Ex Parte Zuckerman et al

Patent Trial and Appeal Board

Apr 14, 2014

12579662 (P.T.A.B. Apr. 14, 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.
12/579,662 10/15/2009 Gal Zuckerman 2299-16.747BS 8789
86636 7590 04/14/2014
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
04/14/2014 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 2011-011854
Application 12/579,662
Technology Center 2400
____________

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

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/579,662

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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 distributed system comprising:
fractional- storage CDN servers configured to store
erasure-coded fragments associated with segments of streaming
contents;
each server is further configured to deliver fragments,
essentially concurrently, at a certain fragment delivery
throughput, to multiple assembling devices as replies to
fragment pull protocol requests by the assembling devices, each
fragment pull request associated with a specific segment;
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 the minimum
amount of erasure-coded fragments needed to decode the stored
erasure-coded fragments;
wherein a reduction in the fragment delivery throughput
of one of the servers triggers a process in which other servers
increase their fragment delivery throughput as a reaction to the
fragment pull protocol requests, to compensate for the reduced
throughput;

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wherein the increased throughput on each of the other
servers as a reaction to fragment pull protocol requests from a
single assembling device is significantly smaller than the
throughput at which the server already serves multiple
assembling devices with erasure-coded fragments, and therefore
substantially does not affect the service provided to the already
served assembling devices.

REJECTIONS
The following rejections are before us for review:
I. The Examiner provisionally rejected claims 1, 11, and 17 under
the judicially created doctrine of obviousness-type double
patenting as being unpatentable over copending U.S.
Applications: 12/579,327 (independent claims 1, 8, and 15)
(now US 7,844,712 B2, iss. Nov. 30, 2010), 12/579,337
(independent claims 1, 9, and 16) (now US 7,853,710 B2, iss.
Dec. 14, 2010), 12/579,380 (independent claims 1, 7, and 14)
(now US 7,840,680 B2, iss. Nov. 23, 2010), 12/579,396
(independent claims 1, 13, and 15), 12/579,403 (independent
claims 1, 8, and 16), 12/579,408 (independent claims 1 and 12)
(now US 7,822,855 B2, iss. Oct. 26, 2010), 12/579,774
(independent claims 1, 14, and 17), 12/579,817 (independent
claims 1, 11, 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
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(independent claims 1, 11, and 20) (now US 7,822,869 B2, 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 1-5, 8, 9, 11-15, 17, and 18 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).
IV. The Examiner rejected claims 6 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Li, Weller, and Aman (US
5,603,029, issued Feb. 11, 1997).
V. The Examiner rejected claims 7, 10, 16, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Li, Weller, and Wagner (John-
Paul Wagner, et al., Streaming of Scalable Video From Multiple
Servers Using Rateless Codes, IEEE, pp. 1501-1504 (©2006,).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
Rejection I
Appellants argue that, “because the obviousness-type double patenting
rejection lacks the necessary claim identification and the necessary formal

1 The provisional obviousness double patenting rejections over
copending U.S. Applications 12/579,314, 12/579,375, 12/579,386,
12/579,904, 12/580,016, and 12/580,058 are moot because these applications
have been abandoned. See Ans. 31-32.
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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.
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 determined that the last “wherein” limitation in claims
12, 11, and 17 is indefinite because it “is a consequence of performing a
process rather than the process itself.” Ans. 15. The Examiner further
determined that the phrases “significantly smaller” and “substantially does
not,” which appear in the “wherein” limitation, constitute “terms of degree.”
Id.
In response, Appellants argue that “claims 1 and 17 are not method
claims and the limitation simply requests the servers to have significantly

2 “. . . wherein the increased throughput on each of the other servers as
a reaction to fragment pull protocol requests from a single assembling device
is significantly smaller than the throughput at which the server already
serves multiple assembling devices with erasure-coded fragments, and
therefore substantially does not affect the service provided to the already
served assembling devices.” See App. Br., Clms. App’x, claim 1 (emphasis
added).
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greater bandwidth than the assembling devices.” App. Br. 8. According to
Appellants, “relative terminology is a standard tool in claim drafting” and
hence, a person of ordinary skill in the art would readily understand that “a
CDN server [has] substantially more bandwidth than an assembling device.”
App. Br. 8-9 (citing MPEP § 2173.05(b)).
At the outset, we agree with Appellants that claims 1 and 17 are not
method claims, but rather apparatus claims. Furthermore, we note that claim
11 does not include the disputed limitation, while claim 17 uses language
similar to that of claim 1. At most, the disputed “wherein” limitation is
merely a functional limitation and Appellants are permitted to define a part
of the invention in functional terms. In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997) (“A patent applicant is free to recite features of an apparatus
either structurally or functionally.” (citation omitted)). Accordingly, for the
foregoing reasons, we do not agree with the Examiner’s position that the
disputed “wherein” limitation renders claims 1, 11, and 17 indefinite.
However, although we appreciate that relative terminology is
acceptable, when a term of degree is used in a claim, such as the term
“significantly,” we look to the Specification to determine whether it provides
some standard for measuring that degree. See Seattle Box Company, Inc. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). In
this case, Appellants have not provided a standard for ascertaining the
meaning of the phrase “significantly smaller.” See App. Br., Clms. App’x.,
claims 1 and 17. Hence, we conclude that the phrase “significantly smaller,”
when construed in view of Appellants’ disclosure, lacks sufficient precision
to permit one endeavoring to practice the invention to determine the metes
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and bounds thereof. Accordingly, for the foregoing reasons, we sustain the
indefiniteness rejection of claims 1-10 and 17-20.
The Examiner further determined that claims 2, 9, 15, and 18 are
indefinite for the reasons set forth on pages 16-17 of the Answer. However,
Appellants do not make any arguments (see App. Br. 8-9) and as such, we
summarily sustain the Examiner’s indefiniteness rejection of claims 2, 9, 15,
and 18.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 1-10, 15, and 17-20 under 35 U.S.C. § 112, second paragraph, as
being indefinite. However, we do not sustain the indefiniteness rejection of
claims 11-14 and 16.

Rejection III
The Examiner found that although Li discloses a system and method
for streaming content from fractional-storage servers, wherein each server
holds only a portion of the media content, Li fails to disclose “fractional-
storage [CDN] servers,” as called for by each of independent claims 1, 11,
and 17. Ans. 17-19. Thus, the Examiner then turned to Weller and found
that Weller discloses “CDN servers that store data not intended to be
consumed.” Ans. 19. 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.
Appellants argue that, “Weller cannot be combined with Li.” Reply
Br. 6. According to Appellants, because Li discloses that, “cached
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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.
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
of holding the entire streaming media content, 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
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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 each of
independent claims 1, 11, and 17.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claims 1, 11, and 17, and
their respective dependent claims 2-5, 8, 9, 12-15, and 18 as unpatentable
over Li and Weller.

Rejections IV and V
With respect to Rejections IV and V, the Examiner’s use of the
various teachings of Aman3 and Wagner4 does not remedy the deficiencies
of Li and Weller, as described supra. See Ans. 26 (citing Aman, col. 23, l.
5) and Ans. 26-27 (citing Wagner, sections 2 and 3).
As such, we do not sustain the rejections under 35 U.S.C. § 103(a) of
claims 6 and 20 as unpatentable over Li, Weller, and Aman and of claims 7,
10, 16, and 19 as unpatentable over Li, Weller, and Wagner.

SUMMARY
The Examiner’s decision to reject claims 1, 11, and 17 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over copending U.S. Applications 12/579, 327, 12/579,337,

3 The Examiner uses the teachings of Aman to show that “’random
assignment’ or ‘random selection’ is well known in the art of load
balancing.” Ans. 26.
4 The Examiner uses the teachings of Wagner to describe a “rateless
coding multiserver distribution scheme.” Id.; see also Ans. 28.
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12/579,380, 12/579,396, 12/579,403, 12/579,408, 12/579,774, 12/579,817,
12/580,129, 12/580,166, 12/580,200, and 12/580,205 is reversed.
The Examiner’s decision to reject claims 1-10, 15, and 17-20 under 35
U.S.C. § 112, second paragraph, as being indefinite, is affirmed.
The Examiner’s decision to reject claims 11-14 and 16 under 35
U.S.C. § 112, second paragraph, as being indefinite, is reversed.
The Examiner’s decision to reject claims 1-5, 8, 9, 11-15, 17, and 18
under 35 U.S.C. § 103(a) as unpatentable over Li and Weller is reversed.
The Examiner’s decision to reject claims 6 and 20 under 35
U.S.C. § 103(a) as unpatentable over Li, Weller, and Aman is reversed.
The Examiner’s decision to reject claims 7, 10, 16, and 19 under 35
U.S.C. § 103(a) as unpatentable over Li, Weller, and Wagner 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-IN-PART

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