Ex Parte Iwamura

Patent Trial and Appeal Board

Mar 25, 2013

10951739 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RYUICHI IWAMURA
____________________

Appeal 2010-010467
Application 10/951,739
Technology Center 2400
____________________

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

DIXON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1)
for reconsideration of our Decision of March 4, 2013 (“Decision”). The
Decision affirmed the Examiner’s rejection of claims 15, 16, 18, and 19
under 35 U.S.C. § 112, second paragraph, as being indefinite, and claims 9-
14 under 35 U.S.C. § 103(a) as being unpatentable over Zimmermann and
Kingsley.
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Application 10/951,739

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We have reconsidered our Decision, in light of Appellant’s arguments
in the Request, and we are not persuaded that we misapprehended or
overlooked any points in rendering our Decision. We decline to change our
prior Decision for the reasons discussed below.

ANALYSIS
Appellant contends that the Board overlooked the argument in the
Appeal Brief with the heading “Improper Combination of References, all
Claims” in affirming the obviousness rejection of claims 9-14 on the ground
that Appellant presented no specific arguments regarding claims 9-14 (Req.
1). We disagree, and clarify the basis for affirming the rejection of claims 9-
14 as follows.
Appellant’s combination argument in the Appeal Brief argues the
insufficiency of the Examiner’s rationale “to send the data in compressed
form therefore achieving a faster bit rate” (App. Br. 6). However, this
rationale is only applied by the Examiner for combining Kingsley with
Zimmermann with respect to the rejection of claims 1 and 15 (see Ans. 6,
12). Thus, Appellant’s assertion that this rationale “has no relevance to the
claims or for that matter to either reference, because compression does not
achieve a faster bit rate” (App. Br. 6) is not an argument against the
combination of Zimmermann and Kingsley applied to claim 9.
Regarding claim 9, the Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of applicant’s invention as made to implement
Kingsley’s teaching in Zimmerman’s teaching to come up with
having server having MPEG encoder and an MPEG transcoder.
The motivation for doing so would be to send data at a lower bit
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Application 10/951,739

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rate and transmitting at faster than normal rate therefore the
data can be sent in a compressed form but at a faster rate.

(Ans. 9). In other words, one would have combined Kingsley’s teaching of
MPEG encoders and transcoders with Zimmermann to provide compressed
data, in addition to Zimmermann’s independent capability to send data at a
faster rate in response to buffer conditions (see Ans. 9). Notably, the
Examiner need not provide any reason for using Kingsley’s MPEG encoders
and transcoders in relation to Zimmermann’s sending data at a faster rate, as
claim 9 merely recites “the server having an MPEG encoder and an MPEG
transcoder” without requiring the encoder or transcoder to actually perform
any function. In contrast, claim 1 recites “wherein under unfavorable
network conditions the transcoder transcodes a data stream to a lower bit
rate stream and sends the lower bit rate stream faster than a normal operating
data transfer rate.” Thus, although the same two references are applied, the
Examiner’s combination for rejecting claim 9 is in essence a different
rationale for combining the references than the rationale for combining the
references for rejecting claims 1 and 15.
Moreover, where the Examiner finds that Zimmermann discloses
every limitation of claim 9 except for an MPEG encoder and an MPEG
transcoder (Ans. 8-9), Appellant has not shown why it would not have been
within the skill of an ordinary artisan to simply add these known
components, as disclosed by Kingsley, to Zimmermann’s system,
particularly where claim 9 does not recite that the MPEG encoder or the
MPEG transcoder actually perform any functions. In other words Appellant
has not shown that adding an MPEG encoder and an MPEG transcoder to
Zimmermann would be “more than a combination of prior art elements
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according to known methods to yield predictable results” (Ans. 15). See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Accordingly, while the Appeal Brief included a combination
argument nominally directed to “all Claims,” that argument did not present
any specific arguments for claim 9, or claims 10-14 which depend therefrom
and were not separately argued.

CONCLUSION
We have considered the arguments raised by Appellant in the Request
for Rehearing, but Appellant has not persuaded us that we misapprehended
or overlooked any points in rendering our Decision.

DECISION
We have granted Appellant’s Request for Rehearing to the extent that
we have reconsidered our Decision, but we deny the Request with respect to
making any changes thereto.
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).

REQUEST FOR REHEARING DENIED

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