Ex Parte Kahn et al

Patent Trial and Appeal Board

Mar 9, 2016

13118772 (P.T.A.B. Mar. 9, 2016)

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.
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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.
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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
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