Ex Parte Kikinis

Board of Patent Appeals and Interferences

Nov 13, 2009

09911945 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAN KIKINIS
____________

Appeal 2008-005420
Application 09/911,945
Technology Center 2400
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Decided: November 13, 2009
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 8-10, 13, and 14. The Appellant
appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

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A. INVENTION
The invention at issue on appeal a data delivery system which
comprises a server connected to data sources and adapted to transmit data to
a user; a first link from the server adapted to transmit data to the user via a
first delivery path; a second link from the server adapted to transmit data via
a second delivery path to the user, the second delivery path having a broader
bandwidth that the first delivery path; and transmission control routines. For
each data entity to be transmitted to the user, the transmission control
routines select either the first path or the second path for transmission, based
on size of the data entity and preprogrammed criteria. (Spec. 4.)

B. ILLUSTRATIVE CLAIM
Claim 8, which further illustrates the invention, follows.
8. A broadband data transmission system
comprising:
a high priority queue reserved for data entities
requiring that data entities be transmitted in a successive
fashion at or above a minimum rate to insure no
interruptions;
a lower priority data entity queue; and
control routines adapted for dividing large data
entities in the lower priority queue into multiple smaller
data entities of a size that may be interspersed with the
transmission of data entities from the high priority queue
without causing the rate of transmission of the high
priority entities to fall below the minimum rate.

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C. REFERENCES
The Examiner relies on the following references as evidence:

Mendelson US 5,754,783 May 19, 1998

Liebowitz US 5,812,545 Sep. 22, 1998

D. REJECTIONS
Claims 8, 9, and 13 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Mendelson.
Claims 10 and 14 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Mendelson in view of Liebowitz.

II. ISSUE
Has Appellant has shown error in the Examiner's initial showing of
anticipation of independent claims 8 and 13, and dependent claim 9? Has
Appellant shown error in the Examiner's initial showing of obviousness of
dependent claims 10 and 14?

III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
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anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be 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). The properly
interpreted claim must then be compared with the prior art.
Appellant has the opportunity on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. Id. at 415-16 (citing Graham v. John Deere Co.,
383 U.S. 1, 12 (1966)). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

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IV. ANALYSIS
At the outset, we note that Appellant expresses concern that when the
teachings of the reference do not relate exactly to the claimed invention
some explanation from the Examiner is necessary to explain how the
Examiner believes the teachings are related. (App. Br. 6). This is a
petitionable matter which is not before the Board. (MPEP 1004 “All
unusual questions of practice may be referred to the Technology Center
Directors.”) Furthermore, Appellant’s arguments do not identify whether
Appellant is addressing the language of independent claim 8 or the language
of independent claim 13. A majority of Appellant’s arguments seem to meld
facets of both independent claims 8 and 13 together. Such arguments are not
persuasive to either claim 8 or 13.
We also note that a majority of Appellant’s arguments are not
commensurate in scope with the express language of independent claims 8
and 13, wherein the language of the claims is drafted with respect to
"entities" and Appellant’s arguments are specifically drafted with respect to
"packets" which are not necessarily synonymous. Hence, we find
Appellant’s arguments to not be based on the express claim language in
dispute.
Appellant contends that "Appellant’s invention is not limited by
software and takes place at the level of actual packet transmission on the
network, not inside the compression step, as in Mendelson." (App. Br. 6-7).
We find Appellant’s argument unpersuasive of error since the language of
independent claim 8 does not expressly set forth that the invention "takes
place at the level of actual packet transmission" id., nor does it set forth a
specific step in a process with which to distinguish the teachings of
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Mendelson. Therefore, Appellant’s argument is not persuasive of the error
in the Examiner's initial showing of anticipation.
Appellant argues that "Mendelson does not deal with the problem of
the need to send additional real data to a user interspersed in a broadband
transmission requiring minimum bandwith so transmission is not
interrupted." (App. Br. 7). Appellant argues a specific situation in
Mendelson where passing packets are filtered out and replaced with content
of a limited size and type related to the video content as shown in Figures 1
and 3 of Mendelson, but in the event that content is not available to fill the
space left from removing the padding packets, additional padding packets
are provided instead. Appellant contrasts the invention where dividing the
second data entity into multiple portions each portion is small enough to
insure that it may be transmitted interspersed with data entities without
violating the minimum rate for the first data entities. (App. Br. 7). We note
that Appellant’s argument is not based upon the express language of either
independent claims 8 or 13. Therefore, Appellant's argument is not
persuasive of the error in the Examiner's initial showing of anticipation.
Appellant describes the functioning of Mendelson with regard to the
incoming MPEG video stream in Figure 4 and further contends that
Mendelson does not "resize data packets from a lower priority queue to
insert in a data stream from a higher priority queue in order to send needed
data to a user receiving the data stream from the higher priority queue."
(App. Br. 7-8). Again, Appellant’s argument is based upon a melding of the
two independent claims where independent claim 13 does not recite resizing
data packets or a lower priority queue and independent claim 8 does not
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recite resizing data packets or needed data to a user receiving the data
stream.
Appellant identifies that the Specification identifies the present
invention as an alternative to compression because compression of files
costs a user in terms of money and time spent to install and operate software
applications. Appellant contends that the claimed system transmits
autonomous packets of data resides to a specific size available in between
transmission bursts of time sensitive data (video) in a manner as to not
disrupt the transmission of the time sensitive data. Appellant contends in
contrast to Mendelson, Appellant’s invention can be used with any type of
data of any size and can be sent because it is not inserted within the video
contact packets as in Mendelson. (App. Br. 8). Again, Appellant’s
contention is not based upon an express language of independent claims 8 or
13 and does not show error in the Examiner's initial showing of anticipation.
Appellant argues that Mendelson is limited as to
type of data and the size is restricted to the size of the padding packets
as originally received in the MPEG. Further, appellant argues that the
secondary content cannot be autonomous from the primary content
because Mendelson does not teach a facility at the receiver’s end for
filtering out the secondary content.

(App. Br. 8).

We find no relevance in Appellant’s argument to the invention as expressly
recited in independent claims 8 and 13. Nor has Appellant identified any
express relevance to any express limitation in these claims. Therefore,
Appellant's argument is not persuasive of error in the Examiner's initial
showing of anticipation.
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Appellant argues that Mendelson actually pads packets containing
video contact and does not resize existing packets to fit in the satellite
transmission, as claim. (App. Br. 8). We find Appellant’s argument is not
commensurate with the invention as recited in independent claims 8 and 13.
Therefore, Appellant’s argument is not persuasive of error in the Examiner's
initial showing of anticipation.
Appellant identifies an embodiment of the disclosed invention where
packets of a size large enough to cause an interruption are divided into
packets small enough to be sent in between bursts and that the dividing
factor for the size is determined by factors such as the capacity of a satellite
link in the time that may be available for transmission between video packet
transmissions. (App. Br. 8). Appellant then contends that Mendelson can
never send a large file in need of resizing because the PCR (program clock
reference) limitations of the original received in MPEG video stream only
allow secondary data of a size equaling differences between the VBR and
CBR, and packets are created and generated for this specific size, existing
packets are not resized. (App. Br. 9). Again, Appellant’s argument is based
upon a comparison of the disclosed invention rather than a comparison to the
invention as recited in the express language of independent claims 8 and 13.
Therefore, Appellant’s argument is not persuasive of error in the Examiner's
initial showing of anticipation. Since Appellant has not shown any error in
the Examiner's initial showing, we will sustain the rejection of independent
claim 8. We will group independent claim 13 and dependent claim 9 as
falling with independent claim 8 since Appellant has not set forth separate
arguments for patentability.
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With respect to dependent claims 10 and 14, Appellant contends that
"Appellant’s specification clearly recites . . ." and then Appellant contends
that the “103 rejection regarding Liebowitz fails as Mendelson does not
resize packets, therefore needing a key." (App. Br. 10). Appellant contends
that there is absolutely no motivation in the part provided by the Examiner to
provide a deficiency because there is no need in Mendelson to reassemble
resized padding packets at the receiver and added that the reasoning for the
combination cannot be made in this case without the Examiner's hindsight
knowledge of the teachings of Appellant’s invention and therefore the
obviousness rejection must fail. (App. Br. 10). We disagree with Appellant
and find that Appellant’s argument is based upon Appellant’s comparison of
the combination of Mendelson and Liebowitz with Appellant’s disclosed
invention rather than the invention as recited in dependent claims 10 and 14
as they depend from independent claims 8 and 13. Therefore, we find
Appellant’s arguments to be unpersuasive of error in the Examiner's initial
showing of obviousness. Accordingly, we will sustain the Examiner's
rejection of dependent claim 10 and will group dependent claim 14 with
claim 10 since Appellant has not set forth separate arguments for
patentability.

V. CONCLUSION
For the aforementioned reasons, Appellant has not shown error in the
Examiner's initial showing of anticipation of independent claim 8, and
Appellant has not shown error in the Examiner's initial showing of
obviousness of dependent claim 10.

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VI. ORDER
We affirm the anticipation rejection of claims 8, 9, and 13, and the
obviousness rejection of claims 10 and 14.
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).

AFFIRMED

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