Ex Parte Moore et al

Patent Trial and Appeal Board

Mar 18, 2014

11517015 (P.T.A.B. Mar. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD G. MOORE,
DOUGLAS McCAUSLAND, JONATHAN L. DISCOUNT,
and SREENIVAS RACHAMADUGU1
____________________

Appeal 2011-009022
Application 11/517,015
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-6, 8-13, 15-20, and 22-24. Appellants have previously
canceled claims 7, 14, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Verizon Communications Inc. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to a method and system for delivery of
digital media via instant communication clients. See Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A computer-implemented method for providing
digital media, the method comprising:
assigning one of a plurality of distribution channels to
transport the digital media to an instant communications
process;
transcoding the digital media based upon the assigned
distribution channel; and
transmitting the transcoded digital media to the instant
communications process over the assigned distribution channel,
wherein a distribution channel is defined according to an end
device of the distribution channel, and one of the distribution
channels is associated with a first transport network, and
another one of the distribution channels is associated with a
second transport network that is different from the first
transport network.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 6, 2010); Reply Brief (“Reply Br.,” filed Feb. 28, 2011); Examiner’s
Answer (“Ans.,” mailed Dec. 27, 2010); Final Office Action (“FOA,”
mailed May 6, 2010); and the original Specification (“Spec.,” filed
Sep. 7, 2006).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Liwerant US 2002/0056123 A1 May 9, 2002
Reisman US 2003/0229900 A1 Dec. 11, 2003
Enete US 2004/0223606 A1 Nov. 11, 2004
Benco US 2005/0185634 A1 Aug. 25, 2005
Rejections on Appeal
1. Claims 1-4, 8-11, 15-18, and 22-24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Enete and
Benco. Ans. 4.
2. Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Enete, Benco, and Liwerant.
Ans. 11.
3. Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Enete, Benco, and Reisman.
Ans. 12.
ISSUE
Appellants argue (App. Br. 5-13; Reply Br. 2-10) that the Examiner’s
rejection of claims 1-4, 8-11, 15-18, and 22-24 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Enete and Benco is in error.
These contentions present us with the following issue:
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Did the Examiner err in finding that the combination of Enete and
Benco teaches or suggests the limitation of “transcoding the digital media
based upon the assigned distribution channel,” as recited in claim 1?
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
§ 103(a) Rejection of Claims 1-4, 8-11, 15-18, and 22-24
We disagree with Appellants’ arguments with respect to claim 1, and
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellants state each of the independent claims require transcoding
digital media based upon an assigned distribution channel, and contend the
prior art combination does not teach or suggest such a feature. App. Br. 5-6.
Further, Appellants disagree with the Examiner’s finding (FOA 3) that Enete
teaches transmitting digital media to an instant communications process over
a distribution channel and Benco teaches “assigning one of a plurality of
distribution channels to transport the an [sic] instant message to an instant
communications process” (id. (emphasis omitted)), as well as teaching
transcoding digital information. Appellants’ disagreement centers on the
argument, “[t]he teachings of Benco relate only to SMS and IM messaging
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and are silent with respect to transmission and transcoding of digital media
in an instant communications process[ and, i]ndeed, neither the term digital
media nor the term media alone is used anywhere in the Benco reference.”
App. Br. 6. Appellants further contend “Benco merely discloses formatting
a destination address of an SMS or IM message as an appropriate telephone
number or email address for the mobility gateways and IP gateways, and not
transcoding digital media based on an assigned communications channel, as
claimed in Appellants’ application.” App. Br. 7-8.
Further to this point, Appellants take issue with the Examiner’s claim
construction (FOA 3) which uses the phrase “instant message” from the
reference to represent Appellants’ claimed “digital media,” purportedly
because, in Appellants’ view, an “instant message” is not synonymous with
“digital media” in Benco, as interpreted by the Examiner. App. Br. 9.
In response, the Examiner points out that although Enete does not
teach or suggest transcoding of the media is based on the assigned
communications channel, Benco is relied upon for this teaching. Ans. 15.
We agree with the Examiner.
First, we construe the term “transcoding.” We note Appellants’
Specification states:
Via the transcode process 205, the original asset is
proliferated into additional versions targeting various end-user
devices. The rules for transcoding can be based upon the
distribution channels selected for the asset. Once the asset has
been transcoded into versions appropriate for the desired
distribution channels, the transcoded versions are encrypted
(e.g., Digital Rights Management) to prevent unauthorized use
via the protect process 207.
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Spec. ¶ [0056]. We find no explicit definition in Appellants’
Specification as to the meaning of the terms “transcode” or “transcoding.”
Thus, we give “transcoding” its broadest, but reasonable interpretation as
converting data from one format to another. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
Next, we determine the broadest, reasonable meaning of “digital
media” to a person of ordinary skill in the art. In this regard, Appellants’
Specification states: “For illustrative purposes, the life cycle and associated
operations of the platform 101 are described with respect to music videos as
the digital media; however, as noted, the digital media can be any type of
media that the user considers to be assets.” Spec. ¶ [0053]. Further, “an
IPTV set top box 407 is configured to display thumbnails 407a and 407b of
the digital media (e.g., videos) that are available for download.” Spec.
¶ [0077] (emphasis added). In particular, Appellants’ Specification does not
provide any clear definition but rather only provides exemplary and non-
limiting examples of “digital media,”
We find no error with the definition provided by the Examiner (Ans.
16). Accordingly, we conclude “digital media” broadly but reasonably
means information stored electronically in digital form, and which broadly
but reasonably includes an instant message (IM) and Short Message System
(SMS) message.
We find Enete teaches or suggests transcoding digital media, i.e.,
audio and video data, by its teaching of “providing an appropriate version of
the video clip, such as a narrowband version or a broadband version.”
Enete, ¶ [0097]. We also find Benco teaches or suggests transcoding a
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different type of “data,” i.e., “protocol converter 62 then performs functions
to place the destination data in appropriate format, according to established
standards and voice communication protocols, to be transmitted to the
mobility gateway 26.” Benco, ¶ [0058]; Figs. 5-7 (element 62).3 In Benco,
the particular transcoding option chosen is “based upon the assigned
distribution channel,” as recited in claim 1. For example, Benco teaches “IP
router 30 includes a destination parser module 60 . . . [, which] analyzes the
destination data received with a call to determine if the destination is an e-
mail address, i.e. if the destination is a PC[, and i]f so, the destination parser
module 60 simply routes the call as is known . . . .” Benco, ¶ [0057]. Benco
also teaches:
If, however, the destination parser module 60 does not
recognize the destination data as an e-mail address, then it
determines that the destination data must be a mobile telephone
number and sends the data to the protocol converter 62. . . .
[, which] then performs functions to place the destination data
in appropriate format, according to established standards and
voice communication protocols, to be transmitted to the
mobility gateway 26.
Id. at ¶ [0058].
Appellants argue (App. Br. 6) the type of data in Benco is different
than the audio/video data (digital media) in Enete and therefore does not
teach or suggest the limitation in dispute. However, as noted above, we find
the recited phrase “digital media” broadly but reasonably reads on audio,
video, IM, and SMS data, among other types of data.

3 Benco’s Figure 6 appears to have incorrectly labeled the “protocol
converter” with reference number 52, while reference number 62 is more
likely to have been intended.
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We specifically note that Appellants’ challenge to the references
individually is not convincing of error in the Examiner’s position because all
of the features of the secondary reference need not be bodily incorporated
into the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA
1981)). Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)).
For the reasons above, we therefore agree with the Examiner’s finding
that the combination of Enete and Benco teaches or suggests Appellants’
claimed “transcoding the digital media based upon the assigned distribution
channel,” as recited in claim 1.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner’s
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 1.
As Appellants have not provided separate arguments with respect to
independent claims 8 and 15, or dependent claims 2-4, 9-11, 16-18, and 22-
24, rejected on the same basis as claim 1, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
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§ 103(a) Rejection of Claims 5, 12, and 19
Appellants have not provided separate arguments with respect to
dependent claims 5, 12, and 19, rejected as being unpatentable over the
combination of Enete, Benco, and Liwerant.
Arguments not made are considered waived. See 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.”).
Therefore, we similarly sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 103(a).
§ 103(a) Rejection of Claims 6, 13, and 20
As Appellants have not provided separate arguments with respect to
dependent claims 6, 13, and 20, rejected as being unpatentable over the
combination of Enete, Benco, and Reisman, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a). Id.
CONCLUSIONS
The Examiner did not err with respect to any of the various
unpatentability rejections of claims 1-6, 8-13, 15-20, and 22-24 under 35
U.S.C. § 103(a) over the combinations of prior art of record, and we sustain
the rejections.
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DECISION
We affirm the Examiner’s decision rejecting claims 1-6, 8-13, 15-20,
and 22-24.
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) (2011).
AFFIRMED

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