Ex Parte Heap

Patent Trial and Appeal Board

Jun 19, 2014

11562501 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRETT HEAP
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Appeal 2012-000692
Application 11/562,501
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000692
Application 11/562,501

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1 and 3-7. Claims 2 and 8-15
have been cancelled. Appellant appeals from the final rejection under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to “catch-up streaming.” (Title). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method for transmitting streaming data, comprising the
steps of:
[a] providing a local server that transmits and receives a data
request via a media client having a web browser;
[b] providing a remote server configured to stream data upon
receiving the data request from a user via the local server, [b1]
wherein the-remote server stores first and second media data
files;
[c] wherein the remote server is configured to send an initial
portion of the first media data file in an initial large stream of
data directly to the media client upon receipt of the data
request; and
[d] wherein the remote server is configured to send a remaining
portion of the first media data file and the second media data
file in a subsequent different stream of data to the local server,
[e] wherein the local server transmits the remaining portion of
the first media data file and the second media data file to the
media client at a relatively slower rate than the initial large
stream of data sufficient to allow for seamless display of the
first media file and the second media data file through the web
browser.
(Steps lettered; paragraph returns added).
Appeal 2012-000692
Application 11/562,501

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REJECTIONS
R1. Claims 1, 3, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of U.S.
Patent No. 7,191,242 B1 (Mar. 13, 2007) (“Serenyi”) and U.S. Patent
Application Pub. No. 2003/0005139 A1 (Jan. 2, 2003) (“Colville”). (Ans.
14).
R2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Serenyi,
Colville, and U.S. Patent No. 7,054,911 B1 (May 30, 2006) (“Lango”).
(Ans. 24).
R3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Serenyi,
Colville, and U.S. Patent No. 6,195,680 B1 (Feb. 27, 2001) (“Goldszmidt”).
(Ans. 26).

GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of § 103
rejection R1 of claims 1, 3, 4, and 6 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1
We address § 103 rejections R2 and R3 separately, infra.

1 Appellant filed a Notice of Appeal on May 16, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
Appeal 2012-000692
Application 11/562,501

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ANALYSIS
We disagree with Appellant’s contentions regarding the Examiner’s
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellant’s Appeal Brief. (Ans. 28-38). We highlight
and address specific findings and arguments below:
R1. CLAIM 1
A.
Regarding the claim 1 limitations:
[c] wherein the remote server is configured to send an initial
portion of the first media data file in an initial large stream of
data . . . ; and
[d] wherein the remote server is configured to send a remaining
portion of the first media data file and the second media data
file in a subsequent different stream of data . . . ,
(emphasis added), Appellant contends, inter alia, “Colville does, indeed,
teach a method of transmitting a single file in two streams: a first stream
with a high bitrate and a second stream at a lower bitrate.” (Reply Br. 7
(emphasis added)).
Appellant’s contention is not supported by the cited sections of the
reference and, therefore, is not persuasive. (Reply Br. 7). Specifically,
Colville’s Abstract describes transmitting (1) “an amount of the desired
streamable media content” and transmitting, (2) “subsequent portions of the
media content,” not sending only a single data file, as Appellant contends
(App. Br. 4: “All of the prior art only contemplates sending a single data
file.”). (emphasis added). (See also Ans. 31-32).
Appeal 2012-000692
Application 11/562,501

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Appellant also contends neither Serenyi nor Colville teaches both
limitations [c] and [d]. (App. Br. 4; Reply Br. 2-8). Appellant’s contention
is unpersuasive because Appellant fails to rebut the combined teachings and
suggestions of the references, as relied upon by the Examiner. (Ans. 14-21).
The Examiner finds, and we agree, Serenyi’s sending media content
comprised of media data, requested RTP extensions, and supported RTP
extensions would have taught or suggested sending media content comprised
of two or more media data files. (Ans. 30-31; Serenyi col. 9, ll. 32-38, col.
2, ll. 33-35). The combination of Colville’s transmitting an initial amount in
a fast first stream and subsequent portions of media content in a second
stream with Serenyi’s sending media content comprised of multiple data
files, would have taught or suggested limitations [c], sending of “an initial
portion of the first media data file,” and [d], “a remaining portion of the first
media data file and the second media data file.” (Ans. 30-31, 8-9).2 We find
one skilled in the art, having knowledge of Colville’s method, when faced
with the problem of sending two media data files, would send an initial
amount ([c] “initial portion of the first media data file”) and then send the
subsequent portions ([d] “remaining portion of the first media data file and
the second media data file”).3

2 In the event of further prosecution, we leave it to the Examiner to consider
if Appellant’s cited support (App. Br. 3; Spec. 8, ll. 7–10) for the claimed
first and second media files is sufficient under the written description
requirement of 35 U.S.C. § 112, first paragraph. Specifically, the cited
support does not describe any file or portion of a file.
3 The Supreme Court has determined that the conclusion of obviousness can
be based on the interrelated teachings of multiple patents and the
background knowledge possessed by a person having ordinary skill in the art
and that an obviousness “analysis need not seek out precise teachings
Appeal 2012-000692
Application 11/562,501

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For these reasons, on this record, we are not persuaded the Examiner
erred.
B.
Regarding the claim 1 limitations:
[b] providing a remote server configured to stream data upon
receiving the data request from a user via the local server . . . ;
[c] wherein the remote server is configured to send an initial
portion . . . directly to the media client upon receipt of the data
request;
(emphasis added), Appellant contends Colville does not teach or suggest
limitations [b] and [c] because Colville does not teach limitation [b]. (Reply
Br. 10). Specifically, Appellant contends Colville’s “data request is not sent
from a local server. Instead, Colville’s data request is sent directly from the
client.” (Reply Br. 10). Appellant also essentially contends Serenyi does
not teach or suggest limitations [b] and [c] because individual embodiments
of Serenyi do not individually teach both limitations [b] and [c]. (Reply
Br. 11; App. Br. 5).
Appellant’s contentions that Colville and Serenyi individually do not
teach or suggest the limitations at issue are not persuasive because the
Examiner relies upon the combined teachings and suggestions of Colville
and Serenyi. (Ans. 14-21). Specifically, regarding limitation [b], the
Examiner relies upon Serenyi’s request from a client, sent to the remote
server via the local caching proxy server, for the teaching of the [b]

directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Appeal 2012-000692
Application 11/562,501

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“request.” (Ans. 34-35; Serenyi col. 4, ll. 8-26; Ans. 10, Serenyi Fig. 4, col.
7, ll. 41-54).
Regarding limitation [c], the Examiner relies on Colville’s server that
streams initial media content directly to a client for the teaching and
suggestion of [c] “remote server is configured to send an initial portion of
the first media data file in an initial large stream of data directly to the media
client.” (Ans. 18; Colville Abstract).
The Supreme Court guides “when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976)).
Here, we find the combination of Serenyi’s sending the client request
to the remote server via the local server (limitation [b]), with Colville’s
sending an initial portion of the media content directly to the client
(limitation [c]), is merely an arrangement of old elements with each
performing the same function it had been known to perform. See KSR, 550
U.S. at 417. (See also Ans. 34-36, 7-8).
Moreover, given the breadth of Appellant’s representative claim 1, we
are not persuaded that combining the respective familiar elements of the
cited references in the manner proffered by the Examiner was “uniquely
challenging or difficult for one of ordinary skill in the art” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Appeal 2012-000692
Application 11/562,501

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Appellant fails to address and rebut the combined teachings and
suggestions of Serenyi and Colville. For these reasons, on this record, we
are not persuaded the Examiner erred. Accordingly, we sustain the
Examiner’s § 103 rejection R1 of representative claim 1. Claims 3, 4, and 6
fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).

R2 AND R3
Appellant urges claims 5 and 7 are patentable for the same reasons
previously advanced regarding parent claim 1. (App. Br. 6). However, we
are not persuaded the Examiner erred regarding the rejection R1 of claim 1,
for the reasons discussed above. Accordingly, we sustain the § 103
rejections R2 of claim 5 and R3 of claim 7.

DECISION
We affirm the Examiner’s rejection R1 of claims 1, 3, 4, and 6 under
§ 103.
We affirm the Examiner’s rejection R2 of claim 5 under § 103.
We affirm the Examiner’s rejection R3 of claim 7 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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