Ex Parte Ramakesavan

Patent Trial and Appeal Board

Feb 24, 2014

12615495 (P.T.A.B. Feb. 24, 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.
12/615,495 11/10/2009 Sundaram Ramakesavan ITL.0170R1US (P6678R) 1710
47795 7590 02/25/2014
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
KOSTAK, VICTOR R
ART UNIT PAPER NUMBER
2422
MAIL DATE DELIVERY MODE
02/25/2014 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 SUNDARAM RAMAKESAVAN
________________

Appeal 2013-006868
Application 12/615,495
Patent US 7,305,695 B1
Technology Center 2400
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-006868
Application 12/615,495
Patent US 7,305,695 B1

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SUMMARY
The present application seeks to reissue U.S. Patent 7,305,695 B1 that
issued to Sundaram Ramakesavan on December 4, 2007. Appellant appeals
under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 3-
23:
Claims 1 and 3-23 stand rejected under 35 U.S.C. § 251 as being
based upon a defective reissue declaration.
Claims 15, 16, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moskowitz (US 5,629,732; issued May 13, 1997).
Claims 4-7, 9, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moskowitz in view of either of Richards
(US 6,690,795 B1; issued Feb. 10, 2004) or Pinder (US 6,105,134; issued
Aug. 15, 2000).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moskowitz and either one of Richards or Pinder in view
of White (US 6,804,825 B1; issued Oct. 12, 2004).
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Cf. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

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STATEMENT OF THE CASE
Appellant describes the invention as a system for providing video
upon request. The system may transmit encrypted video information to one
or more recipients for viewing at a later time. The recipient may make a
request to view one of the received video files. This request may be
provided to a video transmitter which may provide, in return, video
decryption information to allow immediate viewing of the previously
received video transmission. Abstract.

ARGUMENTS AND ANALYSIS
I.
The Examiner finds that the reissue declaration is defective “because
all of the claims added by reissue have been canceled, which therefore
nullifies the basis for filing of the original reissue.” Ans. 2.
Appellant does not dispute that all of the claims added by reissue have
been canceled. (See App. Br. 8; Reply Br. 1.) Appellant instead argues that
the reissue declaration is not defective because
[t]he second error set forth in the declaration was that the
claims were unnecessarily limited to the concept of providing
decryption information to enable restarting video
playback. This limitation is no longer in the claims, in the
reissue. Thus since the claims correct one of the errors that was
originally specified, the reissue declaration is sufficient to
support the reissue declaration.
App. Br. 8.
Appellant’s arguments are not persuasive. To be sure, Appellant’s
reissue declaration need only specify at least one error to correct via reissue.
Manual of Patent Examining Procedure (MPEP) § 1414(II)(B). But where,
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as here, Appellant cancelled the claims that were presumably intended to
correct the original error specified in the reissue declaration, and Appellant
has not shown what, if any, error is left to correct, then Appellant has not
demonstrated error in the Examiner’s rejection that reasonably requires at
least some notice of an error that is now being corrected. See Ans. 8 (citing
MPEP § 1414.01(I)(c) (noting that a supplemental reissue declaration must
state an error when all errors under § 251 stated in the prior reissue
declaration(s) are no longer being corrected in the reissue application)).
At best, the present record is unclear regarding what, if any, error is
now being corrected, for various pending claims still set forth providing
decryption information to enable restarting video playback. See, e.g., claim
4 (reciting “a controller that transmits decryption information to said
receivers to enable video upon request . . . .”). Accordingly, the rejection of
claims 1 and 3-23 under 35 U.S.C. § 251 based upon a defective reissue
declaration is sustained.1

1 Neither the Examiner nor Appellant addresses the fact that, in addition to
the errors set forth in the original declaration, (1) the term “controller” of
claim 1 was replaced with the presumably narrower term “processor” of
claim 2; and (2) the preamble of claim 1 has been broadened to replace the
term “receiver” with the term “device.” We do not address whether either of
these changes constitutes a correction of an error without deceptive intent
that would serve as a basis for a reissue. See Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (noting that the Board may treat arguments
appellant failed to make for a given ground of rejection as waived). We also
do not address the question of when, during prosecution, Appellant must
submit a supplemental declaration. But see MPEP § 1414.01(II) (specifying
when a supplemental oath/declaration must be submitted).
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II. Claims 15-19
Independent claim 15 is illustrative of claims 15-19, which are
rejected as obvious over at least Moskowitz:
15. A video distribution method comprising:
storing video for selection by the recipient;
upon request by the recipient, allowing the recipient to
select for viewing a stored video;
playing said video;
in response to a request to pause the play of said video,
automatically requesting a code to enable play to be resumed at
a later time; and
enabling the user to press a button to resume the play of
said video and in response to the operation of said button,
automatically transmitting a [sic: the2] code to enable resumed
play of said video.
The Examiner finds the limitation of independent claims 15 and 19,
“in response to a request to pause the play of said video, automatically
requesting a code to enable play to be resumed at a later time . . . ,” to be
taught or suggested by Moskowitz.
Moskowitz first sends a pause command (i.e. code) from the
client end to the server (as explained above), and to remove the
paused state sends a resume command from the client to the
server (e.g. col. 15 lines 63-66, col. 16 lines 34-36, col. 16 line
66 - col. 17 line 13).
Ans. 3.

2 The Specification indicates that the code of the fourth limitation, which is
automatically requested, is the same code of the fifth clause, which is
automatically transmitted. (See, e.g., Fig. 2, blocks 42, 44; col. 3, ll. 28-35.)
Accordingly, we understand claim 15 as intending to recite “the” or “said”
before “code to enable resumed play of said video.”
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The Examiner reasons that “a pause function is a half of a whole, the
other half of course being a corresponding resume function. Without a
resume function, the pause becomes a STOP function.” Ans. 3-4. The
Examiner further sets forth a rationale for why either Moskowitz’s resume
signal or connection identifier signal may be interpreted as reading on the
claimed code that is provided automatically. Ans. 4.
Appellant argues that Moskowitz does not automatically request a
code for playback, as claimed. App. Br. 8-9. Appellant’s arguments are
persuasive.
The Examiner may have arguably provided evidence that
Moskowitz’s connection identifier is provided automatically upon the
submission of a resume request, and that a resume request is necessarily
subsequent to a pause request. But it is not sufficient that the automatic
request occur subsequent to a pause request. Independent claim 15 does not
merely require that the claimed “code to enable play to be resumed at a later
time” be requested automatically, or even that it be requested automatically
at some time subsequent to a pause request. Rather, claim 15 further
requires that this automatic request for the code be “in response to a request
to pause the play of said video” (emphasis added). The Examiner has not
established a prima facie showing that any of Moskowitz’s signals, pointers,
identifiers, or codes that enable play resumption are automatically
transmitted in response to a pause request.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claims 15 and 19, both of
which require automatically requesting a code in response to a pause
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request. Accordingly, we will not sustain the Examiner’s rejection of those
claims or of claim 16, which depends from claim 15.
With respect to the rejections of claims 17 and 18, the Examiner does
not rely on either Pinder or Richards to cure the deficiency of Moskowitz
explained above. Ans. 5-7. Accordingly, we will not sustain the Examiner’s
rejection of these claims for the reasons stated in relation to claims 15, 16,
and 19.
III. Claims 4-9
Independent claim 4 is illustrative of claims 4-9, which are also
rejected as obvious over at least Moskowitz:
4. A video transmission system comprising:
a video transmitter that transmits video to a plurality of
receivers for display at a later time; and
a controller that transmits decryption information to said
receivers to enable video upon request, said controller receives
a request for a code to enable the play of video to be paused and
to be resumed at a later time, and in response said controller
automatically provides said code.
Appellant does not separately argue the rejections of claims 4-9, but
instead urges that the rejections of these claims should be reversed for the
same reasons set forth in relation to claims 15, 16, and 19. App. Br. 9. That
is, Appellant urges that the rejections of claims 4-9 be reversed because the
references do not teach automatically requesting a code to resume playback.
App. Br. 8, 9; Reply Br. 1.
However, claim 4 nowhere recites any requirement that any
component automatically request a code to enable playback to be resumed at
a later time. Claim 4 does state that the controller transmits decryption
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information for this purpose. But the claim does not require that the
information be transmitted in response to a pause request, or even that the
information be transmitted automatically. Instead, the controller
automatically provides the code after a request is received.
Because Appellant’s arguments are not commensurate in scope with
the language of claims 4-9, Appellant has not persuaded us of error in the
Examiner’s rejections of these claims. See Frye, 94 USPQ2d at 1075.
Accordingly, we will sustain the Examiner’s rejection of claims 4-9.

CONCLUSIONS
We sustain the rejection of claims 1 and 3-23 under 35 U.S.C. § 251.
We do not sustain the obviousness rejections of claims 15-19 under
35 U.S.C. § 103.3
We do sustain the obviousness rejections of claims 4-9 under
35 U.S.C. § 103.

3 Claim 19 recites “An article comprising a non-transitory medium for
storing instructions that [perform various functions]” (emphasis added), as
opposed to, e.g., “a medium storing instructions” or “a medium that stores
instructions.” As such, the claim is broad enough to read on a medium that
is merely capable of storing the recited instructions. That is, claim 19
appears to be broad enough to read on a non-transitory storage medium, per
se, regardless of whether the medium is actually storing any instructions or
code. Upon any further prosecution, the Examiner should consider whether
claim 19 should be rejected as reading on any conventional memory or
storage device, such as, but not limited to, those storage devices set forth in
the art of record. The same consideration should be given to claims 20-23.
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DECISION
The Examiner’s decision rejecting claims 1 and 3-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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