Ex Parte Yoon

Board of Patent Appeals and Interferences

Aug 31, 2010

10667383 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONG-HYUM YOON
_____________

Appeal 2009-014063
Application 10/667,383
Technology Center 2400

____________

Before JOHN C. MARTIN, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 2-18. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellant’s invention is depicted in Figure 3, reproduced below:

Figure 3 depicts a server that judges whether audio/video (A/V)
streams can be outputted (110) to a renderer that requests the A/V streams
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(100). A server unavailableness message is provided to the renderer (130) if
the server judges that the audio/video streams cannot be outputted.
Claims 2 and 6, reproduced below, are representative of the subject
matter on appeal:
2. A method for outputting A/V streams onto a screen in response to
a user's request by a home network which includes a server for outputting
audio/video streams and plural renderers connected to the server through a
home network, comprising:
a step in which a renderer connected to a server requests A/V streams;
a step in which the server judges whether A/V streams can be
outputted in response to the request from the renderer; and
a step in which the server provides the A/V streams to the renderer
sequentially or simultaneously if the A/V stream can be outputted, or
outputting a server unavailabl[e]ness message to the renderer if the server
judges that the A/V streams cannot be outputted,
wherein, in the step of judging whether A/V streams can be outputted,
the server compares transmission time of entire A/V streams and A/V stream
transmission time according to a defined reproduction capability of the
server required for reproducing A/V streams, and then judges whether the
A/V streams can be outputted.

6. A method for outputting A/V streams onto a screen in response to
a user’s request by a home network which includes a server for outputting
audio/video streams and plural renderers connected to the server through a
home network, comprising:
a step in which a renderer connected to a server requests A/V streams;
a step in which the server judges whether A/V streams can be
outputted in response to the request from the renderer; and
a step in which the server provides the A/V streams to the renderer
sequentially or simultaneously if the A/V stream can be outputted, or
outputting a server unavailabl[e]ness message to the renderer if the server
judges that the A/V streams cannot be outputted,
wherein, in the step of judging whether A/V streams can be outputted,
the server compares the overall transfer rate of the A/V streams being
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reproduced and a predetermined A/V stream transfer rate on the basis of the
distance between a position where the A/V stream requested by the renderer
has been recorded and a position where the A/V stream being reproduced
has been recorded.

(Emphases added.)

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bleidt US 5,671,377 Sep. 23, 1997
Brown US 5,822,530 Oct. 13, 1998
Bachmat US 6,189,071 B1 Feb. 13, 2001
Goldthwaithe US 2003/0154480 A1 Aug. 13, 2003
Lam US 6,917,569 B1 Jul. 12, 2005
Seed US 2006/0015574 A1 Jan. 19, 2006
filed Feb. 14, 2002
Giammaressi US 7,086,077 B2 Aug. 1, 2006
effectively filed Apr. 1, 1999
The following rejections are before us for review:
1. The Examiner rejected claims 2-4, 8, and 11-18 under 35 U.S.C.
§ 103(a) as unpatentable over Giammaressi in view of Goldthwaite and
Seed.
2. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Giammaressi in view of Goldthwaite and Seed and further
in view of Lam.
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3. The Examiner rejected claims 5 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Giammaressi in view of Goldthwaite and Seed and further
in view of Bachmat.
4. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Giammaressi in view of Goldthwaite and Seed and further
in view of Brown.

ISSUES
The issues concerning independent claims 2 and 6 are as follows:
Did the Examiner err by determining that the combination of
Giammaressi, Goldthwaite, and Seed teaches a server that compares the
“transmission time of entire A/V streams and A/V stream transmission time
according to a defined reproduction capability of the server required for
reproducing A/V streams, and then judges whether the A/V streams can be
outputted,” as recited in claim 2?
Did the Examiner err by determining that the combination of
Giammaressi, Goldthwaite, Seed and Lam teaches a server that compares the
“overall transfer rate of the A/V streams being reproduced and a
predetermined A/V stream transfer rate on the basis of the distance between
a position where the A/V stream requested by the renderer has been recorded
and a position where the A/V stream being reproduced has been recorded”
(emphasis added), as recited in claim 6?
Appellant also separately argues claims 5 and 9, which depend on
claim 2.
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PRINCIPLES OF LAW
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974).
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d
at 988).

ANALYSIS
Analysis with respect to claims 2-4, 8, and 10-18
The Examiner (Ans. 11-12) treats Appellant’s (App. Br. 7)
explanation that claim 2 reads on page 8, lines 13-20 of Appellant’s
disclosure as an admission that the “transmission time of the entire A/V
streams” recited in claim 2 is broad enough to read on the overall transfer
rate:
Appellant indicates the comparison step of the claims is
described on page 8 lines 13- 20 of the disclosure, Appeal Brief
pg. 7 line 16. This portion of the disclosure describes
comparing the overall transfer rate of the A/V streams being
reproduced, analogous to "transmission time of entire A/V
streams" in the claims, to a predetermined A/V stream transfer
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rate, analogous to "transmission time according to a defined
reproduction capability of the server" in the claims. As a result
of this comparison it is determined if a requested A/V stream
will be outputted. . . . Appellant defines the claimed
"transmission time" as transfer rates on page 8 lines 13-20 of
the disclosure. Therefore, the bandwidth disclosed by
Giammaressi is equivalent to the transfer rates disclosed by
appellant.
(Ans. 11-12 (emphasis added).) Appellant has not even acknowledged the
Examiner’s reliance on the discussion of claim 2 at page 7 of the Brief, let
alone demonstrated any error in the Examiner’s treatment of that discussion
as an admission regarding the scope of the claim. Also, Appellant’s
argument (Reply Br. 3-4) that it is not enough to show that the prior art
discloses or suggests subject matter that is “analogous” or “equivalent” to
the claimed subject matter is unpersuasive. Although the Examiner uses
these terms in the above-quoted paragraph, it is clear from pages 11-12 of
the Answer that the Examiner finds that the language in question in claim 2
reads on Giammaressi. That is, the Examiner relies on the above-noted
admission to show that the recited “transmission time” reads on an overall
transfer rate and then finds that Giammaressi’s disclosed bandwidth
represents an overall transfer rate. See Answer 11(“Giammaressi defines
bandwidth as a transmission rate (‘an appropriate bandwidth of 9 Mbps’, col.
6 lines 37-38).”).
Accordingly, we will affirm the Examiner’s rejection of representative
claim 2 and for the same reasons we will also affirm the rejection of
dependent claims 3-4, 8, and 10-17 and of independent claim 18 because
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Appellant relies on the same arguments as those presented for claim 2 (App.
Br. 18-19).

Analysis with respect to claims 6 and 7
With respect to claim 6, we agree with Appellant’s argument (App.
Br. 19-20) that one skilled in the art would not have been motivated to
modify Giammaressi in view of Lam’s disk array storage device managing
system to determine hard drive seek times in order to judge whether A/V
streams can be outputted to the renderer. At best, Lam teaches determining
seek distances and converting them into time (col. 3, ll. 2-3) for the purpose
of dynamic reallocation of data on a disk array storage device based on
actual usage (col. 2, ll. 64-65). Lam does not cure Giammaressi’s deficiency
of judging whether A/V streams can be outputted by the server comparing
“the overall transfer rate of the A/V streams being reproduced and a
predetermined A/V stream transfer rate on the basis of the distance between
a position where the A/V stream requested by the renderer has been recorded
and a position where the A/V stream being reproduced has been recorded”
(emphasis added), as recited in claim 6. Just because Lam teaches that
distances between two locations can be converted into time, that does not
equate to judging whether A/V streams can be outputted based on the
distance between different locations.
Furthermore, the Examiner’s articulated motivation (Ans. 8) for
combining the references in order to obtain the recited benefit of providing
dynamic disk allocation based on actual usage (citing Lam’s col. 2, ll. 64-
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65), does not support the legal conclusion of obviousness, because claim 6
does not just require determining the read time between two locations but
also requires doing so for the purpose of judging whether A/V streams can
be outputted. See KSR, 550 U.S. at 418. The Examiner’s statement that “the
combination teaches the transfer rate of a requested stream is dependent
upon the locations in memory of the requested stream and the currently
produced streams” (Ans. 13) (emphasis added) fails to recognize this
requirement of claim 6.
For the above reasons, we will reverse the Examiner’s rejection of
claims 6, as well as the rejection of dependent claim 7, as neither of the
additionally relied upon references of Goldthwaite and Seed cure the above-
noted deficiency.

Analysis with respect to claims 5 and 9
With respect to claims 5 and 9, which depend on claim 2, Appellant
presents similar arguments with respect to the deficiency identified with the
Lam reference supra, with respect to the Bachmat reference (App. Br. 22-
23). More particularly, Appellant argues that Bachmat is directed to
managing resources in a disk array storage device and has nothing
whatsoever to do with judging whether A/V streams can be outputted to the
user. We agree that at best Bachmat (col. 11, ll. 45-49) teaches determining
the total time that a physical disk operates in performing transfers including
all of the seek, latency, and transfer times associated with that activity.
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Accordingly, we will reverse the Examiner’s rejection of claim 5 as
well as the rejection of claim 9.

CONCLUSIONS
The Examiner did not err by determining that the combination of
Giammaressi, Goldthwaite, and Seed teaches a server that compares the
“transmission time of entire A/V streams and A/V stream transmission time
according to a defined reproduction capability of the server required for
reproducing A/V streams, and then judges whether the A/V streams can be
outputted.”
The Examiner erred by determining that the combination of
Giammaressi, Goldthwaite, Seed, and Lam teaches a server that compares
the “overall transfer rate of the A/V streams being reproduced and a
predetermined A/V stream transfer rate on the basis of the distance between
a position where the A/V stream requested by the renderer has been recorded
and a position where the A/V stream being reproduced has been recorded”
(emphasis added).
The Examiner also erred by determining that the combination of
Giammaressi, Goldthwaite, and Bachmat discloses the limitations recited in
dependent claims 5 and 9.

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ORDER
The decision of the Examiner to reject claims 2-4, 8, and 10-18 is
affirmed. The decision of the Examiner to reject claims 5-7 and 9 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)(v).

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AFFIRMED-IN-PART

ELD

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