Judith H. Bank et al.

Patent Trials and Appeals Board

Jun 26, 2020

13686275 - (D) (P.T.A.B. Jun. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/686,275 11/27/2012 JUDITH H. BANK CAM920120065US1_8150-0229 1054
73109 7590 06/26/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
SAYOC, KRISTOFFER L S
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteJUDITH H. BANK, LISA M.W. BRADLEY, and LIN SUN
Appeal 2018-006825
Application 13/686,275
Technology Center 2400
Before ELENI MANTIS-MERCADER, LARRY J. HUME, and
SCOTT E. BAIN,Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 13–28, which are all rejections pending
in the application. Appellant has canceled claims 1–12. See Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the IBM Corporation.
Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a non-chronological buffering of segments
of a media file. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to:
A [system and computer-program product] that receiv[es]
a request for a media file from a client system and determining,
using a processor, a non-chronological ordering of a plurality of
segments of the media file for buffering according to historical
playback data for each of the plurality of segments of the media
file. The method further includes sending a first segment of the
media file, as specified by the non-chronological ordering of the
plurality of segments, for buffering to the client system. The
non-chronological ordering is determined prior to sending any
segment of the media file to the client system.
Spec. ¶ 1.
Exemplary Claims
Claims 13 and 19, reproduced below, are representative of the subject
matter on Appeal (emphases added to contested prior-art limitations):
13. A system comprising:
a processor programmed to initiate executable operations
comprising:
receiving a request for a media file from a client system;
determining a non-chronological ordering of a plurality
of segments of the media file for buffering according to

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 9, 2017); Reply Brief (“Reply Br.,” filed June 20, 2018); Examiner’s
Answer (“Ans.,” mailed Apr. 20, 2018); Final Office Action (“Final Act.,”
mailed June 14, 2017); and the original Specification (“Spec.,” filed
Nov. 27, 2012).
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historical playback data for each of the plurality of segments of
the media file; and
sending a first segment of the media file, as specified by
the non-chronological ordering of the plurality of segments, for
buffering to the client system;
wherein the non-chronological ordering is determined
prior to sending any segment of the media file to the client
system.
19. A system comprising:
a processor programmed to initiate executable operations
comprising:
including a reference to a media file within a Web page,
wherein the media file comprises a plurality of segments; and
including within the reference, a parameter indicating
that segments of the media file are to be buffered in a non-
chronological order.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Errico et al. (“Errico”) U.S. 2002/0180774 A1 Dec. 5, 2002
Bennett et al. (“Bennett”) U.S. 2011/0106964 A1 May 5, 2011
Fleischman et al. (“Fleischman”) U.S. 2012/0215903 A1 Aug. 23, 2012
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REJECTIONS
R1. Claims 13–28 stand rejected under the judicially-created
doctrine of obviousness-type double patenting (OTDP) over claims 1–4
and 8–12 of copending application no. 14/023,534.3 Final Act. 3.
R2. Claims 13–15, 18, 21, 22, and 25 stand rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Errico. Final Act. 5.
R3. Claims 19–20, 26, 27, and 28 stand rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Bennett. Final Act. 11.
R4. Claims 16 and 23 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Errico and
Fleischman. Final Act. 16.
R5. Claims 17 and 24 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Errico and Zhang.
Final Act. 21.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 9–18) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of anticipation
Rejection R2 of claims 13–15, 18, 21, 22, and 25 on the basis of
representative claim 13; and we decide the appeal of anticipation Rejection
R3 of claims 19–20, 26, 27, and 28 on the basis of representative claim 19.

3 Although the Examiner designated OTDP Rejection R1 as “provisional,”
we treat the rejection as non-provisional given the issuance of the identified
application on October 22, 2019 as U.S. Patent 10,454,983.
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Remaining claims 16, 17, 23, and 24 in obviousness Rejections R4
and R5, not argued separately, stand or fall with the respective independent
claim from which they depend.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We pro forma affirm OTDP Rejection R1 of claims 13–28 for the
reasons discussed, infra.
However, we agree with specific arguments made with respect to
Rejections R2 through R5 of claims 13–28 and, for essentially the same
reasons argued by Appellant, we do not sustain the Examiner’s rejections, as
discussed, infra.
We highlight and address specific findings and arguments regarding
claims 13 and 19 for emphases as follows.

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. OTDP Rejection R1 of Claims 13–28
Issue 1
Appellant does not appear to acknowledge the OTDP rejection (Final
Act. 3) of claims 13–28 in either the Appeal or Reply Briefs. On this record,
we see no evidence that the Examiner has withdrawn or otherwise modified
the rejection made in the Final Action.
Accordingly, in view of the lack of any arguments directed to this
rejection or withdrawal of the rejection by the Examiner, we pro forma
sustain the Examiner’s rejection of these claims, and we also determine the
rejection should be designated as non-provisional. See n.3, supra.
Arguments not made are waived.
2. § 102(b) Rejection R2 of Claims 13–15, 18, 21, 22, and 25
Issue 2
Appellant argues (Appeal Br. 9–13; Reply Br. 2–8) the Examiner’s
rejection of claim 13 under 35 U.S.C. § 102(b) as being anticipated by
Errico is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a system
comprising “a processor programmed to initiate executable operations” that
includes, inter alia, “determining a non-chronological ordering of a plurality
of segments of the media file for buffering according to historical playback
data for each of the plurality of segments of the media file,” as recited in
claim 13?
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Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (citing Cont’l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264,1269 (Fed. Cir. 1991)).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Analysis
The Examiner finds Errico’s disclosure of a summary presentation of
a plurality of segments of a media file sufficiently discloses a portion of the
contested limitation, i.e., the summary presentation of Errico is offered as
disclosing “non-chronological ordering of a plurality of segments of the
media file for buffering,” and further finds Errico’s original video discloses
the claimed “historical playback data.” Final Act. 6; see also Ans. 15–17.
As a matter of claim construction, the Examiner concludes
“[c]hronological buffering presumes uninterrupted and continuous playing
of the media file from start to finish, which effectively orders the segments
chronologically 1–4 for buffering,” and “the presence of gaps (i.e., missing
segments) deviates from the natural order of buffering of the media file, and
presents interruptions to the continuous playing of the media file. These
gaps might be interpreted by the client system as jumps or skips within the
media file,” and “[t]herefore, the Examiner submits that a ‘summary
presentation’ is a ‘non-chronological ordering’ of a plurality of segments of
a media file.” Ans. 16.
With respect to the recitation of “historical playback data,” we turn to
the Specification for context.
[0026] Historical playback data 120 specifies information for
each of the various segments, i.e., segments 1-4, of media file
115. In illustration, and as pictured in FIG. 1, historical
playback data 115 includes different sections denoted as
sections 1–4. Section 1 of historical playback data 120 specifies
historical playback data for segment 1 of media file 115.
Section 2 specifies historical playback data for segment 2.
Section 3 specifies historical playback data for segment 3.
Section 4 specifies historical playback data for segment 4.
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Spec. ¶ 26
Appellant’s Figure 1 illustrates an exemplary computing environment
for playback of media files. Spec. 2.
Paragraph 27 of the Specification provides further description relating
to historical playback data 120:
[0027] Historical playback data 120 can specify a variety of
different types of information relating to media file 115.
Historical playback data 120 can be specified on a per-segment
basis. In one example, historical playback data 120 includes
consumption data. Consumption data indicates how users
consumed, e.g., viewed or listened to, media file 115.
Consumption data can be specified as statistical information
and can indicate, for example, which users viewed a given
segment of media file 115, which users skipped (e.g., did not
view) a given segment of media file 115, where users stopped
consuming (e.g., viewing or listening to) a particular segment
of media file 115, where users started fast forwarding within a
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segment of media file 115, stopped fast forwarding within a
segment of media file 115, which segments of media file 115
were viewed more than one time, or the like.
Spec. ¶ 27.
Appellant’s Figure 4 illustrates historical playback data in the form of
statistical information associated with various media file segments.

“FIG. 4 is a table illustrating an example of historical playback data
for a media file.” Spec. ¶ 11.
Appellant argues Errico’s disclosure is deficient in anticipating
claim 13 because paragraph 32 of Errico teaches “‘[t]he system may include
a set of selectors 58 that permits the user to select which portions of the
video should be included in the summarized presentation.’ Consequently,
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the ordering is based upon user-preferences — not historical playback data.”
Appeal Br. 10 (citing Errico ¶ 32). Appellant further contends:
[T]he Examiner's analysis fails to appreciate the difference
between “the media file” and “historical playback data for each
of the plurality of segments of the media file.” The already
existent, original video is neither “historical” data nor
“playback” data. As admitted by the Examiner “the order is
based upon user-preferences.” To the extent that “the user
preferences are still directed to the already existent, original
file,” the “already existent, original file” corresponds to the
claimed “the media file.”
Appeal Br. 12.
In the Answer, the Examiner continues to read the claimed “historical
playback data” onto Errico’s original video data. Ans. 17 (“Errico clearly
shows and discloses determining a non-chronological ordering (summary
presentation) of a plurality of segments of the media file for buffering
according to historical playback data (original video data) for each of the
plurality of segments of the media file. . . . [and a]s indicated herein, original
video data refers to data taken from the original video, such as the
interesting events, highlights, plays, key frames, events, and themes).
Even assuming that the Examiner’s interpretation of “non-
chronological ordering” comports with the broadest reasonable interpretation
standard in light of the Specification as described above, a finding which we
do not necessarily agree or find necessary to reach, we disagree with the
Examiner’s finding that Errico’s “original video data,” as identified by the
Examiner, reasonably discloses the claimed “historical playback data.” In
light of the Specification, we conclude the recited historical playback data
relates to viewing statistics of various segments of the media file, and not
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characteristics of events shown in the media file, e.g., sporting event
highlights, as in Errico. See Errico Figs. 5, 6.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art to disclose the disputed limitation of claim 13, such that we determine
error in the Examiner’s resulting finding of anticipation. Independent claim
21 recites limitations of commensurate scope, and we do not sustain the
rejection of claim 21. We also do not sustain the anticipation rejection of
dependent claims 14, 15, 18, 22, and 25 which variously depend from and
stand with claims 13 and 21. See Claim Grouping, supra.
3. § 102(b) Rejection R3 of Claims 19, 20, and 26–28
Issue 3
Appellant argues (Appeal Br. 14–15; Reply Br. 9–10) the Examiner’s
rejection of claim 19 under 35 U.S.C. § 102(b) as being anticipated by
Bennett is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a system
comprising “a processor programmed to initiate executable operations
comprising” “including a reference to a media file within a Web page . . .
including within the reference, a parameter indicating that segments of the
media file are to be buffered in a non-chronological order,” as recited in
claim 19?
Analysis
The Examiner finds Bennett’s disclosure in Figure 4A, and associated
disclosure in the Specification, that request 80, generated by media
player 20, discloses the contested limitation, i.e., “a parameter indicating that
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segments of the media file are to be buffered in a non-chronological order.”
Final Act. 12.
“As can be seen in FIG. 4A, the media player 20 generates a
request 80 for segmented media packets from a particular media
file source 70 and transmits the request to the media file source
70 via network 40 using a URL and/or IP address for the media
file source 70. The request 80 can be a request for the entire
media file (i.e., all media packets) or a request for a portion or
portions of the media file (i.e., a list or grouping of media
packets). . . . These requests can be generated in order or out of
order (i.e., the media player 20 can request media packets #10-
#15 and then subsequently send a request for media packets #5-
#9))
Id. (quoting Bennett ¶ 38) (italics omitted).
In response, Appellant argues “nothing within the Examiner’s analysis
establishes that buffering, in a non-chronological order, is based upon a
parameter stored in a reference within a Web page.” Appeal Br. 14.
We agree with Appellant’s contention, and further note that Bennett
appears to be silent on any disclosure of using a parameter included within a
reference to a media file within a web page to indicate non-chronological
buffering of segments of a media file, in the context of claim 19.
We turn to the Specification for such context. For example, although
we do not import limitations from the Specification into the claims, we note
the Specification discloses:
[0089] In another aspect, an order of segments of a media file
can be specified directly within the request provided for the
media file. As an illustration, consider a Web page that
references a link, i.e., a hyperlink, for a media file. A parameter
can be included with the link that facilitates the specification of
an ordering of segments to be buffered for the media file. For
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example, a parameter such as “&buffer” can be provided as a
query string parameter.
[0090] In one aspect, the parameter can be specified as
“&buffer=bufferArray”. The array “bufferArray” can be
specified according to the following format:
bufferArray=<0,20, 120, 180,60, 120,240,300,300,310,20,60,310,360>
The values indicate that the first segment of the media file to be
buffered is second 0 to second 20. The next segment of the
media file to be buffered is from second 120 to second 180. The
subsequent segments to be buffered, which are given by pairs of
start and end times, are, in (non-chronological) order: 60-120;
240-300; 300-310; 20-60; 310-360.
Spec. ¶¶ 89, 90.
Contrary to the Examiner’s findings, we find Bennett discloses
nothing similar to the scheme disclosed and claimed by Appellant, i.e.,
“including a reference to a media file within a Web page . . . . [and]
including within the reference, a parameter indicating that segments of the
media file are to be buffered in a non-chronological order.”
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art to disclose the disputed limitation of claim 19, such that we determine
error in the Examiner’s resulting finding of anticipation. We also do not
sustain the anticipation rejection of dependent claims 20, 26, 27, and 28
which stand with claim 19. See Claim Grouping, supra.
4. § 103(a) Rejections R4 and R5 of Claims 16, 17, 23, and 24
In light of our reversal of the rejection of independent claims 13
and 21, supra, we also reverse obviousness Rejections R4 and R5 under
§ 103(a) of claims 16, 17, 23, and 24, which variously and ultimately depend
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from claims 13 and 21. On this record, the Examiner has not shown how the
additionally cited Fleischman and Zhang references overcome the
aforementioned deficiencies with Errico, as discussed above regarding
anticipation Rejection R2 of independent claims 13 and 21.
Therefore, we do not sustain the Examiner’s obviousness Rejections
R4 and R5 of claims 16, 17, 23, and 24.
CONCLUSIONS
(1) Appellant provides no evidence or argument that the Examiner
erred in rejecting claims 13–28 in OTDP Rejection R1, and we pro forma
sustain the rejection.
(2) The Examiner erred with respect to anticipation Rejections R2
and R3 of claims 13–15, 18–22, and 25–28 under 35 U.S.C. § 102(b), and
we do not sustain the rejections.
(3) The Examiner erred with respect to obviousness Rejections R4
and R5 of claims 16, 17, 23, and 24 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we do not sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
13–28 OTDP 13–28
13–15, 18,
21, 22, 25 102(b)
Anticipation
Errico
13–15, 18,
21, 22, 25
19–20, 26,
27, 28 102(b)
Anticipation
Bennett
19–20, 26,
27, 28
16, 23 103(a)
Obviousness
Errico,
Fleischman
16, 23
17, 24 103(a)
Obviousness
Errico,
Zhang
17, 24
Overall
Outcome 13–28
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED