Ex Parte Kortum et al

Board of Patent Appeals and Interferences

Aug 30, 2012

10901921 (B.P.A.I. Aug. 30, 2012)

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.
10/901,921 07/29/2004 Philip Ted Kortum 1033-LB1082 1162
84326 7590 08/31/2012
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
08/31/2012 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 PHILIP TED KORTUM and MARC ANDREW SULLIVAN
____________

Appeal 2010-000769
Application 10/901,921
Technology Center 2400
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH, and
BRUCE R. WINSOR, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000769
Application 10/901,921

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 6-12, 14, 15, 17-19, 22, 23, 26-28, 31-37, 39, and
41-51. Claims 3, 13, 16, 20, 21, 24, 25, 29, 30, 38, and 40 have been
canceled. Claim 5 has been withdrawn. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

Representative Claim
1. A method comprising:
measuring an available bandwidth of a data connection to a set top
box;
dividing at least one video file into a first portion and a second
portion, wherein a size of the first portion of the at least one video file is
selected at least partially based on the available bandwidth;
downloading only the first portion of the at least one video file over
the data connection to a memory in the set top box;
managing a list of video titles corresponding to video files that have
only a first portion downloaded;
wherein a total number of video titles on the list of video titles is
determined at least partially based on the available bandwidth; and
downloading a second portion of the video file from a common source
over the data connection while the first portion is being displayed at the
display device.

Prior Art
Pedlow US 2002/0087995 A1 July 4, 2002
Lundberg US 2002/0194612 A1 Dec. 19, 2002
Liew US 2003/0188318 A1 Oct. 2, 2003
Arsenault US 6,701,528 B1 Mar. 2, 2004
Duan US 7,143,433 B1 Nov. 28, 2006
Broadus US 7,203,952 B2 Apr. 10, 2007
Gemmell US 7,237,032 B2 June 26, 2007
Appeal 2010-000769
Application 10/901,921

3

Examiner’s Rejections
Claims 1, 9, 12, 17, 19, 26, 31, 35, 36, 39, 41, 43, and 46-511 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lundberg,
Arsenault, and Broadus.
Claims 2, 4, 6, 10, 11, 18, 28, 33, 34, 37, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lundberg, Arsenault,
Broadus, and Duan.
Claims 7, 14, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lundberg, Arsenault, Broadus, and Liew.
Claims 8, 15, 23, 44, and 45 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lundberg, Arsenault, Broadus, and Pedlow.
Claims 27 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lundberg, Arsenault, Broadus, and Gemmell.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1.

1 While the heading does not include claim 51 (Ans. 3), the Examiner
discusses claim 51 in the body of the rejection (Ans. 7).
Appeal 2010-000769
Application 10/901,921

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ANALYSIS
Section 103 rejection of claims 1, 9, 12, 17, 19, 26, 31, 35, 36, 39, 41,
43, and 46-51
The Examiner finds that Arsenault teaches dividing at least one video
file into a first portion and a second portion. Ans. 4. The Examiner finds
that Lundberg teaches selecting a file size at least partly based on available
bandwidth. Ans. 4, 13. The Examiner concludes that the combination of
Lundberg and Arsenault teaches “dividing at least one video file into a first
portion and a second portion, where a size of a first portion of the at least
one video file is selected at least partially based on the available bandwidth”
as recited in claim 1. Ans. 4. Appellants contend that Lundberg teaches
determining when to fetch media objects rather than selecting the size of the
media object. Br. 7-8.
Lundberg teaches estimating available bandwidth in the network and
calculating transmission times based on estimated bandwidth and file size to
schedule when to fetch, or “select,” each media object file. ¶ [0035]. The
Examiner finds that paragraph 35 of Lundberg suggests selecting a file
having a size that can be transmitted through the estimated bandwidth. Ans.
13. The Examiner concludes, and we agree, that Lundberg teaches the “size
of . . . the . . . file is selected at least partially based on the available
bandwidth” within the meaning of claim 1.
Appellants contend that Lundberg does not teach dividing a video file
into media objects. Br. 7-8. However, the Examiner relies on Arsenault to
teach “dividing at least one video file into a first portion and a second
portion.” Ans. 4.
Appeal 2010-000769
Application 10/901,921

5
Appellants contend that Arsenault does not teach selecting a size of
the video program segment at least partially based on available bandwidth.
Br. 8. However, the Examiner relies on Lundberg to teach a file size is
selected at least partly based on available bandwidth. Ans. 4, 13.
We adopt the Examiner’s findings of fact made in the Final Rejection
and the Examiner’s Answer as our own. We agree with the conclusions
made by the Examiner. We sustain the rejection of claims 1, 49, and 50
under 35 U.S.C. § 103. Appellants rely on arguments for the patentability of
claims 9, 12, 17, 19, 26, 31, 35, 36, 41, 43, 47, 48, and 51 previously
presented for claim 1, which we find unpersuasive.

Section 103 rejection of claim 39
Appellants contend that the combination of Lundberg, Arsenault, and
Broadus does not teach “re-apportioning the size of the segment of the
memory at least partially based on the second available bandwidth” as
recited in claim 39. Br. 11-12. The Examiner finds that Lundberg teaches
determining a second available bandwidth (citing paragraph 35), and
Arsenault teaches adjusting the size of memory (citing col. 11, ll. 45-51).
Ans. 5-6; Ans. 15.
Appellants argue that Fig. 8A and col. 11, ll. 29-38 of Arsenault teach
pre-set time periods of a re-broadcast interval as the length of a pre-stored
video program. However, the Examiner cites col. 11, ll. 45-51 of Arsenault
to teach the claimed re-apportioning the size of the segment of the memory.
Appellants have not provided persuasive evidence or argument to rebut the
Examiner’s findings. Further, Appellants have not provided a definition of
Appeal 2010-000769
Application 10/901,921

6
re-apportioning the size of the segment of the memory to exclude using
pre-set time periods as the length of a video program as taught by Arsenault.
The Examiner further finds that re-apportioning the size of the
segment of the memory at least partially based on available bandwidth
encompasses calculating a second bandwidth and selecting a file with a
memory size that can be transmitted at the time of the second bandwidth.
Ans. 15. Appellants have not persuasively rebutted the Examiner’s finding.

Section 103 rejection of claim 46
Appellants argue that the combination of Lundberg, Arsenault, and
Broadus does not teach “setting a file size for the first portion of the at least
one video file; and wherein the file size determines an amount of data
downloaded for the first portion” as recited in claim 46. Br. 12. The
Examiner finds that Arsenault teaches this limitation. Ans. 6, citing col. 9,
ll. 50-60. Appellants contend that the cited portion of Arsenault teaches
storing and playing back video files. Br. 12. The Examiner finds that
Arsenault teaches the ability to set a file size (i.e. the data size of the first 30
minutes, or “first portion,” of a video file) to be pre-stored, or
“downloaded.” The Examiner concludes that Arsenault teaches “determines
an amount of data downloaded for the first portion” within the meaning of
claim 46. See Ans. 16. Appellants have not persuasively rebutted the
Examiner’s finding and conclusion.

Appeal 2010-000769
Application 10/901,921

7
Section 103 rejection of claims 2, 4, 6, 10, 11, 18, 28, 33, 34, 37,
and 42
Appellants contend that Duan does not remedy the deficiency in the
combination of Lundberg, Arsenault, and Broadus. Br. 12-13. We are not
persuaded of a deficiency in the combination of Lundberg, Arsenault, and
Broadus for the reasons given in our analysis of claim 1.
We sustain the rejection of claims 2, 4, 6, 10, 11, 18, 28, 33, 34, 37,
and 42 under 35 U.S.C. § 103.

Section 103 rejection of claims 7, 14, and 22
Appellants rely on arguments for the patentability of claims 7, 14, and
22 (Br. 13) previously presented for claim 1, which we find unpersuasive.
We sustain the rejection of claims 7, 14, and 22 under 35 U.S.C. § 103.

Section 103 rejection of claims 8, 15, 23, 44, and 45
Appellants rely on arguments for the patentability of claims 8, 15, 23,
44, and 45 (Br. 14) previously presented for claim 1, which we find
unpersuasive. We sustain the rejection of claims 8, 15, 23, 44, and 45 under
35 U.S.C. § 103.

Section 103 rejection of claims 27 and 32
Appellants rely on arguments for the patentability of claims 27 and 32
(Br. 15) previously presented for claim 1, which we find unpersuasive. We
sustain the rejection of claims 27 and 32 under 35 U.S.C. § 103.

Appeal 2010-000769
Application 10/901,921

8
DECISION
The rejection of claims 1, 9, 12, 17, 19, 26, 31, 35, 36, 39, 41, 43, and
46-51 under 35 U.S.C. § 103(a) as being unpatentable over Lundberg,
Arsenault, and Broadus is affirmed.
The rejection of claims 2, 4, 6, 10, 11, 18, 28, 33, 34, 37, and 42 under
35 U.S.C. § 103(a) as being unpatentable over Lundberg, Arsenault,
Broadus, and Duan is affirmed.
The rejection of claims 7, 14, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Lundberg, Arsenault, Broadus, and Liew is
affirmed.
The rejection of claims 8, 15, 23, 44, and 45 under 35 U.S.C. § 103(a)
as being unpatentable over Lundberg, Arsenault, Broadus, and Pedlow is
affirmed.
The rejection of claims 27 and 32 under 35 U.S.C. § 103(a) as being
unpatentable over Lundberg, Arsenault, Broadus, and Gemmell 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). See 37 C.F.R. §
41.50(f).

AFFIRMED

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