Ex Parte Wee et alDownload PDFPatent Trial and Appeal BoardApr 30, 201410245344 (P.T.A.B. Apr. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/245,344 09/16/2002 Susie J. Wee 200207953-1 8486 7590 04/30/2014 HEWLETT-PACKARD COMPANY Intellectual Property Administration P.O. Box 272400 Fort Collins, CO 80527-2400 EXAMINER GELAGAY, SHEWAYE ART UNIT PAPER NUMBER 2437 MAIL DATE DELIVERY MODE 04/30/2014 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 SUSIE J. WEE and JOHN G. APOSTOLOPOULOS ____________ Appeal 2011-007526 Application 10/245,344 Technology Center 2400 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and DANIEL N. FISHMAN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007526 Application 10/245,344 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 1-18, 20, 25-27, and 31-39, all the claims pending in the application. Claims 19, 21-24, and 28-30 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to streaming media data, particularly scalably encoded data. See Spec. 1:16-17. Claim 1 is illustrative: 1. A system for processing data, said system comprising: a second device configured to store scalably encoded data received from a first device, said first device configured to receive data and segment at least a portion of said data into regions, said first device also configured to scalably encode at least one of said regions into said scalably encoded data, said scalably encoded data comprising portions that can be used to output data at a plurality of quality levels, wherein at least a portion of scalably encoded data stored at said second device comprises scalable data packets, said second device configured to transcode said scalable data packets without requiring duplication of said scalable data packets, said second device configured to transmit said scalably encoded data to a downstream device. Appellants appeal the following rejections: R1. Claims 1-18, 20, 25-27, and 31-39 are rejected under 35 U.S.C. § 112, 1 st paragraph as failing to comply with the written description requirement; R2. Claims 1-5, 7, 9-12, 14, 16-18, 20, 25, 27, 31-35, 37, and 39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Suzuki (EP Appeal 2011-007526 Application 10/245,344 3 939545 A2, Sept. 1, 1999), Radha (US 6,292,512 B1, Sept. 18, 2001), and Van Der Vleuten (US Patent Pub. 2002/0076043 A1, June 20, 2002); and R3. Claims 6, 8, 13, 15, 26, 36, and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Suzuki, Radha, Van Der Vleuten, and Cho (US 6,501,861 B1, Dec. 31, 2002). ANALYSIS Rejection under §112, 1 st paragraph Issue 1: Did the Examiner err in finding that the claims fail to comply with the written description requirement? Appellants contend that, with reference to Appellants’ Fig. 41, “[s]teps 4122, 4124 and 4126 describe the elimination of certain data packets, truncating data in the data packets, or passing the data packets through with modification, respectively. Each of these described embodiments is implicitly performed without duplication” (App. Br. 10). In response, the Examiner finds that “Appellants’ argument failed to show where exactly there is support for ‘without duplication’ or similar terms in the disclosure or figures” (Ans. 11) . . . [t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient” (id. at 12). We agree with the Examiner. Our reviewing court guides: “Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.” Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Appeal 2011-007526 Application 10/245,344 4 Here, the Examiner finds there is no support in the Specification indicating that scalable data packets are transcoded without requiring duplication of the scalable data packets (negative limitation recited in each of independent claims 1, 10, 17, and 31). Here, we find Appellants’ response (which points to the Specification at page 49, lines 14-19, and Figure 41), does not describe any reason for transcoding without duplicating data packets, as the disclosed eliminating, truncating, and passing data packets are not necessarily implicitly tied to any particular type of data packets, i.e., duplicate data packets or non-duplicate data packets. (See App. Br. 10-11). We find the portions of the Specification pointed to by the Appellants (id.) require speculation as to whether duplication of data packets is required or not. We do not find that Appellants’ Specification identifies any reason to exclude duplicating. Therefore, after applying the guidance of Santarus to the facts of this case, on this record, we are not persuaded of Examiner error regarding the § 112, first paragraph rejection. Accordingly, we sustain the Examiner's rejection of claims 1-18, 20, 25-27, and 31-39 under § 112, first paragraph (written description). Rejection under 103(a) Claims 1-5, 7, 9-12, 14, 16-18, 20, 25, 27, 31-35, 37, and 39 Issue 2: Did the Examiner err in finding that the combined cited art teaches and/or suggests a first device configured to receive data and transcoding scalable data packets without requiring duplication of the scalable data packets, as set forth in claim 1? Appellant contends that “Suzuki does not teach, describe, or suggest ‘said first device configured to receive data . . .’” (App. Br. 13). Appellants Appeal 2011-007526 Application 10/245,344 5 further contend that Suzuki “disclose[s] that data of different qualities is provided to client terminals by duplicating any necessary data” (id. at 14) “. . . [m]oreover, by disclosing that data must be duplicated, Appellants respectfully submit that Suzuki teaches away from the claimed embodiments” (id. at 16). We disagree with Appellants. We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer (see Ans. 13-20). Our discussions here will be limited to the following points of emphasis. We note at the outset that independent claims 1, 10, and 31 recite, inter alia, “a first device configured to . . . said second device configured to . . .” (emphasis added). It has been held that the recitation “configured to” is directed to functional claim language, which is not entitled any patentable weight. 1 At best, such recitation is a statement of intended use, 2 which 1 See Superior Industries v. Masaba, 2014 WL 163046 at *5 (Fed. Cir. Jan. 16, 2014), (Rader, J., concurring) (stating “[A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157[] (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)”). 2 Our reviewing court has held that a statement of intended use in an apparatus claim cannot distinguish over a prior art apparatus that discloses all the recited structural limitations and is capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Footnote continued on next page.) Appeal 2011-007526 Application 10/245,344 6 merely indicates the capability or intent to perform functions, as opposed to actually performing the functions, as argued by Appellants. Therefore, because Appellants’ arguments are not commensurate with the scope of the claims, these arguments are not persuasive. Further, even if we gave patentable weight to the recited functional language/intended use limitation, such recitation would be met fully by an equivalent prior art structure disclosed in the Suzuki-Radha-Van Der Vleuten (and/or Cho) combination, which appears to be capable of performing the recited functions. In particular, regarding Appellants’ argument the Suzuki fails to disclose said first device configured to receive data and segment at least a portion of said data into regions, we note that the Examiner relies upon Radha and Suzuki, not Suzuki alone, to teach this limitation (see Ans. 14; see also Radha, col. 3 l. 67 to col. 4, l. 8). Thus, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). Appeal 2011-007526 Application 10/245,344 7 those of ordinary skill in the art.”) (Citations omitted, emphasis added). This reasoning is applicable here. Regarding the contested negative limitation discussed supra, a question arises as to how much patentable weight should be accorded to the negative limitation (e.g., without requiring duplication) when such negative limitation does not have the requisite support in the Specification (i.e., a reason to exclude). See § 112, first paragraph, discussion supra. Assuming arguendo that our reviewing court may accord the contested negative limitation patentable weight, we find that the Examiner has shown that the combined art teaches the argued limitation, consistent with Appellants’ Specification. For example, Suzuki discloses “when there are provided a plurality of video program reception apparatus, a video stream with necessary quality is duplicated by an edge router at edges branching to the plurality of reception apparatus . . .” (¶ [0011]). The Examiner interprets this as “in a case where there is only one reception apparatus, there is no need for duplication” (Ans. 15). Appellants merely respond that “Suzuki is silent regarding the manner in which data is handled when there is only one reception apparatus” (Reply Br. 4). We find that it is clear that Suzuki implements the duplication of video stream because it operates in a multicast system whereby the same video data is served to a plurality of reception apparatus. As a result, we find that it is reasonable to interpret Suzuki’s system as inherently not needing a duplication process when only one reception apparatus is used, i.e., without requiring duplication. In addition, the Examiner finds that based upon Appellants’ own argument that “the transcoding function truncates the data in the data Appeal 2011-007526 Application 10/245,344 8 packets” and that this feature implicitly teaches the claimed without requiring duplication (see App. Br. 15), Van Der Vleuten similarly teaches that “the incoming scalably compressed bit-streams need to be truncated” which also must be adequate to meet the claimed limitation transcode said scalable data packets without requiring duplication of said scalable data packets (see Ans. 16-17; Van Der Vleuten (¶ [0010])). Even if we assume arguendo (without deciding) that truncating data is implicitly performed without duplicating the data (as proffered by Appellants), the Examiner has established that Van Der Vleuten teaches the same feature. Appellants further argue that the Suzuki reference “teaches away” from the claimed embodiments (see App. Br. 16). As noted supra, we find that Suzuki discloses that a video stream with necessary quality is duplicated by an edge router when sending the video stream to a plurality of reception apparatus. However, we do not find, and Appellants do not establish, that Suzuki criticizes, discredits, or otherwise discourages the claimed without requiring duplication when only one reception device is in use. “[T]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In view of the above discussion, since Appellants have not demonstrated that the Examiner erred in finding the argued limitations in the combined disclosure of Suzuki, Radha, and Van Der Vleuten (and Cho), the Examiner’s 35 U.S.C. § 103(a) rejection of representative independent claim 1, as well as claims 2-18, 20, 25-27, and 31-39 not separately argued by Appellants, is sustained. Appeal 2011-007526 Application 10/245,344 9 DECISION We affirm the Examiner’s § 112, first paragraph and § 103(a) rejections. 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 ELD Copy with citationCopy as parenthetical citation