Ex Parte Kvm et al

Patent Trial and Appeal Board

Oct 27, 2014

11783137 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NAIDU KVM, RAJEEV RASTOGI,
JEYASHANKHER SR, and ANAND SRINIVASAN
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Appeal 2012-000846
Application 11/783,137
Technology Center 2100
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Before JEAN R. HOMERE, CARLA M. KRIVAK, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–20.1
We have jurisdiction under 35 U.S.C. §6(b).
We affirm.

1 Throughout this opinion we refer to (1) the Appeal Brief filed May 26,
2011 (App. Br.); the Examiner’s Answer mailed July 6, 2011 (Ans.); and the
Reply Brief filed August 2, 2011 (Reply Br.).
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Claims 1–10, 12, and 17–192 stand rejected under 35 U.S.C. § 103(a)
as obvious over Wang et al, “A Data Access Method in Mobile Computing
Environment: Using Data Prefetch Technology in Parallel Control System
Architecture,” Proceedings of the Fifth International Conference on Machine
Learning and Cybernetics, Dalian (Aug. 13–16, 2006) 4425–4429 (“Wang”)
in view of Yin et al. “A Generalized Target-Driven Cache Replacement
Policy for Mobile Environments.” Proceedings of the 2003 Symposium on
Applications and the Internet (SAINT ’03) (Jan. 2003) (“Yin”), and Chang
(US 6,715,126 B1, Mar. 30, 2004) (“Chang”).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Wang in view of Yin, Chang, and Coverston (US 2008/0065583 A1, filed
Aug. 24, 2006) (“Coverston”).
Claims 13–16 stand rejected under 35 U.S.C. § 103(a) as obvious over
Wang in view of Yin, Chang, and Simon (US 2008/0147671A1, filed Dec.
18, 2006) (“Simon”).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
Wang in view of Yin, Chang, and Tsimelzon (US 6,834,306 B1, Dec. 21,
2004) (“Tsimelzon”).
STATEMENT OF THE CASE
Appellants’ invention addresses a user of a cell phone who wants to
access multimedia files such as music, videos, games, etc. on the cell phone.
Spec. ¶ 1. The cell phone must have the storage capacity to download and

2 The statement of this rejection in the Answer lists only claims 1–10 and 12
(Ans. 5); but other parts of the Answer identify claims 17–19 as also being
rejected on this basis. Ans. 10. Appellants agree that claims 17–19 have
been rejected on this basis. App. Br. 12. The Examiner corrected the
statement of this rejection on July 25, 2011.
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play a large media file. Spec. ¶ 4. The invention teaches compensating for
insufficient cell phone memory.
The method involves determining whether the file is locally stored on
the cell phone. If so, it may be accessed quickly. Spec. ¶ 16. If it is not
stored locally, but is instead remotely stored, the cell phone determines if it
has sufficient local storage for the remote file. If there is insufficient local
storage, files in the local storage are deleted to free up space. The file is
downloaded from the remote storage by prefetching a portion of the file
from the remote storage and the prefetched portion is opened while
concurrently downloading the remaining portion of the file from the remote
storage. Spec. ¶ 17.
Independent claim 1 is illustrative, with key disputed limitations
emphasized:
1. A method of retrieving a file, comprising:
determining whether the file is locally stored or remotely
stored;
deleting files in a local storage to provide space if the file is
determined to reside in a remote storage server and insufficient
space exists in the local storage for the file;
downloading the file from a remote storage server by
prefetching a portion of the file from the remote storage server;
and
opening the prefetched portion of the file while concurrently
downloading a remaining portion of the file from the remote
storage server.
ANALYSIS
Claims 1–10, 12, and 19
“prefetching a portion of the file from the remote storage server”
The Examiner finds that Section 3.2 of Wang, entitled “Data Prefetch
Technology,” teaches the prefetching limitation. Ans. 6. Appellants contend
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that Wang Section 3.2 only discloses prefetching “data items” and not a
“portion” of a file, does not provide examples of data items, and does not
disclose data segments, portions of data sets, data portions or any other
“portion” language. App. Br. 15, 19.
Relying upon The Microsoft Computer Dictionary Fifth Edition, the
Examiner concludes that a file is a set of data used by a program, a file
consists of a set of data items, a portion of a file consists of one or more data
items, and, therefore, one or more data items is equivalent to a “portion of a
file.” Ans. 14–15. Appellants argue that “[t]o the extent that the Examiner
interprets data items to be portions of a file, Appellants respectfully submit
that such an interpretation is inconsistent with the specification . . .” App.
Br. 20; Reply Br. 2. Appellants have not pointed to anything showing that
the Examiner’s cited dictionary definition contradicts their Specification.
See Advanced Fiber Tech. (AFT) Trust v. J&L Fiber Services, Inc., 674 F.3d
1365, 1374–75 (Fed. Cir. 2012) (“district court’s error lies in its reliance on
extrinsic evidence that contradicted the patent’s specification, including the
claims and written description”).
We conclude that the Examiner’s reliance on, and application of, The
Microsoft Computer Dictionary definition of “file” is reasonable, that the
Examiner’s interpretation of Wang in reliance on the dictionary definition is
reasonable, and thus, Wang teaches the prefetching limitation.

“opening the prefetched portion of the file while concurrently
downloading a remaining portion of the file from the remote storage server”
The Examiner relies on Chang for this limitation. Ans. 7, 16–17. We
agree with the Examiner that Chang column 3, lines 21–41 teaches
prefetched presentation data is viewed and listened to (i.e., opened) while
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the remaining presentation data is downloaded. We also agree with the
Examiner’s finding that Chang’s Block 504 teaches prefetching portions of a
file (“n contents”), loading them into a cache (Block 513), and executing
them while simultaneously downloading other portions of data contents.
Ans. 16–17.
Appellants do not persuasively respond to these findings. Instead,
Appellants argue that Chang does not multiplex presentation files into a
single streaming file. Reply Br. 4. This argument is not persuasive because
claim 1 does not recite multiplexing into a single streaming file. Instead, it
recites “opening” “while concurrently downloading” without reciting
anything more specific, such as multiplexing.

whether the Examiner failed to consider claim 1 as a whole and whether
one skilled in the art would have had a motivation to combine the references
Appellants contend that the disclosures of Wang, Yin, and Chang are
unrelated and disparate and there would not therefore have been any
motivation to combine them. App. Br. 24–25. In support of this contention,
Appellants argue that “[t]he Examiner acknowledges that Wang and Yin do
not disclose prefetching a portion of a file” (App. Br. 25), that none of the
art of record teaches either the “prefetching” or the “opening” limitations,
and, therefore, that “claim 1, taken as a whole, is not obvious over Wang in
view of Yin and Chang.” App. Br. 26. We disagree for the reasons stated
above.
Furthermore, the Examiner considered the claim as a whole and
provides detailed explanations for the conclusion that it would have been
obvious to combine the references. Ans. 17–18. Appellants’ Reply Brief
does not respond to the Examiner’s explanations and we are persuaded that
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the Examiner has provided a reasonable explanation with a rational basis for
combining the references.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of illustrative claim 1. Accordingly,
we will sustain the Examiner’s rejection of (1) claim 1; (2) claim 6 having
similar limitations; and (3) claims 2–5, 7–10, 12, and 19 not argued
separately with particularity.
Claims 17 and 18
The Examiner presents findings that support the conclusion that the
limitations of these claims are taught by Chang. Ans. 10. Appellants
contend that the rejection of these claims is incorrect “for the reasons stated
above for claim 1”) (App. Br. 27) and for other reasons. See App. Br. 27–
28. In response, the Examiner provides additional findings in support of
these rejections (Ans. 18–19) to which Appellants’ Reply Brief does not
respond. We are persuaded that the Examiner has provided a reasonable
explanation with a rational basis for the rejection of these claims.
The Remaining Rejections
Appellants contend that the rejections of claims 11, 13, 16, and 20
should be reversed because the various combinations of Yin, Chang,
Coverston, Simon, and Tsimelzon “suffer from the same deficiencies as
Wang with respect to claim 6.” App. Br. 28–30. Appellants also do not
argue the rejections of claims 14 and 15 separately with particularity.
Accordingly, we are not persuaded that the Examiner erred and we sustain
the rejections of these claims for the same reasons that we sustained the
rejections of claims 1 and 6.

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CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1–20.
DECISION
The Examiner’s decision rejecting claims 1–20 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv)(2010).

AFFIRMED

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