Ex Parte Walker et al

Patent Trial and Appeal Board

Jan 27, 2015

11224471 (P.T.A.B. Jan. 27, 2015)

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
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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.
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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.

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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.)
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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
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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,
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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.
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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