McFadzean, David Bruce. et al.

Patent Trials and Appeals Board

Dec 12, 2019

13533071 - (D) (P.T.A.B. Dec. 12, 2019)

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.
13/533,071 06/26/2012 David Bruce McFadzean 10172-002US1 4460
96039 7590 12/12/2019
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
MCCRAY, CLARENCE D
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
12/12/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID BRUCE McFADZEAN and MONROE MILAS THOMAS
____________

Appeal 2019-001449
Application 13/533,071
Technology Center 2400
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Calgary Scientific, Inc.
Appeal Br. 3.
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Introduction
Appellant describes the invention as relating to remotely accessing a
cinematic production. Spec. ¶ 4. Appellant explains that remote access to
cinematic productions can be problematic in high latency settings, such as in
mobile networks or when high bandwidth is required, because the client may
not be able to show all the frames produced by the server in a timely
manner, which may result in missed frames or the costly need to regenerate
frames. Id. ¶ 3. Appellant states that its invention addresses these problems
by synchronizing, at a remote client, a server catalogue of frame descriptors
for a cinematic production, such that frames of the cinematic production
may be requested by the remote client. Id. ¶ 4.
Claims 1, 11, and 17 are independent, of which claim 1 is illustrative:
1. A method of providing remote access to a
cinematic production, comprising:
generating a frame from the cinematic production at a
server;
generating a frame descriptor associated with the frame
at the server;
storing the frame in a first memory;
storing the frame descriptor in a catalogue of frame
descriptors in a second memory of the server; and
synchronizing the catalogue with a duplicate of the
catalogue of frame descriptors maintained a remote client such
that the duplicate of the catalogue of frame descriptors
maintained at the remote client is updated to reflect dynamic
changes in the catalogue of frame descriptors in the second
memory of the server,
wherein the frame descriptor in the duplicate of the
catalogue of frame descriptors maintained at the client is for
providing a request for the frame from the remote client.
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Appeal Br. 11 (Claims App’x).
Rejections and References
The Examiner rejected claims 1–16 under pre-AIA 35 U.S.C. § 102(e)
as anticipated by Uhrhane et al. (US 8,620,861 B1; issued Dec. 31, 2013)
(“Uhrhane”). Final Act. 3–11.
The Examiner rejected claims 17–20 under 35 U.S.C. § 103(a) as
unpatentable over Uhrhane and Komatsu (US 2011/0310446 A1; published
Dec. 22, 2011). Id. at 11–15.
Appellant’s Contentions and the Examiner’s Findings
Appellant contends the Examiner erred in finding Uhrhane discloses
“wherein the frame descriptor in the duplicate of the catalogue of frame
descriptors maintained at the client is for providing a request for the frame
from the remote client,” as recited in independent claim 1 (hereafter, the
“disputed limitation”) and as recited similarly in independent claim 112.
Appeal Br. 7–9.
The Examiner finds Uhrhane discloses the disputed limitation with its
disclosure of retrieving file content from a server for files not stored on a
client (or only partially stored on the client). Final Act. 5 (citing Uhrhane
21:46–60); see also id. at 6–7 (making similar findings for claim 11).
Appellant contends
the Examiner has failed to show any teaching or suggestion in
Uhrhane that anticipates or renders obvious the requirement of
claims 1 and 11 that the remote client use a frame descriptor
(claim 1) or frame identifier (claim 11) from its duplicate copy

2 Claim 11 similarly recites “requesting a frame of the cinematic production
from the server using at least one frame identifier from the catalogue of
frame descriptors as a request.” Appeal Br. 13 (Claims App.).
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of the catalogue (metadata) to make a request for the frame
from the server.
Appeal Br. 8. In particular, Appellant argues that while Uhrhane teaches
client requests, “Uhrhane is completely silent with regard to making such
requests using information from metadata . . . stored on [the] client.” Id.
(citing Uhrhane 19:53–20:4, 20:40–60, 21:8–22:34). And with respect to the
Examiner’s finding that Uhrhane’s metadata discloses a “frame descriptor,”
Appellant argues that “the only mention of using metadata in response to a
requested file is . . . where a comparison of the metadata . . . may be made
with the metadata data structure . . . for that virtual drive . . . on the server
system . . . , not [on] the client[,] as required by claims 1 and 11.” Id.
In response to Appellant’s arguments, with respect to claim 1, the
Examiner finds that Uhrhane discloses: (1) how the client and server respond
to a user request; (2) that each metadata record contains client and server
metadata used to identify files; (3) that “[a]fter synchronization with the
server the client and server metadata are consistent”; (4) that “[t]he file is
identified and updated to reflect any changes made and the metadata is
equivalent to the file ID and used as a content pointer and file name”; and
(5) that “[t]he request for metadata is used for the purpose of retrieval of the
content to synchronize with the server based on the identifier.” Ans. 3–4
(citing Uhrhane 7:43–56, 21:47–60). With respect to the “storing” step of
claim 11, the Examiner finds that Uhrhane discloses: (1) that the file ID is
associated with the client/local metadata; (2) that “the request for client to
server uses the metadata structure”; and (3) that “synchronization can occur
at the client based on [an] identifier used by the server to update and reflect
dynamic changes made to the files.” Id. at 4–5 (citing Uhrhane Fig. 3 (item
204), 5:10–21, 6:1–19).
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Our Analysis
We begin our analysis by interpreting the disputed limitation, which
further limits the synchronizing step’s synchronization of a server catalogue
of frame descriptors with a client catalogue of frame descriptors. Essentially,
the disputed limitation requires that the client use a frame descriptor stored
in its (client) catalogue for making a request for the associated frame. This is
consistent with Appellant’s Specification, which describes that “[t]he frame
descriptor may be provided for requesting the frame,” and the client may
request frames using the identifier or metadata of the frame descriptor, for
example, as search criteria. See Spec. ¶¶ 4, 28. Except for the distinction that
claim 11 recites a “frame identifier” rather than a “frame descriptor” as
recited in claim 1, the step in claim 11 of “requesting a frame . . . from the
server using at least one frame identifier from the catalogue of frame
descriptors as a request” is essentially the same in scope as the disputed
limitation of claim 1.
Uhrhane discloses a file management system that includes one or
more client systems coupled to a server system via a communications
network. Uhrhane 2:63–2:2, Figs. 1A and 1B. Each client system contains a
virtual drive or cache containing virtual drive metadata and virtual drive
content. Id. at 3:29–30. Uhrhane describes its metadata as including some or
all of a file identifier, content pointer, modify time, version number,
application instance ID, file name, file directory, access permissions, delete
instruction, and creation time. Id. at 7:57–8:65. Using a synchronization
client, the metadata and content for each virtual drive of the client system
may be synchronized with the metadata and content for the virtual drive of
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the server system, such that the client data and server data are consistent. Id.
at 3:31–32, 49–55; 4:21–33; 7:49–51.
In a disclosed embodiment of Uhrhane, if a user (i.e., client system) is
connected to the server system via the network, when the user requests a file,
the most recent version of the file will be returned. Id. at 6:1–3. The most
recent version of the file may reside in the client’s virtual drive content or on
the server system, and may be selected based on a comparison of metadata
in the client system’s virtual drive metadata with corresponding metadata in
the server system’s virtual drive metadata. Id. at 6:3–12. Alternatively, if the
client system is not connected to the server system, the client system’s
virtual drive returns the locally cached version of the requested file stored in
the client system’s virtual drive content. Id. 6:12–16.
Although Uhrhane’s client metadata is the type of data that may be
used as a “frame descriptor” or “frame identifier,” and Uhrhane shows the
use of its client metadata in responding to a client system’s file request, the
disputed limitation of claims 1 and 11 requires more—namely,using a frame
descriptor or frame identifier for making or providing the request. Our
review of Uhrhane, including the cited portions, provides neither a
description of what a file request includes, nor how it is made or provided
(beyond the fact that it originates at the client). Nor does Uhrhane disclose
that the client system’s metadata plays any role in making or providing a file
request.
Anticipation requires finding each and every element as set forth in
the claim, either expressly or inherently, in a single prior art reference,
arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be
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shown in as complete detail as is contained in the . . . claim.” Richardson v.
Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). In addition to
making the necessary findings, “the [PTO] must make the necessary findings
and have an adequate ‘evidentiary basis for its findings.’” In re NuVasive,
Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).3 Here, however, there is not an
adequate evidentiary basis for finding that Uhrhane discloses “wherein the
frame descriptor . . . is for providing a request for the frame from the remote
client,” as recited in claim 1, or “requesting a frame . . . from the server
using at least one frame identifier . . . as a request,” as recited in claim 11.
In view of the foregoing, we decline to sustain the 35 U.S.C. § 102(e)
rejection of claim 1 and, for the same reasons, the rejection of claim 11. We
likewise decline to sustain the rejection of dependent claims 2–10 and 12–
16, for which the Examiner makes no findings to cure the deficiency in the
rejection of independent claims 1 and 11. For similar reasons, we also
decline to sustain the Examiner’s § 103(a) rejection over Uhrhane and
Komatsu of claims 17–20, which recite a similar claim limitation4 for which
the Examiner fails to provide any findings or reasoning that cures the above
deficiency. See Final Act. 12–13 (citing Uhrhane 3:15–28, 49–55); see also

3 See also Ex parte Poisson, Appeal No. 2012-011084, at *5 (PTAB Feb. 27,
2015) (“[A]bsent supporting evidence in the record — of which there is
none, the Examiner’s opinion is an inadequate finding of fact on which to
base the . . . analysis.”).
4 Similar to the elements at issue for independent claims 1 and 11,
independent claim 17 recites “receiving a request . . . including a frame
descriptor . . . maintained at a remote client and synchronized with a server.”
Appeal Br. 14 (Claims App’x).
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NuVasive, 842 F.3d at 1382 (explaining that the PTO must articulate logical
and rational reasons supporting its decisions).
CONCLUSION
We reverse the Examiner’s 35 U.S.C. § 102(e) rejection of claims 1–
16.
We reverse the Examiner’s 35 U.S.C. § 103(a) rejection of claims 17–
20.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–16 102(e) Uhrhane 1–16
17–20 103(a) Uhrhane,
Komatsu
17–20
Overall Outcome 1–20

REVERSED