Ex Parte Hillis et al

Patent Trial and Appeal Board

Jun 26, 2013

10734658 (P.T.A.B. Jun. 26, 2013)

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.
10/734,658 12/11/2003 W. Daniel Hillis SE1-0002C3-US 9013
80118 7590 06/26/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
SAVLA, ARPAN P
ART UNIT PAPER NUMBER
2188
MAIL DATE DELIVERY MODE
06/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte W. DANIEL HILLIS, EDWARD K.Y. JUNG,
NATHAN P. MYHRVOLD, and LOWELL L. WOOD JR.
____________

Appeal 2010-010896
Application 10/734,658
Technology Center 2100
____________

Before ROBERT E. NAPPI, JEAN R. HOMERE, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1 – 50. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM-IN-PART.

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Application 10/734,658

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BACKGROUND
Appellants invented a method and system for publishing a schedule of
a temporal address unit that obtains data transmitted from a spatial data
storage using one or more temporal addresses. Abstract. Independent
claims 1 and 2 are illustrative and are reproduced below:

1. A method comprising:
publishing a schedule of content transmission, the
schedule being defined in response to an order in which the at
least one content is spatially resident upon at least one hardware
spatial data storage system, the schedule identifying the content
by one or more times;
reading at least one content from the at least one
hardware spatial data storage system in a fashion independent
of the schedule of content transmission; and
transmitting the at least one content to a temporal data
storage system in accord with the published schedule.

2. The method of Claim 1, wherein said publishing a
schedule of content transmission, the schedule being defined in
response to an order in which the at least one content is
spatially resident upon at least one hardware spatial data storage
system, the schedule identifying the content by one or more
times further comprises:
printing the schedule of content transmission on a
medium; and
distributing the medium to one or more sites associated
with one or more associated data switch controllers.

EVIDENCE CONSIDERED
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Eyer US 5,801,753 Sept. 1, 1998
Ma US 5,926,649 July 20, 1999
Miller US 5,920,701 July 6, 1999
Cho US 6,081,402 June 27, 2000
Jaeger US 6,345,028 B1 Feb. 5, 2002

REJECTIONS
Claims 1 – 4, 9 – 15, 17 – 21, 26 – 29, 34 – 40, and 42 – 46 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller, Jaeger,
and Ma. Answer 3 – 11.
Claims 5 – 8 and 30 – 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miller, Jaeger, Ma, and Eyer. Answer 12 – 13.
Claims 16, 22 – 25, 41, and 47 – 50 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Miller, Jaeger, Ma, and Cho. Answer
13 – 21.

ISSUES
Claims 1 and 3 – 25
Appellants argue on pages 38 through 84 of the Appeal Brief that the
Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) is in
error. With respect to claims 3 – 25, Appellants rely on the arguments
presented with respect to independent claim 1. Appeal Brief 85. These
arguments present us with the following issues:
1) Did the Examiner err in finding that Miller teaches or suggests “the
schedule identifying the content by one or more times,” as recited
in independent claim 1?
2) Did the Examiner improperly combine Miller, Jaeger, and Ma?
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Claims 2 and 27
Appellants argue on pages 85 through 100 of the Appeal Brief the
Examiner’s rejection of dependent claim 2 under 35 U.S.C. § 103(a), is in
error. With respect to claim 27, Appellants repeat the same arguments
presented with respect to claim 2. Appeal Brief 105 – 111. These
arguments present us with the following issue:
3) Did the Examiner err in finding that Miller discloses “printing the
schedule of content transmission on a medium” as recited in
dependent claim 2, and as commensurately recited in dependent
claim 27?

Claims 26 and 28 – 50
With respect to Appellants’ arguments on pages 100 through 105 of
the Appeal Brief regarding the Examiner’s rejection of independent claim 26
under 35 U.S.C. § 103(a), Appellants repeat the same arguments presented
with respect to claim 1. With respect to claims 28 – 50, Appellants rely on
the arguments presented with respect to independent claim 26. Appeal Brief
105. Thus, these arguments present us with the same issues as discussed
with respect to claim 1.

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, Examiner’s
rejection and the Examiner’s response to Appellants’ arguments. We
disagree with Appellants’ conclusion that the Examiner erred in finding that
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claims 1, 3 – 26, and 28 – 50 are unpatentable under 35 U.S.C. § 103(a). We
concur with Appellants’ conclusion that the Examiner erred in finding that
claims 2 and 27 are unpatentable under 35 U.S.C. § 103(a).

Claims 1 and 3 – 25
1) First Issue
We are not persuaded by Appellants’ arguments that Miller does not
teach or suggest the schedule identifying the content by one or more times
(Appeal Brief 41, 51; Reply Brief 12 – 13). Claim 1 recites “one or more
times,” which reasonably encompasses transmitting at one time. As
Appellants acknowledge, Miller recites, “[t]hese instructions include the
time to start transmitting the content data . . . .” Appeal Brief 51 (citing
Miller col. 13, ll. 4 – 9). We agree with the Examiner’s finding that
“Miller’s ‘time to start transmitting the content data’ discloses Appellant’s
[sic] ‘one or more times.’” Answer 21.
For the first time in the Reply Brief, Appellants argue that the
transmission instructions of Miller include when, but not what content to
transmit. Reply Brief. 13. Appellants’ arguments are not presented in
response to the Examiner’s Answer and could have been raised in the
Appeal Brief. Compare Answer 4 with Final Office Action 3. Because
Appellants’ arguments in the Reply Brief directed to Miller’s alleged failure
to identify what content is transmitted could have been presented in the
Appeal Brief, Appellants’ arguments are waived and not considered. Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision).
In any event, we are not persuaded by Appellants’ arguments because,
as the Examiner correctly finds (Answer 4), Miller’s scheduler 10
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determines at least a start time and transfer rate for each of the content
sources 12, 14 that can be accommodated (Miller col. 13, lines 4 – 9, Fig. 3,
Abstract). Thus, we agree with the Examiner that Miller discloses the
schedule identifying the content (of content sources 12, 14) by one or more
times (Answer 4, 21 – 22). Furthermore, we are not persuaded by
Appellants’ argument that the Examiner improperly finds support in
Appellants’ disclosure (Reply Br. 12). While the Examiner refers to
Appellants’ disclosure with respect to interpreting the disputed claim
limitation, such reference to the Specification is not improper as it was not
relied on to reject the claim. (Answer 22).
Appellants also argue that Jaeger and Ma do not teach or suggest the
schedule identifying the content by one or more times (Appeal Brief 56, 57,
61, 62, 67, 73). However, the Examiner correctly finds that Miller teaches
this limitation and does not rely on Jaeger or Ma (Answer 21 – 25). Thus,
Appellants’ arguments directed to the first issue have not persuaded us of
error in the Examiner’s rejection of independent claim 1.

2) Second Issue
We are not persuaded by Appellants’ arguments that the modifications
shown in the Examiner’s rejection changes the principle of operation of
Miller (Appeal Brief 76 – 80). Appellants’ arguments are based on Miller
not disclosing the schedule identifying the content by one or more times.
(Appeal Brief 79). However, as discussed supra with respect to the first
issue, we agree with the Examiner that Miller discloses the disputed
limitation.
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We also are not persuaded by Appellants’ arguments that the
Examiner has not yet provided any teaching of how to incorporate the
structure of Jaeger and/or Ma with the Miller technologies. Appeal Brief 80.
The test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference; rather
the test is what the combined teachings would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As the Examiner correctly finds (Answer 4 – 6), modifying Miller’s
disclosure of scheduling data transmission with Jaeger’s disclosure of
reordering data signals and Ma’s disclosure of a retrieval scheduling
technique is no more than a predictable use of familiar prior art elements
according to their established functions, therefore rendering the recited
invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007).
Additionally, we are not persuaded by Appellants’ arguments that the
Examiner provides no evidence to modify or combine the cited technical
materials. Appeal Brief 83. Jaeger’s Summary of the Present Invention
explains that Jaeger’s reordering techniques maximize the number of audio
tracks that can be played back simultaneously while minimizing the seek
time of the disk drive read/write heads. Jaeger col. 2, ll. 49 – 52, ll.65 – 67.
As the Examiner correctly finds, it would have been obvious to a person of
ordinary skill in the art to implement Jaeger’s reordering of data signals
within the hard disk drive of Miller’s content source because the elements
were known in the art, could have been combined by known methods, and
would have yielded the predictable results set forth by Jaeger’s invention
summary (Answer 4, 5). Likewise, Ma’s Abstract explains that Ma’s data
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stream placement technique in conjunction with the retrieval schedulers
provide sequential-like parallel retrieval suitable for supporting real-time
multimedia data distribution for large numbers of clients. Ma Abstract. As
the Examiner correctly finds, at the time of the invention a person of
ordinary skill in the art would have been motivated to apply Ma’s scheduling
technique to the distribution scheduling technology of the Miller and Jaeger
combination for the reasons set for in Ma’s Abstract (Answer 5, 6).
Therefore, the Examiner has articulated how the claimed features are met by
the reference teachings with some rational underpinning to combine Miller,
Jaeger, and Ma.
Thus, Appellants have not persuaded us of error in the Examiner’s
rejection of independent claim 1 under 35 U.S.C. § 103(a) and, therefore, we
sustain that rejection. Appellants have not separately argued claims 3 – 25
(Appeal Brief 85), which depend upon claim 1. Accordingly, we for the
reasons discussed supra with respect to claim 1, sustain the
35 U.S.C. § 103(a) rejection of claims 3 – 25.

Claims 2 and 27
3) Third Issue
The Examiner finds that during Miller’s act of distributing
transmission instructions, the transmission instructions are reproduced as
electronic signals. Answer 32. Appellants argue that the Examiner’s
mapping does not address “printing the schedule of content transmission,” as
recited in claim 2. Appeal Brief 90. We find that the recitation of “printing”
in claim 2 should not be construed so broadly as to be met by reproduction
as electronic signals. As such, we are constrained by the record to find that
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the Examiner has not provided sufficient evidence to show that the
combination of features recited in dependent claim 2 and dependent claim 27
are obvious. Thus, we reverse the rejection of claims 2 and 27 under
35 U.S.C. § 103(a).

Claims 26 and 28 – 50
Although Appellants argue the rejection of independent claim 26
separately (Appeal Brief 100 – 105), the arguments repeat the same
arguments presented with respect to claim 1. Thus, for the reasons discussed
supra with respect to claim 1, Appellants have not persuaded us of error in
the Examiner’s rejection of independent claim 26 under 35 U.S.C. § 103(a),
and, therefore, we sustain that rejection. Appellants have not separately
argued claims 28 – 50 (Appeal Brief 105), which depend upon claim 26.
Accordingly, for the reasons discussed supra with respect to claim 1, we
sustain the 35 U.S.C. § 103(a) rejection of claims 28 – 50.

DECISION
We REVERSE the rejection of claims 2 and 27 under
35 U.S.C. § 103 (a).
We AFFIRM the rejection of claims 1, 3 – 26, and 28 – 50 under
35 U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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