Ex Parte Schmidt et al

Patent Trial and Appeal Board

Feb 19, 2013

11470493 (P.T.A.B. Feb. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte ANDREAS SCHMIDT, HOLGER SCHMIDT, and
NORBERT SCHWAGMANN
____________
Appeal 2010-009190
Application 11/470,493
Technology Center 2600
____________

Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
BRIAN J. MCNAMARA, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009190
Application 11/470,493

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 42-53, 55-57, and 70-84. App. Br. 2. Claims 1-41, 54,
and 58-69 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a system, apparatus, and method for transmitting
data within a communication session. Spec. 1:9-12.
Illustrative Claim
Claims 42, 70, 78-82, and 84 are independent claims. Independent
claim 42 is illustrative:
42. A communication system, comprising:
a first communication network comprising a central
communication session server unit configured to provide of a
communication session between a plurality communication
terminals;
at least one first communication terminal being registered
in the first communication network;
a second communication network comprising a data
distribution unit configured to distribute data to communication
terminals,
at least one second communication terminal being
registered in the second communication network;
a data distribution unit generation unit configured to
generate the data distribution unit;
the central communication session server unit configured
to:
during setup of a communication session,
establish, via the data distribution unit, a communication
connection between the at least one first communication
terminal and the at least one second communication terminal,
and
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send the data to be transmitted to the at least one
second communication terminal within the communication
session at least partially to the data distribution unit, or at least
partially receive the data to be transmitted to the at least one
first communication terminal within the communication
session, from the data distribution unit and forward this data to
the at least one first communication terminal,
the data distribution unit configured to receive the data to
be transmitted to the at least one second communication
terminal within the communication session and forward this
data to the at least one second communication terminal or
receive the data to be transmitted to the at least one first
communication terminal within the communication session and
forward this data to the central communication session server
unit.

Prior Art Relied Upon
Tomikawa US 2002/0064273 A1 May 30, 2002
Mangal US 2003/0148785 A1 Aug. 7, 2003
Itzkovitz US 2006/0234690 A1 Oct. 19, 2006
(effectively filed Jan. 21, 2005)
Blicker US 2007/0275747 A1 Nov. 29, 2007
(PCT filed Sept. 2, 2004)

Rejection on Appeal
Claims 42, 44-52, 55-57, 70-76, and 78- 84 were rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Blicker and
Tomikawa.
1
Ans. 3-7.

1
While the Examiner omits dependent claim 83 in the statement of the
rejection (Ans. 3), the Examiner nonetheless includes dependent claim 83 in
the corresponding body of the rejection (Ans. 6). We will treat the
Examiner’s incorrect statement of the rejection as mere harmless error and,
therefore, presume that the Examiner intended to reject claims 42, 44-52, 55-
57, 70-76, and 78-84 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Blicker and Tomikawa. Accord App. Br. 8 (confirming
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Claim 43 was rejected under 35 U.S.C. § 103(a) as being unpatentable
over Blicker, Tomikawa, and Mangal.
2
Id. at 7.
Claims 53 and 77 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Blicker, Tomikawa, and Itzkovitz.
3
Id.
at 7-8.
Examiner’s Findings and Conclusions
The Examiner concludes that the claimed “data distribution unit
generation unit” may be broadly, but reasonably construed as hardware.
Ans. 9. The Examiner also concludes that the claimed “data distribution
unit” may be broadly, but reasonably construed as software application. Id.
Based on that claim construction, the Examiner finds that because
Tomikawa’s distribution route generating apparatus is configured to

that dependent claim 83 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Blicker and Tomikawa).
2
The Examiner rejects dependent claim 43 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Blicker and Mangal. Ans. 7.
However, we note that independent claim 42, from which claim 43 depends,
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Blicker and Tomikawa. Ans. 3. Therefore, because
Tomikawa is part of the rejection of independent claim 42, we will treat
dependent claim 43 as being rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blicker, Tomikawa, and Mangal.
3
The Examiner rejects dependent claims 53 and 77 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Blicker and
Itzkovitz. Ans. 7. However, we note that independent claims 42 and 70,
from which claims 53 and 77 depend, stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Blicker and
Tomikawa. Ans. 3. Therefore, because Tomikawa is part of the rejection of
independent claims 42 and 70, we will treat dependent claims 53 and 77 as
being rejected under 35 U.S.C. § 103(a) as being unpatentable over Blicker,
Tomikawa, and Itzkovitz.

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generate an application program that provides distribution route information,
Tomikawa teaches a data distribution generation unit… configured to
generate the data distribution unit, as required by independent claim 42. Id.
(citing to ¶¶ [0014-15] and [0041]).
Appellants’ Contentions
Appellants contend that the Examiner’s claim construction of the
claim term “a data distribution unit” is unreasonable. App. Br. 9-12; Reply
Br. 2. In particular, Appellants assert that while the claimed “data
distribution unit” may use or even generate a route, it would be inconsistent
with the plain meaning of the claim term as well as the present Specification
to construe that claim term as a distribution route. App. Br. 11-12. Further,
Appellants contend that the Examiner’s combination of Blicker and
Tomikawa does not teach a data distribution unit generation unit configured
to generate the data distribution unit, as required by independent claim 42.
Id. at 13. In particular, Appellants argue that while Tomikawa’s distribution
route generation apparatus may teach the claimed “data distribution unit,”
the Examiner does not cite to a textual portion of Tomikawa that teaches the
claimed “data distribution unit generation unit.” Reply Br. 2.
Appellants rely upon the same arguments presented for the
obviousness rejection of independent claim 42 to rebut the obviousness
rejections of independent claims 70, 78-82, and 84. App. Br. 14.

II. ISSUE
Has the Examiner erred in determining that the combination of
Blicker and Tomikawa teach “a data distribution unit generation unit
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configured to generate the data distribution unit[,]” as recited in independent
claim 42, and similarly recited in independent claims 70, 78-82, and 84?

III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Blicker and Tomikawa
Claims 42, 70, 78-82, and 84
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of independent claim 42, which recites,
inter alia, “a data distribution unit generation unit configured to generate the
data distribution unit[.]” We also do not discern error in the Examiner’s
obviousness rejection of independent claims 70, 78-82, and 84, which recite
a similar claim limitation.
We begin our analysis by first considering the scope and meaning of
the claim terms “a data distribution unit generation unit” and “the data
distribution unit,” which must be given their broadest reasonable
interpretation consistent with Appellants’ disclosure. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989) (stating that during examination “claims must be
interpreted as broadly as their terms reasonably allow”). As support for the
disputed claim terms, Appellants direct us to the Specification at page 16,
line 32 through page 17, line 2. See, e.g., App. Br. 3-7. The relevant
portions of Appellants’ Specification are reproduced below:
The data distribution unit generation unit can be configured for
the generation of the data distribution unit when, within the
communication session, data are to be transmitted to the at least
one second data communication terminal and so far no data
distribution unit exists in, or is available in, the second
communication network. In other words, this means that the
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data distribution unit is generated only when and for example
only if it is actually required.

Spec. 16:32-17:2. Appellants’ Specification also discloses the following:
 The units realizing the distribution functions, for example
the data distribution unit, forward the received media data to
the participants and the communication terminals,
respectively, which are located in their communication
network.

Spec. 18:23-26.

 The data distribution unit 312 does not necessarily have to
be a physically independent server, but can be realized by
means of software. The software can run, for example, on a
computer which unites all media distribution functions of a
communication network for all communication sessions
running there. Furthermore, the software can also be
implemented on a computer, on which push-to-talk server
units of the respective communication network are realized.

Spec. 31:18-25.
Upon reviewing the cited textual portions of Appellants’
Specification, we do not find any explicit or special definition set forth for
the claim terms “a data distribution unit generation unit” and “the data
distribution unit.” Therefore, we resort to their ordinary and customary
meaning as would be understood by one with ordinary skill in the art. See
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(claim terms are “generally given their ordinary and customary meaning”).
We conclude that one of ordinary skill in the art would have understood that
the disputed claim terms may be broadly, but reasonably construed as
follows: (1) “a data distribution unit generation unit” is computer hardware;
and (2) “the data distribution unit” is software running on a computer that
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establishes communication connections between terminals located in a
communication network for the purpose of transmitting data therebetween.
With these claim constructions in mind, we turn to the merits of the
Examiner’s obviousness rejection.
The Examiner takes the position that Tomikawa’s distribution route
generation apparatus, which comprises a collection device, a generation
device, and an output device, constitutes the claimed “data distribution unit
generation unit.” Ans. 9 (citing to ¶¶ [0014-15] and [0041]). The Examiner
also takes the position that the application program implemented by
Tomikawa’s distribution route generation apparatus creates distribution
routes that are used to transmit data from one node to another node, and,
therefore, constitutes the claimed “data distribution unit.” Id. We agree
with the Examiner.
Consistent with our claim construction above, one of ordinary skill in
the art would have recognized that because Tomikawa’s distribution route
generation apparatus comprises a collection of devices (¶¶ [0015]
and [0041]), it may be generally categorized as computer hardware.
Moreover, upon receiving a data distribution request, one of ordinary skill in
the art would have understood that Tomikawa’s distribution route generation
apparatus initiates software that generates distribution routes (see, e.g.,
¶ [0014]—“an application layer”), which in turn establish communication
connections between nodes located in a communication network for
streaming data therebetween. As a result, the Examiner has presented
sufficient evidence to warrant a finding that Tomikawa teaches the disputed
claim limitation.
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We are not persuaded by Appellants’ argument that while
Tomikawa’s distribution route generation apparatus may teach the claimed
“data distribution unit,” the Examiner does not cite to a textual portion of
Tomikawa that teaches the claimed “data distribution unit generation unit.”
Reply Br. 2-3. As discussed above, the Examiner provides ample evidence
indicating that Tomikawa teaches both the claimed “data distribution unit
generation unit” and “the data distribution unit.” It follows that the
Examiner has not erred in concluding that the combination of Blicker and
Tomikawa renders independent claims 42, 70, 78-82, and 84 unpatentable.
Claims 44-52, 55-57, 71-76, and 83
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 44-52, 55-57, 71-76, and 83.
App. Br. 14. Therefore, we accept Appellants’ grouping of these dependent
claims with their underlying base claim. See id. Consequently, dependent
claims 44-52, 55-57, 71-76, and 83 fall with independent claims 42 and 70,
respectively. See 37 C.F.R. § 41.37(c)(1)(vii).
Remaining 35 U.S.C. § 103(a) Rejections
Claims 43, 53, and 77
Appellants contend that neither Mangal nor Itzkovitz cure the above-
noted deficiencies in the Examiner’s proffered combination of Blicker and
Tomikawa. App. Br. 13-14. As discussed above, there are no such
deficiencies in the combination of Blicker and Tomikawa for either Mangal
or Itzkovitz to remedy. It follows that the Examiner has not erred in
concluding that: (1) the combination of Blicker, Tomikawa, and Mangal
renders dependent claim 43 unpatentable; and (2) the combination of
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Blicker, Tomikawa, and Itzkovitz renders dependent claims 53 and 77
unpatentable.

IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 42-53, 55-57, and 70-84 as being unpatentable under 35 U.S.C.
§ 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 42-53, 55-57, and
70-84.
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

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