Ex Parte Norton et al

Patent Trial and Appeal Board

Jul 28, 2016

13655384 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/655,384 10/18/2012
36630 7590 08/01/2016
IP-MEX Inc,
Unit D2 (Second Floor)
150 Terence Matthews Crescent
KANATA, ON K2MIX4
CANADA
FIRST NAMED INVENTOR
Richard Elliott Norton
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.
VT-010-US-CON 7792
EXAMINER
PHUNG,LUAT
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
vdonnelly@ip-mex.com
admin@ip-mex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ELLIOTT NORTON,
MARIO JOSEPH LEO CLAUDE LAV ALLIERE, and
LOUIS-RENE POIRIER-BEAUCHEMIN
Appeal2015-000937
Application 13/655,384
Technology Center 2400
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-20, which are all the claims
pending in the present patent application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Vantrix Corporation as the real party in interest. App.
Br. 3.
Appeal2015-000937
Application 13/655,384
STATEMENT OF THE CASE
The present application relates to modification of media contained in a
multimedia messaging service (MMS) message into an adapted message.
Spec. 1: 10-11.
Claim 1 is illustrative:
1. A transcoder system, comprising:
a hardware processor;
a non-transitory computer readable storage
medium, compnsmg computer readable
instructions stored thereon for execution by the
hardware processor, for transcoding a multimedia
message including individual media components,
into an adapted multimedia message, the computer
readable instructions causmg the hardware
processor to:
(a) receive a transcoding request, including
the multimedia message and a destination profile
describing characteristics of the adapted multimedia
message to be sent to a destination device;
(b) form a transcoding pipeline module for
transcoding the individual media components of the
multimedia message, comprising:
(i) an ordered arrangement of
transcoding operations for processing the
individual media components of the
multimedia message into the adapted
multimedia message;
(ii) one or more builder modules for
dynamically building the ordered
arrangement of the transcoding operations;
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Application 13/655,384
(iii) a director module for selecting
some or all of said one or more builder
modules according to the destination profile
of the transcoding request; and
( c) execute the transcoding operations of the
transcoding pipeline module to generate the adapted
multimedia message.
The Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 1---6, 8-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
over Applicants' Admitted Prior Art (US 2013/0042022 Al, publication of
the instant application, Background of the Invention section and Prior Art
labeled figure) ("AAPA") and Lai (US 2002/0190876 Al; publ. Dec. 19,
2002).
Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) over AAPA,
Lai, and Atkins (US 7,876,766 Bl; iss. Jan. 25, 2011).
ANALYSIS
Written Description Rejection
Appellants do not challenge the Examiner's rejection of claims 1-20
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. See App. Br. 13. Arguments not raised in the
Appeal Brief are waived. 37 C.F.R. § 41.37(c)(l)(iv) (2012). Accordingly,
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we summarily sustain the Examiner's 35 U.S.C. § 112, first paragraph,
rejection.
Indefiniteness Rejection
Appellants do not challenge the Examiner's rejection of claims 1-20
under 35 U.S.C. § 112, second paragraph, as indefinite. See App. Br. 13.
Arguments not raised in the Appeal Brief are waived. 37 C.F.R.
§ 41.37(c)(l)(iv). Accordingly, we summarily sustain the Examiner's 35
U.S.C. § 112, second paragraph, rejection.
Obviousness Rejection of Claims 1-6, 8-17, 19, and 20
Appellants contend the Examiner errs in rejecting claim 1 because
AAP A does not disclose the claimed destination profile, transcoding
pipeline module, ordered arrangement of transcoding operations, builder
module and director module. App. Br. 16-23; Reply Br. 7-18. We are not
persuaded by these arguments for at least the following reasons.
Appellants contend the cited portions of AAP A do not recite the
claimed destination profile, transcoding pipeline module, ordered
arrangement of transcoding operations, builder module and director module.
App. Br. 16-23; Reply Br. 7-18. These arguments reduce to assertions that
the claim language is not disclosed verbatim in the cited AAP A. The
doctrine of obviousness does not require identity of language. In re May,
574 F.2d 1082, 1090 (CCPA 1978). Rather, the obviousness inquiry is
directed to whether the cited references would teach or suggest the claimed
subject matter to one of ordinary skill in the art at the time. KSR Int 'l Co. v.
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Teleflex, Inc., 550 U.S. 398, 417 (2007). A prima facie case of obviousness
requires "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). We find the Examiner has established a prima facie case of
obviousness by mapping the broadest reasonable interpretations of the
claimed elements to precise disclosures in the AAP A. Although Appellants
identify disclosure of the claimed elements within portions of the
Specification not included by the Examiner in the AAP A, Appellants do not
identify therein limiting definitions of the claimed elements, nor can we find
any such definitions. Moreover, Appellants fail to explain persuasively why
the cited portions of AAP A would not teach or suggest the corresponding
claim elements to one of ordinary skill in the art.
Appellants further contend the AAPA "does not disclose any structure
for solving the problem as recited" in claim 1. See, e.g., Reply. Br. 8. The
Examiner finds, and we agree, the AAP A as evidenced by the Multimedia
Adaptation paper ("MMA paper") 2 teach or suggest the claimed elements
through disclosure of "a set of software modules to perform" the
corresponding claim elements as mapped by the Examiner, when executed
on a computer (i.e., "hardware processor" as recited in claim 1).3 See, e.g.,
Ans. 5---6. Appellants argue the AAP A and MMA paper citations separately.
See, e.g., Reply Br. 16. Where, as here, a rejection is based on a
combination of references, one cannot show non-obviousness by attacking
2 Coulombe et al., MULTIMEDIA ADAPTATION FOR THE MULTIMEDIA
MESSAGING SERVICE, IEEE Communications Magazine 120, July 2004.
3 We note Appellants do not object in the record before us to the Examiner's
reliance on the MMA paper. See App. Br. 17.
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references individually. In re Keller, 642 F .2d 413, 426 (CCP A 1981 ); In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants fail to
explain persuasively why the cited combination of references describing
software modules would not teach or suggest the claimed elements to one of
ordinary skill in the art, as mapped by the Examiner.
With regard to the cited teachings of Lai, Appellants admit "Lai
executes the steps of fetching, sending, transcoding and transmitting in a
pipelined fashion." Reply Br. 18 (emphasis omitted). Appellants contend,
however, "Lai does not teach pipelining of any of the steps within the
transcoding process," and "Lai does not disclose any details of executing the
'different conversion operations'" described in Lai as involved in
transcoding. Id. We are not persuaded by Appellants' argument regarding
the conversion operations because it is not commensurate with the scope of
claim 1.
Further, we are not persuaded by Appellants' argument regarding
pipelining the steps within the transcoding process. A determination of
obviousness does not require the claimed invention to be expressly
suggested by any one or all of the references. See, e.g., Keller, 642 F .2d at
425. The Examiner is not required to "seek out precise teachings directed to
the specific subject matter of the challenged claim" as argued by Appellants.
KSR, 550 U.S. at 418. Rather, the Examiner's obviousness analysis may
"take account of the inferences and creative steps that a person of ordinary
skill in the art would employ" (id.), as well as "include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion."
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Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009).
Appellants fail to explain persuasively in the record before us why
one of ordinary skill in the art would not apply the concept of pipelining
described in Lai, and admitted by Appellants, to the steps within the
transcoding process. Absent from Appellants' argument is adequate
evidence that the resulting arrangements were "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 sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1.
With regard to claims 3 and 13, Appellants contend "the present
invention provides advantages over Lai of scalability and maintainability."
Reply Br. 19. We are not persuaded by this argument because we decline to
import into the claim language requirements of scalability and
maintainability. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claims 3 and 13.
Appellants advance no further arguments addressing the limitations of
of claims 2, 4---6, 8-12, 14--17, 19, and 20 beyond those discussed above.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
these claims.
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Application 13/655,384
Obviousness Rejection of Claims 7 and 18
Appellants advance no further arguments addressing the limitations of
claims 7 and 18 beyond those discussed above in the context of claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
these claims.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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