Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10675903 (B.P.A.I. Nov. 29, 2010)

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.
10/675,903 09/30/2003 Jeyhan Karaoguz 14449US02 6132
23446 7590 11/30/2010
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
PHAN, TRI H
ART UNIT PAPER NUMBER
2471
MAIL DATE DELIVERY MODE
11/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEYHAN KARAOGUZ and JAMES BENNETT
____________

Appeal 2009-006520
Application 10/675,903
Technology Center 2400
____________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and ROBERT E. NAPPI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006520
Application 10/675,903

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-31, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to controlling a transfer of media content
in a communication network. At least one media file to be transferred via a
communication channel in the communication network is specified. Various
quality of service (QoS) parameters to be utilized for transferring one or
more of the media files may also be specified. In one example, specified
QoS parameters are transferred to a first communication device that is
coupled to the communication network. A second device utilizes the
transferred QoS parameters to configure the communication channel. The
first communication device may be a broadband headend or a media server.
The received input specifying one or more media files to be transferred may
be generated and selected from a media guide, channel guide or a device
guide such as may be displayed on a television screen within a home. (Spec.
¶¶ [09]-[10]).
Claim 1, which is illustrative of the invention, reads as follows (letter
designations have been added to the steps, i.e., paragraphs, of the claim for
convenience in referencing infra):
1. A method, for controlling transfer of media content
in a communication network, the method comprising:
[a] receiving an input specifying at least one media file
for transfer via a communication channel in the communication
network;
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[b] causing a display of a plurality of quality of service
options corresponding to said at least one media file for
selection by a remote user;
[c] receiving a quality of service selection specifying at
least one of said plurality of quality of service options; and
[d] transferring said at least one media file via said
communication channel utilizing said quality of service
selection.

The Examiner relies on the following prior art in rejecting the claims:
Nakatsuyama US 6,253,246 B1 Jun. 26, 2001
Radford US 2002/0144276 A1 Oct. 3, 2002

Claims 1-5, 7-15, 17-25, and 27-31 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Nakatsuyama.
Claims 1-7, 10-17, 20-27, 30, and 31 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Radford.
Claims 6, 16, and 26 stand rejected under 35 U.S.C. § 103(a) as
obvious over Nakatsuyama.
Claims 8, 9, 18, 19, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Radford in view of Nakatsuyama.
Rather than repeat the arguments here, we make reference to the
Briefs (Appeal Brief filed Jan. 22, 2008 and Reply Brief filed Jun. 16, 2008)
and the Answer (mailed Apr. 15, 2008) for the respective positions of
Appellants and the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Brief have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE(S)
Claims 1, 11, and 21 are independent claims. Claims 2-10, 12-20 and
22-31 depend, directly or indirectly, from claims 1, 11, and 21 respectively.
Appellants have argued for the patentability of claim 1 over Nakatsuyama
and over Radford, and have made no separate substantive arguments for the
patentability of claims 2-31, relying solely on the arguments made for claim
1. Therefore, we select claim 1 as the representative claim, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
In arguing for the patentability of claim 1 Appellants contend that
claim 1 is limited to performing step [b] (see convenience references added
supra) after step [a] (App. Br. 9, 11; Reply Br. 4), but before step [d] (App.
Br. 12-13; Reply Br. 7). Appellants further contend that claim 1 is limited
to performing step [d] after steps [b] and [c]. (App. Br, 15). Although
couched in terms of limitations of the claim Appellants contend are not
disclosed by the references cited by the Examiner, Appellants arguments for
the absence of those limitations of the claim from the disclosures of the cited
references turn on whether claim 1 includes the sequence limitations argued
by Appellants. The pivotal issue, therefore, is:
Whether claim 1 is limited to a process in which step [b] is performed
after step [a] but before step [d] and in which step [d] is performed after
steps [b] and [c].

PRINCIPLES OF LAW
[The USPTO] applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
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definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
“Unless the steps of a method actually recite an order, the steps are
not ordinarily construed to require one. However, such a result can ensue
when the method steps implicitly require that they be performed in the order
written.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
1342-43 (Fed.Cir.2001) (citations omitted).
Interactive Gift recites a two-part test for determining if the
steps of a method claim that do not otherwise recite an order,
must nonetheless be performed in the order in which they are
written. First, we look to the claim language to determine if, as
a matter of logic or grammar, they must be performed in the
order written. If not, we next look to the rest of the
specification to determine whether it “directly or implicitly
requires such a narrow construction.”

Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1370 (Fed. Cir. 2003) (citing
Interactive Gift at 1343).

ANALYSIS
Appellants contend that step [b] of claim 1 which recites “causing a
display of a plurality of quality of service options corresponding to said at
least one media file for selection by a remote user” (emphasis added)
requires that the display of the quality of service options occur after step [a],
which recites “receiving an input specifying at least one media file for
transfer via a communication channel in the communication network”
(emphasis added). (App. Br. 9, Reply Br. 4-5.) The Examiner responds that
the claim does not preclude the media file input selection and the quality of
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service option display from occurring at the same time. (Ans. 11-13.)
Appellants further contend that steps [b] and [c] must occur before step [d]
(App. Br. 11-12, 15; Reply Br. 7). The Examiner responds that the claim
does not preclude the streamed data content and the video quality control
from being displayed and adjusted at the same time. (Ans. 16-18.)
From the context in which Appellants use the words “before” and
“after” in the arguments, the overall thrust of Appellants’ arguments is that
claim 1 requires that step [a] be performed first, before any of the other steps
are initiated. Then, only after step [a] is complete, steps [b] and [c] are
performed before step [d] is initiated. Finally, after steps [b] and [c] are
complete, step [d] is initiated. The Examiner’s position is that nothing in the
claim precludes simultaneous, overlapping and/or out of sequence execution
of the argued steps of claim 1. We agree with the Examiner.
Despite Appellants’ multiple references to steps of claim 1 being
“before” or “after” other steps (App. Br. 9, 11-21; Reply Br. 4,7), we do not
find those words in the claim. In fact, we find no express statement of a
sequence of steps in the claim. See Interactive at 1342-43.
Appellants’ position with regard to the relationship between the step
[b] and the step [a] rests on the word “corresponding” in step [b], together
with the fact that the phrase “said at least one media file” in step [b] has its
antecedent basis in step [a], as requiring the argued sequence. (App. Br. 9,
15-17.) Appellants argue that for the quality of service options to
“correspond” to a media file, the media file must be selected before the
quality of service options are displayed. (App. Br. 9.) Regarding the
relationship between steps [b] and [c] and step [d], Appellants contend that
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the overall context of the claim 1 requires that steps [b] and [c] must precede
step [d]. (App. Br. 17-18.)
Giving the claim its broadest reasonable meaning consistent with the
Specification, see Morris at 1054, we find, as is implicit in the Examiner’s
findings, that “corresponding” merely requires that quality of service options
appropriate to the media file to be transferred be displayed and available for
selection at some time before or during file transfer. Furthermore, in the
overall context of the claim, claim 1 merely requires that quality of service
options appropriate to the media file to be transferred be displayed and
available for selection at some time when a selection would have some
effect on a transfer. Accordingly, we find that there is nothing in the claim
language that requires, as a matter of logic or grammar, that step [b] must be
performed after step [a] or before step [d] or that steps [b] or [c] must be
performed before step [d]. See Altiris at 1370. Appellants have not pointed
to, nor have we found, any provision in the Specification that would require
a different result. Ibid. Therefore, we find no error in the Examiner’s claim
construction. Appellants’ arguments for the absence of the claimed steps
from the disclosures of Nakatsuyama and Radford rest on a claim
construction which we find unsupported by the breadth of the appealed
claim. Accordingly, we find no error in the Examiner’s findings and
conclusions regarding the applicability of the cited prior art references to
claim 1. We adopt the Examiner’s findings and conclusions as our own and
find that the Examiner did not err in concluding that claim 1 is anticipated
by Nakatsuyama and also by Radford.

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CONCLUSION
On the record before us, because we find Appellants argued claim
construction is incorrect, we conclude that the Examiner did not err in
rejecting claim 1, as well as claims 2-31 not separately argued, as anticipated
by Nakatsuyama and Radford.

ORDER
The decision of the Examiner to reject claims 1-31 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).

AFFIRMED

KIS

MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661