Ex Parte Jackson et al

Patent Trial and Appeal Board

Dec 20, 2012

11400952 (P.T.A.B. Dec. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CALLUM PETER JACKSON and NANAMI SMITH
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Appeal 2010-008198
Application 11/400,952
Technology Center 2400
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Before DEBRA K. STEPHENS, JUSTIN BUSCH, and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-16 and 18-21. We have jurisdiction under 35 U.S.C.
§ 6(b). Claim 17 has been cancelled.

We AFFIRM.
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STATEMENT OF THE CASE
Appellant’s Invention
According to Appellants, the invention relates to a method and
apparatus for streaming data, and in particular the invention relates to a
method and apparatus in a server that generates and serves large, continuous
amounts of speech data to a client in real time. (Spec. pg. 1, [0001].)

Exemplary Claim
Claim 1 is independent and representative of the invention, and reads
as follows:
1. A method of controlling play out of a generated
media data stream from a client data stream player, comprising:
receiving a request, from a client, to generate a media
data stream;
receiving, from the client, data to be generated as the
media data stream;
estimating a generation time for generating the media
data stream;
estimating a time to play the generated media data
stream;
generating the media data stream using a data stream
generation resource, for output by the client data stream player;
and
sending an alert to the data stream player if remaining
generation time for generating the media data stream using the
data stream generation resource is not more than remaining play
time.

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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Swix US 2004/0250273 A1 Dec. 9, 2004
Didcock US 6,446,909 B1 Oct. 15, 2002
Krum US 6,618,820 B1 Sep. 9, 2003

Jacco R. Taal et al., Adaptive End-to-End Optimization of Mobile
Video Streaming Using QoS Negotiation, Proc. Int’l Symposium on Circuits
and Systems (ISCAS 2002) (“Taal”).

Examiner’s Rejections
(1) Claims 1, 4-7, 10-13, 16, and 18 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Swix and
Didcock.
(2) Claims 2, 3, 8, 9, 14, and 15 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Swix,
Didcock, and Taal.
(3) Claims 19-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Swix, Didcock, and Krum.
(4) Claim 19 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.

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ISSUES
We will decide Appellants’ contentions regarding independent claims
1, 7, and 13. We have only considered those arguments that Appellants
actually raised in the Briefs. Arguments Appellants could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

Issue 1: Appellants’ Contentions/Issues Raised on Appeal
The contentions and issues before us are as follows:
(1) Did the Examiner err in rejecting claims 1, 7, and 13 under 35
U.S.C. § 103(a) because Swix teaches away from generating the
media data stream? (App. Br. 8-9, 10-12, and 13.)
(2) Did the Examiner err in rejecting claims 1, 7, and 13 under 35
U.S.C. § 103(a) because Swix fails to teach “sending an alert” to
“the data stream player” (claims 1 and 13) and “the client data
stream player” (claim 7)? (App. Br. 8-9, 11, and 12-13.)
(3) Did the Examiner err in rejecting claims 1, 7, and 13 under 35
U.S.C. § 103(a) because Swix fails to teach “receiving data” (claim
1) and “data received” (claims 7 and 13) from a client and further,
“teaches away” from this feature? (App. Br. 9-10, 11-12, and 13-
14.)

Issue 2: Rejection of claim 19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. Our
findings are as follows.

ISSUE 1
First Contention
Appellants argue that Swix teaches away from generating a data
stream at the server because Swix discloses that the “complexity of the
media server is minimized because it only has to decode a transport layer
rather than decoding a single stream of data.” (App. Br. 8, 10, and 13.)
Thus, according to Appellants, Swix teaches away from the present
invention.
We are not persuaded by Appellants’ argument. “A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(citations and internal quotation marks omitted). Here, Appellants have not
presented sufficient evidence or argument to show Swix acts to “criticize,
discredit, or otherwise discourage” generating the media data stream using a
data stream generation resource. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Accordingly, we are not persuaded Swix teaches away
from the present invention.

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Second Contention
Appellants contend that Swix fails to disclose “sending an alert,” as
recited in claim 1, and similar language in claims 7 and 13, because,
although mentioning that the MODD indicates that the multimedia content
item is available for playback, Swix fails to suggest “that the indication
would go beyond the MODD, let alone be sent anywhere, and even be sent
to a data stream player as in the claim.” (App. Br. 8-9.) Appellants reason
that because storage and buffering occur at the media server, there is no need
to send an alert as recited in the claims. (App. Br. 9.)
Examiner responds by pointing out that considering the skill level of
one of ordinary skill in the art at the time the invention was made, Swix’s
disclosure of a MODD that indicates the availability of playback for
multimedia content would involve the sending of a message to a client
device. (Ans. 18.)
We disagree with Appellants’ conclusions, and find no error in the
Examiner’s findings that the MODD disclosed in Swix teaches “sending an
alert” as recited in claims 1, 7, and 13, and reasoning stated in the
Examiner’s Answer (Ans. 17-18, 20, and 22-12.). We, therefore, adopt the
findings set forth therein by the Examiner. (Id.).
Third Contention
Appellants contend that the Examiner’s rejection of claims 1, 7, and
13 over Swix and Didcock is in error because Swix fails to teach “receiving
data” (claim 1) and “data received” (claims 7 and 13) for two reasons. First,
Appellants argue that Swix teaches away from the combination with
Didcock because Swix teaches that its media server should not be complex
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and is not intended to, nor should, decode a stream of data. (See, e.g. App.
Br. 9.) Second, Appellants argue that Swix discloses thin clients, and these
do not have the functionality of sending “data to the media server for
subsequent generation into a media stream,” because they rely “on the media
server for receiving media from outside the home.” (App. Br. 10.)
Again we find Appellants have not presented sufficient evidence or
argument to show Swix acts to “criticize, discredit, or otherwise discourage”
the recited invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Accordingly, we are not persuaded Swix teaches away from the
present invention. We agree with the Examiner’s findings and conclusions
(Ans. 18-19, 21-22, and 23-24) and adopt them as our own. We emphasize
Swix discloses a variety of appliances, and that Appellants focused on the
“‘thin-client’ aspects of Swix,” ignoring the disclosure of a computer in
Figure 1, item 50. (Ans. 19, 21, and 24.) We also agree with the Examiner
that Swix does not require the use of a “thin-client,” and that the disclosure
of a computer contradicts Appellants’ argument that Swix emphasizes
minimizing the complexity of the media server. (Id.)
Accordingly, we are not persuaded the Examiner erred in
finding Swix teaches or suggests “receiving …data to be generated as the
media stream” and “the means for generating…is configured to use data
received…to generate a media data stream.” See claims 1, 7, and 13.

ISSUE 2
Appellants failed to raise, and, thus, we do not consider, any argument
against the rejection of claim 19 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. We deem such failure to
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respond to the rejection to be tantamount to a waiver of any arguments that
Appellants could have raised in this appeal to traverse this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2011); Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir 2008) (“When the appellant fails to contest a ground of rejection to
the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no
burden on the Board to consider the merits of that ground of rejection. . . .
[T]he Board may treat any argument with respect to that ground of rejection
as waived.”). See also In re Guess, 2009 WL 1598475 at *1 (Fed. Cir. June
9, 2009.)
CONCLUSION
On the record before us, we are not persuaded the Examiner erred in
finding the combination of Swix and Didcock teaches or suggests the
invention as recited in independent claims 1, 7, and 13. Appellants did not
present any additional arguments or evidence regarding the rejections of
dependent claims 2-6, 8-12, 14-16, and 18-21 instead relying on the
arguments set forth for claims 1, 7, and 13 (App. Br. 4). Therefore, claims
2-6, 8-12, 14-16, and 18-21 fall with their respective independent claims.
Accordingly, we conclude that the Examiner did not err in rejecting claims
1-16 and 18-21 under 35 U.S.C. § 103(a). Furthermore, claim 19 stands
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.

DECISION
We affirm the rejections of claims 1-16 and 18-21.

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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. § 1.136(a)(1)(iv)
(2012).

AFFIRMED

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