Ex Parte Watanabe

Board of Patent Appeals and Interferences

Aug 6, 2012

09950849 (B.P.A.I. Aug. 6, 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.
09/950,849 09/12/2001 Koichiro Watanabe 09812.0166-00000 2690
22852 7590 08/06/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HOSSAIN, FARZANA E
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
08/06/2012 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 KOICHIRO WATANABE
____________________

Appeal 2011-0032721
Application 09/950,849
Technology Center 2400
____________________

Before JEAN R. HOMERE, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sony Corp. (App. Br. 3.)

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 5, and 7. Claims 2, 4, 6, and 8-20 have been
canceled. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for providing a user with
streaming music and video data requested over the Internet. (Spec. 1, ll. 5-7.)
In particular, the streaming content is partitioned into a plurality of data
segments including an advance playback segment. (Fig. 1, Spec. 6, l.
17- Spec. 7, l. 21.) Upon receiving a request from the user for streaming
content, the playback segment thereof is provided to the user while a
subsequent segment is being recorded on the user device such that each
playback segment and each subsequent segment being recorded on the user
device have the same start time. (Spec. 20, l. 22- spec. 21, l. 25.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. An information providing method for providing
desired streaming content form an information
providing apparatus to an information receiving
apparatus based on a user operation, comprising;

distributing first streaming content to the information
receiving apparatus before the user operation for
desired streaming content;

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recording the first streaming content on the
information receiving apparatus before the user
operation for desired streaming content;

transmitting a request message for the desired
streaming content based on the user operation from
the information receiving apparatus to the information
providing apparatus;

distributing second streaming content that is part of
the desired streaming content in response to the
request message;

playing the first streaming content while the second
streaming content is recorded on the information
receiving apparatus and

playing the second streaming content while a third
streaming content is recorded on the information
receiving apparatus,

wherein the second streaming content is recorded after
the first streaming content is completely recorded and
the third streaming content is recorded after the
second streaming content is completely recorded, a
start time for recording the second streaming content
is the same as a start time for playing the first
streaming content, the second streaming content is
played continuously after the first streaming content,
and the first streaming content is distributed to the
information receiving apparatus periodically.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Viswanathan US 5,936,659 Aug. 10, 1999
Kermode US 6,018,359 Jan. 25, 2000
Arsenault US 6,701,528 B1 Mar. 2, 2004

Rejection on Appeal
The Examiner rejects claims 1, 3, 5, and 7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kermode, Viswanathan, and
Arsenault.
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the principal Brief, pages 11-22.
Representative Claim 1
Dispositive Issue: Has Appellant shown that the Examiner erred in
finding that the combination of Kermode, Viswanathan, and Arsenault
teaches or suggests a start time for recording a second streaming content
being the same as the start time for playing a first streaming content, as
recited claim 1?
Appellant argues that the Examiner erred in finding that proposed
combination of references teaches or suggests the disputed limitations
emphasized above. In particular, Appellant argues that because Kermode
discloses downloading two successive segments at the same time, Kermode
does not teach a recording start time of a second content segment being the
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same as the playback start time of a first segment. (App. Br. 11.) Further,
Appellant argues that Viswanathan’s disclosure of downloading a
subsequent segment when it is halfway through consuming a current
segment does not cure the noted deficiencies of Kermode. (Id. at 11-12.)
Similarly, Appellants argue that Arsenault’s disclosure of playing back a
pre-stored video while segment while subsequent segments are received and
recorded in parallel does not remedy the noted deficiencies of Kermode. (Id.
at 12-15.)
In response, the Examiner finds that Kermode discloses playing a
current streaming content while a subsequent streaming content is being
recorded. (Ans. 12.) Further, the Examiner finds that Viswanathan discloses
recording a subsequent content after a preceding content is completely
recorded. (Id. at 12.) Additionally, The Examiner finds that Arsenault
discloses the same start time to play a current segment as well as to record
new ones. (Id.) Consequently, the Examiner finds that the disclosures of the
cited references are properly combined to teach the disputed limitations. (Id.
at 12-13.)
On the record before us, we agree with the Examiner’s finding and
ultimate conclusion of obviousness. In particular, we find that the
disclosures of Kermode and Viswanathan of presenting a current segment
while new segments are being downloaded (Abstr.) teach or at least suggest
an overlap between the start times of a segment being played back and
another segment being recorded. Similarly, we find Arsenault’s disclosure of
contemporaneously playing back a pre-recorded segment and recording a
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new segment (col. 13, ll. 25-35) teaches or suggests the same start time or
substantially the same start time for such events. This suggestion is even
stronger in the particular case where the segments are of equal length. That
is, in order to minimize any delay or dead time between recording or
downloading a new segment and playing a pre-recorded segment of the same
length, the ordinarily skilled artisan would readily appreciate that such
events need to start at the same time. Consequently, we find unavailing
Appellant’ argument that the cited references are not properly combinable.
We are therefore satisfied that Arsenault’s disclosure sufficiently
complements Kermode and Viswanathan to thereby teach the disputed
limitations. It follows that Appellant has not shown error in the Examiner’s
rejection of claim 1.
Regarding claims 3, 5, and 7, Appellants substantially repeat the
same arguments presented for claim 1. (App. Br. 16-21.) As discussed
above, we find those arguments unpersuasive. Therefore, claims 3, 5, and 7
fall for the reasons set forth in our discussion above. See 37 C.F.R.
§ 1.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejections of claims 1, 3, 5, and 7 as set
forth above.

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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).

AFFIRMED

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