Ex Parte Young

Board of Patent Appeals and Interferences

Jul 25, 2012

10621153 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOEL K. YOUNG
____________

Appeal 2010-006537
Application 10/621,153
Technology Center 2400
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006537
Application 10/621,153
2
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3-24. Claims 2 and 26 have been canceled. Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a data communications network in
which a web client communicates with a media server to configure a playlist
and in which the media server can pull video content from a selected video
file on a video file server and display the video. (Abstract).
Claim 25, reproduced below, is illustrative.
25. A method of distributing video information, comprising:

from a first network location, configuring a playlist of video files, the
video files being stored in at least one second network location connected to
the first network location via the network and the playlist configured in a
third location, wherein the playlist is configured at least in part by logging
into the third location with a web browser; and

from the third network location, connected to the first and second
network locations via the network, executing the playlist, including:

pulling video content associated with two or more video files
from the second network location over the network according to the
playlist;

translating the video content at the third network location into a
video output signal suitable for display; and
Appeal 2010-006537
Application 10/621,153
3
executing logical actions included in the playlist, wherein the
playlist includes at least one track, wherein the track includes an
identifier to select one or more of the number of video files and
includes at least one logical action related to playing the playlist.

THE REJECTIONS
Claims 25 and 27-36 are rejected under 35 U.S.C. § 102(e) as
anticipated by US 2002/0138641 A1 (Taylor), published September 26,
2002.
Claims 1, 7-9, 14-18, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over US Patent Application Publication No.
2005/0028208 A1 (Ellis), published February 3, 2005 in view of Taylor.
Claims 10, 19, 20, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ellis in view of Taylor and in further view of US
Patent Application Publication No. 2002/0007485 A1 (Rodriguez),
published January 17, 2002.
Claims 3-6 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis in view of Taylor and in further view of US Patent
Application Publication No. 2003/0135857 A1 (Pendakur), published July
17, 2003.
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis in view of Taylor, further in view of Pendakur, and
further in view of US Patent Application Publication No. 2003/0056217 A1
(Brooks), published March 20, 2003.
Appeal 2010-006537
Application 10/621,153
4
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ellis in view of Taylor, further in view of Rodriguez and further in
view of Brooks.

Rejection of Claims 25 and 27-36 Under 35 U.S.C. § 102(e)
CONTENTIONS
In rejecting independent claim 25 as anticipated, the Examiner maps
the claimed first network location to Taylor's proxy server 420 and database
425, the claimed second network location to Taylor's media content servers
405, 410, 415, and the claimed third network location to Taylor's client and
Windows Media Player (WMP). (Ans. 18).1 The Examiner finds that the
claimed track is a playlist played back by the WMP and that the playlist
includes identifiers (e.g., mediaClip 1.ref) to indicate that the clip should be
retrieved from the media content server. (Ans. 4). The Examiner notes that
in the flow diagram of Figure 6, Taylor discloses that, using a browser or
streaming media player (e.g., WMP), a user on client 300 requests a playlist
of video files from proxy server 420 and that the proxy server builds an
actual playlist based on user preferences and sends that playlist to the client.
(Ans. 19). When the media player executes the playlist received from proxy
server 420, the media player is redirected to media content servers (405, 410,
415) to retrieve the actual audio/video files. Id.

1 Throughout, we refer to Appellant’s Appeal Brief filed on August 4, 2009
and the Examiner’s Answer mailed on November 25, 2009.
Appeal 2010-006537
Application 10/621,153
5
Appellant argues that by following the reasoning of the Examiner, the
playlist is configured from the third location (mapped by the Examiner to
Taylor’s client) when a user logs in, instead of from the first location
(mapped by the Examiner to Taylor’s proxy server) as claimed. (Br. 12).
The Examiner responds that while claim 25 recites configuring a playlist of
video files from the first location, the relevant part of Appellant’s
Specification (page 8, line 28) does not define the tasks included in the
configuring step. The Examiner broadly construes the configuring step to
include the proxy server 420 constructing and building the playlist based on
user preferences. (Ans. 19). Appellant also contends that in Taylor the third
network location does not pull video from the second network location. (Br.
12). The Examiner finds that steps 640-645 in Figure 6 of Taylor disclose
this claim limitation. (Ans. 20).
Concerning claim 34, the Examiner maps the claimed web client to
Taylor's proxy server 420, the claimed video file server to Taylor's media
content server, and the claimed media server to Taylor's client 300.
(Ans. 20). In response to this rejection, Appellant argues that in Taylor, the
user and browser are at the client 300 rather than connected via a network,
so that Taylor does not teach a web client configuring a playlist by logging
into the media server through a network using a web browser. (Br. 13). In
response, the Examiner’s Answer clarifies that the elements of independent
claim 34 map to Taylor in a similar manner to the mapping of claim 25.
(See Ans. 20). The Examiner finds that Figure 4 of Taylor shows proxy
Appeal 2010-006537
Application 10/621,153
6
server 420 (i.e., the claimed "web client") located remotely from the client
(i.e., the claimed "media server") via the Internet (i.e., the claimed
"network"), so that Taylor discloses the claimed structure. (Ans. 21).
Appellant argues that Taylor's proxy server is not configured to
convert pulled video content into a video output signal as a function of the
logical actions of the playlist. (Br. 13). Reading Taylor's proxy server on
the claimed web client and Taylor's client 300 on the claimed media server,
the Examiner finds that Taylor’s client 300 embodies the media player
(WMP), which converts the streaming media into a video signal for display
when receiving a play command. (Ans. 21).
Appellant argues that Taylor's playlist does not include a track with an
identifier and at least one logical action related to playing the playlist.
(Br. 14). The Examiner finds that Taylor's playlist as shown in Figure 5
includes a track with an identifier and a hyperlink and, citing to page 14
[sic], lines 13-252 of Appellant’s Specification, a logical action related to the
playlist includes a hyperlink. (Ans. 22).

ANALYSIS
Claim 25 recites a method of distributing video that begins with the
step of:
from a first network location, configuring a playlist
of video files…the playlist configured in a third

2 The correct citation is page 4, lines 13-25 of Appellant’s Specification.
Appeal 2010-006537
Application 10/621,153
7
location, wherein the playlist is configured at least
in part by logging into the third location with a
web browser . . . .

In Taylor, a user logs into client 300 (the third claimed location, as
identified by the Examiner) and uses a browser to connect to a media server
420 (the first claimed location, as identified by the Examiner). ¶[0035]. In
Taylor, when the client 300 (i.e., the claimed “third location”) connects to
the proxy server 420 via the Internet, the proxy server (i.e., the claimed “first
location”) configures a playlist, which the proxy server then transmits to the
client. ¶¶[0036], [0047]. Thus, the playlist is configured, at least in part, by
logging into the third location with a web browser, as recited in claim 25.
Also, Taylor’s playlist may include references to actual media clips,
references to clips on the proxy server that will be redirected to the media
content servers (i.e., the claimed “second network location,” as identified by
the Examiner) as the streaming media player requests each clip or a
combination of both. ¶ [0047].
In contrast to Appellant’s argument that Taylor only discloses the
streaming media player requesting video from the proxy server (Br. 13), in
Taylor, if the streaming media player on client 300 (i.e., the claimed “third
network location”) is given an actual playlist, the streaming media player
refers to the appropriate media content servers and requests the media as the
playlist is played. ¶ [0051]. Thus, using the media player to translate the
video output into a suitable signal for display, Taylor’s client 300 (i.e., the
Appeal 2010-006537
Application 10/621,153
8
claimed “third location”) executes the playlist by pulling content from the
media content servers (the second claimed location). ¶¶ [0049-0051].
Appellant argues that the Examiner incorrectly takes the position that
merely including a track in a playlist is a logical action. (Br. 14). The
playlist in Taylor has at least one track including an identifier to select the
video files in a sequence (see Play List shown in Fig. 5 that include media
clip 1 referred to at Ans. 4) and, because logical actions relating to playing
the playlist include the actual sequence of files in the playlist, (Spec. p. 4, l.
11), features of a media player, such as start and stop times (Spec. p. 4, ll.
15-18) and hyperlinks (Spec. p. 4, l. 18), the playlist in Taylor includes at
least one logical action, as recited in claim 25. Having found all the
elements of claim 25 in Taylor, we conclude that the Examiner did not err in
finding that Taylor anticipates claim 25.
Claim 34 is a system claim which recites limitations similar to those
of method claim 25. Appellant makes similar arguments as those associated
with claim 25 and has not replied to the mapping of the system’s elements as
clarified in the Examiner’s Answer (see Ans. 20-22). Therefore, for the
same reasons as those discussed above concerning claim 25, we find no error
in the Examiner’s conclusion that Taylor anticipates claim 34.
Appellant does not separately argue dependent claims 27-33, 35, and
36, and we sustain the Examiner’s finding that these claims are also
anticipated by Taylor for the above-discussed reasons.

Appeal 2010-006537
Application 10/621,153
9
Rejection of claims 1 and 3-24 under 35 U.S.C. § 103(a)
CONTENTIONS
The rejection of claim 1 is representative of the Examiner’s rejection
of claims 1, 7-9, 14-18, 23, and 24 as unpatentable over Ellis in view of
Taylor. The Examiner maps: (a) the claimed video display to television 36;
(b) the claimed video file server to server 242 in the TV distribution facility
238; (c) the claimed media server to set-top box 28 and 248; and (d) the
claimed web client to remote program guide access device 24 to
communicate with the media server through a network. (Ans. 8-9). The
Examiner finds that the video file server in Ellis includes video content to be
selectively displayed on at least one video display, e.g., in the disclosure at
paragraph [0130], lines 1-6 of the display for ordering
pay-per-view video. (Ans. 9). Noting that Ellis does not teach the
remaining features of the claim, the Examiner finds that Taylor discloses
these missing limitations, including the playlist and the media server
configuration, using similar findings as those discussed above in connection
with claim 25. (Ans. 9).
Appellant contends that the playlist in Taylor does not include a track
as recited in the claims. (Br. 18). Appellant further contends that Ellis does
not teach or suggest a media server that executes the playlist to control video
content on the video display, but instead, relates to a program guide to play a
program according to user input. (Br. 18). Referring to Figures 2a and 27,
the Examiner responds that the system of Ellis includes a set top box which
Appeal 2010-006537
Application 10/621,153
10
provides the user access to an interactive television program guide and plays
a television program, thus meeting the claim requirements of the media
server to control video content on the video display. (Ans. 24). Appellant
further contends that one of ordinary skill would not reasonably be led to
combine Ellis and Taylor because Ellis already provides a listing of
available programs from which the user can choose, so the user selected
playlist of Taylor would not add anything to the system of Ellis. (Br. 19).
Claim 10 is representative of the Examiner’s rejection of claims 10,
19, 20, and 22. In rejecting claim 10, the Examiner further finds that
paragraphs [0051] and [0052] of Rodriguez disclose the recited limitations.
(Ans. 13-15). Appellant, responding specifically only with respect to claim
10, argues that the video on demand features in Rodriguez refer to a rental
selection screen 110 and not to a number of times to play the files in the
playlist. (Br. 20).
Appellant offers no other specific response to the Examiner’s findings
concerning Pendakur or Brooks in combination with Ellis and Taylor or
Ellis, Taylor, and Rodriguez. (Br. 21-22).

ANALYSIS
The § 103 Rejection of Claims 1, 7-9, 14-18, 23, and 24
Appellant argues claims 1, 7-9, 14-18, 23, and 24 as a group. Claim 1
is representative. Claim 1 is a system claim quite similar to claim 34
previously discussed herein. The Examiner’s reliance on Ellis in the
Appeal 2010-006537
Application 10/621,153
11
rejection under 35 U.S.C. § 103(a) appears to be redundant, since, as
discussed above, Taylor discloses the web client, video file server and media
server recited in independent claim 1 and the media server with a memory
and processor having the features recited in independent claim 16.
Turning to the Examiner's application of Ellis, however, we note that
Ellis discloses an interactive television program guide with a remote access
device connected to the interactive television program guide equipment by a
remote-access link to provide the user with remote access to program guide
functions. (Abstract). The user can adjust the program guide settings, which
include program reminders, program profiles, and recording features.
(Abstract).
Ellis discloses that the remote program access device 24 (mapped to
the claimed web client at Ans. 9) may be a user's personal computer,
(¶ [0099]), and that communications between the remote guide access device
24 and interactive television program guide equipment may take place over
an Internet link. ¶ [0097]. Ellis discloses that the remote program guide
access device 24 (mapped to the claimed web client) can communicate via a
client-server architecture with the media server, which the Examiner maps to
the user television equipment, including a set-top box (Ans. 11). ¶ [0071].
In Ellis, server 242 in the television distribution facility implements a
client-server based interactive television program guide. ¶ [0184]. Server
242 thus constitutes the claimed video server, which includes a number of
video files. The video files include television program listings (¶ [0188]),
Appeal 2010-006537
Application 10/621,153
12
scheduled television programming, pay programming, advertising and
promotional videos (¶ [0189]), as well as interfaces for purchasing services
such as pay-for-view (¶ [0130]). Thus, we agree with the Examiner that the
video display, video file server, media server and web client are taught by
Ellis.
The remaining features of claim 1 correspond to the features recited in
claims 25 and 34, which we have already determined are disclosed by
Taylor. We note Appellant’s argument that the media clip information 515
in Taylor, refers to a nonexistent file or document on a proxy server. (Br.
18). Appellant takes this isolated phrase from Taylor out of context,3 and
this sole passage does not change our above conclusions. We disagree with
Appellant’s statement that, because Ellis discloses a program listing of
available programs from which the user can choose, Taylor has nothing to
do with Ellis (Br. 19). Taylor teaches a producer how to assemble and
distribute a playlist which can be changed (¶[0007]) and provides some
reason to combine its teaching with Ellis (see Ans. 10). Thus, we conclude
that the Examiner did not err in finding claims 1, 7-9, 14-18, 23, and 24 are
obvious over Ellis in view of Taylor.

3 Paragraph [0043] of Taylor states that media clip location information 515
and clip information 520 typically serve as “placeholders” to cause the
streaming media player to request a media clip from the server.
Appeal 2010-006537
Application 10/621,153
13
The Rejections of Claims 3-6, 10-13, and 19-22
We sustain the rejection of claims 3-6, 11-13, and 19-22 because
Appellant has advanced no separate arguments in addition to those discussed
above concerning independent claims 1 or 16.
Turning to claim 10, Appellant argues that the portion of Rodriguez
cited by the Examiner discloses the rental period for a video on demand
system, rather than the number of times to play files in a playlist. Because
claim 10 recites only the track having a logical action that includes the
number of times to play the file or merely recites what the action represents,
rather fails to actually perform the action of limiting the number of plays,
this recitation does not further limit the claim functionally. Such non-
functional descriptive material does not patentably distinguish over prior art
that otherwise renders the claim unpatentable. See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Therefore, we sustain the Examiner’s rejection
of claim 10.

CONCLUSION
Appellant has not demonstrated that the Examiner erred in finding that
Taylor anticipates claims 25 and 27-36.
Appellant has not demonstrated that the Examiner erred in rejecting
claims 1 and 3-24 as obvious under 35 U.S.C. § 103(a).

Appeal 2010-006537
Application 10/621,153
14
ORDER
The rejection of claims 25 and 27-36 under 35 U.S.C. § 102(e) as
anticipated by Taylor is affirmed.
The rejection of claims 1, 7-9, 14-18, 23, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Ellis in view of Taylor is affirmed.
The rejection of claims 10, 19, 20, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Ellis in view of Taylor and in further view of
Rodriguez is affirmed.
The rejection of claims and 3-6 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Ellis in view of Taylor and in further view of
Pendakur is affirmed.
The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Ellis in view of Taylor, further in view of Pendakur is
affirmed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Ellis in view of Taylor and further in view of Pendakur
and further in view of Brooks is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R § 1.136(a)(1)(iv).

AFFIRMED

rwk