Ex Parte Gurzhi et al

Patent Trial and Appeal Board

May 5, 2016

12711830 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121711,830 02/24/2010
70560 7590 05/09/2016
INGRASSIA FISHER & LORENZ, P.C. (EchoStar)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
Alexander Gurzhi
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.
066.0115 (P2010-0l-04) 1469
EXAMINER
CHAD,ANISS
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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):
docketing@ifllaw.com
IPDEPT@echostar.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER GURZHI and ARKADY BALTER
Appeal2014-009246
Application 12/711,830
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009246
Application 12/711,830
STATEivIENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1 and 3-21:
Claims 1and3-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dagman (US 7 ,934,239 B 1; issued Apr. 26, 2011) and
Williams (US 7,688,754 B2; issued Mar. 30, 2010). Final Act. 11-28. 1
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm.
SUMMARY OF THE INVENTION
Appellants' invention emulates network-enabled media components.
Abstract. In particular, a virtual device emulates an application
programming interface (API) for an actual hardware device. Spec. i-f 15.
This virtual device may be used to test the compatibility of media players.
Id. i-f 16. Emulating an API can also help identify issues with an API before
producing expensive hardware or embedded software. Id. i-f 17.
Independent claim 1 is representative: 2
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
December 26, 2013 ("Final Act."); (2) the Appeal Brief filed May 21, 2014
("App. Br."); (4) the Examiner's Answer mailed June 30, 2014 ("Ans."); and
(5) the Reply Brief filed August 27, 2014 ("Reply Br.").
2 Although Appellant nominally argues independent claims 10 and 14
separately from claim 1 (see App. Br. 18-20), the arguments presented for
claims 10 and 14 are substantively the same as those presented for claim 1.
Accordingly, we treat claims 1, 10 and 14 as a single claim grouping, and we
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1. A method executable by a general-purpose computer, the
method comprising
registering a plurality of addresses with a registry, each
address corresponding to one of an actual hardware device
configured to communicate with a client application or a general
purpose computer compnsmg an emulator application
corresponding to the actual hardware device and configured to
communicate with the client application;
transmitting, by the client application, a request to the
registry for the address corresponding to the actual hardware
device;
receiving, by the client application, the address
corresponding to the actual hardware device when the actual
hardware device is available and the address corresponding to the
general purpose computer comprising the emulator application
when the actual hardware device is unavailable;
receiving a message, at the corresponding one of the actual
hardware device and general-purpose computer, that requests a
session with the corresponding actual hardware device or the
emulator application from the client application;
establishing the session between the corresponding one of
the actual hardware device and the emulator application
executing on the general-purpose computer and the client
application, wherein the emulator application is configured to
emulate an application programming interface associated with
the actual hardware device; and
exchanging communications between the corresponding
one of the actual hardware device and the emulator application
executing on the general-purpose computer and the client
application throughout the session, wherein each of the
communications is consistent with the application programming
interface associated with the actual hardware device.
select claim 1 as representative of this group. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
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Application 12/711,830
THE OBVIOUSNESS REJECTION OVER DAGivIAN AND WILLIAivIS
I
Contentions
The Examiner finds that Dagman teaches the recited registering
addresses, transmitting registry requests, and receiving addresses, except for
an emulator recited in those steps. Final Act. 11-13. The Examiner finds
that Dagman also lacks the recited limitation of receiving a message,
establishing the session, and exchanging communications. Id. at 13. The
Examiner turns to Williams in concluding that these features would have
been obvious. Id. at 13-15. Specifically, the Examiner proposes modifying
Dagman by "integrating the features disclosed by Williams" to measure the
service quality. Id. at 15.
The Examiner concludes that it would have been obvious to combine
Dagman and Williams to measure the performance of voice, video, and data
services. Id. Under this combination, the Examiner finds that Williams's
and Dagman's functions would not be changed. Ans. 14.
In Section ( C)(IV) of the Appeal Briefs Argument section,
Appellants argue that the Examiner failed to provide any motivation to
modify Dagman. App. Br. 17-18. According to Appellants, the Examiner
has failed to establish a prima facie case of obviousness because the
Examiner has not provided "any 'teaching, suggestion, or motivation' for
modifying the Dagman and Williams references." Id. at 18.
In the Reply Brief, Appellants further contend that the Examiner's
motivation to modify Dagman is disconnected from the actual rejection and
is irrelevant. Reply Br. 5. Appellants argue that one of ordinary skill would
not have modified Dagman simply because Williams also discusses set-top
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Application 12/711,830
boxes. Id. In Appellants' view, the Examiner's conclusion lacks a rational
underpinning. Id.
Issue
Is the Examiner's combination of the cited references' teachings
supported by articulated reasoning with sufficient rational underpinning to
justify the Examiner's obviousness conclusion?
Analysis
Dagman's daisy-chain access system includes a broadcasting source,
clients, and a coordinator. See Dagman, Fig. 4. The broadcasting source
provides the video's broadcast stream. See id.; see also id. col. 5, 11. 64---66.
The clients request from the coordinator access instructions for the broadcast
stream. Id. col. 6, 11. 64---66, cited in Final Act. 12. Clients can also register
with the coordinator to re-broadcast the stream to other clients. Dagman
col. 7, 11. 2--4, cited in Final Act. 11. Dagman' s broadcasting source, clients,
and a coordinator are all connected over the Internet. Dagman col. 4, 11. 61-
62.
Williams also receives video resources. Williams col. 7, 11. 63---65,
cited in Final Act. 13. Williams discloses a tester 100 that measures service
quality of this video. Williams col. 3, 11. 28-34. This tester 100 contains an
emulator application, namely second service application 172. See id. Fig. 2,
element 172. Specifically, application 172 emulates set-top box (STB) 303
and receives video from a network. Id. col. 7, 11. 63---65.
We understand the Examiner to be proposing adding William's tester
100, containing emulator 172, to Dagman' s daisy-chain access system. See
Final Act. 11-15. This understanding is based on the Examiner's statement
that Williams' s features are integrated---or brought together-with those of
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Application 12/711,830
Dagman. Id. at 15. Furthermore, the Examiner finds that Williams's and
Dagman's functions would not be changed. Ans. 14.
We are unpersuaded by Appellants' argument that the Examiner failed
to provide any motivation to modify Dagman. App. Br. 17-18. Contrary to
Appellants' argument (id.), the Examiner's stated motivation for combining
the references is to provide Dagman with the ability to measure the effect of
a service. Final. Act. 15. Furthermore, this motivation comes from the prior
art. See id. (citing Williams col. 3, 11. 28-34). As such, the Examiner has
established a prima facie showing of obviousness, thereby shifting the
burden of rebuttal to Appellants.
Appellants, however, have not provided a persuasive rebuttal. In the
Reply Brief, Appellants mischaracterize the Examiner's reasoning. See
Reply Br. 5. In particular, Appellants reduce the Examiner's rationale to the
fact that Dagman and Williams both disclose set-top boxes. Id.
This argument is unpersuasive. The Examiner does note that the
obviousness conclusion is supported by the fact that both Dagman and
Williams disclose set-top boxes. See Ans. 13-14. But that is not the
Examiner's sole basis for combining the references. See id.
Furthermore, Appellants critique the Examiner's reasoning merely by
quoting and then summarizing it. See App. Br. 17. But without further
explanation, Appellants then conclude that adding Williams' s tester 100 to
Dagman "would unquestionably fail to disclose the features of the claims."
Id.
We do not see how Appellants' conclusion relates to the lack of a
motivation, as stated in Section IV of the Appeal Briefs Argument Section.
See id. To the extent Appellants refer to the reasoning stated elsewhere in
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Application 12/711,830
the Appeal Brief, we direct Appellants' attention to the remainder of this
Opinion.
II
Contentions
In Section I of the Appeal Briefs Argument Section, Appellants
further contend that the Examiner's proposed combination of the prior art
would change the principle of operation of the prior art invention being
modified. App. Br. 13-14 (citing In re Ratti, 270 F.2d 810, 813 (CCPA
1959)). In particular, Appellants argue that Dagman is unrelated to
establishing sessions with actual hardware or with emulator applications.
Id. at 14.
In Appellants' view, Dagman's sole purpose is to distribute video by
daisy chaining computers together. Reply Br. 6. Appellants argue that the
Examiner proposes removing Dagman's daisy chain. Id. In Section IV of
the Appeal Brief' s Argument swection, Appellants further contend that the
Examiner's modification would no longer register rebroadcast sources.
App. Br. 18.
Issue
Would the Examiner's proposed modification of Dagman
impermissibly change its principle of operation?
Analysis
Contrary to Appellants' argument (App. Br. 18; Reply Br. 6), the
Examiner's position as articulated in the rejection does not propose
removing Dagman's daisy chain. See Final Act. 15. Rather, the Examiner
proposes "integrating"---or bringing together-Williams's features with
Dagman's. Id. That is, the Examiner is not proposing taking away features.
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See id. Nor is the Examiner proposing a change in the respective functions
of the combined elements. Ans. 14.
As the Examiner notes (Ans. 8), both Dagman and Williams transmit
and receive video. See, e.g., Dagman col. 3, 11. 51---60; Williams col. 3,
11. 29--35. In this context, Williams's application 172 receives video from a
network. Williams col. 7, 11. 63---65, cited in Final Act. 14. To set up a
network connection, Williams's tester establishes a session. Williams col. 6,
1. 62 to col. 7, 1. 3, cited in Final Act. 14.
Similarly, Dagman's daisy-chain system transmits video from source
126 over a network to clients. See Dagman, Fig. 7; see also id., Abstract.
Dagman's clients can re-broadcast the stream to other clients as instructed
by coordinator 110. Dagman col. 7, 11. 2--4; id., Fig. 5, 506. So, Dagman's
principle of operation involves daisy chaining these clients for video
broadcast. Id. col. 3, 11. 53-56. Although Dagman lacks an emulator and
emulator sessions, we are unconvinced that adding another networked
element to receive and send video would change Dagman's principle of
operation, as argued. See App. Br. 14, 18; Reply Br. 6.
To be sure, Williams's emulator-tester (100, 172) performs operations
other than receiving video. Namely, the tester 100 collects information on
quality of service parameters and implements a protocol suite for a service.
See, e.g., Williams col. 6, 11. 7-10. Appellants, however, have not pointed
out how any additional function would interfere with the operation of
Dagman's daisy-chained system. See App. Br. 14, 18; Reply Br. 6. On the
contrary, Williams' s uses a protocol for initiating and maintaining a network
connection. Williams col. 6, 11. 62-65. And Williams's tester is compatible
with several protocols for doing so. See id. col. 6, 11. 32--41.
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Likewise, Dagman's daisy-chain uses communication links over a
network. Dagman col. 4, 11. 61---62. This chain concept requires a specific
network topology- client nodes connected to one another in a daisy chain.
Dagman col. 7, 1. 67 to col. 8, 1. 4. But again, Appellants provide no
evidence that integrating Williams's protocol would change this topology.
See App. Br. 13-14, 18; Reply Br. 6.
In fact, the Examiner finds that integrating Williams's device would
not require a functional change. Ans. 14. On this record-where Williams's
emulator 172 receives video like Dagman's daisy-chained nodes (compare
Williams col. 7, 11. 63-65 with Dagman col. 3, 11. 53-56}-this finding is
reasonable.
Appellants have not provided a persuasive rebuttal. See App. Br. 13-
14, 18; Reply Br. 6. At most, Appellants identify the differences between
Dagman and Williams. For example, Appellants point to Dagman's lack of
emulators and sessions. App. Br. 14. Appellants' arguments (App. Br. 13-
14, 18; Reply Br. 6), however, have not persuasively connected these
differences to an operational principle that the proposed combination would
fail to preserve. Nor have Appellants shown how these differences are
incompatible with Dagman's daisy-chain, as discussed above.
Accordingly, we are unpersuaded by Appellants' argument that the
Examiner's proposed modification of Dagman changes its principle of
operation. See App. Br. 13-14, 18; Reply Br. 6.
III
Contentions
The Examiner finds that Dagman registers multiple addresses, but
does not disclose an emulator. Final Act. 11-13. For the emulator, the
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Application 12/711,830
Examiner turns to Williams and concludes that it would have been obvious
to integrate Williams's functions into Dagman, as discussed previously.
Id. at 13-15.
In Section II of the Appeal Briefs Argument Section, Appellants
contend that the Examiner acknowledges that Dagman does not teach the
first step of the method, yet does not cite any portion of Williams that does.
App. Br. 14.
Appellants further contend that ( 1) Williams' s tester 100 having an
emulator is never registered and (2) no message is ever received to create
"the emulation session." Id. at 15. According to Appellants, the Examiner
is relying on Williams' s tester 100 to establish a session with itself.
Reply Br. 4.
Issues
Has the Examiner established by a preponderance of the evidence that
Dagman and Williams collectively would have taught or suggested
A. registering addresses with a registry, as recited in claim 1?
B. receiving a message and establishing the session, as recited in
claim 1?
Analysis
A
Appellants' argument that neither Dagman nor Williams register
addresses as recited (App. Br. 14) is an individual attack. But here, where
the rejection is based on the references' collective teachings (see
Final Act. 11-15), Appellants' individual attack (App. Br. 14) does not show
non-obviousness. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
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By quoting the recited first step and striking through the word
"emulator," the Examiner has indicated that every aspect of this step is
taught by Dagman, except for an emulator. Final Act. 11. To further clarify
this point, the Examiner expressly states that Dagman lacks an emulator.
Id. at 13.
In this situation, the test for obviousness does not require the
Examiner to show that Williams alone teaches registering an address
corresponding to a computer comprising an emulator. Rather, the test "is
what the combined teachings of the references would have suggested to one
of ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991 ). And here, the Examiner concludes that the recited registering would
have been obvious when Dagman's method is combined with Williams's
emulator. Final Act. 11-15.
The Examiner's conclusion (id.) is reasonable given that Dagman's
clients register with the coordinator to receive video. Dagman col. 6, 11. 64--
66, cited in Final Act. 12. Like Dagman's client, the Examiner finds that
Williams's emulator receives video from a video source. Id. at 14 (citing
Williams col. 6, 1. 62 to col. 7, 1. 3). Accordingly, the Examiner's proposal
to integrate Williams' s emulator as a node in Dagman' s system would lead
to a system where Williams' s emulator would be registered with the
coordinator, just like the other nodes in Dagman's that receive video. See
Final Act. 15.
Accordingly, we are unpersuaded by Appellants' arguments
(App. Br. 14) against the references individually to show non-obviousness.
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B
Appellants' arguments regarding the recited session (App. Br. 15) do
not squarely address the Examiner's rationale. By arguing that Williams's
tester establishes a session with itself (App. Br. 15; Reply Br. 4), Appellants
ignore the Examiner's proposed combination (Final Act. 14--15).
In particular, Williams's emulator-tester (100, 172) collects
information on quality of service parameters. See, e.g., Williams col. 6,
11. 7-10. In doing so, Williams uses a protocol for initiating and maintaining
a network connection for receiving video. Williams col. 6, 11. 62-65, cited
in Final Act. 14. That is, the emulator-tester establishes a session to obtain
video. See Williams col. 6, 11. 7-10, col. 6, 11. 62---65.
In Dagman, one video source is a client in the daisy-chain. Dagman
col. 7, 11. 2--4, cited in Final Act. 11. That is, under the proposed
combination, it would have been reasonable to expect Williams's emulator-
tester to establish a session with Dagman's client to receive video. See
Williams col. 6, 11. 62-65 (describing the emulator-tester's protocol for
initiating a network connection), cited in Final Act. 14; Dagman col. 7, 11. 2-
4 (describing that clients rebroadcast video via network connections), cited
in Final Act. 11. However, one would not expect Williams's emulator-tester
to establish a session with itself, as argued. See App. Br. 15; Reply Br. 4.
Notably, the former scenario satisfies claim 1 's requirement of establishing
the session between an emulator and the client.
So, on this record, we are not convinced that the Examiner erred in
finding that Dagman and Williams collectively would have taught or
suggested receiving a message and establishing the session, as recited in
claim 1. See id. at 14; see also Ans. 11-12.
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IV
Contentions
The Examiner finds that Dagman discloses receiving, by the client
application, the recited address, except for the emulator. Final Act. 12
(citing Dagman, Fig. 7, col. 7, 1. 59 to col. 8, 1. 15). According to the
Examiner, Dagman's communications must use IP addresses because they
are over the Internet. Ans. 12-13. For the emulator, the Examiner turns to
Williams and concludes that it would have been obvious to integrate
Williams's functions into Dagman. Id. at 13-15.
In Section III of the Appeal Briefs Argument Section, Appellants
argue that Dagman is silent with respect to determining availability of "the
actual hardware device" and sending the address corresponding to the
computer comprising the emulator. App. Br. 17. According to Appellants,
Dagman merely redistributes bandwidth. Id. Appellants further contend
that Williams would never need to determine the availability of itself. Id.
Issue
Has the Examiner established by a preponderance of the evidence that
Dagman and Williams collectively would have taught or suggested a client
application receiving the address recited in claim 1?
Analysis
We are unpersuaded by Appellants' argument (App. Br. 17) because it
is not commensurate with the scope of the limitation at issue. In particular,
claim 1 does not expressly recite determining the availability of the actual
hardware device. Nor does it implicitly require such a limitation. Rather,
claim 1 only requires receiving (1) an address that corresponds to an actual
hardware device when the actual hardware is available and (2) an address
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that corresponds to a general purpose computer when the hardware is
unavailable.
Here, the Examiner states that Dagman lacks an emulator, and turns to
Williams in concluding that an address corresponding to a computer
comprising an emulator when the actual hardware is unavailable.
Final Act. 12-15; see also Ans. 13 (emphasizing that the collective teachings
are used to address the limitation at issue). So Appellants' arguments
regarding Dagman's and Williams's individual shortcomings in this regard
(App. Br. 17) do not show nonobviousness where, as here, the rejection is
based on the cited references' collective teachings. See Merck, 800 F .2d at
1097.
The Examiner's reliance on these collective teachings (Final Act. 12-
15) is reasonable. Here, the Examiner proposes integrating Williams' s
emulator-tester in Dagman's system. Id at 15. As discussed above,
Dagman's clients receive video over using these Internet communications
from other clients and from a place-shifting device. Dagman col. 4, 11. 61-
64. Furthermore, the Examiner finds that Dagman's communications must
use IP addresses because these communications are over the Internet.
Ans. 12-13. Appellants do not dispute this finding. See Reply Br. 4---6.
So under the proposed combination, the Examiner reasonably
concludes that Williams tester 100, which comprises an emulator and
communicates over the Internet when integrated with Dagman, would use an
address. See Final. Act. 12-15. Under the combination, this address also
would be used to communicate with Dagman's clients when actual hardware
is unavailable. See Final Act 12-15; see also Ans. 13 (mapping Dagman's
place shifting device to the actual hardware).
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Application 12/711,830
In other words, the system proposed by the Examiner has either of
two types of elements available: (1) Dagman's actual hardware or
(2) Williams's computer comprising an emulator (Williams, Fig. 2, elements
100, 172). So in the absence of one---e.g., the actual hardware device-it
would be reasonable to expect that Dagman's clients would receive
addresses from the other one---e.g., Williams' s emulator-tester-if available.
On this record, we are unpersuaded by Appellants' arguments
(App. Br. 17) that the Examiner erred in finding that Dagman and Williams
collectively would have taught or suggested a client application receiving
the address recited in claim 1.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's obviousness rejection of representative claim 1.
Accordingly, we will sustain the Examiner's rejection of that claim and
claims 3-21 which fall with claim 1.
DECISION
The Examiner's decision rejecting claims 1 and 3-21 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)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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