Ex Parte Malaby et al

Patent Trial and Appeal Board

Oct 27, 2014

12469294 (P.T.A.B. Oct. 27, 2014)

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.
12/469,294 05/20/2009 Stephen Malaby BPCUR0012SM.D1
(C-118a)
1633
27939 7590 10/27/2014
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
VOSTAL, ONDREJ C
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
10/27/2014 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte STEPHEN MALABY and JAMES BARKLEY
________________

Appeal 2012-006755
Application 12/469,294
Technology Center 2400
________________

Before: MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 62‒78. App. Br. 2‒3. Claims 1‒61 have been cancelled.
App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “delivering content to a user.”
Spec. 4.1

1 Appellants’ Specification does not provide line or paragraph numbering
and, accordingly, reference will only be made to the page number.
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Application 12/469,294

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Independent claim 62, the only independent claim on appeal, is
reproduced below:
62. A method for recovering from fault in a content serving
array comprising at least a first node, a second node, and a third
node, the method comprising:
partitioning content into an ordered list of parts
comprising at least a first part and a second part;
allocating the first part to the first node;
allocating the second part to the second node;
sending the content successively and chronologically in-
order as an ordered stream of parts corresponding to the ordered
list by:
indicating to the first node that it should send the first
part to a client device;
failing to receive by the second node an indication that
the first node has sent the first part to the client device;
indicating to the third node that it should send the first
part to the client device;
sending by the third node the first part to the client
device; and
sending by the second node the second part to the client
device.

REFERENCES RELIED ON BY THE EXAMINER

Varma US 6,334,141 B1 Dec. 25, 2001
Lude US 2002/0184642 A1 Dec. 5, 2002
Shillo US 2003/0110263 A1 June 12, 2003
Walter US 2003/00115369 A1 June 19, 2003
Chen US 2006/0080167 A1 Apr. 13, 2006
Johnson US 7,412,533 B1 Aug. 12, 2008
De Spiegeleer US 7,689,764 B1 Mar. 30, 2010

Appeal 2012-006755
Application 12/469,294

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THE REJECTIONS ON APPEAL
Claims 62‒69, 72, 73, and 75 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over De Spiegeleer and Johnson. Ans. 5.
Claim 70 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over De Spiegeleer, Johnson, and Varma. Ans. 17.
Claims 71 and 74 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Spiegeleer, Johnson, and Shillo. Ans. 18.
Claim 76 is rejected under 35 U.S.C. §103(a) as being unpatentable
over De Spiegeleer, Johnson, and Chen. Ans. 20.
Claim 77 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over De Spiegeleer, Johnson, and Walter. Ans. 21.
Claim 78 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over De Spiegeleer, Johnson, and Lude. Ans. 22‒23.

ANALYSIS
The rejection of claims 62‒69, 72, 73, and 75
as being unpatentable over De Spiegeleer and Johnson

Claim 62 is the only independent claim on appeal, with claims 63‒69,
72, 73, and 75 each depending directly from claim 62. The Examiner
primarily relies on the teachings of De Spiegeleer for disclosing the
limitations of claim 62 but acknowledges that “De Spiegeleer do[es] not
teach sending [a] stream of parts, failing to receive an indication, indicating
to send and sending the first part features.” Ans. 5‒7. For these missing
limitations, the Examiner relies on Johnson. Ans. 7‒8. The Examiner finds
the motivation to combine the references as being “to store files and
segments efficiently.” Ans. 9. In other words, the Examiner’s stated reason
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Application 12/469,294

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to combine the teachings of De Spiegeleer and Johnson is that because “‘a
greater efficiency of storage can be effected in the archival/backup system’
(De Spiegeleer; col 13 lines 24‒27) which includes ‘desiring to participate in
a particular presentation’ (Johnson; col 12 lines 15‒17).” Ans. 9.
Appellants challenge the Examiner’s findings regarding certain
limitations directed to “partitioning content into an ordered list of parts,” and
also “sending the content successively and chronologically in-order as an
ordered stream of parts corresponding to the ordered list.” App. Br. 10‒16;
see also Reply Br. 7. For example, Appellants contest the Examiner’s
finding that De Spiegeleer discloses partitioning “into an ordered list of
parts.” Ans. 6; App. Br. 10‒11, 13. In this regard, while the portion of De
Spiegeleer relied on by the Examiner (i.e., De Spiegeleer 3:15‒23) may be
problematic, the portion of Johnson (i.e., Johnson 2:45‒60, 3:17‒29, and
3:45‒55), also relied on by the Examiner for disclosing this limitation (Ans.
7), makes this teaching much more directly and expressly. To be clear,
Johnson teaches a network transmission “so that the clients at the client
nodes have presented to them simultaneously, synchronously and in real
time, corresponding (in content) segments of the presentation.” Johnson
3:45‒50.2

2 Appellants also contend that Johnson “requires that content parts not be
sent successively and chronologically in-order.” Reply Br. 7. We disagree
that Johnson requires that parts not be sent successively and chronologically
in view of the above contrary disclosure of Johnson. Appellants’ contention
seems to be based on Johnson’s disclosure (as paraphrased by Appellants)
that a leader “can choose to change scripts in the middle of a presentation
based on user feedback.” Reply Br. 7 referencing Johnson 3:17–29.
However, the referenced portion of Johnson teaches the change of scripts as
an option (“a presentation leader has the ability”), not as a requirement.

Appeal 2012-006755
Application 12/469,294

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On the other hand, De Spiegeleer discloses quite clearly a
methodology that “allows large files to be backed up more efficiently.” De
Spiegeleer 4:36‒37; see also De Spiegeleer 6:52‒56 and Ans. 9. According
to De Spiegeleer, such efficiency is accomplished because “when a backup
operation is performed in segmented fashion, all of the segments at the
beginning of the file which are unchanged need not be backup [sic] up again.
This process is illustrated in FIG. 3.” De Spiegeleer 4:41‒44; see also De
Spiegeleer 4:56‒59 and App. Br. 13. Hence, it is not disputed that De
Spiegeleer achieves efficiency by not backing up unchanged files.3
In short, we are not persuaded that the individual limitations argued
by Appellants as lacking in either De Spiegeleer or Johnson are, in fact,
lacking in one or both such references. However, Appellants also direct our
attention to the Examiner’s reason to combine De Spiegeleer and Johnson,
contending that there is insufficient motivation to do so. App. Br. 12, 14,
15. For example, Appellants argue that sending all of Johnson’s data
“simultaneously, synchronously and in real time” (Johnson 3:48‒49)
“renders De Spiegeleer’s increased efficiency by selectively transmitting
only portions of the content unsatisfactory for its intended purpose.” App.
Br. 14; see also App. Br. 12, 15. We find merit in this argument. Looking
closely at the Examiner’s stated reason to combine, the Examiner simply

Accordingly, Appellants’ contentions based on this premise (Reply Br. 7–8)
are not persuasive.
3 Appellants also argue that, with respect to De Spiegeleer, “[n]ot sending
file components is [a] deliberate omission of portions of the content, which
results in non-sequential transmission of data elements” (App. Br. 11), but
the Examiner relies on Johnson, not De Spiegeleer, for teaching
“successively and chronologically in-order.” Ans. 7.
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noted De Spiegeleer’s teaching of a more efficient manner of backing up
data and Johnson’s teaching of making a presentation. The Examiner seems
to be of the opinion that simply because these two teachings exist, it would
be obvious to combine them. The Supreme Court, in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), provided instructions that:
Although common sense directs one to look with care at a
patent application that claims as innovation the combination of
two known devices according to their established functions, it
can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is so
because inventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discoveries
almost of necessity will be combinations of what, in some
sense, is already known.
KSR, 550 U.S. at 418‒19 (emphasis added).
Further, we are instructed that in rejecting claims as being obvious
over the prior art,
this analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’).
KSR, 550 U.S. at 418 (emphasis added).
The Examiner appears to have only expressed what the teachings of
each of the references disclose (De Spiegeleer for efficiency; Johnson for
making a presentation). What is lacking is an articulated reason that is
supported by a rational underpinning as to why one skilled in the art would
have been prompted to combine De Spiegeleer and Johnson in the manner
claimed. For this reason, we do not sustain the Examiner’s rejection of
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claim 62, or the rejection of dependent claims 63‒69, 72, 73, and 75, as
being obvious over De Spiegeleer and Johnson.
Regarding the rejection of claims 70, 71, 74, and 76‒78 (each
depending directly from claim 62), the Examiner combines additional art
(i.e., the teachings of Varma, Shillo, Chen, Walter, and Lude) with De
Spiegeleer and Johnson. Ans. 17‒24. The inclusion of these additional
teachings does not cure the defect of the primary combination of De
Spiegeleer and Johnson discussed supra. Accordingly, we do not sustain the
rejection of claims 70, 71, 74, and 76‒78. See App. Br. 16.

DECISION
The Examiner’s rejections of claims 62‒78 are reversed.

REVERSED

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