Ex Parte Kota et al

Patent Trial and Appeal Board

Oct 7, 2016

12247230 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/247,230 10/08/2008 Kalyana Kota
36738 7590 10/12/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
50X9504 7635
EXAMINER
TURCHEN, JAMES R
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
10/12/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAL Y ANA KOTA, UTKARSH PANDY A, and LING JUN
WONG
Appeal2015-000120 1
Application 12/247,230
Technology Center 2400
Before JEAN R. HOMERE, JEFFREY S. SMITH, and AMBER L. HAGY,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 3-5, and 14--29. Claims 2, and 6-
13 have been canceled. App. Br. 5-13. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Sony Corp. App. Br. 2.
Appeal2015-000120
Application 12/247,230
Appellants' Invention
Appellants' invention is directed to a method and system for
incrementally streaming a content portion requested by an authorized user
from a remote server (130) to an electronic book (ebook- 110) based on
streamed content being accessed by the user in the ebook. Spec. i-fl9, Fig. 1.
In particular, upon determining that the requested content portion exceeds
the ebook storage capacity, a processor in the ebook breaks up the request
into a succession of page requests to the server, which streams each
subsequent page in response to a successive page request made by the
processor when the user accesses in the ebook memory a predetermined
page previously streamed thereto. Consequently, a most recently streamed
page replaces a least-recently streamed page in thee-book memory. Id.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. A system comprising:
an electronic book computing device configured for
receiving from a server any of a plurality of predetermined
portions of content responsive to the server determining that the
electronic book computing device is allowed to access the
content; and
the electronic book computing device including memory
configured for storing a first streamed portion of the content,
the electronic book including at least one processor configured
for:
receiving a first user command to access a first part of
content in the first streamed portion of the content, and in
response to the first user command, determining whether the
first part of the content extends beyond a predetermined portion
of the content, and responsive to a determination that the first
part of the content does not extend beyond the predetermined
portion of the content, not requesting a second streamed portion
of the content; and
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Appeal2015-000120
Application 12/247,230
receiving a second user command to access a second part
of content in the first streamed portion of the content, and in
response to the second user command, determining whether the
second part of the content extends beyond the predetermined
portion of the content, and responsive to a determination that
the second part of the content extends beyond the
predetermined portion of the content, requesting a second
streamed portion of the content.
Prior Art Relied Upon
Li et al. US 6,543,053 B 1 Apr. 1, 2003
Wang et al. US 2004/0194103 Al Sept. 30, 2004
Safa US 2004/0203605 Al Oct. 14, 2004
Chen et al. US 2005/089052 Al Apr. 28, 2005
An US 7,359,944 B2 Apr. 15, 2008
Reztlaff et al. US 2008/0243788 Al Oct. 2, 2008
Rejections on Appeal
Claims 1, 4, 5, and 26-29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of An, and Retzlaff.
Claims 3, and 22-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of An, Retzlaff, and Li.
Claims 14 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of An and Li.
Claims 15, 17-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of An, Li, and Retzlaff.
Claiml6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of An, Li Retzlaff, and Chen.
Claims 25 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of An, Retzlaff, and Wang.
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Appeal2015-000120
Application 12/247,230
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 5-13, and the Reply Brief, pages 1--4.2
Appellants argue that the combination of An and Reztlaff does not
teach or suggest determining whether a part of streamed content extends
beyond a predetermined portion thereof. App. Br. 5-7, Reply Br. 1-3. In
particular, Appellants argue that An merely discloses a server streaming to
an ebook requested content portion upon the e-book acknowledging receipt
of an associated advertisement previously transmitted by the server. Id.
(citing An 8:31-53). However, according to Appellants, An nowhere
discloses that the ebook examines either the advertisement or the associated
content to determine whether they extend beyond a predetermined content
portion. Id. This argument is persuasive.
We agree with Appellants that the Examiner erred in finding An's
disclosure of a server sending successive content portions to an ebook
implies the ebook using "some sort of logic" to decide whether to request a
next content portion from the server, and thereby teaches that the ebook
determines whether a received content portion exceeds a predetermined
portion. Reply Br. 2, Ans. 2-3 (citing An 8:31-35). As correctly argued by
Appellants, although the ebook issues to the server successive requests for
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed February 12, 2014), the Reply Brief (filed
September 21, 2014) and the Answer (mailed August 4, 2014) for their
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 12/247,230
corresponding content portions, An is devoid of any teaching or suggestion
that the ebook compares any of the received contents with a predetermined
content size as a way to determine whether the received content exceeds the
predetermined content. Reply Br. 3.
Because Appellants have shown at least one reversible error in the
Examiner's rejection, we need not reach Appellants' remaining arguments.
Consequently, we reverse the Examiner's rejection of claim 1, as well as
claims 3-5, and 14--29, which recite the disputed limitations discussed
above.
DECISION
We reverse the Examiner's obviousness rejections under 35 U.S.C.
§ 103(a) of claims 1, and 3-5, and 14--29 as set forth above.
REVERSED
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