of
smaller sub-objects, rests on speculation, unfounded assumptions, and/or
hindsight reconstruction of the claimed invention.
In view of the foregoing, we will not sustain the Examiner's rejection
of independent claims 1, 24, or 47, or their dependent claims.
Rejection of Claim 88
Independent claim 88 recites “second means for generating a plurality
of upload request price quotes to upload respective ones of the plurality of
sub-objects of the first digital object.”
Claim 88 is argued together with claim 1. (App. Br. 11). However,
the claim recites limitations slightly different from claim 1, in that it recites
generating price quotes for each of a plurality of sub-objects, rather than just
the first sub-object. However, because we find no factual basis for
concluding the language of claim 1 is obvious, we also reach the same result
for claim 88. This is because if no first sub-object’s price quote is
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generated, not all price quotes for all sub-objects are generated either. For
this reason we will not sustain the Examiner’s rejection of claim 88.

DECISION
We reverse the rejections under 35 U.S.C. § 103(a) of claims 1-7, 10-
14, 24-30, 33-37, 47-50, 52, 53, 56-58, 60, 70-72, 76-78, 81-83, 88-90, 92,
94, and 96-98.

REVERSED

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