11098612 (B.P.A.I. Jun. 20, 2012)

Ex Parte Quigley

Board of Patent Appeals and InterferencesJun 20, 2012

11098612 (B.P.A.I. Jun. 20, 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. 11/098,612 04/05/2005 Thomas J. Quigley 1875.6090001 9037 26111 7590 06/21/2012 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER CHOU, ALBERT T ART UNIT PAPER NUMBER 2471 MAIL DATE DELIVERY MODE 06/21/2012 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 THOMAS J. QUIGLEY ____________ Appeal 2010-002467 Application 11/098,612 Technology Center 2400 ____________ Before ERIC S. FRAHM, JASON V. MORGAN, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002467 Application 11/098,612 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner‟s Final Rejection of claims 1 and 3-35. Claim 2 has been cancelled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. Appellant’s Invention Appellant invented a method and apparatus for downloading content, such as video on demand content. According to Appellant, the claimed invention downloads content via channel bonding in a communication system, wherein a central entity transmits the content to remote devices via multiple channels. The central entity can transmit portions of the content via different channels based on the relationship between the channels or the capabilities of the corresponding remote device. See Spec. ¶ [0007]. Illustrative Claim 1. A method to provide an item of content to a remote device of a communication system, comprising: (a) receiving a request to access the item of content from the remote device; (b) accessing the item of content from one or more data bases; (c) storing a relationship between a first channel of the communication system and a second channel of the communication system; and (d) transmitting a first portion of the item of content and a second portion of the item of content to the remote device via the first channel and the second channel, based on the relationship. Prior Art Relied Upon Pullen US 2005/0135419 A1 June 23, 2005 (effectively filed Sept. 9, 2003) Appeal 2010-002467 Application 11/098,612 3 Rejection on Appeal Claims 1 and 3-35 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Pullen. Ans. 4-10. Examiner’s Findings and Conclusions The Examiner finds that an ordinarily skilled artisan would have recognized that one or more media serves, storage devices, and applications (i.e., media content databases, files, libraries, etc. all of which are generally stored upon the storage devices) are necessarily present either in Pullen‟s system internally or, if externally, accessible by Pullen‟s system such that the multimedia content service provider may provide a full spectrum of media content distribution services to its subscribers. Ans. 13. Put another way, the Examiner finds that without having the existence or installation base of media servers, storage devices, and applications (i.e., media content databases, files, libraries, etc.) in Pullen‟s system or external to Pullen‟s system, the network subscribers would be unable to access, browse, and receive the full spectrum of media content services from the subscribing network service providers. Id. Therefore, the Examiner finds that an ordinarily skilled artisan would have recognized that one or more databases are inherent in Pullen‟s system. Ans. 13. Appellant’s Contentions Appellant contends that “accessing [an] item of content „from one or more databases [sic]‟ as recited in independent claims 1, 10, and 19 is not necessarily present in Pullen.” App. Br. 11 (emphasis in original). In particular, Appellant argues that Pullen merely discloses multimedia content. Id. (citing to Pullen ¶ [0025]). Appellant alleges that while Pullen‟s Appeal 2010-002467 Application 11/098,612 4 multimedia content may be accessed from one or more databases, such a finding is insufficient to establish inherency. App. Br. 11 (emphasis in original). II. ISSUE The dispositive issue before us is whether the Examiner erred in finding that Pullen describes “accessing the item of content from one or more databases [sic][,]” as recited in independent claim 1, and similarly recited in independent claims 10 and 19? III. ANALYSIS Claims 1, 10, and 19 Based on the record before us, we find error in the Examiner‟s anticipation rejection of independent claim 1, which recites, inter alia, “accessing the item of content from one or more databases [sic][.]” Independent claims 10 and 19 recite a similar claim limitation. At best, we find that Pullen discloses a communication management system that manages the exchange of multimedia media content to a plurality of remote communications nodes, which in turn are configured to distribute such content to prospective subscribers. See Figure 1; ¶¶ [0025] and [0028]. However, we find that Pullen is silent with respect to whether the communication management system or the remote communications nodes access the multimedia content from one or more databases, as claimed. While Pullen‟s communication management system may be capable of accessing multimedia content from one or more databases, mere probabilities and possibilities fall short of demonstrating that Pullen Appeal 2010-002467 Application 11/098,612 5 necessarily describes the claimed “accessing” step as required for an anticipation rejection. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Consequently, we find that the Examiner improperly relied upon Pullen to describe the disputed claim limitation. It follows that the Examiner has erred in finding that Pullen anticipates independent claims 1, 10, and 19. Claims 3-9, 11-18, and 20-35 Since dependent claims 3-9, 11-18, and 20-35 incorporate by reference the same disputed claim limitation as their underlying base claim, we find that the Examiner erred in rejecting these claim for the same reason set forth in our discussion of independent claims 1, 10, and 19. IV. NEW GROUND OF REJECTION We enter the following new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 35 U.S.C. § 103(a) Rejection—Pullen Claims 1, 10, and 19 At the outset, we adopt the Examiner‟s uncontested findings with respect to independent claims 1, 10, and 19. See Ans. 5-6. With respect to the claimed accessing multimedia content “from one or more databases [sic][;]” Pullen discloses an embodiment wherein at least one remote communications node is a cable modem that provides one or more services (e.g., television broadcasts, pay-for-view, file data transfer, time-delayed media feeds, etc.) to prospective subscribers. ¶ [0028]. Based on this cited disclosure, we find that an ordinarily skilled artisan would have readily appreciated that Pullen‟s communication management system and corresponding remote communications nodes are capable of providing Appeal 2010-002467 Application 11/098,612 6 content distribution services to prospective subscribes by accessing requested multimedia content generally stored in one or more databases. Put another way, we find that adding one or more databases that generally store multimedia content to Pullen‟s communication management system would not have been uniquely challenging or otherwise beyond the level of an ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). As a result, we find that Pullen renders the subject matter of independent claims 1, 10, and 19 unpatentable. Claims 3-9, 11-18, and 20-35 We adopt the Examiner‟s uncontested findings with respect to dependent claims 3-9, 11-18, and 20-35. See Ans. 6-10. V. CONCLUSIONS 1. The Examiner has erred in rejecting claims 1 and 3-35 as being anticipated under 35 U.S.C. § 102(e). 2. We enter a new ground of rejection against claims 1 and 3-35 as being unpatentable under 35 U.S.C. § 103(a). VI. DECISION We reverse the Examiner‟s decision to reject claims 1 and 3-35. However, we newly reject claims 1 and 3-35 as being unpatentable under 35 U.S.C. § 103(a). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise Appeal 2010-002467 Application 11/098,612 7 one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 C.F.R. § 41.50(b) ELD