Ex parte Kipp

• Docket Number: Appeal 2023-003136,Application 17/375,747,Technology Center 2400
• Decision Date: 19 January 2024
• Parties: Ex parte NEIL KIPP, MARTIN TRANG, and JIANG XU
• Court: Patent Trial and Appeal Board

1

Ex parte NEIL KIPP, MARTIN TRANG, and JIANG XU

Appeal No. 2023-003136

Application 17/375,747

Technology Center 2400

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 19, 2024

FILING DATE: 07/14/2021

Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and LARRY J. HUME, Administrative Patent Judges.

DECISION ON APPEAL

FRAHM, Administrative Patent Judge.

STATEMENT OF THE CASE

Introduction

Appellant^[1] appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-34, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Appellant's Disclosed Invention

The disclosed invention, entitled "METHOD AND APPARATUS FOR CAPACITY EXCHANGE" (see Title), relates to systems, apparatuses and methods for "fault tolerant network storage and delivery of recorded content." (Spec. ¶ 4). Appellant's invention addresses the possibility for network digital video recorders (nDVRs) to become overburdened and/or fail. (Spec. ¶ 2). Appellant's invention uses utilization information of the components in the nDVR to determine where to record. (Spec. ¶ 4). Claims 1 (method), 12 (apparatus), 23 (method) and 30 (apparatus) are independent. (Appeal Br. 10-17).

Exemplary claim 1 under appeal reads as follows:

1. A method comprising:

determining, by a first network digital video recorder (nDVR), a first utilization associated with the first nDVR;

receiving, by the first nDVR, information indicating a second utilization associated with a second nDVR;

storing, by the first nDVR and based on the first utilization and the second utilization, one or more content segments; and

causing output of the stored one or more content segments.

Appeal Br. 10, Claims App. (emphases added).

The Examiner's Rejections

The Examiner rejected claims 1-3, 5, 7-14, 16, 18-26, 29-31, and 34 under 35 U.S.C. § 102(a)(1) as being anticipated by Rementilla et al. (US 2018/0248948 A1; published Aug. 30, 2018) (hereinafter, "Rementilla"). (Final Act. 4.)

The Examiner rejected claims 4 and 15 under 35 U.S.C. § 103 as being unpatentable over the combination of Rementilla and Beaty et al. (US 2019/0268631 A1; published Aug. 29, 2019) (hereinafter, "Beaty"). (Final Act. 11.)

The Examiner rejected claims 6 and 17 under 35 U.S.C. § 103 as being unpatentable over the combination of Rementilla and Hasek et al. (US 2018/0359517 A1; published Dec. 13, 2018) (hereinafter, "Hasek"). (Final Act. 11.)

The Examiner rejected claims 27 and 32 under 35 U.S.C. § 103 as being unpatentable over the combination of Rementilla and Milne et al. (US 9,712,861 B1; issued July 18, 2017) (hereinafter, "Milne"). (Final Act. 12.)

The Examiner rejected claims 28 and 33 under 35 U.S.C. § 103 as being unpatentable over Rementilla and Gan et al. (WO 2007/125461 A1; published Nov. 8, 2007). (Final Act. 14.)

Principal Issue on Appeal

Based on Appellant's arguments in the Appeal Brief (Appeal Br. 4-8) and the Reply Brief (Reply Br. 2-6), the following principal issue is presented on appeal: ^[2]

Did the Examiner err in rejecting claim 1 because the Examiner fails to show that Rementilla discloses, expressly or inherently, each and every limitation and element of claim 1 including disputed limitation "receiving, by the first nDVR, information indicating a second utilization associated with a second nDVR";

as recited in representative independent claim 1?

ANALYSIS

We have reviewed the Examiner's rejections (Final Act. 4-15) in light of Appellant's arguments in the briefs (Appeal Br. 3-9; Reply Br. 2-7) that the Examiner has erred, as well as the Examiner's response to Appellant's arguments (Ans. 3-7). We disagree with Appellant's contentions. With regard to representative claim 1, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 4-5), and (2) the reasons set forth by the Examiner in the Examiner's Answer (Ans. 3-6) in response to Appellant's Appeal Brief.^[3]We concur with the findings made by the Examiner, and we provide the following for emphasis.

Appellant argues "Rementilla appears to teach a system with only one network DVR, such as the media server 160. See e.g., Rementilla at FIG. 1." Appeal Br. 5. Although Appellant concedes "While the multimedia device 110 of Rementilla is described as delivering content to client devices over a local area network (see Rementilla at paragraph [0025])" (Appeal Br. 5), Appellant further argues "Rementilla does not describe the multimedia device 110 of Rementilla as a network DVR and merely having a local area network connection does not define a DVR as a network DVR." Appeal Br. 5-6. However, Appellant also concedes "Rementilla describes that the media server 160 may be a network DVR" (Appeal Br. 6), while contending "the multimedia device 110 of Rementilla cannot be considered to be a network DVR using Rementilla's own definition of network DVR." Id.

Anticipation of a patent claim requires a finding that the claim at issue "reads on" a prior art reference. See Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999). We are not persuaded by Appellant's arguments because the argued "second nDVR" reads on Rementilla's multimedia device 110. (Final Act. 4-5.) Rementilla's multimedia device 110 is described as a "digital video recorder (DVR)" (see Rementilla ¶ 24), whose multimedia content is delivered over a variety of possible "networks" (see Rementilla ¶ 25, listing LAN, WLAN, PAN, WAN, etc. as network examples). (Final Act. 4-5.) Rementilla further describes the multimedia device 110, may "wirelessly deliver multimedia content." (see Rementilla ¶ 25; Final Act. 4-5.) We are also not persuaded the Examiner erred in reading the claim limitation "second nDVR" on Rementilla's multimedia device 110 because as shown in Figure 1, Rementilla's multimedia device 110 is connected to a provider network 140. (See Rementilla Fig. 1). Thus, Appellant's arguments that Rementilla's DVR 110 is not a network DVR are not persuasive. (Appeal Br. 5-6).

Furthermore, Appellant does not point to any portion of the Specification that defines the claim term "second nDVR" in a way that excludes the Examiner's broadest reasonable interpretation. (See Ans. 5).

Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Accordingly, on this record, we are not persuaded that the Examiner's claim interpretation is overly broad or unreasonable, especially considering that Appellant has not provided an explicit limiting definition for the claim term "second nDVR" in the claims or in the Specification. Therefore, on this record, we are not persuaded that the Examiner's reading of the claim term "second nDVR" on Rementilla's DVR 110 is in error.

In view of the foregoing, Appellant's arguments as to claim 1, concerning the individual shortcomings in the teachings of Rementilla, are not persuasive that the Examiner erred in its anticipation rejection of representative claim 1. Accordingly, we sustain the anticipation rejection of representative independent claim 1 and associated grouped claims 2, 3, 5, 7-14, 16, 18-26, 29-31, and 34 under the same rejection. See 37 C.F.R. §41.37(c)(1)(iv)(2019).

We also sustain the four separate obviousness rejections of claim pairs 4 and 15; 6 and 17; 27 and 32; and 28 and 33 because Appellant advances no substantive separate arguments regarding these claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).

CONCLUSION

In view of the foregoing, we sustain each of the Examiner's rejections.

DECISION SUMMARY

In summary:

Claim(s) Rejected

35 U.S.C. §

Reference(s)/Basis

Affirmed

Reversed

1-3, 5, 7-14, 16, 18-26, 29-31, 34

102(a)(1)

Rementilla

1-3, 5, 7-14, 16, 18-26, 29-31, 34

4, 15

103

Rementilla, Beaty

4, 15

6, 17

103

Rementilla, Hasek

6, 17

27, 32

103

Rementilla, Milne

27, 32

28, 33

103

Rementilla, Gan

28, 33

Overall Outcome

1-34

TIME PERIOD FOR RESPONSE

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). See 37 C.F.R. § 41.50(f).

AFFIRMED

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^[1] We use the word "Appellant" to refer to "applicant" as defined in 37 C.F.R. § 1.42. "The word 'applicant' when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46" 37 C.F.R. § 1.42(a) (2020). Appellant identifies the real party in interest as Comcast Cable Communications, LLC. (Appeal Br. 1).

^[2] Appellant argues the patentability of independent claim 12 for the same reasons presented for independent claim 1 (see Appeal Br. 4, 8; Reply Br. 6-7) and does not present any separate arguments for independent claims 23 and 30, nor dependent claims 2-11, 13-22, 24-29, and 31-34. Therefore, we select independent claim 1 as representative of the group of claims 1-3, 5, 7-14, 16, 18-26, 29-31, and 34, rejected as anticipated by Rementilla. Therefore, our decision will only address the merits of claim 1. See 37 C.F.R. §41.37(c)(1)(iv).

^[3] See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) ("As an initial matter, the PTAB was authorized to incorporate the Examiner's findings."); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB's findings, although it "did not expressly make any independent factual determinations or legal conclusions," because it had expressly adopted the examiner's findings).

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