Ex Parte Deshpande et al

Board of Patent Appeals and Interferences

Feb 16, 2007

09897383 (B.P.A.I. Feb. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SACHIN G. DESHPANDE and RENJIT TOM THOMAS
____________

Appeal 2006-3143
Application 09/897,383
Technology Center 2100
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Decided: February 16, 2007
____________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and ALLEN R.
MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 25-41, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
Appeal 2006-3143
Application 09/897,383

INTRODUCTION
The claims are directed to managing and transmitting image data.
Specifically, the initial part of an image file is read at a client and parsed to
identify any needed additional parts to render a selection of the image file.
The requisite additional parts are then requested from the server. The client
then displays the selection of the image file. Such a system enables scalable
streaming of images with client-side control. Claim 25 is illustrative:
25. A method for customized image display, said method comprising
the acts of:
reading an initial part of an image file at a client, said file being
hosted on a server;
parsing said initial part to identify any additional parts that may be
needed to render a selection of said image file;
requesting said additional parts from said server when said additional
parts are needed;
displaying said selection of said image file at said client.

The Examiner relies on the following prior art references to show
unpatentability:
Guedalia US 6,356,283 B1 Mar. 12, 2002
(filed Jun. 10, 1998)

Appellants’ admitted prior art on pages 2-4 of the Specification (“APA”).

The rejections as presented by the Examiner are as follows:
1. Claims 25-29, 33-38, and 41 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Guedalia.
2. Claims 30-32, 39, and 40 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Guedalia in view of APA.
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Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for the respective details
thereof.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner and the evidence of anticipation and
obviousness relied upon by the Examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in reaching our
decision, the Appellants’ arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejections and arguments in rebuttal
set forth in the Examiner’s Answer. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
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) (2004).
It is our view, after consideration of the record before us, that the
disclosure of Guedalia fully meets the invention as set forth in claims
25-29, 33-38, and 41. We further conclude that the evidence relied upon and
the level of skill in the particular art would have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in
claims 30-32, 39, and 40. Accordingly, we affirm.
We first consider the Examiner’s rejection of claims 25-29, 33-38, and
41 under 35 U.S.C. § 102(e) as being anticipated by Guedalia. Anticipation
is established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the
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recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Guedalia (Answer 3-7). Regarding
independent claims 25, 33, and 41, Appellants argue that Guedalia does not
disclose parsing the initial part of an image file to identify any additional
parts that may be needed to render a selection of the image file as claimed.
Rather, the server in Guedalia parses an Internet Imaging Protocol (I.I.P.)
request associated with a proprietary image file format to determine what
image files should be sent to satisfy the request. Appellants contend that
such a request is not an image file or part of an image file; therefore,
Guedalia does not parse an image file. The claimed invention, however,
parses and interprets the image file directly (Br. 4; Reply Br. 4; emphasis
added).
The Examiner argues that Guedalia’s browser analyzes an HTML
page and displays embedded images containing sub-regions that form the
overall image. This HTML page, according to the Examiner, corresponds to
the claimed “image file.” Moreover, Guedalia’s browser “parses” the initial
part of this HTML-based “image file” by analyzing the page to display the
embedded image (Answer 9).
Appellants respond that Guedalia’s parsing an HTML file to display
embedded images is not equivalent to parsing an image file to identify
additional parts that may be needed to render a selection of the image file.
First, Appellants contend that an HTML page is not an image file, but rather
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Application 09/897,383

a text file. Appellants emphasize that image files are separate and distinct
from HTML files. Second, Appellants argue that parsing an HTML file
does not enable identification of additional parts that may be needed to
render a selection of the image file [Reply Br. 4].
We will sustain the Examiner’s rejection of independent claims 25, 33,
and 41. In our view, Guedalia’s zooming feature illustrated in Fig. 2 fully
meets these claims given their scope and breadth. As shown Fig. 2, an
image is displayed in viewing window 42 of an HTML page where the
viewing window is partitioned into five sub-regions (Guedalia, col. 18, ll.
57-64; Fig. 2). Although the displayed image is associated with an HTML
page, it nonetheless constitutes an image file. Accordingly, this initial
display of the image in the viewing window fully meets “reading an initial
part of an image file” as claimed.
To zoom a certain portion of the initial image, the user positions the
mouse to a desired location on the image and clicks the mouse. In so doing,
the user automatically selects one of the five sub-regions which, in turn,
initiates retrieval of an associated image portion (e.g., associated response
region 48) (Guedalia, col. 18, ll. 65 – col. 19, ll. 22).
In our view, this selection process fully meets parsing the initial part
of an image file to identify any additional parts that may be needed to render
a selection of the image file as claimed giving the term “parsing” its broadest
reasonable interpretation. We note at the outset that Appellants have not
specifically defined the term “parsing” in the specification; accordingly, we
construe the term with its plain meaning. See In re Zletz, 893 F.2d 319, 321,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (noting that claim terms must be
given their plain meaning absent a clear definition in the specification).
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To determine the ordinary meaning of commonly understood words, it
is entirely appropriate to cite a dictionary definition. Agfa Corp. v. Creo
Products, Inc., 451 F.3d 1366, 1376, 79 USPQ2d 1385, 1392 (Fed. Cir.
2006) (noting that general purpose dictionaries may be helpful when claim
construction involves “little more than the application of widely accepted
meaning of commonly understood words”). “Parsing” is defined as
“examin[ing] in a minute way: analyz[ing] critically.”1 The user’s
determination of which portion of the initial image to zoom and selection
thereof reasonably constitutes “parsing” the initially-displayed image to
identify the corresponding response regions 48 (i.e., the “additional parts”)
that are needed to render the user’s selection.
After the user selects a desired region to zoom in Guedalia, the server
creates a new HTML page with a link to the response image portion (i.e., an
I.I.P. command sequence) and sends the HTML page to the client. Upon
receipt, if the client determines that the embedded image portion resides in
the client’s local cache, the image is displayed immediately. If not, the
client sends an I.I.P. request for the response image portion to the server.
Upon receipt, the server parses the client’s I.I.P. request, acquires and
assembles the necessary image data, and sends the image to the client. The
client then displays the HTML page with the new image (Guedalia, col. 19,
ll. 50 – col. 21, ll. 8; Figs. 3 and 4).

1 Merriam-Webster Online Dictionary, at http://www.m-w.com/cgi-
bin/dictionary?book=Dictionary&va=parsing (last visited Jan. 10, 2007).
See also The American Heritage Dictionary of the English Language, 4th
ed., at http://www.bartleby.com/61/33/P0083300.html (last visited Jan. 10,
2007) (defining “parse” as “[t]o examine closely or subject to detailed
analysis, especially by breaking up into components”).
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In our view, either (1) the user’s initial selection and accompanying
request for the response image portion, or (2) the client’s subsequent IIP
request for the response image portion if the image is not cached fully meets
the claimed requesting step. In either case, additional parts (i.e., the
response image portion) are requested from the server when they are needed
to render the user’s selection.
Regarding claim 34, Appellants argue that Guedalia does not disclose
reading an image index file that comprises a map of components of the
image file as claimed. Appellants contend that Guedalia’s image map
merely appends X and Y coordinates to a URL and therefore is not an index
file as claimed: a distinct file that correlates segments of the codestream that
facilitates retrieving particular portions of the codestream (Br. 4-5; Reply Br.
5).
The Examiner responds that Guedalia’s image map corresponds to the
claimed “image index file.” The Examiner further argues that this image
index file is read in Guedalia in view of the request to the server following
the user’s clicking on the image map (Answer 9-10).
We will sustain the Examiner’s rejection of claim 34. At the outset,
we note that Appellants’ arguments pertaining to the image index file are not
commensurate with the scope and breadth of the claimed limitation. We
find that the server in Guedalia inherently hosts an “image index file” that
correlates the URL that includes the image’s X, Y coordinates sent from the
client (i.e., the “index file data”) with the appropriate response image portion
for retrieval and transmission to the client. See Guedalia, col. 24, ll. 25-33.
Claim 34 is therefore fully met by Guedalia.
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Since we find that all limitations of independent claims 25, 33, 34,
and 41 are expressly or inherently disclosed by Guedalia, we will sustain the
Examiner’s rejection of those claims. Since Appellants have not separately
argued the patentability of dependent claims 26-32 and 35-40, these claims
fall with independent claims 25 and 34. See In re Nielson, 816 F.2d 1567,
1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). See also 37 C.F.R.
§ 41.37(c)(vii).
We will also sustain the Examiner’s rejection of claims 30-32, 39, and
40 under 35 U.S.C. § 103(a) as being unpatentable over Guedalia in view of
APA. We find that the Examiner has established at least a prima facie case
of obviousness that Appellants have not persuasively rebutted. Specifically,
the Examiner has (1) pointed out the teachings of Guedalia, (2) pointed out
the perceived differences between Guedalia and the claimed invention, and
(3) reasonably indicated how and why Guedalia would have been modified
to arrive at the claimed invention (Answer 7-8). Once the Examiner has
satisfied the burden of presenting a prima facie case of obviousness, the
burden then shifts to Appellants to present evidence or arguments that
persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Appellants did
not persuasively rebut the Examiner's prima facie case of obviousness, but
merely noted that the addition of APA fails to cure the deficiencies of
Guedalia in connection with independent claim 25 (Br. 5-6). The rejection
is therefore sustained.
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CONCLUSION
In summary, we have sustained the Examiner's rejection with respect
to all claims on appeal. Therefore, the decision of the Examiner rejecting
claims 25-41 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2004).

AFFIRMED

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