Ex Parte STERN et alDownload PDFPatent Trial and Appeal BoardJan 7, 201612124285 (P.T.A.B. Jan. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/124,285 05/21/2008 44870 7590 01/11/2016 MOORE & VAN ALLEN, PLLC For IBM P.O. Box 13706 3015 Carrington Mill Boulevard, Suite 400 Research Triangle Park, NC 27709 FIRST NAMED INVENTOR EDITH HELEN STERN 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. RSW920080064US 1 2426 EXAMINER F AAL, BABOUCARR ART UNIT PAPER NUMBER 2131 NOTIFICATION DATE DELIVERY MODE 01111/2016 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): iplaw@mvalaw.com usptomail@mvalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDITH HELEN STERN and ALAN GANEK Appeal2014-000836 Application 12/124,285 Technology Center 2100 Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and KAMRAN JIVANI, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's rejections of claims 1-3, 6-13, and 16-18. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The present patent application relates to data delivery systems. Spec. ii 1. 1 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 1. 2 Claims 4, 5, 14, 15, 19, and 20 are cancelled. Appeal2014-000836 Application 12/124,285 Claim l is illustrative (lettering and emphases added): 1. A data-delivery method comprising: receiving a single request for a multi-segment, sequential data file from a user, the multi-segment, sequential data file comprising a plurality of segments stored on a plurality of storage devices; in response to the single request: streaming at least a portion of a first segment of the multi-segment, sequential data file from a previously- energized first storage device to the user; determining a period of time for energizing a previously-unenergized second storage device; [L 1] energizing, for the period of time prior to completion of streaming the portion of the first segment of the multi-segment, sequential data file to the user, the previously unenergized second storage device that contains a second segment of the multi-segment, sequential data file; streaming at least a portion of the second segment of the multi-segment, sequential data file from the previously-unenergized second storage device to the user; and [L2] deenergizing the second storage device after the second segment of the multisegment, sequential data file has been at least substantially provided to the user. The Rejection Claims 1-3, 6-13, and 16-18 stand rejected under 35 U.S.C. § 102(e) as anticipated by Guha (US 2008/0154920Al; June 26, 2008). 2 Appeal2014-000836 Application 12/124,285 ANALYSIS Appellants contend the Examiner errs in rejecting claim 1 because: (i) "[t ]he hierarchal web content of Guha is different from the multi-segment sequential data file recited in the claims" (App. Br. 6) 3; (ii) Guha's disclosure "is different from streaming a multi-segment sequential data file such as a movie where a single request is made at the beginning" (id.); (iii) Guha's user is no longer being provided with the first web content at the time the second storage medium 204 is powered on. (id. at 7); and (iv) Guha discloses "a totally different basis for determining whether to power down a second storage device than is recited in claim 1" at limitation L2 (id. at 6). Appellants rely exclusively on these arguments, presented in the context of claim 1, for independent claims 11 and 16 as well as dependent claims 2, 3, 6-10, 12, 13, 17, 18. App. Br. 8. We have considered the Examiner's rejections in light of the Appellants' arguments in the Appeal Brief and Reply Brief, as well as the Examiner's Answer thereto. Appellants' arguments do not persuade us of Examiner error. Rather, we agree with, and adopt as our own, the Examiner's findings and reasons. We further emphasize the following. Appellants' argument (i) fails to persuade of Examiner error because it is not commensurate with the scope of the claims. Appellants contend Guha's data file is not equivalent to the claimed data file because Guha's paragraph 18 "describes web pages with embedded links rather than a long file like a movie (see, e.g., Appellant's [sic] specification at paragraph [0029], which describes the multisegment sequential data file as including, 3 The Appeal Brief lacks page numbers. We treat the Brief as if numbered sequentially beginning with the cover page. 3 Appeal2014-000836 Application 12/124,285 for example, a video file)." App. Br. 6. Contrary to Appellants' contention, claim 1 does not recite the claimed data file to be "a long file like a movie" and we do not read into the claim language exemplary, non-limiting statements from the Specification such as the statement cited by Appellants here. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2 004). We further note the paragraph of Guha to which Appellants' direct us also recites, "Examples of the second web content can be an image, an audio file, a video file on the page, and the like." Guha, i-f 18. We are similarly not persuaded by Appellants' argument (ii) because Appellants misapprehend Guha's disclosure. Contrary to Appellants' contention, Guha does not preclude a single request. Rather, the cited paragraphs describe providing multiple segments in response to a request where the request is for a second or third segment. Guha, i-fi-1 19, 3 7; see also Figs. 4---6. Appellants' argument (iii), which addresses limitation LI, is not persuasive. Appellants point to Guha's statement that "second storage media 204 that may be in a lower power mode of operation at the time the web content is accessed." App. Br. 7 (citing Guha, i-f 39). This statement, does not preclude the second storage medium 204 from being powered on "prior to completion of streaming the portion of the first segment" as claimed. Rather, the Examiner correctly finds that Guha recites powering on the second storage medium in order to "reduce any delay while loading the web content" so that "the user may not need to wait while the web content is being loaded." Ans. 6; Guha, i-f 39. We further note Guha discloses, "When the first web content is accessed by the user, the third storage medium 206 is 4 Appeal2014-000836 Application 12/124,285 powered up to a power mode of operation from a lower power mode of operation." Guha, i-f 20. Appellants' argument (iv) addresses limitation L2, which recites deenergizing the second storage device after the second segment has been at least substantially provided to the user. As to this limitation, the Examiner relies on the following passage in Guha: "Further, the power manager 110 may be capable of powering down one or more drives of the secondary storage medium 112 to a lower power level when the one or more drives are not accessed by the user." Ans. 6 (citing Guha, i-f 13). Appellants further contend, "There could be any number of reasons why the one or more drives in Guha are not accessed by the user, including the user deciding to not access content from a second web page or the user simply closing the web page before the second web content has been streamed." Reply Br. 3. We agree with the Examiner's finding that the cited portion of Guha discloses "powering down the drive after it is no longer being accessed (data request is complete) .... " Ans. 6. Further, Appellants fail to explain why one of ordinary skill in the art would not understand the paragraph 13 disclosure of powering up when accessed and powering down when not accessed as anticipating the claimed deenergizing after the second segment has been at least substantially provided to the user. To the extent Appellants' argue the level of detail claimed is absent from the cited art, we disagree. Although the claimed elements must be arranged as recited, anticipation is not an ipsissimis verb is test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). 5 Appeal2014-000836 Application 12/124,285 Accordingly, we sustain the Examiner's 35 U.S.C. § 102(e) rejections of independent claims 1, 11, and 16 together with their dependent claims 2, 3, 6-10, 12, 13, 17, 18, not separately argued. DECISION We affirm the Examiner's decision to reject claims 1-3, 6-13, and 16-18. 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 6 Copy with citationCopy as parenthetical citation