Ex Parte Kvm et al

Patent Trial and Appeal Board

Mar 23, 2015

11783137 (P.T.A.B. Mar. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NAIDU KVM, RAJEEV RASTOGI,
JEYASHANKHER SR, and ANAND SRINIVASAN
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Appeal 2012-000846
Application 11/783,137
Technology Center 2100
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Before JEAN R. HOMERE, CARLA M. KRIVAK, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing (“Reh’g Req.”) from our Decision on
October 29, 2014 (“Decision” or “Dec.”) affirming the Examiner’s rejection
of claims 1–20. Appellants contend that “many of the arguments made in
the Reply Brief were overlooked by the Decision.” Reh’g Req. 3.
Our Decision discussed two limitations in claim 1. The first limitation
was “prefetching a portion of the file from the remote storage server” (the
“prefetching a portion” limitation). Dec. 3–4. The second limitation was
“opening the prefetched portion of the file while concurrently downloading a
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remaining portion of the file from the remote storage server” (the “opening
the prefetched portion” limitation”). Dec. 4–5.
For the “prefetching a portion” limitation, the Examiner relied upon a
definition of “file” in the Microsoft Dictionary to conclude that a file is “a
set of data used by a program, a file consists of a set of data items.” Dec. 4,
citing Ans. 14. The Examiner also concluded a portion of a file consists of
one or more data items, and, therefore, one or more data items is equivalent
to a portion of a file. Dec. 4, citing Ans. 14–15. We “conclude[d] that the
Examiner’s reliance on, and application of, the Microsoft Computer
Dictionary definition of ‘file’ is reasonable, that the Examiner’s
interpretation of Wang in reliance on the dictionary definition is reasonable,
and thus, Wang teaches the prefetching limitation.” Dec. 4.
For the “opening the prefetched portion” limitation, the Examiner
relied on Chang. Dec. 4. We agreed with the Examiner that Chang teaches
this limitation:
Chang column 3, lines 21–41 teaches prefetched presentation
data is viewed and listened to (i.e., opened) while the remaining
presentation data is downloaded. We also agree[d] with the
Examiner’s finding that Chang’s Block 504 teaches prefetching
portions of a file (“n contents”), loading them into a cache
(Block 513), and executing them while simultaneously
downloading other portions of data contents.

Dec. 4–5.
Appellants contend that the definition of “file” in the Microsoft
Dictionary contradicts the definition of “file” in Chang. Appellants also
contend “the Decision does not address the arguments presented in the Reply
Brief with respect to the contradiction between the definitions of the term
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‘file’ as provided by the Microsoft Computer Dictionary and that provided
by Chang.” Reh’g Req. 5 (emphasis omitted).
According to Appellants, the Reply Brief
concluded that the definition of the term file, when relied upon
by the Examiner to reject the feature of “prefetching a portion
of the file,” as recited in claim 1, contradicts the definition of a
single file by Chang, which is relied upon by the Examiner to
reject the feature of “opening the prefetched portion of the file
while concurrently downloading a remaining portion of the
file,” as recited in claim 1. Therefore, the reliance of the
Examiner on the definition of the term “file” as provided by the
Microsoft Computer Dictionary is unreasonable.

Reh’g Req. 4 (brackets in original omitted).
Although we agree our Decision did not specifically address
Appellants’ contradiction contention, we disagree that the contention
requires a different result.
Appellants’ Reply Brief is internally inconsistent. On one hand, the
Reply Brief states that “Chang defines a file in a conventional manner” and
therefore “the Examiner’s definition of a file directly contradicts the prior art
document on which the Examiner basis [sic] the rejections.” Reply Br. 4.
The Reply Brief does not explicitly identify the referenced “prior art
document” but, in context, Chang seems to have been the referenced prior
art document. On the other hand, the Reply Brief states “the definition
provided by the Examiner is not inconsistent with the definition provided by
Chang.” Reply Br. 3 (emphasis added). The Reply Brief also states “the
Microsoft Computer Dictionary details files consistently with the definition
provided by Chang.” Id. (emphasis added).
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Based upon the latter two apparent concessions in the Reply Brief that
there is no inconsistency, we conclude the Examiner’s reliance on the
Microsoft Dictionary definition was reasonable.
We also conclude the Examiner’s reliance on the Microsoft
Dictionary definition was reasonable even if we give full consideration to
Appellants’ contention about a purported inconsistency with a definition of
“file” that Appellants contend is present in Chang.
According to Appellants, “Chang defines a file in a conventional
manner as data saved at a particular location and encoded in a file format
labeled by a filename extension.” Reply Br. 4, citing Chang col. 1, l. 56 to
col. 2, l. 9, which states:
File formats of data on the Web are specified as MIME formats,
where MIME stands for “Multipurpose Internet Mail
Extensions.” . . . Examples of file formats on the Web are .au
(probably the most common audio format), .html (HTML files),
.jpg (JPEG encoded images), .mid (Midi music format), mpg
(MPEG encoded video), and .ps (postscript files). In addition
to being encoded in .au format, audio is also encoded in wav
format and stored in files labeled with the suffix wav.

We disagree that the above quoted portion of Chang defines “file.”
Instead, it provides examples of how files can be formatted. Our
interpretation of the quoted portion is supported by the same page of the
same Microsoft Dictionary upon which the Examiner relied. Microsoft
Computer Dictionary, Fifth Edition (Microsoft Press 2002). Page 211 of the
Microsoft Dictionary not only defines “file,” but in a separate entry defines
“file format,” the subject of the quoted portion of Chang. The definition is:
The structure of a file that defines the way it is stored and laid
out on the screen or in print. The format can be fairly simple
and common, as are files stored as “plain” ASCII text, or it can
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be quite complex and include various types of control
instructions and codes used by programs, printers, and other
devices. Examples include RTF (Rich Text Format), DCA
(Document Content Architecture), PICT, DIF (Data Interchange
Format), DXF (Data Exchange File), TIFF (Tagged Image File
Format), and EPSF (Encapsulated PostScript Format).

Based upon the quoted text of Chang and the definitions in the
Microsoft Dictionary, we are not persuaded that Chang either defines “file”
or discusses “file” in a way that is inconsistent with the Examiner’s
definition of “file.”
In the course of considering the “opening the prefetched portion”
limitation, we discussed Appellants’ contention that Chang does not
multiplex presentation files into a single streaming file and concluded the
argument was not persuasive because claim 1 does not recite multiplexing.
Dec. 5, citing Reply Br. 4. Appellants now contend we misapprehended the
purpose of the multiplexing argument. Specifically, Appellants contend “the
disclosure of multiplexing by Chang is relied upon to emphasize how the
definition of the term ‘file’ as disclosed by Chang contradicts that, which is
relied upon by the Examiner.” Reh’g Req. 5 (emphasis omitted).
“[A]ccording to Chang, each of the presentation files constitutes a separate
file which is not multiplexed with other separate files to form a single file.”
Reh’g Req. 4 (emphasis omitted). That is, “the relevant portion of Chang
. . . discloses the presentation files not being multiplexed into a single
streaming file.” Id. The Reply Brief similarly asserted “one benefit of the
invention of Chang is that the presentation files are not multiplexed into a
single streaming file.” Reply Br. 4.
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The Rehearing Request appears to be internally inconsistent in that
page 4 of the Rehearing Request asserts that a file is “not multiplexed,”
while page 5 refers to “multiplexing by Chang.” Nevertheless, Appellants’
citation to Chang column 3, line 66 to column 4, line 3 (Reply Br. 4 n.6)
states that Chang’s “invention does not require that the primary media data
and the secondary event data be multiplexed into a single streaming file”
(emphasis added).
We are not persuaded by the fact that Chang’s device does not teach
multiplexing into a single streaming file. As we pointed out, for the
“opening the prefetched” limitation, the Examiner relies on Chang column 3,
lines 21–41, Chang’s Block 504, and Chang’s Block 513. Dec. 4–5.
Neither the Reply Brief nor the Rehearing Request explains why the
Examiner’s reliance on those parts of Chang is incorrect and we find the
Examiner’s reliance to be reasonable with a rational underpinning.
We have reconsidered our Decision to the extent that we did not
address the above arguments presented by Appellants in the Reply Brief, but
we decline to change the disposition. Therefore, Appellants’ Request for
Rehearing is granted to the extent that the Decision was reconsidered, but is
denied with respect to modifying the result.
Because we conclude we have so modified the original Decision as to
become, in effect, a new Decision, we authorize a second request for
rehearing limited to a discussion of the contradiction contention discussed
above. 37 C.F.R. § 41.52(a)(1).

REHEARING GRANTED
msc