Ex Parte Walker et alDownload PDFPatent Trial and Appeal BoardJan 27, 201511224471 (P.T.A.B. Jan. 27, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PHILIP M. WALKER, GABRIEL B. BEGED-DOV, and PAUL BOERGER ____________ Appeal 2012-009718 Application 11/224,471 Technology Center 2400 ____________ Before JEAN R. HOMERE, DANIEL N. FISHMAN, and CHRISTA P. ZADO, Administrative Patent Judges. ZADO, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–3, 5–12, 14–16, 18, and 20–26.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellants’ invention generally relates to avoiding buffer underrun events during progressive data downloads by ensuring that any data file not 1 Appellants identify as the real party in interest Hewlett-Packard Development Company, LP. (App. Br. 3.) 2 Claims 4, 13, 17, and 19 are canceled. Appeal 2012-009718 Application 11/224,471 2 yet fully buffered will be provided in the form of a substitute data file. (See Spec. 21.) Claim 1, reproduced below, is representative (disputed limitation in italics): 1. A method performed by a computer for processing data that is available on the computer comprising: processing the data in an ordered fashion; encountering within the data an identification of extra data that is not presently available on the computer; determining proxy data for substitution in place of the extra data, wherein determining proxy data includes: determining a format of the extra data, the proxy data and the extra data not identical to each other and not stale or cached versions of each other; searching a database of candidate proxy data to determine if candidate proxy data with the format of the extra data is available; if candidate proxy data with the format of the extra data is available in the database, selecting the available candidate proxy data for use as the proxy data; and if candidate proxy data with the format of the extra data is not available in the database, generating proxy data having the format of the extra data; substituting the determined proxy data in place of the extra data; processing the determined proxy data along with the data in place of the extra data; receiving the extra data by the computer; substituting the received extra data in place of the previously substituted proxy data; and processing the substituted extra data. Appeal 2012-009718 Application 11/224,471 3 REFERENCES Hill US 5,805,815 Sept. 8, 1998 Agrawal et al. US 2002/0004813 A1 Jan. 10, 2002 Pfister et al. US 2003/0046365 A1 Mar. 6, 2003 Barnes et al. US 2006/0265725 A1 Nov. 23, 2006 Robotham et al. US 2010/0194753 A1 Aug. 5, 2010 THE REJECTIONS3 Claims 1–3, 5–12, 14–16, 18, and 20–26 stand rejected under 35 U.S.C. § 112, first paragraph as failing to provide adequate written description. (Ans. 5.) Claims 1, 2, 5–12, 14–16, 18, and 21–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pfister et al. (hereinafter “Pfister”), Agrawal et al. (hereinafter “Agrawal”), and Hill. (Ans. 7.) Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Pfister, Agrawal, and Barnes et al. (hereinafter “Barnes”). (Ans. 11.) Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Pfister, Agrawal, Hill, and Barnes. (Ans. 12.) Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Pfister, Agrawal, Hill, and Robotham et al (hereinafter “Robotham”). (Ans. 12.) Rather than repeat all the arguments here, we refer to the Briefs for the positions of Appellants and the Final Office Action and Answer for the positions of the Examiner. Only those arguments actually made by 3 The Examiner’s rejection of claims 1–3, 5–12, 14–16, 18, and 20–26 under 35 U.S.C. § 112, second paragraph is withdrawn. (Ans. 16.) Appeal 2012-009718 Application 11/224,471 4 Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). ISSUES The disputed limitation in this Appeal, “the proxy data and the extra data not identical to each other and not stale or cached versions of each other,” is recited in representative claim 1. Under § 112, first paragraph, has the Examiner erred by finding the disputed limitation lacks adequate written description? Under § 103(a), has the Examiner erred by finding the disputed limitation would have been obvious? ANALYSIS § 112, First Paragraph – Written Description The originally filed claims did not include the limitation “the proxy data and the extra data not identical to each other and not stale or cached versions of each other.” (Emphasis added.) The Examiner interprets this limitation as a negative limitation, and we agree. (Ans. 13.) According to the Examiner, the negative limitation is not positively recited (i.e., expressly supported) in the original disclosure. (Ans. 13, 14.). Accordingly, the Examiner finds claim 1 is not supported by the original disclosure under § 112, first paragraph, and fails to comply with the written description requirement. (Ans. 5, 6, 13–16.) The Court of Appeals for the Federal Circuit has determined that an express intent to confer on the claim language the novel meaning imparted Appeal 2012-009718 Application 11/224,471 5 by the negative limitation is required, such as an express disclaimer or independent lexicography in the written description that provides support for the negative limitation. Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (citations omitted). The originally filed Specification (“Spec.” filed Sept. 12, 2005) does not expressly support the features “not identical to each other” and “not stale or cached versions of each other.” Appellants specifically identify paragraphs 23, 24 and 29 of the Specification for support. (App. Br. 18.) However, our review of Appellants’ Specification does not reveal any express support for the negative limitation argued by Appellants. Only by way of example, the Specification does not describe how proxy data is synthesized or the origin of data in the pre-existing library in sufficient detail to rule out using stale or cached data as a proxy. (Spec. ¶ 22.) Therefore, we find no basis or express intent in the Specification that supports the negative limitations. In the absence of express intent, our reviewing court guides: “Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” (Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).) Here, the Specification does not provide a reason to exclude proxy data and extra data from being identical to each other or from being stale or cached versions of each other. As a result, we are unpersuaded the Examiner incorrectly determined the disputed limitation lacks adequate written description. We therefore sustain the Examiner’s rejection under § 112, first paragraph, of (1) independent claim 1; (2) independent claims 9, 14, 18, 21, Appeal 2012-009718 Application 11/224,471 6 and 25 which recite limitations commensurate with the disputed limitation; and (3) dependent claims 2, 3, 5–8, 10–12, 15, 16, 20, 22–24, and 26. § 103 - Obviousness The Examiner finds the disputed limitation would have been obvious in view of Pfister, Agrawal, and Hill. (Ans. 17.) The Examiner explains that because the disputed limitation lacks support in the Specification, the disputed limitation would have been obvious to a person of ordinary skilled the art at the time of invention. (Id.) Appellants correctly point out the conclusion of obviousness cannot be supported merely by showing lack of written description. (Reply Br. 1.) (Cf. In re Barker, 559 F.2d 588, 593 (CCPA 1977).) Here, the Examiner neither cites to specific portions of the prior art to show the disputed limitation would have been obvious, nor provides adequate explanation to support such finding. (Ans. 8, 17–18.) Rather, the Examiner incorrectly interprets the disputed limitation as “the proxy data and the extra data to be either the same type, format or compatibility with one another,” and finds the combined prior art teaches such. However, this interpretation is supported neither by the claim language nor the Specification. As a result, we are persuaded the Examiner incorrectly determined the combined prior art would have taught or suggested the disputed limitation. We therefore do not sustain the Examiner’s rejection under § 103 of (1) independent claim 1; (2) independent claims 9, 14, 18, 21, and 25 which recite limitations commensurate with the disputed limitation; and (3) dependent claims 2, 3, 5–8, 10–12, 15, 16, 20, 22–24, and 26. Appeal 2012-009718 Application 11/224,471 7 DECISION We affirm the Examiner’s written description rejection of the claims on appeal. However, we reverse the Examiner’s prior art rejections thereagainst. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is AFFIRMED. See 37 C.F.R. § 41.50(a)(1). 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 SSC Copy with citationCopy as parenthetical citation