Ex Parte Zuckerman et al

Patent Trial and Appeal Board

Jan 27, 2014

12579774 (P.T.A.B. Jan. 27, 2014)

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.
12/579,774 10/15/2009 Gal Zuckerman 2299-18.747BS 9011
86636 7590 01/27/2014
BRUNDIDGE & STANGER, P.C.
2318 MILL ROAD, SUITE 1020
ALEXANDRIA, VA 22314
EXAMINER
JAROENCHONWANIT, BUNJOB
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
01/27/2014 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 GAL ZUCKERMAN and GIL THIEBERGER
____________

Appeal 2011-010742
Application 12/579,774
Technology Center 2400
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010742
Application 12/579,774

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STATEMENT OF THE CASE
Gal Zuckerman and Gil Thieberger (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed invention and reads as
follows:
1. A streaming system comprising:
a plurality of fractional-storage CDN servers accessed via
the Internet, and configured to store erasure-coded fragments
associated with streaming contents;
each of the servers configured to store less than the
minimum amount of data required to decode the fragments; and
significantly more assembling devices than the CDN
servers, the assembling devices scattered over different time
zones spanning at least three hours;
the assembling devices configured to obtain the
fragments from subsets of the servers, wherein each of at least
most of the subsets comprises less than all of the servers;
on rush hours of a usual day of the most loaded time
zone, the assembling devices belonging to the most loaded time
zone operative to generate a content demand greater than a
predefined percent of the total fragment delivery bandwidth
available to the servers; and
all the assembling devices operative to generate a content
demand greater than the predefined percent over a duration of at
least two times the duration of the rush hours of the most
loaded time zone, by selecting the subsets based on the servers’
load conditions.

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Application 12/579,774

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REJECTIONS
The following rejections are before us for review:1
I. The Examiner provisionally rejected claims 1-20 under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over copending U.S. Applications
12/579,391, 12/579,396, 12/580,104, 12/580,129, 12/580,166,
and 12/580,200. 2
II. The Examiner rejected claims 17-20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
III. The Examiner rejected claims 1-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
IV. The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Lisiecki (US 2007/0055765 A1, published
Mar. 8, 2007) and DaCosta (US 2008/0189429 A1, published
Aug. 7, 2008)3.
The Examiner also objected under 35 U.S.C. § 132(a) to an
amendment to the Specification filed on June 16, 2010 on the grounds that

1 The Examiner’s objections to claim 17 (see Final Rej., mailed August
5, 2010, at 2) and to the Drawings (see Final Rej., 3-4) constitute
petitionable matter. As such, the objections are not within the jurisdiction of
the Board and are not part of the instant appeal. In re Mindick, 371 F.2d
892, 894 (CCPA 1967).
2 The provisional obviousness double patenting rejections over
copending U.S. Applications 12/579,858, 12/580,016, 12/580,058,
12/580,181, and 12/580,205 have been withdrawn by the Examiner. Ans. 4.
3 The Examiner’s rejection of claims 2-5 and 17-20 over “Lisiecki-
DaCosta in view of [what] was well known in the art” is considered along
with this rejection. See Ans. 9.
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Application 12/579,774

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the amendment introduced new matter into the original disclosure. In
particular, the Examiner objected under 35 U.S.C. § 132 and rejected under
35 U.S.C. § 112, first paragraph, the same subject matter on the ground that
these claimed features are not supported by the original disclosure. Ans. 7.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Rejection I
Appellants represent that they “will defer their answer to the double
patenting rejections until the end of the prosecution.” Appellants’
Amendment, filed June 16, 2010, at 74. Thus, we do not reach the merits of
the Examiner's provisional double patenting rejections because it would be
premature to do so at this time, consistent with the holding of Ex Parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential).

Rejections II and III
Appellants do not present any arguments with respect to these
rejections. Accordingly, we summarily sustain the rejection of claim 17-20
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement and of claims 1-20 under 35 U.S.C. § 112, second
paragraph, for being indefinite. See In re Berger, 279 F.3d 975, 984, 985
(Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection

4 We note that Appellants’ arguments presented in a copending
application, namely, U.S. Application No. 12/580,181, are not relevant to the
instant application. See Reply Br. 6-8.
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under 35 U.S.C. § 112, second paragraph, when the applicant failed to
contest the rejection on appeal).
The Examiner also objected under 35 U.S.C. § 132(a) to an
amendment to the Specification filed on June 16, 2010 on the grounds that
the amendment introduced new matter into the original disclosure. Ans. 7.
Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181
and a rejection is appealable to the Patent Trial and Appeal Board. When
the issue of new matter presented is the subject of both an objection and a
rejection, the issue is appealable. Manual of Patent Examining Procedure
(MPEP) § 2163.06, II. Review of New Matter Objections And/Or Rejections
(8th Ed., Rev. 8, July 2010). See also MPEP § 608.04(c) (“where the
alleged new matter is introduced into or affects the claims, thus necessitating
their rejection on this ground, the question becomes an appealable one, and
should not be considered on petition even though that new matter has been
introduced into the specification also.”). To the extent that the objection to
the Specification in the Final Rejection turns on the same issues as the
rejection under 35 U.S.C. § 112, first paragraph, our decision with respect to
the rejection is dispositive as to the corresponding objection.

Rejection IV
Appellants argue that neither Lisiecki nor DaCosta discloses “servers
configured to store less than the minimum amount of data required to decode
the fragments,” as called for by each of independent claims 1, 14, and 17.
App. Br. 13, 14, and 15; see also App. Br., Claims App’x.
The Examiner found that Lisiecki fails to disclose servers configured
to store “erasure-coded content.” Ans. 8. Nonetheless, the Examiner found
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that DaCosta discloses the “concept of using erasure- coded scheme to
encode data into multiple fragments and to distribute the fragments
throughout the network within the server and/or peer nodes, e.g., client
devices.” Id.; see also Ans. 11. Moreover, the Examiner opines that
DaCosta discloses “distributing fragments less than the amount required for
reconstructing the fragments back to the streaming content. Id. at 8.
Although DaCosta discloses the concept of erasure-coding5,
nonetheless, DaCosta does not disclose “servers configured to store less than
the minimum amount of data required to decode the fragments,” as called for
by each of independent claims 1, 14, and 17. Appellants’ Specification
describes segmenting content 100 into segments 101a, 101b to 101j and each
segment is then encoded into erasure-coded fragments. For example,
segment 101a is encoded into erasure-coded fragments 390a to 390(N),
which are separately distributed for storage to fractional-storage servers
399a to 399(N), respectively. Spec. 14, l. 31 through Spec. 15, l. 2 and fig.
7. Similarly, in DaCosta, content Acme_Clip.mov is divided into a plurality
of segments 1 through n and each segment is encoded into erasure coded
packets 50. DaCosta, para. [0075] and fig. 1. However, in contrast to
Appellants’ fractional-storage servers 399a to 399(N), servers 20, 22, 24,
and 26 of DaCosta store entire segments. Compare Appellants’ Figure 7
with DaCosta, fig. 1. Specifically, server 20 stores segments 3, 5, and 7;
server 22 stores segments 1 and 4, server 24 stores unusable segment 4, and
server 26 stores segments 2 and 6. See id., para. [0076]. Although we

5 Erasure coding “provide[s] a mechanism for transforming a message
of n packets into a message with >n packets, allowing the original message
to be recovered from any subset of the latter packets.” DaCosta, para.
[0034].
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appreciate that when reconstructing content Acme_Clip.mov in DaCosta a
client device retrieves separate packets from servers 20, 22, 24, and 26,
nonetheless, because each server in DaCosta stores entire segments,
DaCosta’s servers do not “store less than the minimum amount of data
required to decode the fragments,” as called for by each of independent
claims 1, 14, and 17.
Hence, the Examiner’s conclusion of obviousness is based on
erroneous underlying findings that DaCosta discloses, “servers configured to
store less than the minimum amount of data required to decode the
fragments.” Therefore, for the foregoing reasons, we do not sustain the
rejection of independent claims 1, 14, and 17 and their respective dependent
claims 2-13, 15, 16, and 18-20 under 35 U.S.C. § 103(a) as unpatentable
over Lisiecki and DaCosta.

SUMMARY
The Examiner decision to reject claims 17-20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, is affirmed.
The Examiner decision to reject claims 1-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is affirmed.
The Examiner decision to reject claims 1-20 under 35 U.S.C. § 103(a)
as unpatentable over Lisiecki and DaCosta 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)(iv).

AFFIRMED
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