Ex Parte Chaney et al

Patent Trial and Appeal Board

Oct 23, 2013

11535929 (P.T.A.B. Oct. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID CHANEY and ALBERT S. BAIOCCHI
____________________

Appeal 2011-000983
Application 11/535,929
Technology Center 2400
____________________

Before MAHSHID SAADAT, DEBRA K. STEPHENS, and
PETER P. CHEN, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

Appeal 2011-000983
Application 11/535,929

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction

The claims are directed to method and system of providing
multimedia content over a webpage (Abstract; Spec. 2 [0002]).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
Claim 1: A method of providing multimedia content over a
network, comprising:

a) capturing audio data;

b) capturing full motion video data;

c) collecting the audio data and the full motion video data
together in a single file;

d) storing the single file in a data storage module in
communication with a network having a webpage
displayed through a first browser layer with information
displayed thereon;

e) providing a calling module associated with the webpage
that calls playback of the single file, only through a
Appeal 2011-000983
Application 11/535,929

3
second browser layer and not embedded within the first
browser layer, when the calling module is included in a
webpage program module in communication with the
network and triggered by a triggering event;

f) providing the single file over the network when called by
the calling module; and

g) playing the single file through the second browser layer.

REFERENCES
Rainville
Morris
Henderson
Long
Lerman
Chu
US 2002/0069411 A1
US 2002/0116708 A1
US 2004/0109014 A1
US 2005/0010639 A1
US 2006/0259589 A1
US 2008/0256451 A1
Jun. 6, 2002
Aug. 22, 2002
Jun. 10, 2004
Jan. 13, 2005
Nov. 16, 2006
Oct. 16, 2008

REJECTIONS
The Examiner made the following rejections:

(1) Claims 1, 2, 9, 10, and 16 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Long, Morris, and Chu
(Ans. 4-12).
(2) Claims 3-5, 11, 12, and 17-19 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Long, Morris, Chu, and
Rainville (Ans. 13-16).
(3) Claim 6 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Long, Morris, Chu, Rainville, and Henderson
(Ans. 16-18).
Appeal 2011-000983
Application 11/535,929

4
(4) Claims 7, 8, 13-15, and 20 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Long, Morris, Chu,
Rainville, Henderson, and Lerman (Ans. 18-20).

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

ISSUE 1
35 U.S.C. § 103(a): Claims 1, 2, 9, 10, and 16
Appellants assert their invention is not obvious over Long, Morris,
and Chu because the Examiner improperly combined the references (App.
Br. 8-25, and 30, 31).
Thus, the issue before us is:
Did the Examiner err by improperly combining the references of
Long, Morris, and Chu?

ANALYSIS
We agree with the Examiner’s findings and conclusions (Ans. 21-23)
and adopt them as our own. We emphasize the following.
First, Appellants contend the Examiner has not provided any evidence
that an ordinarily skilled artisan would have made the reasoning to combine
the teachings of Long and Morris (App. Br. 9). Specifically, Appellants
argue neither reference provides an indication that minimizing storage
Appeal 2011-000983
Application 11/535,929

5
resources was a desired result for an ordinarily skilled artisan at the time the
invention was made (App. Br. 10). Appellants proffer evidence, a web
document accessed on 20 November 2009 discussing memory trends, and
then reason an ordinarily skilled artisan would not be motivated “to combine
the teachings of Long and Morris to decrease storage requirements because
system designers and programmers had become accustomed to storage
resources as a progressively more attractive resource to utilize, not to avoid”
since memory prices had been decreasing (App. Br. 11).
We emphasize, although Appellants have provided evidence of
decreasing memory costs, Appellants have not provided sufficient evidence
or argument that these decreasing memory costs would have eliminated
motivation by an ordinarily skilled artisan to minimize storage resources.
Indeed, although cost may be a factor, we are not persuaded other factors
(e.g., timing, hardware requirements, etc.) would not be considered by a
designer when designing a method of and a multimedia presentation system
for providing multimedia content over a network.
Appellants next argue the Examiner has not provided support for the
reasoning that an ordinarily skilled artisan would not have found it obvious
to combine the teachings of Long and Morris to store the single file in a
storage area that is in communication with a web page, absent impermissible
hindsight reasoning (App. Br. 11-14). Similarly, Appellants argue the
Examiner has not provided supporting evidence an ordinarily skilled artisan
would have combined the teachings of Chu with those of Long and Morris to
keep the user oriented with the page and provide a cleaner presentation (or
that doing so would have been a desired result) (App. Br. 18, 19 and 21, 22)
Appeal 2011-000983
Application 11/535,929

6
and to enable the playback of a single file on a second browser layer (App.
Br. 24).
Appellants proffer evidence of pop-up windows and allege the
Wikipedia reference shows the extensive use of pop-up windows during the
time of the invention is evidence an ordinarily skilled artisan at the time of
the invention would not have been motivated to use the teachings of Chu to
generate a pop-up window (App. Br. 19, 20). Appellants again argue neither
Long nor Morris teach using linked custom web pages as taught by Chu
(App. Br. 20) and Long’s preferred method of presenting video files would
result in a less clean presentation (App. Br. 22).
We are not persuaded. The Examiner has articulated reasoning with a
rational underpinning (Ans. 4, 5, 23, and 26-29). We further emphasize
Appellants have not identified sufficient evidence or argument to persuade
us of error that absent Appellants’ disclosure an ordinarily skilled artisan
would not have found it obvious to combine Long’s teaching of combining
audio data in the full motion video data together in a single file with
Morris’s teaching of storing the file in a data storage module in
communication with a network having a webpage.
We emphasize:
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.

In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted). Indeed,
Appellants’ arguments appear to be premised on Long and Chu each being
Appeal 2011-000983
Application 11/535,929

7
bodily incorporated into the teachings of Morris. However, the Examiner is
relying on Long for the specific teaching of capturing audio data; capturing
full motion video data; and collecting the audio data and the full motion
video data together in a single file (Ans. 5) and on Chu for the specific
teaching of providing the single file over the network when called by the
calling module and playing that single file through a second browser layer
(Ans. 6).
We also note that this Wikipedia reference as well as the previous
reference on Memory Trends, is dated 2010, over three years after the 2006
filing date of the invention and therefore, neither is evidence of the art at the
time of the invention (see Exhibits I and II).
Appellants additionally contend the Examiner has not explained how
the storage resources requirements for streaming video on the system would
be minimized, e.g., the kind of storage that would be minimized (App. Br.
15-16). According to Appellants, a file streamed over a network to a viewer
increases the required protocol information and increases storage
requirements (App. Br. 16). Again, we are not persuaded and agree with the
Examiner’s findings (Ans. 5 and 24, 25).
Appellants further argue Long teaches away from Morris because
Long specifically states not transmitting media over the Internet is an
advantage of the invention; Morris teaches use of network servers, while
Long teachings against use of network servers, and Morris teaches a custom
interface while Long teaches against custom interfaces (App. Br. 17).
Appellants also argue Long teaches away from Chu (App. Br. 30, 31).
Again, we are not persuaded by Appellants’ arguments. Indeed, Appellants’
arguements again appear to be premised on Long being bodily incorporated
Appeal 2011-000983
Application 11/535,929

8
into the teachings of Morris. Additionally, we are not persuaded Long’s
teaching of a combined audio/full motion video file teaches away from the
teachings of Morris or those of Chu. Similarly, we are not persuaded Chu’s
teaching of “providing the single file . . .” or “playing the single file . . .” as
recited in claim 1 teaches away from Long.
We conclude that such combination is no more than a simple
arrangement of old elements, with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The skilled artisan is “a person of ordinary creativity, not an
automaton.” Id. at 420-21. Furthermore, Appellants have presented no
evidence that combining the teachings of Long, Morris, and Chu was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418-19).
Accordingly, we are not persuaded the Examiner erred in combining
the teachings of Long, Morris, and Chu. Therefore, the Examiner did not err
in rejecting claims 1, 2, 9, 10, and 16 under 35 U.S.C. § 103(a) for
obviousness over Long, Morris, and Chu.

ISSUE 2
35 U.S.C. § 103(a): Claim 6
Appellants assert their invention is not obvious over Long, Morris,
Chu, Rainville, and Henderson because the Examiner improperly combined
the references (App. Br. 25-30). Specifically, Appellants contend the
Appeal 2011-000983
Application 11/535,929

9
Examiner uses impermissible hindsight, has not provided support for the
determination an ordinarily skilled artisan would have been motivated to
combine the teachings of the references, Henderson teaches color masking
not color mixing, and Rainville teaches color mixing and thus, the reasoning
to combine the references is already satisfied by the combination of the
teachings of Long, Morris, Chu, and Rainville (App. Br. 28-30).
We agree with the Examiner’s findings and conclusions (Ans. 31-35).
Accordingly, we are not persuaded the Examiner erred in combining the
teachings of Long, Morris, Chu, Rainville, and Henderson. Therefore, the
Examiner did not err in rejecting claim 6 under 35 U.S.C. § 103(a) for
obviousness over Long, Morris, Chu, Rainville, and Henderson.

ISSUE 3
Appellants did not separately argue dependent claims 3-5, 7, 8, 11-15,
and 17-20. Therefore, these claims fall with their respective independent
claims (and intervening claims, if any). Accordingly, we sustain the
rejection of claims 3-5, 7, 8, 11-15, and 17-20 under 35 U.S.C. § 103(a) for
obviousness.

DECISION
The Examiner’s rejections of claims 1-20 under 35 U.S.C. § 103(a) as
being unpatentable are affirmed.
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
Appeal 2011-000983
Application 11/535,929

10

tj