Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 29, 2016

12983672 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/983,672 01/03/2011
25537 7590 03/31/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Jay J. Lee
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.
20100722 1837
EXAMINER
DO,KHANGD
ART UNIT PAPER NUMBER
2496
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JAY J. LEE, PATRICIA RUEY-JANE CHANG,
DAVID CHIANG, DEEP AK KAKADIA,
and VIKRAM K. RAW AT
Appeal2014-001717
Application 12/983,672
Technology Center 2400
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Verizon
Communications Inc. and its subsidiary companies, Verizon Business
global, LLC (formerly MCI, LLC) and Cellco Partnership (doing business as
Verizon Wireless, which includes Vodafone Group Plc) (App. Br. 3).
Appeal2014-001717
Application 12/983,672
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to deploying services into a distributed
network architecture (Abstract). Claim 1 is illustrative of the invention and
reads as follows.
1. A method performed by a server device, the
method comprising:
receiving, by the server device, a request to activate an
application session, the request being received from a mobile
communication device on behalf of a particular application installed
on the mobile communication device;
determining, by a processor associated with the server device,
one or more application requirements associated with the particular
application;
determining, by the processor, conditions associated with one
or more application servers;
selecting, by the processor, a particular one of the one or more
application servers based on the determined one or more application
requirements and based on the determined conditions; and
setting up, by the processor, the application session between the
mobile communication device and the selected particular one of the
one or more application servers.
The Examiner's Rejections
Claims 1-3, 6, 7, 9, 11-13, and 15 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Cobb (US 2011/0252082 Al; Oct. 13, 2011)
(Final Act. 3; Ans. 3).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Cobb and Yoshiuchi (US 2005/0267895 Al; Dec. 1, 2005) (Final Act. 8;
Ans. 8).
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Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Cobb and Doddavula (US 2012/0089726 Al; Apr. 12, 2012) (Final Act. 9;
Ans. 9).
Claims 10, 16-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cobb and Sekine (US 2012/0060157 Al; Mar. 8, 2012)
(Final Act. 10; Ans. 10).
Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cobb, Lowry (US 6,579,324 Bl; June 17, 2003), and
Doddavula (Final Act. 15; Ans. 15).
ANALYSIS
Issue 1 - Did the Examiner err in finding Cobb discloses
receiving "a request to activate an application session, the
request being received from a mobile communication device on
behalf of a particular application installed on the mobile
communication device. " as recited in independent claim 1?
Claim 1 recites, in part "receiving, by [a] server device, a request to
activate an application session, the request being received from a mobile
communication device on behalf of a particular application installed on the
mobile communication device." The Examiner finds Cobb discloses a
handheld computer (mobile communication device) that requests streaming
media content from a server to a media player (application) installed on the
handheld computer (Ans. 18). The Examiner further finds receipt, by
Cobbs' server, of the request to start the streaming media session teaches
"receiving by the server device, a request to activate an application session,"
(id.).
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Appellants argue "a request to receive streaming content does not
correspond to a request to activate a streaming application. For example, in
order for a streaming application, installed on a handheld computer, to
request streaming content, as disclosed by COBB, the streaming application
has to have already been activated." (App. Br. 14).
We are not persuaded by Appellants' arguments. As stated by the
Examiner, claim 1 requires activation of an application session rather than
activation of an application (Ans. 21 ). Thus, Appellants' argument directed
to activating an application rather than activating an application session is
not commensurate with the scope of the claims.
Appellants further argue the "server of COBB is not running the
media player and is not activating or running a media player session, as
would be required by claim 1 based on the Examiner's interpretation of
COBB." (Reply Br. 5)(Emphasis omitted). We interpret this argument to be
directed to activating an application, which is met by Cobb's disclosure of
streaming content by the media server to the media player, which constitutes
a media player session that is activated (see Ans. 18). Therefore, we are not
persuaded of Examiner error for the reasons provided supra.
Issue 2 - Did the Examiner err in finding Cobb discloses
determining "one or more application requirements associated
with a particular application, " as recited in independent claim
l?
Claim 1 recites "determining, by a processor associated with the
server device, one or more application requirements associated with the
particular application." The Examiner finds this limitation is disclosed in
Cobb, wherein Cobb's server determines the software capabilities
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Application 12/983,672
(application requirements) to determine which media format the application
(media player) can support (Ans. 19).
Appellants argue "a software capability does not correspond to an
application requirement. ... Just because a software has a particular
capability does not imply that the capability must be satisfied in order for the
software to operate." (Reply Br. 5).
We are not persuaded by Appellants' argument. As explained by the
Examiner, software capabilities of an application indicate the ability of the
application to support certain types and formats of content (see Ans. 21 ). In
order to satisfy the requirements of a particular content format or type, the
appropriate software capability would be required.
Issue 3 - Did the Examiner err in finding Cobb discloses
determining "conditions associated with one or more
applications servers, " as recited in independent claim 1?
Claim 1 recites "determining, by the processor, conditions associated
with one or more application servers." The Examiner finds Cobb discloses a
point of presence server (POP) that determines if requested content is
available (Ans. 20). Thus, the Examiner finds Cobb's POP teaches the
claimed application server, and the condition associated with the application
server is the availability of the requested content (id.). Appellants argue
Cobb cannot disclose or suggest conditions associated with one or more
application servers because Cobb's POP merely stores content and does not
run applications (Reply Br. 6).
We are not persuaded by Appellants' argument because Appellants'
argument is not commensurate with the scope of the claims. Claim 1 neither
recites nor requires an application server to run an application. Further,
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Appellants' statement that Cobb's POP does not run applications is attorney
argument without supporting evidence. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (attorney argument is not the kind of factual evidence
required to rebut a prima facie case of obviousness); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence"). Appellants provide no evidence supporting their
statement that Cobb's POP does not run applications.
Additionally, in support of the Examiner's finding regarding server
conditions, Appellants' claim 7 indicates that a location associated with an
application server is such a condition. And as discussed infra regarding
claim 7, this is disclosed in paragraph 26 of Cobb.
Issue 4 - Did the Examiner err in finding Cobb discloses
accessing an application database that "stores information
about application requirements associated with a particular
application," as recited in dependent claim 2?
The Examiner, relying on paragraph 53 of Cobb, finds Cobb's
database that stores details regarding hardware and software capabilities
teaches "[an] application database [that] stores information about application
requirements associated with particular applications," as recited in claim 2
(see Ans. 22). Appellants argue Cobb's database "associates software
capabilities with particular user devices, and not with [a] particular software
application." (Reply Br. ?)(Emphasis omitted).
We are not persuaded by Appellants' argument. Figure 6 of Cobb, to
which paragraph 53 refers, shows exemplary information that may be stored
in the database. As depicted in Figure 6, the information stored in the
database may include media codecs, media delivery protocols, and media
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orchestration schemes. Thus, contrary to Appellants' argument, these types
of information stored in the database are associated with a particular
software application (e.g., media player).
Issue 5 - Did the Examiner err in finding Cobb discloses
"receiving information about the one or more application
requirements from the mobile communication device, " as
recited in dependent claim 3?
The Examiner finds receiving, from an end user's computer, cookies
containing information about software capabilities as described in Cobb
discloses "receiving information about the one or more application
requirements from the mobile communication device," as recited in
dependent claim 3 (Ans. 22). Appellants argue a cookie stores only a device
identifier, which is used to retrieve information from a device capabilities
database, and thus software capabilities information is not retrieved from the
device itself (Reply Br. 7-8).
We are not persuaded by this argument. As found by the Examiner,
paragraph 70 of Cobb discloses that cookies are stored on the end user's
device (Ans. 22). Further, contrary to Appellants' argument that a cookie
stores only a device identifier (Reply Br. 7), and in support of the
Examiner's finding that cookies provide information about application
requirements (Ans. 22), paragraph 57 of Cobb discloses that cookies may
provide an indication of user preference for media formats, bit rates,
playback software, etc.
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Issue 6 - Did the Examiner err in finding Cobb discloses "the
one or more applications requirements include ... an
application type associated with the particular application, " as
recited in dependent claim 6?
Claim 6 recites "the one or more application requirements include ...
an application type associated with the particular application." The
Examiner finds this limitation is disclosed in Cobb, wherein Cobb's server
determines preferred versions of content based on software capabilities
(application requirements) for streaming content supported by the type of
media player (application type) (Ans. 23). Appellants argue Cobb does not
disclose the disputed limitation because "COBB does not disclose or suggest
different media player types, or that different media player types support
different media formats." (Reply Br. 8-9).
We are not persuaded of Examiner error. Appellants' argument is not
commensurate with the scope of the claim. Claim 6 does not require
different media player types support different media formats. Rather, claim
6 recites "an application type associated with the particular application."
Further, as found by the Examiner, Cobb discloses an MOV media format
(application type) for a QuickTime media player (particular application) (see
Ans. 23; Cobb, if 59). Accordingly, we sustain the rejection of claim 6.
Issue 7 - Did the Examiner err in finding Cobb discloses "the
conditions associated with the one or more application servers
include ... a server location associated with the particular one
of the one or more application servers, " as recited in dependent
claim 7?
Claim 7 recites "the conditions associated with the one or more
application servers include ... a server location associated with the
particular one of the one or more application servers." The Examiner finds
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this limitation is disclosed in Cobb wherein the location of a point of
presence (POP) server is determined in order to retrieve content (see Ans.
24).
Appellants argue "the Point of Presence (POP) device of COBB does
not correspond to an application server, because the POP device does not
perform any processing on behalf of applications." (Reply Br. 9-
1 O)(Emphasis omitted). We do find this argument persuasive. Appellants'
argument is not commensurate with the scope of the claims. Claim 7 neither
recites nor requires the one or more application servers to run applications.
Further, as discussed supra, Appellants' statement that Cobb's POP does not
run applications is attorney argument without supporting evidence.
Appellants additionally argue "a POP device location is not used to
select the content ... [r]ather, a POP location is selected based on storing a
particular version of the content." (Reply Br. IO)(Emphasis omitted).
Appellants' argument is not commensurate with the scope of the claim.
Claim 7 neither recites nor requires selecting content based on the location
of an application server. Accordingly, Appellants' arguments do not
persuade us the Examiner erred in finding Cobb's determining the location
of a POP in order to retrieve content discloses a condition associated with an
application server includes a server location associated with the application
server (Ans. 24).
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Issue 8 - Did the Examiner err in finding the combination of
Cobb and Sekine teaches or suggests a "mobile ... device
comprising ... an application manager, " as recited in
independent claim 17?
Claim 17 recites a "mobile ... device comprising ... an application
manager." The Examiner finds this limitation is disclosed in Cobb, wherein
Cobb's handheld computer (mobile device) comprises a component
(application manager) that manages a media player (application) (see Ans.
25-26). Appellants argue Cobb's component "cannot reasonably be
construed as corresponding to an application manager, because such a
component would not be configured to manage other application installed on
the mobile communication device." (Reply Br. 1 O)(Emphasis omitted).
Appellants' argument, in the form of a conclusory statement sans
supporting evidence, is not commensurate with the scope of the claim.
Claim 17 neither recites nor requires the application manager to manage
other applications installed on the mobile communication device. Thus, we
are not persuaded by Appellants' argument.
Issue 9 - Did the Examiner err in finding the combination of
Cobb and Sekine teaches or suggests "an application manager
to ... tailor the session activation request based on the
received information, " as recited in independent claim 17?
Appellants argue, because Cobb does not disclose or suggest network
bandwidth as the condition associated with an application server, the
Examiner erred in finding the combination of Cobb and Sekine teaches
"request information about conditions associated with particular ones of a
plurality of application servers" and "tailor the session activation request
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based on the received information," as recited in independent claim 17 (App.
Br. 27).
Appellants' argument is not commensurate with the scope of the
claim. Claim 1 7 neither recites nor requires the condition associated with an
application server to be network bandwidth (see Ans. 26-27). Additionally,
Appellants attack Cobb for a teaching the Examiner found in Sekine (App.
Br. 27; Ans. 26-27; Final. Act. 12-13). Accordingly, Appellants' argument
is not persuasive of Examiner error.
Issue 10- Did the Examiner err in combining Cobb and
Sekine?
Appellants argue the Examiner's reason for combining Cobb and
Sekine is insufficient to establish a prima facie case of obviousness because
the Examiner merely copied text from Sekine (App. Br. 27-28). We
disagree.
The Examiner provides sufficient articulated reasoning \~\rith a rational
underpinning to support the legal conclusion of obviousness. See KSR Int 'l
Co. v. Teleflex, Inc., 550 U.S. 418 (2007). Specifically, the Examiner finds
the skilled artisan would have found it obvious to modify the method of
Cobb with the teachings of Sekine "because it offers the advantage of
reducing the burden and potential for errors in maintaining client programs
to be compatible with services provided by corresponding server programs"
(Final Act. 13 (citing Sekine i-f 8) ). The motivation proffered by the
Examiner for this combination is to reduce the potential for error when
requesting, from a server, a resource not found in the server (Ans. 27).
Appellants' statement that copying text from a cited reference is not
sufficient for establishing a prima facie case of obviousness does not reveal
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Application 12/983,672
error in the Examiner's reasoning. Accordingly, we are not persuaded by
Appellants' argument that the proposed combination of Cobb and Sekine is
improper.
Issue 11 - Did the Examiner err in finding the combination of
Cobb, Lowry, and Doddavula teaches or suggests "comparing
one or more of the one or more applications requirements to a
corresponding one or more of the conditions associated with
the particular one or more application servers to determine one
or more difference values," as recited in dependent claim 8?
Claim 8 recites "selecting a particular one of the one or more
application servers comprises ... comparing one or more of the one or more
applications requirements to a corresponding one or more of the conditions
associated with the particular one or more application servers to determine
one or more difference values."
The Examiner finds this limitation is taught by the combination of
Cobb, Lowry, and Doddavula, wherein: (1) Cobb teaches determining a
preferred version of content based on software capabilities (application
requirements) and ranking the available versions of the content; (2) Lowry
teaches comparing two objects to determine a difference value and
calculating a weighted sum; and (3) Doddavula teaches selecting a suitable
server based on the order of suitability for servers (Ans. 29).
Appellants argue the Examiner erred in finding the combination of
Cobb, Lowry, and Doddavula teaches the disputed limitation because
"LOWRY does not disclose or suggest comparing application requirements
with conditions associated with application servers" (App. Br. 31 ).
Appellants attack Lowry where the Examiner relied on the combination of
Cobb and Lowry. Specifically, the Examiner relied on Cobb for its teaching
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Application 12/983,672
of comparing application requirements with conditions associated with
application servers, and relied on Lowry for its teaching of a mechanism for
comparing (Ans. 29).
Appellants additionally argue "[t]he Examiner has not explained how
[the Examiner's reliance on Lowery] is in any way relevant to selecting a
particular server from a set of servers." (Reply Br. 12). Appellants attack
Lowry where the Examiner relied on Doddavula. Specifically, the Examiner
relied on Doddavula for its teaching of selecting the most suitable server
based on the suitability of servers (id.). Accordingly, we are not persuaded
by Appellants' argument.
Issue 12 - Did the Examiner err in combining Cobb, Lowry,
and Doddavula?2
Appellants contend the Examiner's combination of Cobb, Lowry, and
Doddavula to reject claim 8 is insufficient to establish a prima facie case of
obviousness because Lov,rry is nonanalogous art (ii .. pp. Br. 31-32).
Specifically, Appellants argue Lowry is directed to a method for indicating a
selected region on a computer display and does not disclose the features of
claim 8 (id.).
Appellants have not persuasively argued that Lowry is nonanalogous
art. Our reviewing court has set forth a two-prong test for determining
whether a prior art reference is analogous: (1) whether the reference is from
the same field of endeavor as the claimed invention, and (2) if the reference
is not within the same field of endeavor, whether the reference is reasonably
2 Separate patentability is not argued for claims 4, 5, 9-16, and 18-20 (App.
Br. 15-17, 23-25, 29, 33). Except for our ultimate decision, these claims are
not discussed further herein.
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Application 12/983,672
pertinent to the particular problem with which the inventor is involved. Jn re
Klein, 647 F.3d 1343 (Fed. Cir. 2011). In the case before us, we construe
Appellants' argument that Lowry is directed to a method for indicating a
selected region on a computer display as an attempt to indicate that Lowry is
not from the same field of endeavor. Applicants however, have not
established that Lowry is not reasonably pertinent to the problem with which
the inventor was concerned. Furthermore, the Examiner finds Lowry is
directed to generating a weighted sum and thus is reasonably pertinent to the
problem with which the inventor was concerned (see Ans. 30).
DECISION3
We affirm the decision of the Examiner to reject claims 1-3, 6, 7, 9,
11-13, and 15 under 35 U.S.C. § 102(e).
3 We have decided the appeal before us. However, should there be further
prosecution of claim 17, \Y..fe leave it to the Examiner to consider a potential
enablement problem as a "single means" claim. Claim 17 is directed to all-
encompassing functionally defined as single element apparatus claim in
which a means-plus-function recitation does not appear in combination with
another recited element of means. Such claims (also referred to as "single
means" claims) encompass any and all (present and future) technologies for
performing the claimed functions no matter what the structure of the media
or technologies. Such claims are subject to an undue breadth rejection under
35 U.S.C. § 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715 (Fed.
Cir. 1983) (A single means claim which covered every conceivable means
for achieving the stated purpose was held nonenabling for the scope of the
claim because the specification disclosed at most only those means known to
the inventor.). Although claim 17 recites "an application manager," this
term may be interpreted as a nonce word substituting for the term "means."
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en
bane) ("we should abandon characterizing as 'strong' the presumption that a
limitation lacking the word 'means' is not subject to § 112, para. 6."). See id.
at 1350 ("'[m]odule' is a well-known nonce word that can operate as a
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We atlirm the decision of the Examiner to reject claims 4, 5, 8, 10, 14,
and 16-20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R § 1.136(a)(l )(iv).
AFFIRMED
substitute for 'means' in the context of§ 112, para. 6"). Although the Board
is authorized to reject claims under 3 7 C. F. R. § 41. 5 0 (b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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