Ex Parte LO et al

Patent Trial and Appeal Board

Sep 17, 2018

14267231 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/267,231 05/01/2014
23995 7590 09/19/2018
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Chi-Wen LO
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.
TOP-389 1040
EXAMINER
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
firm@rabinberdo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHI-WEN LO
and
YI-YU SU
Appeal2017-008328
Application 14/267 ,231 1
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1--4 and 7-15, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 According to Appellants, the real party in interest is the Industrial
Technology Research Institute. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("Br.") filed August 2,
2016; Examiner's Answer ("Ans.") mailed September 23, 2016; Final Office
Action ("Final Act.") mailed March 3, 2016; and original Specification
("Spec.") filed May 1, 2014.
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STATEMENT OF THE CASE
Appellants' invention relates to a method and device operable to store
video and audio data at a peer of a video and audio data system having a
plurality of peers. Spec. Title; Abstract. Appellants' method and device
"determine[] whether the video and audio data received by [a] first peer is
stored in [the peer's] corresponding storage space with a dynamically
adjustable first video and audio storing probability," and "when the first peer
receives [a] service request of [a] second peer, set[] a second video and
audio storing probability" based on "a service interval, a video and audio
data bit-rate, and a storage space limitation." Spec. ,r 40; Abstract.
Claims 1 and 11 are independent. Representative claim 1 is
reproduced below:
1. A method operable to store video and audio data at a first
peer of a video and audio data system having a plurality of peers,
wherein each peer has a processor and a storage medium
corresponding to a storage space, the method, performed by the
processor, compnsmg:
before the first peer has received a service request of a
second peer of the plurality of peers, determining whether at least
one video and audio data received by the first peer is stored in
the storage medium, by using a first video and audio storing
probability that is dynamically adjustable, and extending a time
interval of the first peer for storing at least one received video
and audio data; and
when the first peer receives the service request of the
second peer, setting a second video and audio storing probability,
thereby the second peer obtaining at least one stored video and
audio data from the first peer;
wherein the second video and audio storing probability is
set based on a service interval, a video and audio data bit rate,
and a storage space limitation; and
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wherein the service interval represents a time length
between two time points, wherein one of the two time points is a
playing time point of latest data in a storage space corresponding
to the first peer, and the other time point is a playing time point
of the first peer storing the video and audio data in a specific
cycle requested by the second peer.
Br. 36-39 (Claims App'x).
Evidence Considered
Ellis US 2007/0157281 Al July 5, 2007
Hamano US 2009/0133078 Al May 21, 2009
Examiner's Rejections
(1) Claims 1--4 and 7-15 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Final Act. 6-8.
(2) Claims 1--4 and 7-15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ellis and Hamano. 3 Final Act. 8-19.
ANALYSIS
§ 101 Rejection of Claims 1-4 and 7-15
In rejecting claims 1--4 and 7-15 under 35 U.S.C. § 101, the Examiner
finds the claims are directed to an abstract idea because "[ t ]he claims recite
the steps of determining, setting data for storing probability based on the
step of determining" and "organizing information/content through
mathematical correlation or data recognizing and storage," analogous or
3 The Examiner refers to the Ellis reference as "E281." Final Act. 8.
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similar to the abstract ideas of manipulating information discussed in
SmartGene, Content Extraction, and Digitech. Ans. 18-19 (citing
SmartGene, Inc. v Advanced Biological Labs., SA, 852 F. Supp. 2d 42
(D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014); Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed.
Cir. 2014); Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014)); Final Act. 6-7.
Appellants argue claims 1--4 and 7-15 are not directed to the generic
abstract ideas asserted by the Examiner, but rather "to a specific
improvement in the way computers operate" and "to operations that enable,
among other advantages, a server to function more efficiently by, for
example, reducing a load on the server" providing video and audio data. Br.
11-12. Thus, Appellants argue their claims are similar to the claims of
Enfzsh. Br. 12 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016)).
To determine whether subject matter is patentable under§ 101, the
Supreme Court has set forth a two part test "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd.
v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. (citation
omitted). For computer-related technologies, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities" (which would be eligible subject
matter) or instead "on a process that qualifies as an 'abstract idea' for which
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computers are invoked merely as a tool" (which would be ineligible subject
matter). Enfzsh, 822 F.3d at 1335-36, 1338 (emphasis added). "If the
claims are not directed to an abstract idea [or other patent-ineligible
concept], the inquiry ends. If the claims are 'directed to' an abstract idea,
then the inquiry proceeds to the second step of the Alice framework."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016).
The second step in the Alice framework is to consider the elements of
the claims "individually and 'as an ordered combination"' to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78, 79 (2012)). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72-73).
Here, the Examiner has analogized the claims to Content Extraction,
SmartGene, and Digitech. Ans. 18-19; Final Act. 6-7. However, the
Examiner's reliance is misplaced because the claims in Content Extraction,
for example, "merely recite the use of this existing scanning and processing
technology to recognize and store data from specific data fields such as
amounts, addresses, and dates," which was held to be ineligible subject
matter because "humans have always performed these functions" and "'the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention."' Content Extraction, 776 F.3d
at 1347--48 (quoting Alice, 134 S. Ct. at 2358).
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The claims before us are different, and we agree with Appellants, "the
claims ... are not directed to an abstract idea"; rather, the claims provide a
solution to a technical problem of server overload in a peer system, thereby
improving data storage and data exchange between peers and server. Br. 12.
Thus, Appellants' claims are similar to the claims of Enfzsh. Br. 12.
In Enfzsh, the Federal Circuit explained that the term "'directed to'
[under step one of the Alice framework,] 'applies a stage-one filter to claims,
considered in light of the specification, based on whether 'their character as
a whole is directed to excluded subject matter."' Enfzsh, 822 F.3d at 1335
(internal citation omitted). The Federal Circuit further explained that
improvements in computer-related technology are not inherently abstract,
and thus, it is "relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea, even at the first step of the Alice analysis." Id. Specifically, the
Federal Circuit differentiated between claims that focus on an improvement
in computer capabilities and claims that focus on an abstract idea "for which
computers are invoked merely as a tool." Id. at 1336. In Enfzsh, the Federal
Circuit determined that the claimed self-referential database table was
directed to an improvement in the functioning of a computer and not "a
situation where general-purpose computer components are added post-hoc to
a fundamental economic practice or mathematical equation." Id. at 1339.
Thus, the court determined that the claims at issue were not directed to an
abstract idea and therefore the claims were patent eligible under 35 U.S.C.
§ 101. Id.
Here, the method and system of Appellants' independent claims 1 and
11 are directed to storing and exchanging video and audio data at a "first
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peer," and between the "first peer" and a "second peer" of a plurality of
peers with limited storage space, by controlling data storage and transfer
using a "first video and audio storing probability" and a "second video and
audio storing probability." See Br. 36-39 (Claims App'x). These
limitations of the independent claims describe a solution to a technological
problem of limiting a server's load (due to peers' data requests) by
increasing a data sharing rate between peers in the peer system. See Spec.
,r,r 4--5, 49--50, 53. Appellants' claimed solution to this technological
problem dynamically adjusts a first peer's video and audio storing
probability ( which determines the first peer's rate of downloading and
storing video and audio data) according to (i) the first peer's storage space
and (ii) a second peer's service request status for the first peer's data. See
Spec. ,r,r 27, 29, 39--41. Particularly, Appellants' method and device
"dynamically adjust a video and audio store probability PW in the waiting
phase [first video and audio storing probability]" to "extend a time interval
for storing the video and audio data [ at the first peer] ... for increasing the
chance of a demand peer [ second peer] requesting the video and audio data
in this time interval." Spec. ,r 29. Further, "[ w ]hen the [first] peer receives
the service request from any demand peer [ second peer] ... peer A [ first
peer] enters a service phase (i.e., receives a service request from other peer)"
and "sets a video storing probability PS [second video and audio storing
probability] of the service phase." See Spec. ,r 29. The second video and
audio storing probability (PS) is set based on a service interval, a video and
audio data bit rate, and a storage space limitation, and enables "the second
peer ... [to] obtain the PS portion of stored video and audio data from the
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first peer" in each cycle and "obtain the (I-PS) portion of remained video
and audio data from a server or other peers." See Spec. ,r,r 37, 39-41.
Thus, Appellants' claimed solution "extend[s] stored video and audio
data interval of a peer, to increase the sharing opportunities of the peer[,] and
after this peer receives a service request from a demand peer, the P2P [peer-
to-peer] sharing rate of ... video and audio data is increased." See Spec.
,r 27. Setting the second video and audio storing probability for the benefit
of the second peer "increase[ s] the P2P sharing rate of stored video and
audio data, thereby reducing the server's loading of the video and audio
sources" because the second peer may obtain a significant portion of
video/audio data from the first peer, and not from the server. See
Spec. ,r,r 47, 53. In this way, Appellants' invention may reduce the server's
loading to zero. See Spec. ,r 47 ("the server bears the transmission bit rate of
0kbps. This is the maximum P2P sharing of the second peer, so from the 7th
cycle the second peer may continuously obtain the video and audio data
from the first peer, and the server does not bear any transmission bit rate.").
Because Appellants' claims 1 and 11 are directed to a specific
solution to a technological problem, we find claims 1 and 11, and their
dependent claims 2--4, 7-10, and 12-15 are not directed to an abstract idea.
As the claims are not directed to an abstract idea under the first step of the
Alice analysis, we need not proceed to step two of the analysis. See Enfzsh,
at 1336, 1339.
For these reasons, we do not sustain the Examiner's rejection of
claims 1--4 and 7-15 as directed to non-statutory subject matter under
35 U.S.C. § 101.
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Application 14/267 ,231
§ 103 Rejections of Claims 1-4 and 7-15
With respect to independent claims 1 and 11, the Examiner finds the
combination of Ellis and Hamano teaches peer-to-peer systems including a
plurality of peers. Final Act. 9-12. The Examiner also finds Ellis teaches
the claimed "when the first peer receives the service request of the second
peer, setting a second video and audio storing probability, thereby the
second peer obtaining at least one stored video and audio data from the first
peer," the "second video and audio storing probability" being taught by
Ellis' "increasing recording probability, recording time, recording at second
device, etc." Final Act. 10-11 (citing Ellis ,r,r 170-172, 176-178, 193, 199,
202, 206-209, 222-226, Figs. 1, 7, 1 lb, 12n, and 13-18); Ans. 27.
The Examiner also relies on Hamano for teaching the claimed "setting
a second video and audio storing probability, thereby the second peer
obtaining at least one stored video and audio data from the first peer." Final
Act. 12; Ans. 27. Particularly, the Examiner finds Hamano discloses
"communication of user equipment devices in location remote from each
other and storing based on storing probability (popularity or unpopular
program)" when a "first device receives request/service access from another
device/second device, recorded program period/time/interval is extended/not
deleted for new content, thereby the second device retrieves or obtains a
copy of recorded program for playing back or storing at the second device."
Ans. 27 ( emphasis added) ( citing Hamano ,r,r 3 8, 42, 60-61, 64, Figs. 4---6,
15, 17, and 20); Final Act. 12 (citing Hamano ,r,r 82, 84--91, Figs. 20-21).
The Examiner further finds "E2 81 [Ellis] in view of Hamano further
discloses wherein the second video and audio storing probability is set based
on [i] a service interval (e.g., until program is viewed/accessed by users at
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first device and second device or until demand for recorded program less
than predetermined level)", (ii) a video and audio data bit rate, and (iii) a
storage space limitation, as required by claims 1 and 11. Final Act. 12-13
(citing Ellis ,r,r 123, 170-172, 176-178, 188, 193, 199,202, 206-209, 222-
226; Hamano ,r,r 3 8, 42, 82, 84--91 ); Ans. 23-24, 28. We do not agree.
We agree with Appellants that Ellis and Hamano, alone or in
combination, fail to teach or suggest "when the first peer receives the service
request of the second peer, setting a second video and audio storing
probability, thereby the second peer obtaining at least one stored video and
audio data from the first peer," "the second video and audio storing
probability [being] set based on a service interval, a video and audio data bit
rate, and a storage space limitation" as recited in claim 1, and similarly in
claim 11. Br. 16-17, 20-29. Rather, Hamano merely discloses a pay-per-
view (PPV) system that rates popularity of programs and deletes unpopular
programs. Br. 22-23; see Hamano ,r,r 54--55, 74, 81, 88, Fig. 6. Hamano's
popularity score does not teach a storing probability as claimed, and
particularly does not teach a second video and audio storing probability set
when a first peer receives a service request from a second peer, the
probability set to enable the second peer to obtain a stored video or audio
from the first peer, as claimed. Br. 20, 22, 25.
Additionally, Hamano' s "popularity of programming is not set 'based
on a service interval, a video and audio data bit rate, and a storage space
limitation' as recited in claim 1." Br. 27-28. Rather, Hamano's popularity
score is set by users or media providers and TV guides, based on the number
of views of a particular pay program. Br. 23, 28; see Hamano ,r,r 4--5, 31,
54--56, 74, 81, 88. Thus, Hamano does not disclose a "second video and
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audio storing probability [being] set based on a service interval, a video and
audio data bit rate, and a storage space limitation" as claimed. Br. 20, 28.
Hamano is also "silent concerning any 'service interval' with respect to two
different pieces of user equipment," and does not set a storing probability
based on a "service interval represent[ing] a time length between two time
points" that are (1) "a playing time point of latest data in a storage space
corresponding to the first peer" and (2) "a playing time point of the first peer
storing the video and audio data in a specific cycle requested by the second
peer," as claimed. Br. 26.
Ellis does not make up for the above-noted deficiencies of Hamano.
Ellis merely discloses a group of user equipment devices between which
content may be stored, shared, and deleted therefrom. See Ellis ,r,r 170-172,
176-178, 187, Abstract. In Ellis, "users associated with the user equipment
devices in the group may designate the amount of storage on the user
equipment devices in the group to be set aside for storing group recordings."
See Ellis ,r 17 6. Thus, Ellis does not teach setting a storing probability as
claimed, and particularly setting a second video and audio storing
probability when a first peer receives a service request from a second peer,
as claimed. Br. 20, 26-27. Ellis is also silent concerning any "service
interval" setting such storing probability, as claimed. Br. 26-27.
In the rejection, the Examiner has also relied on "U.S
2006/0140584---referred to as E584" and "U.S 2005/0028208-referred to
as E208" which "are directly or indirectly incorporated by references[ sic] in
their entireties in Hamano." Final Act. 8-9. We have reviewed the portions
of the references cited by the Examiner (see Final Act. 12-13; Ans. 24--26)
from these US patent application publications, and do not find they disclose
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a second video and audio storing probability as claimed. Rather, US
2006/01405 84 discloses setting recording priorities for programs that are
interesting to the user (see ,r 34, Figs. 6, 10, 18); and US 2005/0028208
discloses an interactive television program guide system with remote access
allowing remotely performed functions such as sending and playing or
displaying messages with the interactive television program guide (see
,r,r 14, 16, 104, 149,216, Figs. 17-21).
As the Examiner has not shown where the references disclose the
claimed "setting a second video and audio storing probability," we do not
sustain the Examiner's rejection of independent claims 1 and 11, and claims
2--4, 7-10, and 12-15 dependent therefrom. Br. 30. Because the above-
discussed issue is dispositive as to the obviousness rejections of all claims
on appeal, we do not reach additional issues raised by Appellants' arguments
as to the rejections of dependent claims 3, 8, 9, and 15.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1--4 and 7-15 under 35 U.S.C. § 101
and under 35 U.S.C. § 103.
DECISION
As such, we REVERSE the Examiner's final rejection of claims 1--4
and 7-15 under 35 U.S.C. § 101. We also REVERSE the Examiner's final
rejection of claims 1--4 and 7-15 under 35 U.S.C. § 103.
REVERSED
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