Ex Parte Kahn et alDownload PDFPatent Trial and Appeal BoardMar 9, 201613118772 (P.T.A.B. Mar. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/118,772 05/31/2011 Colin Kahn 46304 7590 03/11/2016 RYAN, MASON & LEWIS, LLP 48 South Service Road Suite 100 Melville, NY 11747 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 809391-US-NP 1212 EXAMINER SALCE, JASON P ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 03/11/2016 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): nyoffice@rml-law.com jbr@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COLIN KAHN, EDWARD GRINSHPUN, and RAZIEL HAIMI-COHEN Appeal2013-004861 Application 13/118,772 Technology Center 2400 Before JOHN A. EVANS, CATHERINE SHIANG, and TERRENCE W. McMILLIN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The present invention relates to communication systems that include wireless networks. See generally Spec. 1. Claim 1 is exemplary: 1. A method comprising the steps of: obtaining availability information for a wireless network; and modifying a manner in which video segments of a video service are delivered to a user device over the wireless network based on the obtained availability information; Appeal2014-004861 Application 13/118,772 wherein the obtaining and modifying steps are performed by a video server communicatively connected to the wireless network; the video server being configured to obtain the availability information at least in part from the wireless network. Polish Ozer Dacosta Harrar Thomas Altman References and Rejections us 5,593,202 US 2003/0101454 Al US 2006/0230176 Al US 2008/0301749 Al US 2010/0186025 Al US 2010/0299703 Al Oct. 5, 1999 May 29, 2003 Oct. 12, 2006 Dec. 4, 2008 July 22, 2010 Nov. 25, 2010 Claims 1-8, 11, 12, and 17-20 are rejected under 35 U.S.C. § 102(e) as being anticipated by Thomas. Claims 9 andlO are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and i\~ltman. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and Polish. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and Harrar. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and Ozer. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas and Dacosta. 2 Appeal2014-004861 Application 13/118,772 ANALYSIS The Anticipation Rejection We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, and the Examiner's response to Appellants' arguments. We concur with Appellants' conclusion that the Examiner erred in finding Thomas discloses "obtaining availability informationfor a wireless network," as recited in independent claim 1 (emphasis added). 1 The Examiner cites Thomas' Figure 33 (Final Act. 3), but concedes "Thomas initially gathers available bandwidth (availability) information at the user's client device." Ans. 3. The Examiner then cites Thomas' Figure 1, paragraphs 61 and 48 for the disputed claim limitation. See Ans. 3--4; see also Final Act. 3. Thomas states: [0061] These applications or features may be implemented locally on user equipment 110, user television equipment 112, or user computer equipment 114. The applications or features may also be implemented using a client-server architecture in which user equipment 110, user television equipment 112, or user computer equipment 114 serves as a client processor, and a server, such as server 108 at television distribution facility 104 or at any other suitable location, acts as a server processor. Other distributed architectures may be used. [0048] Television distribution facility 104 may be a cable system headend, a satellite television distribution facility, a television broadcast facility, or any other suitable facility for distributing video-on-demand content, television, and music programming to users. There are typically numerous television distribution facilities 104 in system 100, but only one is shown in FIG. 1 to avoid over complicating the drawing. Thomas i-fi-1 61, 48. 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 3 Appeal2014-004861 Application 13/118,772 lnherency can only be established when "prior art necessarily functions in accordance with, or includes, the claimed limitations." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). We have examined the cited Thomas portions, and agree with Appellants that the Examiner fails to show the cited Thomas portions necessarily teach obtaining availability informationfor a wireless network. Because the Examiner fails to provide sufficient evidence to support the anticipation rejection, we are constrained by the record to reverse the Examiner's rejection of claim 1, and corresponding dependent claims 2-8, 11-12, and 17 for similar reasons. For similar reasons, we do not sustain the Examiner's rejection of independent claims 18 and 20, and dependent claim 19. The Obviousness Rejection The Examiner cites additional references for the obviousness rejection of dependent claims 9-10 and 13-16. The Examiner relies on Thomas in the same manner discussed above in the context of claim 1, and does not rely on the additional references in any manner that remedies the deficiencies of the underlying anticipation rejection. See Final Act. 9-13. Accordingly, we reverse the Examiner's obviousness rejection of claims 9-10 and 13-16. DECISION The Examiner's decision rejecting claims 1-20 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation