Ex Parte Zuckerman et al

Patent Trial and Appeal Board

Mar 28, 2014

12579403 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/579,403 10/14/2009 Gal Zuckerman 2299-14.747BS 8241
86636 7590 03/28/2014
BRUNDIDGE & STANGER, P.C.
2318 MILL ROAD, SUITE 1020
ALEXANDRIA, VA 22314
EXAMINER
CHAO, MICHAEL W
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
03/28/2014 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 2011-011279
Application 12/579,403
Technology Center 2400
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011279
Application 12/579,403

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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 final 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 system comprising:
at least 50 fractional- storage CDN servers and at least
100 times more assembling devices;
the total outgoing bandwidth of the servers divided by the
number of the servers is at least 100 times the total outgoing
bandwidth of the assembling devices divided by the number of
the assembling devices;
each server configured to store less than 20% of the
minimum amount of erasure-coded fragments needed to decode
the stored erasure-coded fragments, and therefore each
assembling device has to receive fragments from more than 5 of
the servers in order to decode the received erasure-coded
fragments;
the servers are not end-user video streaming client
devices, and the stored erasure-coded fragments are associated
with substantially sequential segments of streaming content;
the servers are further configured to transmit the stored
fragments on demand to the assembling devices substantially
according to the sequential order of the segments; and
each assembling device configured to obtain, essentially
concurrently, erasure-coded fragments from more than 5 of the
servers.

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Application 12/579,403

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REJECTIONS
The following rejections are before us for review:
I. The Examiner provisionally rejected claims 1, 8, and 16 under
the judicially created doctrine of obviousness-type double
patenting as being unpatentable over copending U.S.
Applications: 12/579,337 (independent claims 1, 9, and 16)
(now U.S. 7,853,710, iss. Dec. 14,2010), 12/579,380
(independent claims 1, 7, and 14) (now US 7,840,680, iss. Nov.
23, 2010), 12/579,396 (independent claims 1, 13, and 15),
12/579,408 (independent claims 1 and 12) (now US 7,822,855,
iss. Oct. 26, 2010), 12/579,662 (independent claims 1, 11, and
17), 12/579,774 (independent claims 1, 14, and 17), 12/579,817
(independent claims 1, 11, and 19), 12/580,129 (independent
claims 1, 9, and 18), 12/580,166 (independent claims 1, 8, and
15), 12/580,200 (independent claims 1, 13, and 15), and
12/580,205 (independent claims 1, 11, and 20) (now US
7,822,869, iss. Oct. 26, 2010) 1.
II. The Examiner rejected claims 1-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
III. The Examiner rejected claims 8-10 and 12-15 under 35 U.S.C.
§ 103(a) as unpatentable over Li (US 7,174,385 B2, iss. Feb. 6,
2007) and Weller (US 7,149,797 B1, iss. Dec. 12, 2006).

1 The provisional obviousness double patenting rejections over
copending U.S. Applications 12/579,314, 12/579,386, 12/579,904,
12/580,016, and 12/580,058 are moot because these applications have been
abandoned. See Ans. 34-36.
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IV. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Li, Weller, and Wagner (Streaming of
Scalable Video From Multiple Servers Using Rateless Codes,
IEEE 2006, p. 1501-1504).
V. The Examiner rejected claims 1-5 and 7 under 35 U.S.C. §
103(a) as unpatentable over Li, Weller, and Pitkanen (Erasure
Codes for Increasing the Availability of Grid Storage,
Proceedings of the Advanced International Conference on
Telecommunications and International Conference on Internet
and Web Applications and Services, IEEE 2006).
VI. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Li, Weller, Pitkanen, and Wagner.
VII. The Examiner rejected claims 16-20 under 35 U.S.C. § 103(a)
as unpatentable over Li, Weller, Pitkanen, and Official Notice.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Rejection I
Appellants argue that, “because the obviousness-type double patenting
rejection lacks the necessary claim identification and the necessary formal
obviousness analysis for each set of conflicting claims separately, the
Examiner failed to make a prima facie case of obviousness- type double
patenting.” App. Br. 8.
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Although we appreciate that the Examiner has identified the claims of
the co-pending US applications by claim number, nonetheless, we note that
the Examiner has failed to make clear what are the differences between the
inventions defined by the conflicting claims and the reasons why a person
having ordinary skill in the art would conclude that the invention defined in
the claims at issue would have been an obvious variation of the invention
defined in the claims of the co-pending US applications. See Ans. 5-6.
Accordingly, for the foregoing reasons, we do not sustain Rejection I.

Rejection II
The Examiner found that, in claims 1, 7, 8, 16, and 20, “the recitations
regarding ‘at least 50[,]’ ‘100 times[,]’ ‘1000 CDN servers[,]’ ‘10,000 CDN
servers’ ‘one million assembling devices[,]’ ‘1 Giga bit per second’ and ‘10
Giga bit per second[,]’ fail to particularly point out and distinctly claim the
invention.” Ans. 15.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph is that the language of the claim must make it clear what subject
matter the claims encompass. In re Hammack, 427 F.2d 1378, 1380-1381
(CCPA 1970). In this case, we agree with Appellants that using numbers
prevents ambiguity in determining what is “many servers” and “what is ‘a
lot of bandwidth.’” App. Br. 9. By specifying a minimum numeric
limitation, i.e., 50 fractional storage CDN servers and 5,000 assembling
devices, the claim is merely broad, not ambiguous. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977) (breadth is not indefiniteness). That is
to say, it is clear what the numeric limitations are, and no further detail is
necessary to know the metes and bounds of the claims. Accordingly, claims
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1, 7, 8, 16, and 20 are not indefinite based on the recitation of numerical
values.
The Examiner further found that the terms “meaningful” (as per
claims 1, 8, and 16), “substantially sequential” (as per claims 1, 8, and 16),
“essentially concurrently” (as per claims 1 and 8), and “substantially
according” (as per claims 1 and 5) constitute terms of degree. Ans. 16-17.
At the outset, we note that although the term “meaningful” does not
appear in any of independent claims 1, 8, and 16, the term appears in the
explicit definition of the term “fractional-storage server,” which does appear
in each of independent claims 1, 8, and 16. See Spec. 9, ll. 19-23. Thus,
because the Specification assigns a particular definition to the claim term
“fractional-storage server” and the term “meaningful” is part of this
definition, we need to look to the Specification to determine whether the
Specification provides some standard for measuring the degree of the term
“meaningful.” See Seattle Box Company, Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Here, we could not find
any such standard in Appellants’ Specification. As such, we agree with the
Examiner that the term “meaningful” renders independent claims 1, 8, and
16 indefinite.
With respect to the terms “substantially sequential” and “substantially
according,” Appellants do not make any arguments (see App. Br. 9) and as
such, we agree with the Examiner that these terms are indefinite. See In re
Berger, 279 F.3d 975 (Fed. Cir. 2002). As for the term “essentially
concurrently,” we agree with Appellants that it is not indefinite because “one
of ordinary skill in the art of packet communication over the Internet will
understand that the Internet is not a real-time network.” Id.
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The Examiner also found that claims 2, 5, 8, 17, and 18 are indefinite
because: (1) “[i]t is unclear [in claim 2] how ‘fragment pull protocol’ would
actually be related to the bandwidth and or latency of a network connection”
(see Ans. 16); claims 5 and 17 recite conditional language (see Ans. 16 and
17); the claim 8 recitation of “at least two of the CDN servers” contradicts
the claim 11 implication of “5 servers” (see Ans. 16-17); and (3) the claim
18 phrase “seamlessly supplemented” is unclear (see Ans. 17). Appellants
do not make any arguments (see App. Br. 9) and as such, we agree with the
Examiner that claims 2, 5, 8, 17, and 18 are indefinite for the reasons set
forth supra.
Finally, the Examiner further found claim 8 to be indefinite because
the limitations (1) “wherein during the replacement, substantially no server
undergoes outgoing fragment-delivery bandwidth variation of more than 1%,
resulting in system stability during multiple replacement events” and (2) “to
achieve efficient load balancing and fault tolerance between the various
CDN servers” constitute intended results (“a consequence of performing a
process rather than the process itself”). Ans. 17. We are not persuaded by
the Examiner’s position because the first limitation does not appear in claim
8 as currently under appeal, while the second disputed limitation merely
constitutes functional language. We agree with Appellants that both
limitations are “easily understood by any network designer.” App. Br. 10.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 1-20 under 35 U.S.C. § 112, second paragraph, as being indefinite.

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Rejections III -VII
The Examiner found that although Li discloses a system with multiple
servers, wherein each server holds only a portion of the media content being
requested by a client, Li fails to disclose “fractional-storage [CDN] servers,”
as called for by each of independent claims 1, 8, and 16. Ans. 18-20, 25-26,
and 30. Thus, the Examiner then turned to Weller and found that Weller
discloses “CDN servers that store data not intended to be consumed.” Ans.
20, 25. The Examiner concluded that it would have been obvious for a
person of ordinary skill in the art to use a content delivery network as taught
by Weller to accommodate the streaming media delivery of Li “in order to
allow for redundant and high bandwidth content delivery.” Ans. 20, 26.
Appellants argue that, “Weller and Li contradict each other and
therefore cannot be combined for any purpose.” Reply Br. 6. According to
Appellants, because Li discloses “that the cached fragments are proportional
to the serving bandwidth,” the Examiner’s proposed combination with
“Weller’s high bandwidth CDN server should result in a NON fractional-
storage solution.” App. Br. 18.
For the reasons discussed in further detail below, we believe that
Appellants have the better position here.

Rejection III
Li discloses a peer-to-peer network system including a client 210 that
requests streaming media, a server 200 that initially originates the streaming
media, and a serving peer 220 “that serves the client [210] with a complete
or partial copy of the streaming media.” Li, col. 8, l. 62-col. 9, l. 2 and fig.
2. Li further discloses that because each individual peer 220 is not capable
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of holding the entire media content streaming, in order to reduce the amount
of storage required, each of peers 220 “hold[s] a portion of the media that is
proportional to its serving bandwidth.” Li, col. 16, ll. 60-63 and col. 17, ll.
9-16. Thus, as noted by Appellants, each peer 220 in Li is allocated a
serving load (streaming media content) in proportion to its serving
bandwidth. Id, col. 26, ll. 23-25; see also Reply Br. 2. Weller discloses a
content delivery network having servers that deliver content on behalf of a
third party provider. Weller, col. 1, ll. 16-26. Thus, in contrast to Li, where
each serving peer 220 holds only a portion of the streaming media because
of low bandwidth capability, the CDN servers of Weller store the streaming
media content, i.e., “best replica,” on a single server due to high bandwidth
capability. See Weller, col. 1, ll. 21-26. We thus agree with Appellants that
modifying the peer-to-peer network system of Li to include the CDN servers
of Weller would result in non-fractional storage of the streaming media
because CDN servers have the required bandwidth needed for storing the
entire media streaming content. See Reply Br. 6. Therefore, providing the
high bandwidth CDN servers of Weller to the low bandwidth peer-to-peer
network of Li would result in high bandwidth capability and hence, a person
of ordinary skill in the art would not store media content in a fractional
manner, as called for by independent claim 8, which is subject to the instant
rejection, and as called for in independent claims 1 and 16, which are subject
to other rejections involving the same proposed combination of Li and
Weller.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 8-10 and 12-15 as unpatentable
over Li and Weller.
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Rejections IV-VII
With respect to Rejections IV-VII, the Examiner’s use of the various
teachings of Wagner,2 Pitakenen,3 and Official Notice,4 does not remedy the
deficiencies of Li and Weller, as described supra. See Ans. 22-23 (citing
Wagner, section 2); Ans. 26-27 (citing Pitakenen, Abstract and section 3.4);
and Ans. 30 (taking Official Notice).
As such, we do not sustain the rejections under 35 U.S.C. § 103(a) of
claim 11 as unpatentable over Li, Weller, and Wagner; of claims 1-5 and 7
as unpatentable over Li, Weller, and Pitkanen; of claim 6 as unpatentable
over Li, Weller, Pitkanen, and Wagner; and of claims 16-20 as unpatentable
over Li, Weller, Pitkanen, and Official Notice.

SUMMARY
The Examiner’s decision to reject claims 1, 8, and 16 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over copending U.S. Applications 12/579,337, 12/579,380,
12/579,396, 12/579,408, 12/579,662, 12/579,774, 12/579,817, 12/580,166,
12/580,200, 12/580,205 is reversed.
The Examiner’s decision to reject claims 1-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is affirmed.

2 The Examiner uses the teachings of Wagner to describe a rateless
erasure code. See Ans. 23, 29.
3 The Examiner uses the teachings of Pitakenen to describe storing less
than 20% of an erasure coded file. See Ans. 26-27
4 The Examiner takes Official Notice of the “general principle that
faster is better.” Ans. 30.
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The Examiner’s decision to reject claims 8-10 and 12-15 under 35
U.S.C. § 103(a) as unpatentable over Li and Weller is reversed.
The Examiner’s decision to reject claim 11 under 35 U.S.C. § 103(a)
as unpatentable over Li, Weller, and Wagner is reversed.
The Examiner’s decision to reject claims 1-5 and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Li, Weller, and Pitkanen is reversed.
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Li, Weller, Pitkanen, and Wagner is reversed.
The Examiner’s decision to reject claims 16-20 under 35 U.S.C.
§ 103(a) as unpatentable over Li, Weller, Pitkanen, and Official Notice 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).

AFFIRMED

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