Ex Parte Prestoy

Board of Patent Appeals and Interferences

May 1, 2007

09252326 (B.P.A.I. May. 1, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK G. PRESTOY
____________________

Appeal 2007-0059
Application 09/252,3261
Technology Center 2600
____________________

Decided: May 1, 2007
____________________

Before: KENNETH W. HAIRSTON, ALLEN R. MACDONALD and JAY
P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1-26 under
authority of 35 U.S.C. § 134 (2002). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b) (2002).

1 Application filed June 18, 1999. Appellant claims the benefit under
35 U.S.C. § 119 of provisional application 60/074965, filed 02/17/1998. The
real party in interest is Verizon Corporate Services Group, Inc.

Appeal 2007-0059
Application 09/252,326
Appellant’s invention relates to a system and method for delivering
interactive multimedia movies and data services to subscribers located at one
or more geographically dispersed subscriber sites, which may include hotels
or multi-dwelling corporate offices. In the words of the Appellant:
In accordance with methods and systems consistent with
the present invention, a high capacity interactive multimedia
system is provided that comprises a video server module that
includes a plurality of massively parallel nodes for streaming a
plurality of video streams from one or more video titles stored
in the video server module, a web server that stores data, a high
capacity transport system for transporting the video streams and
the data to a plurality of clients, and a set of display devices
connected to the clients, respectively, for displaying the video
streams and the data.

Claim 1 is exemplary:
1. An interactive multimedia system, comprising:
a massively parallel video server that includes:
a set of storage devices; and
a plurality of processors configured to stream a plurality of
video streams from one or more video titles stored in the set of storage
devices, the plurality of processors all having concurrent access to said set of
storage devices for concurrently streaming the plurality of video streams;
a plurality of client devices configured to receive at least some of the
plurality of video streams; and
a high capacity transport system for transporting the video streams
from the massively parallel video server to the plurality of client devices.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dewkett US 5,646,676 Jul. 8, 1997
Cannon US 6,014,706 Jan. 11, 2000
Fukui US 6,052,715 Apr. 18, 2000
Banks US 6, 139,197 Oct. 13, 2000
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Hluchyj US 6,151,325 Nov. 21, 2000
Ehreth US 6286,142 Sep. 4, 2001

The Examiner rejected claims 1-26 as follows:
Group I: Claims 1, 4, 6, 11, 12, 17, and 20 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Dewkett.
Group II: Claims 2, 18, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dewkett in view of Ehreth.
Group III: Claims 3, 5, 10, 13, 15, 19, 23, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Dewkett in view of Banks.
Group IV: Claims 7-9, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dewkett in view of Hluchyj.
Group V: Claims 14 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dewkett in view of Banks as applied to claims 3
and 19, and further in view of Cannon.
Group VI: Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dewkett in view of Banks as applied to claim 5, and
further in view of Fukui.

Appellant contends that the claimed subject matter is not anticipated
by Dewkett, or rendered obvious by Dewkett in combination with Ehreth,
Banks, Hluchyi, Cannon or Fukui, for reasons to be discussed more fully
below. The Examiner contends that each of the six groups of claims is
properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
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Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2

We affirm the rejections.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. §§ 102(e) and 103(a). The issue turns
on whether the Dewkett reference discloses the claimed plurality of
processors having concurrent access to the storage devices for concurrently
streaming a plurality of video streams, and other issues of claim
interpretation and application to the references as will be indicated below.

FINDINGS OF FACT
Group I: Findings with respect to the rejection of claims 1, 4, 6,
11, 12, 17, and 20 under 35 U.S.C. § 102(e).
1. Examiner described this rejection over the patent to Dewkett in detail
in his Office Action of May 10, 2004. Referring to Figures 1 and 2 of

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

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Dewkett, Examiner has (in part) read the “massively parallel video
server that includes a plurality of processors…” on Dewkett’s
“Massive Multimedia (MM) Distribution System which includes a
Host Server or Computer System (Host) (figs. 1, 2 and col. 1, lines 2-
13 and col. 8, line 60- col. 9, line 23).” Examiner notes that “MM
system includes a plurality of Processors (CPUs) 101 all connected by
a host system bus 103 and I/O buses 105 and having concurrent access
to Disk Drives 107”. The “set of storage devices” is connected by
busses via a plurality of Multimedia (MM) Adapters 106, for
concurrently streaming a massive plurality of video streams to a
plurality of Set-Top-Boxes (STBs) 109 1 – N, read on a plurality of
client devices. The “high capacity transport system” is read on
Network 108 (col 8, line 64 to col 9. line 10).
2. Appellant argues that processors 101 cannot be read on his claimed
plurality of processors as “the host CPUs 101” are not “configured to
stream” video, as recited in claims 1 and 17. Instead, argues
Appellant, “Dewkett et al. uses multimedia controller (MMC)
processors 401 to ‘control movie data transmission to the STB[s]’”.
(Reply Br. 3).
3. We find that Dewkett teaches a number of processors within his MM
system, some (e.g. CPUs 101) controlling higher functions of starting
and stopping the streaming at a command level, and some (such as
MMC processors 401) handling the detailed processing at the data
block level for supplying the STBs with streams of video. All the
processors are part of the permanent circuitry with concurrent access
to the set of storage devices, though certain processors may control
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Application 09/252,326
only certain members of the set, activating them in an organized
manner according to their respective programming. The claim does
not require that all processors have the same programming or do
exactly the same function, but rather that they all are configured to
effect the streaming of a plurality of video streams, in the manner
claimed. Dewkett teaches the processors performing their individual
functions, including controlling the activation of each other, to create
the concurrent streaming of the plurality of video streams. Examiner
recognizes these different functions of the different processors, as
pointed out by Appellant in the Reply Brief, page 5. And the claims,
especially claim 6, recognize that “at least one of the plurality of
processors” may be running a video server program while others are
doing other functions.

Group II: Findings with respect to the rejection of claims 2, 18, and
26 under 35 U.S.C. § 103(a) for being obvious over Dewkett in view of
Ehreth.
1. We find that Ehreth discloses the use of a plurality of television
sets 100, in Figure 1 and Column 2, lines 54 ff, in the context of a
video distribution system. It would have been obvious to
incorporate the teaching of multiple client devices in Dewkett, as
both teachings address the same field of endeavor, and Ehreth
merely teaches using a plurality of devices disclosed in Dewkett.

Group III: Findings with respect to the rejection of claims 3, 5, 10,
13, 15, 19, 23, and 24 under 35 U.S.C. § 103(a) for being obvious over
Dewkett in view of Banks.
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1. Appellant argues (Br. 18) that while Banks does teach the
encoding of the video, it fails to teach the storage of the
encoded video as claimed. Examiner argues that Dewkett
teaches the storage of the video signals, and Banks is used to
establish that the encoding of video is clearly part of the prior
art. Thus, the Examiner argues, the combination of references
establishes that it would be obvious in Dewkett to store
encoded, rather than non-encoded, video information. In view
of the maturity of the video recording arts and the cited
teachings, we find that the recording of a compressed encoded
video signal, either real time or previously stored, would be
obvious to one of ordinary skill in the art over storing the same
signals in another format.
2. Appellant and Examiner both indicate (Br. 19; Examiner’s
Answer 7) that Banks teaches a delivery system for video (col.
3, line 45) that can also be used for web data (col. 3, line 55).
Appellant further argues that the teaching of Banks is that such
a system must be used for one or the other, but not both. (Br.
19, first full paragraph) We find this too restrictive an
interpretation of Banks, especially as the server 102 and client
110 nomenclature is used when talking of the delivery of both
types of information. The teaching is more correctly interpreted
that it does not matter which type of information is handled,
including a mixture of video and data.

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Groups IV, V, and VI.
1. Separate arguments are not provided for the claims in these
rejections.

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection of the claims.

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that “claims must be interpreted as
broadly as their terms reasonably allow.” Our reviewing court further states,
“[t]he terms used in the claims bear a ‘heavy presumption’ that they mean
what they say and have the ordinary meaning that would be attributed to
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those words by persons skilled in the relevant art.” Texas Digital Sys. Inc v.
Telegenix Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir.
2002).
References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Deminski, 796
F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); see also In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) and In re Bigio,
381 F3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).

ANALYSIS
Appellant contends that Examiner erred in rejecting claims 1 - 26
under 35 U.S.C. §§ 102(e) and 103(a). Reviewing the findings of facts
above, we find that Dewkett alone recites the elements required for a
rejection under 35 U.S.C. § 102(e) for claims 1, 4, 6, 11, 12, 17, and 20; and
in combination with Ehreth, Banks, Hluchyi, Cannor or Fukui provides
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teachings for rejections under 35 U.S.C. § 103(a) for the other claims.
Appellant has presented reasoned arguments, but Examiner’s broad but
reasonable interpretations of the plain meanings of the elements of the
claims were persuasive in supporting the rejections.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1- 26. The rejection of those
claims is affirmed

OTHER ISSUES
Examiner is reminded that USPTO procedures require that rejections
be fully repeated in the Examiner’s Answer, and that the Board is not
referenced to other actions (e.g. Final Rejections) in the file. See MPEP
§ 1207.02. In the interest of reasonable dispatch of this appeal the procedure
was overlooked; however, in future appeals an administrative remand would
be appropriate.

DECISION
The Examiner's rejection of 1 - 26 is affirmed.
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AFFIRMED

ELD

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