Ex Parte Chaney et alDownload PDFPatent Trial and Appeal BoardOct 23, 201311535929 (P.T.A.B. Oct. 23, 2013) Copy Citation 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 Copy with citationCopy as parenthetical citation