Ex Parte Nandakumar et alDownload PDFPatent Trial and Appeal BoardJul 21, 201613207368 (P.T.A.B. Jul. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/207,368 08/10/2011 31625 7590 07/25/2016 BAKER BOTTS LLP, PA TENT DEPARTMENT 98 SAN JACINTO BL VD., SUITE 1500 AUSTIN, TX 78701-4039 FIRST NAMED INVENTOR Sarun Madarakal NANDAKUMAR 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. 016295.4785 5810 EXAMINER PATEL, RONAK ART UNIT PAPER NUMBER 2458 NOTIFICATION DATE DELIVERY MODE 07/25/2016 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): tracy.perez@bakerbotts.com juli.luong@BakerBotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SARUN MADARAKAL NANDAKUMAR and DANIEL ERNESTO BARRETO Appeal2015-002249 Application 13/207,368 Technology Center 2400 Before LINZY T. McCARTNEY, MATTHEW J. McNEILL, and SCOTT E. BAIN, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-56. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection under the provisions of 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Wyse Technology L.L.C. App. Br. 3. Appeal2015-002249 Application 13/207,368 STATEMENT OF THE CASE Introduction Appellants' application relates to transmitting media sequence files in response to a seek request from a user streaming video. Abstract. Claim 1 is illustrative of the subject matter on appeal and reads as follows: 1. A method for dynamically generating media sequence files on demand for hypertext transfer protocol (HTTP) live streaming, comprising: based on a seek operation of a remote media player, receiving a first request for a media sequence file over a network utilizing HTTP live streaming; and in response to the first request, identifying a position of a media source file that corresponds to the seek operation; making a determination whether the media sequence file exists; and facilitating provision of a notification that the media sequence file is generated, wherein the media sequence file represents one of a plurality of sequential portions of the media source file, wherein a first format of the media sequence file is different from a second format of the media source file, and wherein the first format is compatible with the remote media player. The Examiner's Rejection Claims 1-56 stand rejected under 35 U.S.C. § 102(e) as anticipated by Fleming (US 2010/0135643 Al; June 3, 2010). Ans. 2. 2 Appeal2015-002249 Application 13/207,368 ANALYSIS Appellants argue the Examiner erred in rejecting claim 1 as anticipated by Fleming because Fleming does not disclose "a media source file" or a media sequence file "wherein the media sequence file represents one of a plurality of sequential portions of the media source file." App. Br. 7-8. In particular, Appellants argue the Examiner failed to address the language of claim 1 and has failed to show how Fleming discloses both a media source file and a media sequence file. Id. The Examiner finds Fleming teaches a media file 1800 that corresponds to the "media source file." Ans. 4 (citing Fleming, Fig. 18, iii! 355-364). The Examiner further finds Fleming teaches an index file 1805 that contains one or more tracks as a media list for media files. Id. at 5 (citing Fleming iii! 351-354). The Examiner finds the index file corresponds to the claimed "media sequence file" and that each track is a separate media file that is in a different format than index file. Id. Appellants have persuaded us that the Examiner erred. Contrary to the Examiner's finding, Fleming's index file 1805 does not satisfy the "media sequence file" limitation. In particular, the index file 1805 does not "represent[] one of a plurality of sequential portions of the media source file," which the Examiner identified as the media file 1800. Accordingly, Appellants have persuaded us that the Examiner erred in finding Fleming's media file 1800 corresponds to the "media source file" and Fleming's index file corresponds to the "media sequence file." However, we find Fleming discloses all of the limitations of claim 1. In particular, Fleming discloses the index file 1805 contains one or more tracks, each of which contains a reference to a media file. Fleming iii! 349- 3 Appeal2015-002249 Application 13/207,368 354. The media files are individually playable, sequential files that collectively make up an audio/video file. Id. iii! 349-355. The index file and the media files are different formats. Id. Fleming's index file corresponds to the claimed "media source file," while Fleming's media file corresponds to the claimed "media sequence file." Further, we adopt the Examiner's findings (Final Act. 4-6) regarding the remainder of the limitations of claim 1. We also adopt the Examiner's findings regarding claims 2-56 (Final Act. 6-15), modified as explained above regarding the "media source file" and "media sequence file" limitations. Accordingly, although we do not sustain the Examiner's rejection of claims 1-56 as anticipated by Fleming, we issue a new ground of rejection for claims 1-56, which are rejected under 35 U.S.C. § 102(e) as anticipated by Fleming for the reasons set forth above. CONCLUSIONS On the record before us and in view of the analysis above, Appellants have persuaded us that the Examiner erred in rejecting claim 1 as anticipated by Fleming. Therefore, we do not sustain the rejection of claim 1. We do not sustain the rejections of grouped claims 2-56 for the same reasons. For the reasons set forth above, although we do not sustain the Examiner's rejection of claims 1-56 as anticipated by Fleming, claims 1-56 are rejected under 35 U.S.C. § 102(e) as anticipated by Fleming. We designate the rejection as a new ground of rejection under 37 C.F.R. § 41.50(b). 4 Appeal2015-002249 Application 13/207,368 DECISION We reverse the decision of the Examiner to reject claims 1-56. We enter a new ground of rejection for claims 1-56 under 35 U.S.C. § 102(e). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be 5 Appeal2015-002249 Application 13/207,368 found in the Manual of Patent Examining Procedure § 1214. 01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) 6 Copy with citationCopy as parenthetical citation