Ex Parte Mensah et al

Patent Trial and Appeal Board

Jun 29, 2015

10493588 (P.T.A.B. Jun. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TREVOR MENSAH and OLIVIER PHILLIPPE
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Appeal 2012-011628
Application No. 10/493,5881
Technology Center 2100
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Before MARC S. HOFF, BRADLEY W. BAUMEISTER, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 174–202.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention concerns an asset manager and a method and
system for providing digital assets. An asset manager of a set top box
receives compressed versions of asset files. A request is received from an
application for an asset. The asset manager determines whether a
decompressed version of the requested asset file is stored in the cache on the

1 The real party in interest is Accenture Global Services Limited.
2 Claims 1–173 have been cancelled.
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set top box. If the decompressed version is in the cache, a pointer to it is
returned by the asset manager. If necessary, the compressed version of the
asset file is then decompressed, stored in the cache, and made available to
the application (Spec. 3). The asset manager also determines whether the
decompressed version is to be deleted from the cache based on the priority
order set for it by a user application (Spec. 22–23).
Claim 174 is exemplary of the claims on appeal:
174. A computer-implemented method comprising:
receiving, by an asset manager of a set top box,
compressed versions of multiple asset files;
after receiving the compressed versions of the asset files,
receiving a request for an asset file from a user application
executing on the set top box, wherein the user application
comprises device-independent code and wherein the user
application specifies a priority order for the asset file to be
deleted from a cache on the set top box;
determining, by the asset manager, that a decompressed
version of the asset file requested by the user application
executing on the set top box is not currently stored in the cache
on the set top box, wherein the asset file is device-specific to
the set top box;
decompressing, by the asset manager, the compressed
version of the asset file without decompressing compressed
versions of one or more other received asset files;
storing, by the asset manager, the decompressed version
of the asset file in the cache on the set top box;
returning, by the asset manager, a pointer to the
decompressed version of the asset file stored in the cache;
determining, by the asset manager, that the decompressed
version of the asset file is to be deleted from the cache on the
set top box based on the priority order specified for the asset
file by the user application; and
deleting, by the asset manager, the decompressed version
of the asset file from the cache.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
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Chambers IV US 5,481,701 Jan. 2, 1996
Gelissen US 5,854,927 Dec. 29, 1998
Gordon US 5,920,700 July 6, 1999
Oki US 5,982,391 Nov. 9, 1999
Brotz US 6,374,404 B1 Apr. 16, 2002
Comair US 6,563,503 B1 May 13, 2003
Smith US 2003/0167355A1 Sept. 4, 2003

Claims 174–179, 182–187, and 190–1963 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gelissen, Brotz, Chambers,
and Smith.
Claims 198, 200, and 202 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gelissen, Brotz, Chambers, Smith, and Comair.
Claims 180 and 188 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gelissen, Brotz, Chambers, Smith, and Oki.
Claims 181 and 189 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gelissen, Brotz, Chambers, Smith, and Gordon.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Mar. 27, 2012), the Reply Brief (“Reply Br.,” filed Aug. 7,
2012), and the Examiner’s Answer (“Ans.,” mailed June 8, 2012) for their
respective details.
CONTENTIONS AND ISSUES
With respect to independent claims 174, 182, and 190, Appellants
argue that Gelissen does not disclose compression of assets (App. Br. 6).

3 Page 2 of the Examiner’s Answer does not list claims 194–196, but the
discussion on page 7 makes clear that these claims are included in this
rejection.
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Appellants contend that Gelissen and Brotz both fail to disclose receiving,
by an asset manager of a set top box, a compressed version of an asset file
(App. Br. 7). Appellants further argue that Gelissen fails to disclose
receiving a request for an asset file from a user application executing on the
set top box (App. Br. 7). Appellants assert that Gelissen and Smith do not
disclose specifying a priority order for the asset file to be deleted from a
cache on the set top box, or actually deleting the asset file (App. Br. 8).
Appellants further argue that Gelissen does not disclose decompression, or a
memory (cache) that stores a decompressed version of an asset (App. Br. 9).
With respect to dependent claims 175, 183, and 191, Appellants argue
that Smith fails to disclose an application programmer determining and
manually assigning the priority of the decompressed asset file before it is
stored in the cache (App. Br. 12).
With respect to dependent claims 197, 199, and 201, Appellants
contend that Gelissen does not disclose a motion engine for animating a
plurality of objects (App. Br. 12).
Appellants’ contentions present us with the following issues:
1. Does the Examiner’s combination of Gelissen, Brotz, Chambers,
and Smith disclose receiving, by an asset manager of a set top box,
compressed versions of multiple asset files?
2. Does the Examiner’s combination of Gelissen, Brotz, Chambers,
and Smith disclose receiving a request for an asset file from a user
application executing on the set top box?
3. Does the Examiner’s combination of Gelissen, Brotz, Chambers,
and Smith disclose the user application specifying a priority order for the
asset file to be deleted from a cache on the set top box?
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4. Does the Examiner’s combination of Gelissen, Brotz, Chambers,
and Smith disclose storing the decompressed version of the asset file in the
cache on the set top box?
5. Does the Examiner’s combination of Gelissen, Brotz, Chambers,
and Smith disclose an application programmer determining and manually
assigning the priority order specified by the user application before the
decompressed version of the asset file is stored in the cache?
6. Does the Examiner’s combination of Gelissen, Brotz, Chambers,
and Smith disclose a motion engine for animating a plurality of objects?
PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.
ANALYSIS
CLAIMS 174, 176–182, 184–190, 192–196, 198, 200, AND 202
Appellants’ remarks do not persuade us that the Examiner erred.
Appellants put forth a series of arguments against individual references.
Such arguments are not persuasive of error when applied against a rejection
based upon a combination of references. See Keller, 642 F.3d at 425.
Appellants’ assertion that Gelissen does not suggest, teach or disclose
any type of compression of Gelissen’s asset (App. Br. 6) is not germane to
the rejection under appeal. The Examiner relied on Chambers, not Gelissen,
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for disclosure of compressed and decompressed versions of assets (Ans. 4,
13; see Chambers col. 9, ll. 48–56).
Appellants’ contention that the use, in Brotz, of digital broadcast
signal 150 to obtain the selected hypertext document is not the claimed
“receiving, by an asset manager of a set top box, a compressed version of an
asset file” (App. Br. 7) is also unpersuasive. Gelissen, rather than Brotz, is
relied upon to disclose the claimed asset manager (Ans. 2–3; Gelissen col. 6,
ll. 3–5, 48–49). The Examiner relies on Brotz for its disclosure of an asset
manager of a set top box (Ans. 3 (emphasis added); Brotz col. 10, ll. 3–5).
Appellants assert that “nowhere does Gelissen suggest, teach or
disclose the claimed ‘user application’ . . . executing on the set top box”
(App. Br. 7). Gelissen, however, is relied upon for a teaching of a request for
an asset file from a user application executing on a multi-media player, and
Brotz is relied upon for a teaching of the set top box (Ans. 2–3).
Appellants argue that Smith discusses assigning a relative priority
when adding an item to the cache, whereas the claimed invention makes no
mention of a relative priority (App. Br. 8). This argument is not persuasive
because the claimed invention does not explicitly or implicitly exclude the
concept of relative priority.
Appellants’ contention that Gelissen does not disclose a
“decompressed version of the asset file” or any type of decompression of
Gelissen’s asset (App. Br. 9, 10) is not germane to the rejection under
appeal. The Examiner has relied on Chambers for disclosure of compressed
files and decompression thereof upon request (Ans. 4; see Chambers col. 9,
ll. 48–61).
Appellants argue that Smith does not disclose any type of
determination that an item is to be deleted from its cache based on a priority
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value (App. Br. 11). We do not find this argument persuasive. Rather, we
agree with the Examiner that Smith at least inherently discloses that low
priority items are deleted from the cache as necessary to make up space. We
agree that it necessarily follows from the facts of (a) limited space in a
cache, and (b) a system for designating higher priority and lower priority
items, that low priority items are deleted when necessary (see Ans. 5–6).
Accordingly, we find that the combination of Gelissen, Brotz,
Chambers, and Smith discloses all the limitations of the claimed invention.
We sustain the Examiner’s § 103 rejection of claims 174, 176–178, 182,
184–187, 190, and 192–196 over Gelissen, Brotz, Chambers, and Smith. We
also sustain the § 103 rejection of claims 198, 200, and 202 over Gelissen,
Brotz, Chambers, Smith, and Comair, not separately argued by Appellants.
We sustain the § 103 rejection of claims 180 and 188 over Gelissen, Brotz,
Chambers, Smith, and Oki, not separately argued by Appellants. Last, we
sustain the § 103 rejection of claims 181 and 189 over Gelissen, Brotz,
Chambers, Smith, and Gordon, not separately argued by Appellants.

CLAIM 175, 183, AND 191
Appellants assert that Smith’s disclosure of relative priority does not
correspond to the claim limitation of “an application programmer
determin[ing] and manually assign[ing] the priority order . . . before the
decompressed version of the asset file is stored in the cache” (App. Br. 12).
Appellants argue that “Smith’s ‘you’ needs to know the priority of the other
items stored in the cache when adding the item to the cache in order to
assign a priority to the item” (Id.).
We do not find Appellants’ reasoning persuasive of error. First, we
find supra that Smith discloses assigning priority order within the meaning
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of Appellants’ claimed invention. Second, neither (representative) claim 175
nor parent claim 174 prohibits the use of a relative priority order. Because
the claims include no further limitation on how to specify the priority order,
it is not relevant to the rejection under appeal that claim 175 does not assign
relative priority (see App. Br. 12). The broadest reasonable interpretation of
the claims is that the recited priority order could be any type, and Smith
supplies the necessary teaching of priority order assignment.
Accordingly, as we find that the Examiner did not err, we sustain the
§ 103 rejection of claims 175, 183, and 191.

CLAIMS 197, 199, AND 201
Appellants’ argument that Gelissen’s application program does not
suggest or disclose a user application that includes a motion engine for
animating a plurality of objects (App. Br. 13) is not persuasive. We agree
with the Examiner that Appellants’ Specification describes the claimed
motion engine as “comprising means for executing a respective block of
animation code for each object” (Spec. 5). We further agree with the
Examiner’s finding that Gelissen discloses execution of a block of animation
code, to wit “the video effect wipeClock” (col. 7, ll. 45–48; Ans. 19).
We find that the Examiner did not err in rejecting claims 197, 199,
and 201, and we sustain the § 103 rejection.
CONCLUSIONS
1. The Examiner’s combination of Gelissen, Brotz, Chambers, and
Smith discloses receiving, by an asset manager of a set top box, compressed
versions of multiple asset files.
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2. The Examiner’s combination of Gelissen, Brotz, Chambers, and
Smith discloses receiving a request for an asset file from a user application
executing on the set top box.
3. The Examiner’s combination of Gelissen, Brotz, Chambers, and
Smith discloses the user application specifying a priority order for the asset
file to be deleted from a cache on the set top box.
4. The Examiner’s combination of Gelissen, Brotz, Chambers, and
Smith discloses storing the decompressed version of the asset file in the
cache on the set top box.
5. The Examiner’s combination of Gelissen, Brotz, Chambers, and
Smith discloses an application programmer determining and manually
assigning the priority order specified by the user application before the
decompressed version of the asset file is stored in the cache.
6. The Examiner’s combination of Gelissen, Brotz, Chambers, and
Smith discloses a motion engine for animating a plurality of objects.
ORDER
The Examiner’s rejection of claims 174–202 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)(iv).

AFFIRMED
ELD