Ex Parte Simongini et al

Patent Trial and Appeal Board

Dec 9, 2014

12060739 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/060,739 04/01/2008 Alberto Simongini 10022/1205 7207
28164 7590 12/10/2014
BGL/Accenture - Chicago
BRINKS GILSON & LIONE
P O BOX 10395
CHICAGO, IL 60610
EXAMINER
EDWARDS, JAMES A
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
12/10/2014 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 ALBERTO SIMONGINI,
NICOLETTE CELANDRONI, and LARRY M. SOCHER
____________________

Appeal 2012-006536
Application 12/060,739
Technology Center 2400
____________________

Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from rejections
of claims 4–5, 9–10, 14, and 25.1 The rejections of claims 1, 2, 6–13, 15, 16,
and 22–24 are not argued. Claims 3 and 17–21 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2

1 The real party in interest is Accenture Global Services Limited.
2 Our Decision refers to the Appellant’s Appeal Brief, filed Aug. 26, 2011
(“App. Br.”), the Examiner’s Answer, mailed Dec. 1, 2011 (“Ans.”), the
Reply Brief, filed Jan. 31, 2012 (“Reply Br.”), and the Specification as
originally filed on April 1, 2001 (“Spec.”).
Appeal 2012-006536
Application 12/060,739

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CLAIMED SUBJECT MATTER
The claims are directed to streaming media interruption and
resumption. Claims 1, 4, and 5, reproduced below, are illustrative of the
claimed subject matter:
1. A method for streaming media from a media server to an
endpoint, the method comprising:
initiating delivery, by the media server, of a primary
media stream to the endpoint;
generating an interrupt notification, with a notification
module in communication with the media server, when a
secondary media stream is available;
interrupting delivery, by the media server, of the primary
media stream at an interruption point subsequent to generation
of the interrupt notification;
initiating delivery, by the media server, of the secondary
media stream to the endpoint in place of the primary media
stream; and
resuming delivery, by the media server, of the primary
media stream to the endpoint from the interruption point when
the secondary media stream has finished.

4. The method of claim 1, further comprising:
awaiting an interruption request before interrupting
delivery of the primary media stream.

5. The method of claim 4, further comprising:
sending, by the notification module, the interrupt
notification to the endpoint; and
receiving, by the notification module, the interruption
request from the endpoint.

Appeal 2012-006536
Application 12/060,739

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REJECTIONS
Claims 4, 5, 9, and 10 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Lee (Ans. 5).3
Claims 14 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Jennings (Ans. 10).4

ANALYSIS
Claim 4
Appellants argue that Lee fails to disclose the limitations of claim 4
(App. Br. 4-6). Specifically, Appellants argue that the sections of Lee cited
by the Examiner disclose locations at which insertion media streams are
inserted, and that such locations are not notifications or requests for an
interruption of a primary media stream as claimed (id.). Appellants further
argue Lee is silent regarding awaiting an interruption request before
interrupting delivery of the primary media stream as recited in claim 4 (id.).
The Examiner maintains the rejection of claim 4, contending it is disclosed
in Lee (Ans. 6, Item 17 (citing Lee ¶¶ 80–81, 30, 45, 60, 85, 24, 29; Fig.
12)).
We agree with the Examiner that the limitations of claim 4 are
disclosed in Lee. Paragraph 80 of Lee states that one of its disclosed media
insertion scenarios, referenced as “midway insertion,” interrupts the original
media stream before its natural end and inserts an insertion media stream.
Lee’s transcoding system must await an interruption because it has the

3 U.S. Patent Application Publication No. 2009/0006643 A1, published Jan.
1, 2009, with a priority date of June 29, 2007.
4 U.S. Patent Application Publication No. 2003/0088686 A1, published May
8, 2003.
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Application 12/060,739

4
capability to handle the interruption of the original media stream. In other
words, Lee’s transcoding system must be capable of checking for the
existence of an interruption and, thus, it awaits the interruption as claimed.
Lee discloses calculation of a temporal location at which an
interruption of an original media stream (the claimed “primary media
stream”) occurs in order to include an insertion media stream (the claimed
“secondary media stream”)(see Lee ¶¶ 80-81). This interruption point (a
certain time) must be communicated to the media server (the claimed
“streaming media server”) to determine when to transmit the original media
stream and the insertion media stream, and it must also be transmitted to the
receiver (the claimed “endpoint”) in order to coordinate playback of the
original media stream and insertion media stream at the receiver (see Lee ¶¶
80–81, 69–72). Therefore, the communication of the interruption point in
Lee constitutes the claimed “interruption notification.”
With regard to Appellants’ argument concerning the origination of the
interruption request “from the endpoint” (see Reply Br. 3–4), we note that
claim 4 recites no such limitation. Although the claims are interpreted in
light of the specification, limitations from the specification are not read into
the claims.5 Accordingly, we are not persuaded of error and sustain the
Examiner’s rejection of claim 4 on this ground.

Claim 5
Appellants argue that Lee fails to disclose receiving the interruption
request from the endpoint and sending an interrupt notification to an

5 See Manual of Patent Examining Procedure (“MPEP”) § 2145 VI. Arguing
Limitations Which Are Not Claimed citing In re Van Geuns, 988 F.2d 1181
(Fed. Cir. 1993).
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Application 12/060,739

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endpoint (App. Br. 7–8). The Examiner finds that claim 5 is disclosed by
Lee (Ans. 6, Item 18 (citing Lee ¶¶ 80–81, 30, 45, 60, 76, 91)). The
Examiner finds Lee discloses that when a user selects a virtual URL at the
user device (end point), a request is sent to the transcoding server (id. at 14
(citing Lee ¶ 38)). The Examiner further finds Lee discloses that the request
causes the transcoding server to fetch the requested media (interrupts the
primary media stream to transcode it before streaming to the user device)
(id. (citing Lee ¶¶ 38, 60)). The Examiner reasons that, in response to the
request, the transcoding system must transcode the media which interrupts
the primary media stream before sending the transcoded media to the client
(Id. (citing Lee ¶ 108)).
We agree with Appellants that Lee fails to disclose this limitation of
claim 5. Although the Examiner explains Lee’s disclosure of requests to
initiate transcoding and media retrieval, we find no teaching of a notification
of an interruption request from an endpoint to which a primary media stream
is delivered, as required by claim 5. Accordingly, we do not sustain the
rejection of claim 5.

Claim 9
Appellants argue that Lee fails to disclose a notification module
“adapted to deliver the interrupt notification to the streaming media server”
as recited in claim 9 (App. Br. 8). Appellants argue that Lee is silent about
delivering or communicating the interrupt notification (id.). The Examiner
asserts this limitation is disclosed in Lee (Ans. 7, Item 21 (citing Lee ¶¶ 80–
81, 30, 45, 60, 85, 24, 29, 91, Fig. 12)).
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Paragraphs 80 and 81 of Lee describe one of the media insertion
scenarios termed ‘midway insertion’ in which a transcoding and streaming
server (streaming media server) inserts an insertion media stream into the
original media stream at an interruption point. Paragraphs 90 to 92 of Lee
disclose the calculation of a virtual interruption point of the current media
stream, which is used as the common starting presentation time for the
embedded media of the insertion media stream at the receiver (end point).
Paragraph 72 of Lee describes that the presentation time is used by the
transcoding server to determine when to stream the transcoded media and by
the client media playback software to determine when to display the media.
The communication of the interruption point to the both transcoder server
(streaming media server) and the receiver or playback device (endpoint) is
equivalent to and thereby discloses the disputed interruption notification.
Therefore, we are not persuaded of error in the Examiner’s finding that Lee
discloses a notification module adapted to deliver an interrupt notification to
the streaming media server, and we sustain the Examiner’s rejection of claim
9.

Claim 10
Appellants argue that Lee fails to disclose a streaming media server
adapted to “communicate the interrupt notification to the endpoint” (App.
Br. 8). The Examiner finds that this limitation is disclosed in Lee (Ans. 7,
Item 22 (citing Lee ¶¶ 24, 29, 80–81, 30, 45, 60, 91)). As found previously
with respect to claim 9, Lee discloses the virtual interruption point is
communicated to the transcoding system (streaming media server) and to a
receiver or playback device (endpoint) (see Lee ¶¶ 90–92). Thus, we are
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unpersuaded of error in the Examiner’s rejection of claim 10, and, therefore,
sustain the rejection.

Claim 14
Appellants argue that Lee and Jennings fail to teach a streaming
media server operable to: obtain an interruption request message from the
endpoint; and interrupt the primary media stream in response to the
interruption request message, as recited in claim 14 (App. Br. 6–7). The
Examiner finds that Lee and Jennings teach the limitations of claim 14 (Ans.
10, Items 32-33 (citing Lee ¶¶ 7–8, 24–25, 29–30, 38, 74, 80–81, 91–92, 94,
98, Fig. 8 and Jennings ¶¶ 37, 40, 71–72, 126, 153)).
The limitations of claim 14 are similar in material respects to claim 5.
Thus, for similar reasons to those found with respect to claim 5, and because
Jennings fails to overcome the deficiencies of Lee as noted with respect to
claim 5, we are persuaded of error in the Examiner’s conclusion that claim
14 would have been obvious to a person of ordinary skill in the art.
Accordingly, we do not sustain the rejection of claim 14.

Claim 25
Appellants argue that the combination of Lee and Jennings fails to
teach all features of claim 25 (App. Br. 8–9). Specifically, Appellants argue
that the combination of Lee and Jennings fails to teach streaming media
logic which is “operable to communicate the interrupt notification based on
availability of a secondary media stream to the endpoint” as recited in claim
25 (id.). The Examiner disagrees, citing Lee as disclosing this limitation
(Ans. 12, Item 36 (citing Lee ¶¶ 74, 76, 78, 80–81, 91)).
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This limitation of claim 25 is similar to claim 10 and for similar
reasons stated with respect to that claim, we are unpersuaded of error in the
Examiner’s determination that claim 25 would have been obvious to a
person of ordinary skill in the art considering the teachings of Lee and
Jennings. Accordingly, we sustain the Examiner’s rejection of claim 25.

Claims 1, 2, 6–13, 15-16, and 22–24
Appellants purport to omit claims 1, 2, 6–13, 15-16, and 22–24 from
appeal (App. Br. 2.). However, the claims that are stated to be under appeal
depend from claims purportedly not appealed, e.g., claim 4 depends from
claim 1. Therefore, the independent claims and the claims that depend from
them are necessarily before us for consideration. We note that the claims
purportedly not under appeal remain rejected (see generally Ans. 5–14) and
have not been canceled, see MPEP § 1215.03 (8th ed., Rev. 9, Aug. 2012).
Therefore, we conclude that claims 1, 2, 6–13, 15, 16, and 22–24 remain
before us on appeal. Because Appellants have not argued the patentability of
claims 1, 2, 6–13, 15, 16, and 22–24, such argument is waived and we pro
forma summarily sustain the rejections of these claims.

Appeal 2012-006536
Application 12/060,739

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DECISION
For the above reasons, the Examiner’s rejection of claims 4, 9, 10, and
25 is affirmed. The rejection of claims 1, 2, 6–13, 15, 16, and 22–24 is
summarily AFFIRMED. The rejection of claims 5 and 14 is REVERSED.
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-IN-PART

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