Ex Parte Salt

Patent Trials and Appeals Board

Apr 28, 2016

10501488 - (D) (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/501,488 0412212005 Bryan Salt
35690 7590 05/02/2016
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
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.
6257-31902 2505
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN SALT
Appeal2014-002179
Application 10/501,488
Technology Center 2400
Before JASON V. MORGAN, MELISSA A. HAAPALA, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a non-final
rejection (Non-Final Act., Nov. 16, 2012) of claims 52-55 and 118-137.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Examiner rejects claims 118-126 and 137, under
35 U.S.C. § 101, as encompassing transitory signals. Non-Final Act. 2-3.
The Examiner rejects claims 52-55 and 118-137, under
35 U.S.C. § 103(a), as obvious over Xu (US 7,050,646 B2; May 23, 2006)
and Pulier (US 2002/0091840 Al; July 11, 2002). Non-Final Act. 3-7.
Appeal2014-002179
Application 10/501,488
REJECTION OF CLAIIvIS 118-126 AND 137
UNDER 35 U.S.C. § 101
Claims 118-126 and 137 are directed to an "article of manufacture
including a computer readable medium" (independent claims 118 and 137).
Focusing on the recitation of "computer readable medium," the Examiner
rejects these claims under 35 U.S.C. § 101, as encompassing transitory
signals. Ans. 4-5; Non-Final Act. 2-3. As argued by Appellant, the
Examiner does not address the "article of manufacture" language and does
not explain why the claim as a whole, would be understood as encompassing
transitory signals. App. Br. 7.
Notably, the Examiner cites In re Nuiljen (Ans. 4-5; Non-Final Act.
3), yet omits the discussion of legal and ordinary meanings for "article,"
"manufacture," and "article of manufacture" (500 F.3d 1346, 1356-57 (Fed.
Cir. 2007)). Nuiljen 's discussion evidences that, at Appellant's time of
invention, an "article of manufacture" was understood as excluding
transitory signals. See id. Because the claim recites that it is directed to an
"article of manufacture," the elements are non-transitory.
For the foregoing reasons, we do not sustain the§ 101 rejection of
claims 118-126 and 137.
REJECTION OF CLAIMS 118-126 AND 137
UNDER 35 U.S.C. § 103(A)
Claims 52-55 and 118-137 are rejected as obvious over Xu and
Pulier. Appellant argues, inter alia, the Examiner has not shown Xu and
Pulier suggest the claimed invention's selective apportioning of an image's
construction between a client and server. App. Br. 10-14, 16-18, 20; see
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Application 10/501,488
also Spec., abst. ("apportions the processing between the server and the
mobile telephone"). We concur for the reasons below.
Arguments
Appellant's argument principally addresses independent claim 52.
Appellant argues Xu's cited teachings do not suggest claim 52's "the server
selecting a first set of the plurality of operations" because:
To the extent that Xu FIG. 4 steps 402, 404, 406, 408, 410, and
412 are interpreted as the claimed plurality of operations, a first
set of those operations is not selected at all in Xu . . . . Instead,
each of those operations appears to be performed each time Xu's
image segmentation is performed.
App. Br. 11. And, Appellant argues Pulier's cited teachings do not suggest
claim 52' s "the server sending the processed image element to the first client
... configured to perform remaining ones of the plurality of operations"
because:
[Pulier's] "MPH sniffer module is a client-side application" that
calculates bandwidth as part of the "provider selection process[]"
. . . to select the best streaming media provider to deliver the
media content . . . . Choosing a provider from which to stream
media has nothing to do with [claim 5 2' s above limitation.]
App. Br. 12 (emphases omitted).
Appellant's arguments for remaining independent claims 118, 127,
134, and 137 also address recitations for selective apportioning of image
re/construction between a client and server. App. Br. 13, 16-17, 20.
Appellant argues the Examiner has neglected: claim l 18's "determining a
first portion of the plurality of tasks to be performed by the computer
system, ... based [on a] characteristic associated with the client" (id. at 13);
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Application 10/501,488
claim 127's "selecting between the processed version of the image and the
unprocessed version of the image, ... based [on a] characteristic associated
with the client" (id. at 16); and, claim 134's and claim 137's "receiving from
the server a plurality of image elements processed to an extent determined
[by a] characteristic associated with the client" (id. at 17, 20). 1 Further, for
these claims, Appellant also argues that the Examiner has failed to provide a
primafacie rejection. App. Br. 13, 16, 17, and 20.
Appellant further argues, for all claims, the Examiner's findings do
not present the combination of Xu's and Pulier's teachings with sufficient
particularity. Reply Br. 6-7.
Analysis
The above arguments are persuasive insofar as the Examiner does not
articulate how Xu's and Pulier's cited teachings are combined to reach the
claimed invention's selective apportioning of an image's construction
between a client and server. Rather, the Examiner ambiguously speaks of
modifying Xu's client-server interactions (i.e., between one client and one
server) to incorporate Pulier's media provider selection (i.e., from amongst
multiple servers). Non-Final Act. 4-5.
We understand the Examiner's proposed combination as follows.
Xu' s image processor and device are implemented as a server and client. Id.
at 4 ("image processor in XU as a server and the image device as a client").
Xu selects an operation based on an image forming data value. Id. (stating
Xu' s image forming data values are the same as the parameter required to
1 Claim 118 further recites "transmitting the partially processed version of
the image to the client[.]" Claim 127 further recites "transmitting the
selected version of the image to the client."
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Application 10/501,488
generate an image element); see also Xu col. 7, 11. 6-31 (cited). And, the
client switches between multiple media servers via Pulier' s teachings.
Non-Final Act. 5 ("[Pulier's] sniffer module gives the [multiple provider
hosting] process an initial of where to start in the provider selection
process."). Even assuming the above combination, there is still no
indication of selectively apportioning, between a client and a server,
operations used in an image reconstruction process.
Further, we agree with the Appellant that for claims 118, 127, 134,
and 137 the Examiner has not addressed all limitations because the
Examiner's rejection only maps the limitations recited in claim 52 (Non-
Final Act. 3-5) and these claims recite features that are not present in claim
52. Therefore, the Examiner has failed to present a prima facie case of
obviousness for these claims.
For the foregoing reasons, we do not sustain the§ 103(a) rejection of
claims 52-55 and 118-137.
DECISION
The Examiner's rejection of claims 52-55 and 118-137 is reversed.
REVERSED
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