Ex Parte Kruse

Board of Patent Appeals and Interferences

Aug 31, 2010

11175906 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/175,906 07/05/2005 Sky Kruse 35016.003 2325
34395 7590 08/31/2010
OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
08/31/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SKY KRUSE
____________

Appeal 2009-012856
Application 11/175,906
Technology Center 3600
____________

Before, JAMES D. THOMAS, ANTON W. FETTING and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012856
Application 11/175,906

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a method for computer-based information transfer
and, in particular, to efficient transfer of digitally encoded content from
content providers’ to purchasers’ computers. (Specification 1:8-11)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for transferring digitally encoded content from
a content- provider computer to a purchaser computer, the
method comprising:
evaluating the characteristics and capabilities of the purchaser
computer; considering a number of different approaches for
transferring the digitally encoded content from the content-
provider computer to the purchaser computer and computing an
overhead for each approach;
selecting an approach with a lowest overhead; and
transferring the digitally encoded content from the content-
provider computer to a purchaser computer using the selected
approach.

Appeal 2009-012856
Application 11/175,906

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Quittek US 2003/0131121 A1 Jul. 10, 2003
Andrew US 2003/0182441 A1 Sep. 25, 2003

The following rejection is before us for review:
The Examiner rejected claims 1-7 under 35 U.S.C. § 103(a) as being
unpatentable over Andrew in view of Quittek.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 1-7
on appeal as being unpatentable under 35 U.S.C. § 103(a) over Andrew in
view of Quittek on the grounds that a person with ordinary skill in the art
would understand that Andrew discloses a protocol compatibility selection
process which involves determining an overhead for each protocol
approach?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification does not specifically define the term
“overhead”, nor does it utilize the term contrary to its customary meaning.
2. The Specification describes by way of example that the
“…shortest time to usability is one possible metric for computing the
Appeal 2009-012856
Application 11/175,906

4
overhead associated with transferring the digitally encoded content from a
content provider to a purchaser.” (Specification 5: 5-7).
3. Andrew is directed to “transferring an object from a sending
computer system to a receiving computer system.” (¶ [0002]).
4. Andrew discloses:
In embodiments where intent-to receive data
includes one or more transfer mechanisms the
receiving computer system is configured to utilize,
the sending computer system may identify transfer
mechanisms compatible with both the sending
computer system and the receiving computer
system. For example, if the sending computer
system is configured to utilize IR, General Packet
Radio Service ("GPRS"), Global System for
Mobile Communications ("GSM"), and
BLUETOOTH™ and the receiving computer
system is configured to utilize IR, wireless
Transmission Control Protocol/internet Protocol
("TCP/IP"), GSM, and Code-Division Multiple
Access ("CDMA"), the sending computer system
may identify IR and GSM as compatible transfer
mechanisms.
(¶ [0015])
5. Quittek discloses customizing required bandwidth based on a
determination of the properties of the connection and/or the terminals and/or
the used coding method and/or the used decoding method for time-
synchronous data transfer. (¶ [0022])

Appeal 2009-012856
Application 11/175,906

5
ANALYSIS
We affirm the rejection of claims 1-7.
Appellant does not provide a substantive argument as to the separate
patentability of claims 2-7 that depend from claim 1, the sole independent
claim. Therefore, claims 2-7 fall with claim 1.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Preliminarily, we address the scope of claim 1. Claim 1 recites
“overhead” in the context of computing an overhead for each approach and
selecting an approach with a lowest overhead. The Specification does not
specifically define the term “overhead”, nor does it utilize the term contrary
to its customary meaning. (FF 1). In fact, the Specification discusses it in
very broad exemplary terms stating, “…shortest time to usability is one
possible metric for computing the overhead associated with transferring the
digitally encoded content from a content provider to a purchaser.” (FF 2).
Thus, we interpret a process which results in the shortest time to usability as
meeting the claim term “overhead”.
Appellant argues that “…Andrew is directed to identifying
communications protocols and hardware available in two computer systems
in order to identify compatible transfer mechanisms for transferring data
between the two computer systems.” (Appeal Br. 6). Appellant further bases
this objection on the assertion that although Andrew discloses matching
protocols between computers, it does so outside of the context of:
“[D]igitally encoded content," a "content-provider
computer," a "purchaser computer," "computing an
Appeal 2009-012856
Application 11/175,906

6
overhead" for each of "a number of different
approaches for transferring the digitally encoded
content from the content-provider computer to the
purchaser computer,” “selecting an approach with
a lowest overhead," and "transferring the digitally
encoded content from the content-provider
computer to a purchaser computer using the
selected approach."
(Appeal Br. 6-7).
We disagree with Appellant for the following reasons. First, claim 1
only requires digitally encoded content from a content-provider.
Appellant’s position however is that this term “does not refer to any type of
data”. (Appeal Br. 7). This argument is untenable because Andrew discloses
transferring an object from a sending computer system to a receiving
computer system (FF 3), and nothing in the claims precludes an object from
being considered digitally encoded content from a content-provider.
(Appeal Br. 7). Limitations appearing in the specification but not recited in
the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003).
Moreover, our finding that Andrew discloses transferring the object
from a sending computer system to a receiving computer system (FF 3)
meets the claim terms of transferring from a content provider computer to a
purchaser computer because the transferring computer sends an object to the
receiving computer, and thus transfers content to it. Additionally, the term
“purchaser” as a modifier of “computer” is not of consequence in our
interpretation of the claims because the operator of the computer is the
Appeal 2009-012856
Application 11/175,906

7
purchaser, and not the machine. Thus, the character of a computer being a
purchaser computer does not distinguish the steps or structure of the claim
elements. Also, the claims do not further distinguish what is meant by the
term “purchaser computer ” and therefore reads on a computer owned by
someone who happens to be a sometimes purchaser, a description of
virtually every person.
We find that Andrew configures protocols between computers so as to
be most compatible with both the sending computer system and the
receiving computer system (FF 4). In so doing, Andrew considers different
scenarios or approaches for transferring the digitally encoded content/object.
(FF 4). We thus find that such a protocol compatibility selection process
involves determining and selecting the most compatible protocol approach
between computers, which ultimately results in the shortest time to usability
of the object content from the sending computer, and hence is an approach
with the lowest overhead.
We find that Quittek is cumulative to Andrew because like Andrew,
Qiuttek considers a number of different approaches for transferring digital
content, and, in this case, based on a broadband compatibility which
likewise results in shortest time to usability. (FF 5).

Appeal 2009-012856
Application 11/175,906

8
CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over
Andrew in view of Quittek.
DECISION
The decision of the Examiner to reject claims 1-7 is

AFFIRMED.

MP

OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104