Ex Parte Chiluk et al

Patent Trial and Appeal Board

Mar 13, 2013

11733461 (P.T.A.B. Mar. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID R. CHILUK, LOGAN S. GABRIEL,
ERIC R. KERN, MICHAEL S. ROLLINS,
PAUL K. SCRUTTON, JANAE V. SIMONS,
TOREZ SMITH, DAVID R. WOODHAM, and
TONG YU
____________

Appeal 2010-011248
Application 11/733,461
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011248
Application 11/733,461

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention is directed to “merging a codec with a digital media file
and playing a digital media file on a playback device” (Spec. 1:13-14).
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method of merging a codec with a digital media
file, the method comprising:

receiving, by a digital media provider from a playback
device through a data communications network, a request for
the digital media file, the digital media file comprising digital
media content encoded by a codec;

identifying, by the digital media provider, the codec by
which the digital media content was encoded;

inserting, by the digital media provider, the codec into
the digital media file;

distributing the digital media file with the inserted codec
to the playback device through the data communications
network.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Agrawal US 6,570,926 B1 May 27, 2003

Appeal 2010-011248
Application 11/733,461

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REJECTIONS
Claims 19-21 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1, 3-6, and 8-21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Agrawal.
Claims 2 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Agrawal.

ANALYSIS
The Non-Statutory Subject Matter Rejection
Appellants contend that claim 19 is statutory because “[t]he digital
media file of claim 19 imparts to a playback device the codec required to
decode the encoded digital media file and therefore imparts to a playback
device the functionality of playing back the digital media content” (Br. 5).
We agree with the Examiner that claim 19 is directed to non-statutory
subject matter for the reasons discussed in the Answer, namely, that the
claimed digital media file has no functional relationship to a computer or
computing device (Ans. 3, 16). In other words, even considering that the
digital media file contains a codec, which is software (see Spec. 5:10-13),
the digital media file is software per se, which is non-statutory subject
matter. See MPEP § 2106(I) (“examples of claims that are not directed to
one of the statutory categories: . . . a computer program per se”) (citing
Gottschalk v. Benson, 409 U.S. 63, 72 (1972)).
We are, therefore, not persuaded that the Examiner erred in rejecting
claim 19 and claims 20-21 not separately argued.

Appeal 2010-011248
Application 11/733,461

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The Anticipation Rejection
Appellants contend:
Agrawal simply sends contemporaneously in packets a video
stream and decoding software for the video stream. Packetizing
a video stream and packetizing decoding software and sending
those packets contemporaneously is not in any way inserting a
codec into a digital media file itself as claimed in the present
application. Agrawal never discloses or even contemplates
inserting the codec into the digital media file itself.
Furthermore, Agrawal does not ensure that the digital media
content encoded by the codec are always together on the
playback device.

(Br. 7).
Agrawal describes the following:
Segmentation device 1620 partitions the stored video data file
into data sub-files for transmission as data packets in active
packets 731. When the active packets (e.g., packets 731) are
assembled by active packetizer 735, the deduced program code
used to decode the video data is injected into the program
packet portion of the active packets along with the discerned
parameters.

(Agrawal, col. 14, ll. 53-59). We agree with the Examiner (see Ans. 16-17)
and find that, after Agrawal’s video data file is packetized for transmission,
the sequence of packets represents the video data file such that injecting the
decoder program into the packets meets the claim 1 limitation “inserting, by
the digital media provider, the codec into the digital media file.” Further, we
agree with the Examiner (see Ans. 17) that Appellants’ argument that
“Agrawal does not ensure that the digital media content encoded by the
codec are always together on the playback device” (Br. 7) is unavailing
because no such limitation is recited in claim 1.
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Application 11/733,461

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We are, therefore, not persuaded that the Examiner erred in rejecting
claim 1 and claims 3-6 and 8-21 not separately argued.

The Obviousness Rejection
Appellants rely on the arguments presented for claims 1 and 6, from
which claims 2 and 7 depend, and present no new arguments for claims 2
and 7 (see Br. 8). We are, therefore, not persuaded that the Examiner erred
in rejecting claims 2 and 7 for the reasons discussed above.

CONCLUSIONS
The Examiner did not err in rejecting claims 19-21 under 35 U.S.C.
§ 101.
The Examiner did not err in rejecting claims 1, 3-6, and 8-21 under 35
U.S.C. § 102(b).
The Examiner did not err in rejecting claims 2 and 7 under 35 U.S.C.
§ 103(a).

DECISION
For the above reasons, we affirm the rejections of claims 1-21.
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

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