Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardMar 29, 201612983672 (P.T.A.B. Mar. 29, 2016) Copy Citation 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). 2 Appeal2014-001717 Application 12/983,672 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.). 3 Appeal2014-001717 Application 12/983,672 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 4 Appeal2014-001717 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, 5 Appeal2014-001717 Application 12/983,672 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 6 Appeal2014-001717 Application 12/983,672 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. 7 Appeal2014-001717 Application 12/983,672 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 8 Appeal2014-001717 Application 12/983,672 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). 9 Appeal2014-001717 Application 12/983,672 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 10 Appeal2014-001717 Application 12/983,672 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 11 Appeal2014-001717 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 12 Appeal2014-001717 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. 13 Appeal2014-001717 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 14 Appeal2014-001717 Application 12/983,672 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. 15 Copy with citationCopy as parenthetical citation