Ex Parte Norton et alDownload PDFPatent Trial and Appeal BoardJul 28, 201613655384 (P.T.A.B. Jul. 28, 2016) Copy Citation 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; 2 Appeal2015-000937 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, 3 Appeal2015-000937 Application 13/655,384 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. 4 Appeal2015-000937 Application 13/655,384 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. 5 Appeal2015-000937 Application 13/655,384 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." 6 Appeal2015-000937 Application 13/655,384 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. 7 Appeal2015-000937 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 8 Copy with citationCopy as parenthetical citation