Ex Parte STERN et al

Patent Trial and Appeal Board

Jan 7, 2016

12124285 (P.T.A.B. Jan. 7, 2016)

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).
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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.
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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
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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).
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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
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