Ex Parte Zhang et al

Board of Patent Appeals and Interferences

Mar 31, 2008

09848706 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte QIAN ZHANG, WENWU ZHU, YA-QIN ZHANG,
and FAN YANG
________________

Appeal 2007-3805
Application 09/848,706
Technology Center 2100
________________

Decided: March 31, 2008
________________

Before JAMES D. THOMAS, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-33. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM IN PART. We also enter a new ground of rejection
against claims 28-33 under the provisions of 37 C.F.R. § 41.50(b).
Appeal 2007-3805
Application 09/848,706

THE INVENTION
The disclosed invention relates generally to an architecture and
techniques for transmitting content through heterogeneous networks (Spec.
1). More particularly, at least one embodiment of Appellants’ invention is
directed to streaming media content over heterogeneous networks (including
wireless networks) in a manner unencumbered by the limitations commonly
associated with the transport layer protocol of conventional streaming
architectures (Spec. 3).

Independent claims 19 and 30 are illustrative:
19. A method comprising:

receiving a request from a wireless host for content
available from a network server;

establishing a communication channel to service the
request between the wireless host and the network server over a
wireless network and a wireline network coupled to the server;
and
adjusting transmission characteristics in one or more of
the wireline network and/or the wireless network to improve
transmission quality based, at least in part, on one or more
control parameters of a transport layer protocol of the
communication channel which distinguish wireline
transmission problems from wireless transmission problems.

30. A transport layer protocol to facilitate streaming of media
content across heterogeneous networks, the protocol
comprising:

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a congestion parameter, which provides a receiving
network element with an measure of congestion incurred in
transmission within the network;

a fading parameter which, when asserted, provides a
receiving network element with an indication that a
communicatively coupled wireless host just emerged from a
fading condition; and

a BER parameter, which provides a receiving network
element with an measure of bit error rate incurred in
transmission within a wireless network.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Zombek US 2001/0032232 A1 Oct. 18, 2001
Liao US 2002/0097722 A1 July 25, 2002

THE REJECTIONS
1. Claims 1-5, 8-15, 18-21, and 25-33 stand rejected under 35 U.S.C.
§102(e) as being anticipated by Zombek.
2. Claims 6, 7, 16, 17, and 22-24 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Zombek in view of Liao.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
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“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.”) (Internal citations
omitted.)
ANALYSIS
Claims 1-5, 8-15, and 18
We consider the Examiner’s rejection of claims 1-5, 8-15, and 18 as
being anticipated by Zombek. Since Appellants’ arguments have treated
these claims as a single group which stand or fall together, we select
independent claim 1 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii).
Appellants make the following contentions:
The Examiner fails to point out where in Zombek it is taught, a
single “network gateway . . . to establish a communication
channel form the server to the wireless host through both the
wireline network and the wireless network.”

(App. Br. 9).

After reviewing the record before us, we find the weight of the
evidence supports the Examiner’s finding of anticipation. Regarding the
argued limitation of a “single” network gateway, we note that the word
“single” is not recited in the claim. Moreover, our reviewing court has
repeatedly emphasized “that an indefinite article ‘a’ or ‘an’ in patent
parlance carries the meaning of ‘one or more’ in open-ended claims
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containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic
Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). Here, Zombek
expressly discloses that “[a] number of the protocol gateways (PGs) 116a,
116b, and 116c, collectively PGs 116, can be configured to support a
specific network access protocol.” (¶[0072], emphasis added). Therefore,
we find a broad but reasonable construction of Appellants’ claimed
“network gateway” reads on Zombek’s protocol gateway(s) 116. We agree
with the Examiner that the argued elements of claim 1 broadly but
reasonably read on the Zombek reference, as follows:

Independent Claim 1 Zombek
a network gateway,

See Protocol Gateway 116a, Fig. 1A,
¶[0072].
coupled to each of the server and the
wireless host,

Zombek discloses Protocol Gateway
116a coupled to each of the back-end
server (BES) 122a and the client
device 112a (i.e., wireless host), as
shown in Fig. 1A.
To establish a communication
channel from the server to the
wireless host through both the
wireline network and the wireless
network,

We find Zombek discloses a
communication channel to enable
communications from the back-end
server (BES) 122a to the client
device 112a (i.e., wireless host)
through both the wireline network
(network 114 and/or networks 118a
and 118b) and the wireless network
108, as clearly shown in Fig. 1A.

Because we conclude that Appellants have not met their burden of
showing error in the Examiner’s prima facie case of anticipation, we sustain
the Examiner’s rejection of representative claim 1 as being anticipated by
Zombek. Pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii), we
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have decided the appeal with respect to dependent claims 2-5, 8-15, and 18
in this group on the basis of the selected representative claim alone.
Therefore, we sustain the Examiner’s rejection of claims 2-5, 8-15, and 18 as
being anticipated by Zombek for the same reasons discussed supra with
respect to representative claim 1.

Claims 19-21 and 25-29
We consider the Examiner’s rejection of claims 19-21 and 25-29 as
being anticipated by Zombek. Since Appellants’ arguments have treated
these claims as a single group which stand or fall together, we select
independent claim 19 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii).
Regarding independent claim 19, Appellants restate their previous
argument that “Zombek fails to teach establishing a communication channel
over a wireless network and a wireline, as discussed above in support of
claim 1.” (App. Br. 10.)
In response, we have fully addressed this argument with respect to
claim 1 above. Because we conclude that Appellants have not met their
burden of showing error in the Examiner’s prima facie case of anticipation,
we sustain the Examiner’s rejection of representative claim 19 as being
anticipated by Zombek for the same reasons discussed above for claim 1.
Pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii), we have
decided the appeal with respect to dependent claims 20, 21, and 25-29 in this
group on the basis of the selected representative claim alone. Therefore, we
sustain the Examiner’s rejection of claims 20, 21, and 25-29 as being
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anticipated by Zombek for the same reasons discussed supra with respect to
representative claim 19.

Dependent claims 6, 7, 16, 17, and 22-24
We consider next the Examiner’s rejection of dependent claims 6, 7,
16, 17, and 22-24 as being as being unpatentable over Zombek in view of
Liao.
Appellants contend that these dependent claims are patentable over
Zombek in view of Liao for the same reasons previously argued with respect
to independent claims 1 and 19 (App. Br. 13-15).
In response, we see no deficiencies with respect to the Examiner’s
rejection of claims 1 and 19 as being anticipated by Zombek, as discussed
supra. Therefore, Appellants have not presented any substantive arguments
directed separately to the patentability of dependent claims 6, 7, 16, 17, and
22-24. In the absence of a separate argument with respect to the dependent
claims, those claims stand or fall with the representative independent claim.
See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, we sustain the Examiner’s rejection of these
claims as being unpatentable over Zombek in view of Liao for the same
reasons discussed supra with respect to independent claims 1 and 19.

Independent claims 30 and 33
We consider next the Examiner’s rejection of independent claims 30
and 33 as being anticipated by Zombek.
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Appellants contend that the Examiner has failed to show where the
“fading parameter” element is disclosed in the Zombek reference (App. Br.
10-12).
The Examiner disagrees. The Examiner contends that the limitations
recited in the preambles of claims 30 and 33 should not be given patentable
weight because they are merely a statement of intended purpose (Ans. 12-
13).
In response, we note that the “fading parameter” element is clearly
recited in the body of both claims 30 and 33. Regarding the rejection of
independent claim 30, the Examiner refers to the rejections of dependent
claims 3, 6, and 8 as providing the rationale supporting the rejection of
independent claim 30 (see Ans. 9). However, we note that dependent claims
3 and 8 (rejected under § 102) do not recite a “fading parameter” element.
Significantly, dependent claim 6 (which recites a “fading timeout monitor”)
is rejected not under § 102, but rather under § 103. In fact, in the rejection
of claim 6, the Examiner admits that “Zombek differs from the claimed
invention in that it fails to specify [a] fading timeout monitor.” (Ans. 10.)
In light of this record, we conclude that Appellants have met their burden of
showing error in the Examiner’s prima facie case of anticipation. Therefore,
we reverse the Examiner’s rejection of independent claims 30 and 33 as
being anticipated by Zombek. Because claims 31 and 32 depend from
independent claim 30, we also reverse the Examiner’s rejection of these
claims as being anticipated by Zombek.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown the Examiner erred in rejecting claims 1-5, 8-15,
18-21, and 25-29 under 35 U.S.C. § 102(e) for anticipation.
We also conclude that Appellants have not shown the Examiner erred
in rejecting claims 6, 7, 16, 17, and 22-24 under 35 U.S.C. § 103(a) for
obviousness.
However, we conclude that Appellants have shown the Examiner
erred in rejecting claims 30-33 under 35 U.S.C. § 102(e) for anticipation.

NEW GROUND OF REJECTION
We enter the following new rejection of claims 28-33 under the
provisions of 37 C.F.R. § 41.50 (b).

35 U.S.C. § 101
Claims 28-33
Claims 28-33 are rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
Regarding claims 28 and 29, we note that a computer-readable
medium (or media) having computer-executable instructions is directed to
statutory subject matter so long as the language of a claim is not supported
in the Specification with nonstatutory embodiments (i.e., signals,
transmission mediums and the like). See In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007) (A claim directed to computer instructions embodied in a
signal is not statutory under 35 U.S.C. § 101). Cf. In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994) (a claim to a data structure stored on a
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computer readable medium that increases computer efficiency held
statutory).
Here, Appellants’ Specification discloses that computer readable
media (that includes computer storage media and communications media) is
intended to broadly encompass modulated data signals including carrier
waves (Spec. 41). Because Appellants’ claims broadly read on signals and
other nontangible transmission mediums, we conclude that claims 28 and 29
are directed to nonstatutory subject matter.
Regarding independent claims 30 and 33, we note that these claims
are directed to a “transport layer protocol,” as recited in the preambles of
each claim. Because a computer network protocol is merely a set of rules
and associated data structures that govern communication of data over a
network, we conclude that these claims are directed to abstract ideas1
and/or data structures per se.
With respect to independent claims 30 and 33, the recited parameters
are “information” which is not necessarily physical even though it has to be
converted to a physical form, such as an electrical signal, to be transmitted.
The parameters are not recited to be stored on a tangible medium which
might be considered a manufacture under § 101. Thus, it is our view that the
recited “parameters” of claim 30 are analogous to data structures per se,
although no arrangement of the information is claimed. Therefore, claim 30
does not fall within any of the four categories of § 101. See In re

1 The Supreme Court has specifically identified three categories of
unpatentable subject matter: “laws of nature, natural phenomena, and
abstract ideas.” See Diamond v. Diehr, 450 U.S. 175, 185 (1981).

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Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994) (claim to a data
structure per se held nonstatutory). Alternatively, even if the recited
parameters of claim 30 have some physical existence, such an electrical
signal, nontangible physical subject matter does not fall within any of the
four categories of § 101. See In re Nuijten, 500 F.3d at 1357.
Regarding dependent claims 31 and 32, because we find the language
of these claims to be indefinite (see new grounds of rejection under
35 U.S.C. § 112, second paragraph infra), we conclude that these claims do
not remedy the aforementioned deficiencies of independent claim 30 from
which claims 31 and 32 depend. Therefore, we also reject claims 31 and 32
under 35 U.S.C. § 101 as being directed to nonstatutory subject matter.

35 U.S.C. § 112, second paragraph
Claims 28, 29, 31, and 32 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
Regarding claim 28, we conclude that the scope of this claim
encompasses two statutory subject classes: (1) the method of claim 19 from
which claim 28 depends, and also (2), an article of manufacture (i.e., a
computer-readable medium). We consider this hybrid claim indefinite. See
S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1372 ( Fed. Cir. 2001) (“When the
claims become so ambiguous that one of ordinary skill in the art cannot
determine their scope absent speculation, such claims are invalid for
indefiniteness.”) (citing In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)).
Cf. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
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Cir. 2005) (A claim directed to an apparatus and a method for using that
system found to be indefinite).
Regarding claim 29, we find it unclear whether the claim is directed to
a computer or to a computer-readable media. Although the claim term
“comprising” is open-ended, an embodiment where a computer is a
computer-readable media appears to be within the scope of the claim. We
do not see how a computer can be a computer-readable media, as claimed.
Accordingly, we conclude that claim 29 is indefinite.
Regarding claim 31, we find it unclear how a computer can be
comprised of a “sender” that, within the scope of the claim, broadly reads on
a person (or software) that performs the function of sending. Accordingly,
we conclude that claim 31 is indefinite.
Regarding claim 32, we find it unclear how a computer can be
comprised of a “receiver” that, within the scope of the claim, broadly reads
on a person (or software) that performs the function of receiving.
Accordingly, we conclude that claim 32 is indefinite.

DECISION
The decision of the Examiner rejecting claims 1-29 is affirmed.
The decision of the Examiner rejecting claim 30-33 is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R.§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R.§ 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review." 37 C.F.R
§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS
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FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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 - 37 C.F.R. § 41.50(b)

clj

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