Realtime's Appeal Brief Under 37 C.F.R. 41€¦ · Patent Owner's appeal brief is due on April 21,...

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Reexam of U.S. Patent No. 7,161,506 Confirmation No.: 2572

FALLON, James J. Art Unit: 3992

Control No.: 95/000,479 Examiner: LEUNG, Christina Y.

Filed: May 28, 2009 Atty. Docket: 2855.002REX3

For: SYSTEM AND METHODS FOR DATA COMPRESSION SUCH AS CONTENT DEPENDENT DATA COMPRESSION

Realtime's Appeal Brief Under 37 C.F.R. § 41.67

Mail Stop "Inter Partes Reexam" Attn: Central Reexamination Unit Commissioner for Patents PO Box 1450 Alexandria, VA 22313-1450

Sir:

Pursuant to the Right of Appeal Notice mailed on January 6, 2011, Realtime Data, LLC,

(herein "Patent Owner"), in the above-captioned inter partes reexamination involving U.S.

Patent No. 7,161,506 ("the '506 Patent"), timely filed its Notice of Appeal on February 7, 2011,

from the final rejection of claims 1-5, 8, 9, 11, 17, 20-23, 27, 39, 43, 69-73, 79, 81, 82, 84-90, 96

and 98. The third-party requester, Blue Coat Systems, Inc., did not file a notice of cross-appeal,

though it had the ability to do so based on its proposed rejections regarding the LBX, French,

Sebastian, Franaszek, Lafe, and Reynar references that were not adopted. (RAN at 6-8.) This

appeal is therefore limited to issues raised herein. Patent Owner's appeal brief is due on April

21, 2011, (see 37 C.F.R. § 41.66(a)).

Patent Owner hereby timely files one electronic copy of this Appeal Brief, together with

the required fee set forth in 3 7 C.F .R. § 41.20(b )(2). If additional fees are necessary to prevent

abandonment of this appeal, then any such fees required therefore are hereby authorized to be

charged to the undersigned's Deposit Account No. 19-0036.

NetApp; Rackspace Exhibit 1008

- 2 - Reexam of U.S. Patent No. 7,161,506 Control No. 95/000,479

Table of Contents

I. Real Party in Interest. .......................................................................................................... 5 II. Related Appeals and Interferences ...................................................................................... 5 III. Status of Claims .................................................................................................................. 8 IV. Status of Amendments ........................................................................................................ 9 V. Summary of Claimed Subject Matter ................................................................................. 9

A. Independent Claim 1 ............................................................................................... 9 B. Independent Claim 69 ........................................................................................... 10 C. Independent Claim 86 ........................................................................................... 11

VI. Issues to Be Reviewed on Appeal. .................................................................................... 12 A. Ground 1 -Anticipation by U.S. Patent No. 6,253,264 to Sebastian ("Sebastian")

······························································································································· 12 B. Ground 2 - Anticipation by U.S. Patent No. 5,870,036 to Franaszek ("Franaszek")

······························································································································· 12 C. Ground 3 - Obviousness Over Sebastian in view ofFranaszek or U.S. Patent No.

5,951,623 to Reynar ("Reynar") ........................................................................... 12 D. Ground 4 - Obviousness Over Sebastian in view of"Data Compression

Procedures for Data Circuit Terminating Equipment Using Error Correction Procedures," CCITT Recommendation V.42 bis, 1990, ("CCITT V.42 bis") or Reynar ................................................................................................................... 12

E. Ground 5 - Obviousness Over Sebastian in view of U.S. Patent No. 5,167,034 to Mac Lean ("MacLean") ......................................................................................... 12

F. Ground 6 - Obviousness Over Sebastian in view of International Application WO 95/29437 to Kawashima ("Kawashima") ............................................................. 13

VIL Argument .......................................................................................................................... 13 A. Standard of Review ............................................................................................... 13 B. Summary of the Reexamination before the Central Reexamination Unit ............ 13

1. Proposed rejections based on LBX (Low Bandwidth X Extension, Protocol Version 1.0, X Consortium Standard) ........................................ 14

2. Proposed rejections based on French ........................................................ 14 3. Proposed rejections based on Sebastian .................... ._ .............................. 14 4. Proposed rejections based on Franaszek ................................................... 15 5. Proposed rejections based on Lafe ............................................................ 16 6. Proposed rejections based on Reynar ....................................................... 16 7. Summary of Reexamination before the CRU ........................................... 17

C. The Problem to Be Solved by the Present Invention ............................................ 17 D. Use of the Term "Analyzing" in the Specification ............................................... 18

1. Patent Owner is Allowed to be his Own Lexicographer ........................... 18 2. Patent Owner has Provided a Definition of"Analyzing" ......................... 19 3. Dr. Modestino's Declaration Under 37 C.F.R. § 1.132 ............................ 23 4. The CRU Has Misconstrued the Meaning of "Analyze" .......................... 24 5. The CRU Did Not Properly Consider Modestino's Declaration .............. 25

E. Grounds 1and2-Rejections of Claims 69, 70, 72, 73, 79, 81, 82, 84 and 85 Under 35 U.S.C. § 102(b) over Franaszek and Claims 1-5, 8, 9, 11, 17, 21-23, 43, 69, 72, 73, 79 and 81Under35 U.S.C. § 102(e) over Sebastian .......................... 26

Atty. Dkt. No. 2855.002REX3



1. Overview of Rejections ............................................................................. 26 2. Franaszek does not Disclose "Analyzing a Data Block" to "Identify One

or More Data Types of the Data Block," or "Analyzing said Data Block to Dete1mine a Type of said Data Block" ..................................................... 26

3. Sebastian does not disclose "Analyzing a Data Block" to "Identify One or More Data Types of the Data Block," or "Analyzing said Data Block to Determine a Type of said Data Block" ..................................................... 30

4. Conclusion ................................................................................................ 32 F. Ground 3 -Rejection of claim 20 under 35 U.S.C. § 103(a) Over Sebastian in

view of Franaszek or Reynar ................................................................................ 33 1. Overview of Rejection .............................................................................. 33 2. Sebastian in view of Franaszek or Reynar does not disclose "Analyzing a

Data Block of an Input Data Stream to Identify One or More Data Types of the Data Block" .................................................................................... 33

3. Conclusion ................................................................................................ 33 G. Ground 4-Rejection of claims 27 and 39 under 35 U.S.C. § 103(a) Over

Sebastian in view of CCITT V.42 bis or Reynar .................................................. 34 1. Overview of Rejection .............................................................................. 34 2. Sebastian in view of CCITT V.42 bis or Reynar does not disclose

"Analyzing a Data Block of an Input Data Stream to Identify One or More Data Types of the Data Block" ................................................................. 34

3. Conclusion ................................................................................................ 35 H. Ground 5 -Rejection of claim 82 under 35 U.S.C. § 103(a) Over Sebastian in

view ofMacLean .................................................................................................. 35 1. Overview of Rejection .............................................................................. 35 2. Sebastian in view of MacLean does not disclose "Analyzing said Data

Block to Detennine a Type of said Data Block" ...................................... 35 3. Conclusion ................................................................................................ 36

I. Ground 6-Rejection of claims 70, 71, 84-90, 96 and 98 under 35 U.S.C. § 103(a) Over Sebastian in view of Kawashima ................................................................. 36 1. Overview of Rejection .............................................................................. 36 2. Regarding claims 70, 71, 84 and 85, Sebastian in view of Kawashima does

not disclose "Analyzing said Data Block to Determine a Type of said Data Block" ....................................................................................................... 36

3. Regarding claims 86-90, 96 and 98, Sebastian in view of Kawashima does not Disclose "Determining Whether to Output said Data Block in Received Form or in a Compressed Form" or "Determining Whether to Compress Said Data Block with Content Dependent Data Compression Based on the Type of Said Data Block" ................................................... 37

4. A Person of Ordinary Skill Would Not Combine Sebastian and Kawashima ................................................................................................ 38

5. Conclusion ................................................................................................ 42 J. Conclusion ............................................................................................................ 43

VIII. Claims Appendix .............................................................................................................. 44 IX. Evidence Appendix ........................................................................................................... 52 X. Related Proceedings Appendix ......................................................................................... 53



- 4 - Reexam of U,S. Patent No. 7,161,506 Control No. 95/000,479

XI. Certificate of Service ........................................................................................................ 54



I. Real Party in Interest

The real party in interest in this principal brief on appeal is the patent owner Realtime

Data LLC, (Patent Owner). The Patent Owner is the assignee of record for the patent under

reexamination, U.S. Patent No. 7,161,506 ("the '506 patent"), attached as Exhibit A. The

original assignment for the priority filing for the '506 patent was recorded with the United States

Patent & Trademark Office on August 10, 2010 at reel 024812, frame 0268. The original

assignment establishing Patent Owner's ownership of the '506 patent is attached hereto as

Exhibit B..

JI. Related Appeals and Interferences

All prior and pending appeals, interferences or judicial proceedings known to Patent

Owner, Patent Owner's legal representatives, or assignee that may be related to, directly affect or

be directly affected by or have a bearing on the Board's decision in the pending appeal are listed

below. In addition, a summary of related Appeal Briefs for Reexam control numbers 95/000,464

and 95/000,478 is also presented below.

Reexaminations

.!' __ · __ .. ~--R __ -__ -__ -__ -_~---e_-_-_~_-_-;~_-_-_-_-_-_#_-_-_-,-,-,-.-.l_--.-_-_-_-_-_-_P_-_-_-_~_-_-_t_-_e_-_-_~_-_:t!·!·s·s#s·s·s·s-s_s_s_sJ.:-··---mm Titl;·--"'------m--------------------------·----·-·1··---·· ... ------m-- Status ··----1 - --~ .~ ' -------------'"~'" 99 88 ....................................... ,-______ t_ ____ t_t_('.._tt . ... _. ____________ ,,, .................................. ::$:: 2 . ... .............................. -.-.---.,,

j 90/009,428 t 6,601,104 ! System and Methods for Accelerated ! Decision affirming I I I Data Storage and Retrieval I Examiner's rejections ! !.......................... I I ! mailed 3/18/11 I l 95/000,464 6,624,761 1. ~~~~~~-:1~;s~~=1···15at~--C-~mpression J ~l~~c;;~J~~ff~aC _______ ..... ,

I I I Appeal Brief filed !

I I i 4/21/2011 ~ ~ ................................ .._.._.._ ........................ -.-.------------- ------------------------------------~·-·········· ...................................................................................... _____________________________ \.__________________________ ...... .._.._.._.._ ...... ,



r-----R~-~~;-~--li"····T······:p;f'~~t # ---m-------------m--------------Titl~-----------------... [ ------------st~-t~~----------------mml

P----~-~•,••••••••••••n••••••••••••~~ 222222 99888 •, -..-..-..-..-.-.-..-.-..-.-..--~'l.t _____________________ _.•••••••••••••••••••• ""' "'"'"'"'"'"'"''"'"'"'"'---.-----•••••••••••••••n••~ ! 95/000,466 f 7,321,937 I System and Methods for Accelerated Appeal Brief filed i i i Data Storage and Retrieval 10/26/2010

::I f

1

,! I ! Petition to ;erminate i reexam denied

1

951000,418 [ 1378§92 ~:,:~~1t~~=t naiilCO~press;on!~;~~~fea1 -:,.i I I Appeal Brief filed l i 4/21/2011 i

,.....1 -9-5;-o-oo-4s-6~· -6,.6o4J5_8 ______ 1 ___ s_Y:siei;;··---;~a--· Methods f~r----A~ce"ierate~frEof--o~~ied 3;291fT .. ,

11

,,,l

f 9~ 11 7, 714, 747-f~:~~~:~~~;;R~~~ and MOtJ;;;dS f oraerGra;;tiilg [ Request for Inter ! Pates Reexamination

951001,533 1,4i7;568 /lY~~:~~; A~e::;;:~ata-Feea1 f~tJ~~::i~~ -i ! date of 3/1111 granted .

---------------------------------------~--------------············· \ ............... ~'-'-'-'-'-''''"-----------------------------------··············· .................................. ~----------------------··4:

95/001,544 ! 7,400,274 \ System And Method For Data Feed i Decision to grant and ! ! l Acceleration And Encryption j non-final office ! ! ! i action issued 3/25/11 !

·····9·5/oo('s"iff"""T 7' 777,651 --s·y;t~~---·And ____ Meth~;;r--F or Data F ~-~d--rIPR:File<l-372-~720~1 I Acceleration And Encryption i Notlc~ .of Assignment [ i ; and Filmg Date ! i. i issued 3/29/2011 I

• ........................................................................ _!•--------------••••••••••••••••H••• ............................. -..•••••••••••••••-------------·-·················· \ ............................ _._••••----------\

Litigation r~ . .. .............................. -----------------------------------·········--·· ...................... ': ............... _. _____________________________________________ .. _ .......... .

! No. ! Case --------------------------------------··················-------------· ---······------------------l---§.!~!!!.~....................... -------l 1 j Realtime Data LLC dlb/a/ !XO v. Metropcs Texas, LLC, ! Pending I

f et al., No. 6: 1 Q.:.~~-:.Q_Q±2~:1~P. . .L:§:P: .. Iexas) ________ J _____________________________ ....................... _____ ---<

, 2 I Realtime Data LLC dlb/a/ !XO v. CME Group Inc., et t Pending l ! al., No. 6:10-cv-00424-LED (E.D. Texas) i 1

•··---3--···rR.~~ltime Data LLC J/f;7;;J"Jxcs~:--rh~~;~~-Re~ters rI>~~di~gHHHHH------------------··········---------1

I Corporation et al., No. 6:10-cv-00425-LED (E.D. ,. \ I~~ I

4 I Realti;;~--!5-:it~IIc-dibld!XO";:--Morgan Stanley--;-;·;z-:------ ---Pending············----------- ... l -···--······· --~~: ... ~_}.Q_:~.Y-00426-LED (~_:!?..:.I.~~-Ci~)___ ____ ..................... -----------------------------------········--------·

5 Realtime Data LLC d/b/a/ !XO v. Packeteer, Inc. et al., Dismissed

,__,__---+_N_o_: __ ~:.Q.~:~~:22.!_~_±::~E'.P .. (~_:P:..T ex.~as....._) __ 6 Rea/time Data LLC dlb/a/ !XO v. Thomson R;;;,/~;.; --1p~;;di;;g--

L ____________ __ r;__'?_!P9.'...<:!.£~.<!..1'! .. ~L.f!l., No. 6 :09-c~::QQI~}.::~E'.Q..(~_:P._:__________ ------------------------------··········




[~"-i!~~~~~6~;~:e~~:ii~~;L,1~,;-;;;1.~!:~;~=~= =- 1 ____ 8 ____ T_li-e--;;/{i;ne-15~;!a--iic~-~176/;~; iio 1'. cME Grou1;·7;;~::--·~1-----------Tfl~~-~<li;g----------------------------------------·1

! al., No. 6:09-cv-00327-LED (ED. Texas) ! I 9 ·1 _;:~~laf~gr;;;;~JJ;~~:;~:;.~;~~~~e~!t~(:~~~6~-~if:;i;~; I Dismissed ................... --------------------,

~i(Yl 11wmson Reuters Corporation ;:--:R;;/{i;;e--Data,---zzc ........... T'riT~~i~~e~f-- ........... .. I D1Bl4 IXO, No. 2:09-cv-7868-RMB (S.D.N.YJ I

····1·1···--r··Re--;;/{i;ne.ij~;ta:--iic;·dJb/a D(O v. ClvfE o;:~~P· y;;~::--·;1··----------f--Pe;(ii;g _____________________________ _ l 7 al. (II), No. 6:10-cv-246 (N.D. Texas filed May 11, I J 2010) -~--.................................... ________________________________________________________ ~~r-1 -----~

12 l Realtime Data LLC d/b/a/ LYO v. Thomson Reuters I Pending ............... ------------------!

l Corporation et al. (JI), No. 6:10-cv-247 (N.D. Texas .1,, i,,

j filed May 11, 2010) ·---i3--··r·kea!tF;;ie ... bai;;:·-zi~c:--d7h1a 1xo v. Aforgan-:§r~;;re-y:·--e·~;··-----------r?e~<li~g-----------------------------------

1 al. (JI), No. 6:10-cv-248 (N.D. Texas filed May 11, 1,,

2010) ~-~-~---................................................................................... -_-___________________________________________ ._ ................... ~.~~------... ~'-'-'-'-'-'-'-'-'-"'"'''"·"·"---------------·

AQ_p_eal Brief Summary

The following related three cases are currently on appeal to the Board .

...---------~-'"'""'"""""'"""'""""""'''·~--......,,--------...,.,.,.,.-----·-------------------------.

Reference/ Rccxam # 95/000,464 Pat. No. 6,624,761

/Claims 2855.002RE:X2

Reexam # 95/000,4 79 Pat. No. 7,161,506 2855.002REX3

Reexam # 95/000A78 l l~at~ N·oo 7 ,378,992 i

2855.002REX5

1-----'""""""'""""""' ----------------------------·~~---1---------+-----·-----------------Franaszek 1-3 and 7 69,70,72,73,79,81,

82, 84 and 85

;-.-------~(RA __ N_""'-'-P-"-) _____________________ SRAN ~!7) l Sebastian 1-3 and 7 1-5, 8, 9, 11, 17,21-~ ~ ! ! 23,43,69, 72, 73, 79 ~ ~ arid 81

1, 3, 7, 9, 11-13, 18, 20, 21, 26, 28 and 32

(RAN ~;7) 12-15, 18,20,21 and 26

I I (RAN f8) (RAN '!6) I (RAN ~8) ,___ ______ .....+-...:.. ...................... .._.._.._.._..._..._.._.._.._..._.._.._.._.._.._.._.._,..,._.._.._.._ .. ,.,.,.,. .......... ~..........ry~-~~----~---""--'----.... .._.._.._.._.._.._.._.._.._.._..._.._..._.._.,."'-..._ ....

l -K-ar_i _____ ~:~_:_d_..~~._9:,,__ ___ --+-·--~-------~ Park in view of Whiting

17 and 21 I ~ :

.............. _____ ............_.,,,__(RA_·---~-~-LQ) __________________________ ,__,,,_ _______ _..__ _____ . ___________________ J




~---~-------~, -·----------------------------------------~

/000,479 I Reexam # 95/000,478 -------------------------------------------i----------------------------~-

Reexam # 95 Reference/ l Reexam # 95/000,464 Pat. No. 6,624,761 Pat. No. 7,16 1,506 1 Pat. No. 7,378,992

/Claims 2855.002REX2 2855.002RE X3 2855.002REX5 ~~~~~~~~~~~~~~~~~~~~~~~~~~-~~

Seroussi in view of 17 and 21 Whiting

(RANYll) ........................ .._.._.._.._.._.._.._.._.._.._ .._.._.._.._.._.._..._..._.._.._-.._-.._-.,,,._.._.._.._,,,,_.._ ... ~.._~,."'""'"~

Sebastian in view l 20 of Franaszek or Reynar (RAN~8) .................... .._.._.._.._.._.._.._.._.._.._..._..._.,.,.,.,.,."'"'"''''

Sebastian in view 27 and 39 of CCITT V.42 or Reynar (RAN~9) .......... .._.._.._.._.._.._.._.._.._.._.._....._.._.._.,.,.,. ... ,,,,,,~~ Sebastian in view 82 ofMacLean

(RAN i-110) Sebastian in view ------------------------------110, 71, 84-90,

of Kawashima ! 98 ! ! !

I (RAN 4fll) French

I I r--------------------------------- "-"-"-"-"-"-"-"-'>""'-"-"-'""""""'''~,

I . Franaszek in view ! of Montville or !

~Rao

96 and 33 and 36

------------------------- __ t~_N--"-ii_l 2"""")---~ 33 and 36 ~

(RAN~9) I ---~1~0-, -19~, ~;f~

(RAN'i!lO) - .. ......._.._ .. .._.._.._.._.._.._.._.._.._.._.._.._.._,,,,.._.._.._,,.,.,,,, '~

! ! Sebastian in view ! !

of Montville or ! !

27

IIL Status of Claims

Claims 1-9, 11, 16, 17, 20-23, 27, 39, 41-43, 69-73, 79, 81, 82, 84-90, 96 and 98 of the

'506 patent are currently pending and subject to reexamination. Claims 1, 69 and 86 are

independent claims. The Examiner found claims 6, 7, 16, 41 and 42 to be patentable.1 Claims 1-

5, 8, 9, 11, 17, 20-23, 27, 39, 43, 69-73, 79, 81, 82, 84-90, 96 and 98 currently stand rejected.

1 Though entitled to do so, Third Party Requester did not cross-appeal Examiner's finding of patentability of these claims.




Patent Owner appeals all of the rejections of each of claims 1-5, 8, 9, 11, 17, 20-23, 27, 39, 43,

69-73, 79, 81, 82, 84-90, 96 and 98.

IV.. Status ofAmendments

Patent O\lmer has not filed any amendments to the clairns or the specification.

V.. Summary of Claimed Subject Matter

A. Independent Claim 1

Claim 1 is directed towards a method of data for compressing data based on an analysis

of data blocks including content independent data compression and content dependent data

compression. If a data type of the data block is identified then content dependent data

compression is performed. If the data type is not identified then data compression with a single

data compression encoder is performed. Support for claim 1 in the specification of the '506

patent is listed in the following table. However, every instance where the claim term, element, or

limitation is described in the specification is not listed, as such citation is not required and would

be inefficient. These exemplary citations are not an admission or disclaimer of patent scope.

-i:JiniHiJN1\];;q:::::;::::::::::::::::::::::::]:::::::::::::::::]:::::::::::::::::]]\!:::::::::;::::::;:::::::::::::::::::::t :~faJ!iilfJi~:::t.tU#~lt.iji§ijJ.Ji:::]]j A method for compressing data, comprising the steps of: Abstract; 3 :49-61;

18:15-18; 21 :11-14; 24:3-8; Figure 14A-D, #1400-#1448; Figures 16A-D, #1600-#1648; Figures 18A-D, #1800-#1850

analyzing a data block of an input data stream to identify one or more Abstract; 18:21-34; data types of the data block, 21:15-26; 24:9-21




the input data stream comprising a plurality of disparate data types; Abstract; 18:21-34; 21:15-26; 24:9-21

performing content dependent data compression; if a data type of the 18:29-42; 22:24-29; data block is identified; 25:22-28 performing data compression with a single data compression encoder, 18:34-39; 21:25-28; if a data type of the data block is not identified. 24:21-24

B. Independent Claim 69

Claim 69 is directed towards a method of data compression including receiving an

uncompressed data block and analyzing the data block to determine a data type of the data block.

If an encoder is associated with the type of identified data then that encoder is used, if the

encoder is not associated with the type of data, then a different encoder is used. Support for

claim 69 in the specification of the '506 patent is listed in the following table. However, every

instance where the claim term, element, or limitation is described in the specification is not

listed, as such citation is not required and would be inefficient. These exemplary citations are

not an admission or disclaimer of patent scope.

:::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::J]:]::::rnrnrn;:;J:::::::::J:J:J]:::::•1.:::111:::::J:J:J::::::::::::::::::::]:::]:]:]:::]::::::::;:::::::::J::::J:?@ttt>J:: >]mt11~::1~1m;~s.b.aJ]:]J A method comprising: Abstract; 3:49-61;

18:15-18; 21 :11-14; 24:3-8; Figure 14A-D, #1400-#1448; Figures 16A-D, #1600-#1648; Figures 18A-D, #1800-#1850

receiving a data block in an uncompressed form, said data block being included in a data stream; analyzing said data block to determine a type of said data block; and

compressing said data block to provide a compressed data block, wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders,

6:58-59; 14:54-57; 15:28-30; 16:9-11 Abstract; 18:21-34; 21:15-26; 24:9-21 18:29-42; 22:24-29; 25:22-28 18:29-42; 22:24-29; 25:22-28




else compressing said data block with a data compression encoder.

C. Independent Claim 86

18:34-39; 21 :25-28; 24:21-24

Claim 86 is directed towards a method of data compression including receiving a data

block and determining, based on analysis of the data, whether to output the data block in

received form or a compressed form. Support for claim 86 in the specification of the '506 patent

is listed in the following table. However, every instance where the claim term, element, or

limitation is described in the specification is not listed, as such citation is not required and would

be inefficient. These exemplary citations are not an admission or disclaimer of patent scope.

A method comprising: :::;:]]]lll.J~:::s.~::==::==;~ffif~~~~*~:::rn::]] Abstract; 3:49-61; 18:15-18; 21:11-14; 24:3-8; Figme 14A-D, # 1400-# 144 8; Figures 16A-D, #1600-#1648; Figures 18A-D, #1800-#1850

receiving a data block, wherein said data block is included in a data 6:58-59; 14:54-57; stream; 15:28-30; 16:9-11 determining \Vhether to output said data hlock in received form or in a Figure lOb, #128-#140; compressed form; and Figure 12, #1206-#1214;

14:8-11 outputting said data block in received form or said compressed form based on said determination, wherein outputting said data block in said compressed fonn comprises determining whether to compress said data block \Vith content dependent data compression based on the type of said data block or to compress said data block with a single data compression encoder,

Figme lOb, #132 and #140; Figure 12, #1208 and #1214; 18:29-42; 22:24-29; 25:22-28; 18:34-39; 21 :25-28; 24:21-24




VL Issues to Be Reviewed on Appeal

Six grounds of rejection remain in this reexamination proceeding.

A. Ground 1 - Anticipation by U.S. Patent No. 6,253,264 to Sebastian ("Sebastian'?

Whether claims 1-5, 8, 9, 11, 17, 21-23, 43, 69, 72, 73, 79 and 81 were rejected properly

under 35 U.S.C. § 102(e) as being anticipated by Sebastian.

B. Ground 2 - Anticipation by U.S. Patent No. 5,870,036 to Franaszek ("Franaszek'?

Whether claims 69, 70, 72, 73, 79, 81, 82, 84 and 85 were rejected properly under 35

U.S.C. § 102(b) as being anticipated by Franaszek.

G Ground 3 - Obviousness Over Sebastian in view of Franaszek or U.S. Patent No. 5,951,623 to Reynar ("Reynar'?

Whether claim 20 was rejected properly under 35 U.S.C. § 103(a) as obvious over

Sebastian in view of Franaszek or Reynar.

D. Ground 4 - Obviousness Over Sebastian in view of "Data Compression Procedures for Data Circuit Terminating Equipment Using Error Correction Procedures," CC/TT Recommendation V.42 bis, 1990, ("CC/TT V.42 bis'? or Reynar

Whether claims 27 and 39 were rejected properly under 35 U.S.C. § 103(a) as obvious

over Sebastian in view of CCITT V.42 bis or Reynar.

E, Ground 5 - Obviousness Over Sebastian in view of U.S. Patent No. 5,167,034 to MacLean ("MacLean'?

Whether claim 82 was rejected properly under 35 U.S.C. § 103(a) as obvious over

Sebastian in view of MacLean.




F, Ground 6 - Obviousness Over Sebastian in view of International Application WO 95129437 to Kawashima ("Kawashima'?

Whether claims 70, 71, 84-90, 96 and 98 was rejected properly under 35 U.S.C. § 103(a)

as obvious over Sebastian in view of Kawashima.

VII. Argument

A. Standard of Review

The Examiner determines patentability "on the totality of the record, by a preponderance

of the evidence." Ex parte Frye, Appeal No. 2009-6013, at *8-9 (B.P.A.I. Feb. 26, 2010)

(precedential opinion). The Board reviews the Examiner's rejections "for error based upon the

issues identified by appellant, and in light of the arguments and evidence produced thereon." Id

Further, the Board "reviews particular finding(s) contested by an appellant anew in light of all

the evidence and argument on that issue." Id at * 10. The Office bears the burden of showing

that the claims are unpatentable. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985).

Therefore, the Examiner must establish by a preponderance of the evidence that the rejected

claims in the '506 patent are unpatentable over the cited art. Because the preponderance of the

evidence favors Patent Owner's positions, the rejections should be reversed and the challenged

claims confirmed.

B. Summary of the Reexamination before the Central Reexamination Unit

Requester set forth six alleged substantial new questions of patentability ("SNQs") over

eight references on May 28, 2009. Commensurate with the alleged SNQs, Requester proposed

the following rejections:




1. Proposed rejections based on LBX (Low Bandwidth X Extension, Protocol Version 1.0, X Consortium Standard)

• Claims 1, 2, 5, 9, 11, 17, 20, 23, 69, 72, 73, 79, 81, 86, 89, 90, 96 and 98 are anticipated under 35 U.S.C. § 102 by LBX.

'II> Claims 1, 69 and 86 are unpatentable under 35 U.S.C. § 103(a) as being obvious over LBX in view of Realtime's admissions.

• Claims 3 and 4 are unpatentable under 35 U.S.C. § 103(a) as being obvious over LBX in view of Kawashima.

• Claims 9, 81,and 98 are unpatentable under 35 U.S.C. § 103(a) as being obvious over LBX in view of:

o LBX, or o Images.

• Claim 16 is unpatentable under 35 U.S.C. § 103(a) as being obvious over LBX in view of:

o Images, or o O'Brian, or o Craft.

• Claim 20 is unpatentable under 35 U.S.C. § 103(a) as being obvious over LBX in view of CCITT V.42 bis.


o Futato, or o Aakre.

• Claims 27, 39, 70, 71, 84, 85, 87 and 88 are unpatentable under 35 U.S.C. § 103(a) as being obvious over LBX in view of:

o Kawashima, or o French, or o CCITT V.42 bis.


o Kawashima, or o French.

2. Proposed rejections based on French

• Claims 69-73, 79, 81, 84-88, 90, 96 and 98 are anticipated under 35 U.S.C. § 102 by French.

• Claims 69 and 86 are unpatentable under 35 U.S.C. § 103(a) as being obvious over French in view ofRealtime's admissions.

3. Proposed rejections based on Sebastian

• Claims 1 and 69 are anticipated under 35 U.S.C. § 102 by Sebastian.




& Claims 1 and 69 are unpatentable under 35 U.S.C. § 1 03(a) as being obvious over Sebastian in view ofRealtime's admissions.

$ Claims 2-6, 8-9, 11, 17, 21-23, 41-43, 72-73, 79 and 81 are anticipated under 35 U.S.C. § 102 by Sebastian.

!!' Claim 16 is unpatentable under 35 U.S.C. § 103(a) by Sebastian in view of: o O'Brien '998, or o Craft or ITU T81, or o ITU T263.

~ Claim 20 is unpatentable under 35 U.S.C. § 103(a) by Sebastian in view of: o Franaszek, or o Reynar.

e Claims 27 and 39 are unpatentable under 35 U.S.C. § 103(a) by Sebastian in view of:

o CCITT V.42 bis, or o Reynar.

e Claims 70, 71, 84-90, 96 and 98 are unpatentable under 35 U.S.C. § 103(a) by Sebastian in view of:

o CCITT V.42 bis, or o Kawashima.

e Claim 82 is unpatentable under 35 U.S.C. § 103(a) by Sebastian in view of McLean.

e Claim 86 is unpatentable under 35 U.S.C. § 103(a) by Sebastian in view of: o CCITT V.42 bis, or o Kawashima, further in view ofRealtime's admissions.

4. Proposed rejections based on Franaszek

e Claims 1, 69 and 86 are anticipated under 35 U.S.C. § 102 by Franaszek. ,,. Claims 1, 69 and 86 are unpatentable under 35 U.S.C. § 103(a) as being obvious

over Franaszek in view ofRealtime's admissions. ~ Claims 2-7, 17, 20, 23, 27, 39, 41-43, 70-73, 79, 81, 82, 84-85, 87, 90, 96 and 98

are anticipated under 35 U.S.C. § 102 by Franaszek. • Claims 21 and 22 are unpatentable under 35 U.S.C. § 103(a) by Franaszek in view

of: o Futato, or o Aakre.

~ Claims 8 and 16 are unpatentable under 35 U.S.C. § 103(a) by Franaszek in view of:

o ITUH.263, or o ITU T.81, or o O'Brien '946, or o Craft.




5. Proposed rejections based on Lafe

"° Claims 1, 69 and 86 are anticipated under 35 U.S.C. § 102 by Lafe. ~ Claims 1, 69 and 86 are unpatentable under 35 U.S.C. § 1 03(a) as being obvious

over Lafe in view ofRealtime's admissions. or. Claims 2, 5-6, 8-9, 11, 16-17, 20-23, 72-73, 79, 81, 89-90, 96 and 98 are

anticipated under 35 U.S.C. § 102 by Lafe. ~ Claims 3 and 4 are unpatentable under 35 U.S.C. § 103(a) by Lafe in view ofITU

T.81. ~ Claims 7 and 41-43 are unpatentable under 35 U.S.C. § 103(a) by Lafe in view of:

o Reynar, or o Wemikoff, or o Cellier, or o F ranaszek.

'" Claims 20 and 87 are unpatentable under 35 U.S.C. § 103(a) by Lafe in view of Kawashima.

~ Claims 21 and 22 are unpatentable under 35 U.S.C. § 103(a) by Lafe in view of: o Futato, or o Aakre.

~ Claims 27, 39, 70, 84, 85 and 88 are unpatentable under 35 U.S.C. § 103(a) by Lafe in view of:

o CCITT V.42 bis, or o Kawashima. o Claim 71 is unpatentable under 35 U.S.C. § 103(a) by Lafe in view of

CCITT V.42 bis. ~ Claim 71 is unpatentable under 35 U.S.C. § 103(a) by Lafe in view of CCITT

V.42 bis. "° Claim 82 is unpatentable under 35 U.S.C. § 103(a) by Lafe in view of:

o Simpson ACM, or o Parallel Lossless ICBN, or o Dye, or o McLean, or o ITUH.263.

6. Proposed rejections based on Reynar

e Claims 1, 69 and 86 are anticipated under 35 U.S.C. § 102 by Reynar. * Claims 1, 69 and 86 are unpatemable under 35 U.S.C. § 103(a) as being obvious

over Reynar in view ofRealtime's admissions. * Claims 2-7, 9, 11, 17, 21, 23, 27, 39, 41-42, 72-73, 79, 81, 82, 89-90 and 98 are

anticipated under 35 U.S.C. § 102(b) by Reynar. ~ Claim 22 is unpatentable under 35 U.S.C. § 103(a) by Reynar in view of:

o Futato, or




o Aakre. • Claims 70, 71, 84-85 and 87-88 are unpatentable under 35 U.S.C. § 103(a) by

Reynar in view of: o CCITT V.42 bis, or o Kawashima.

• Claims 8 and 16 are unpatentable under 35 U.S.C. § 103(a) by Lafe in view of: o ITU H.263, or o ITU T.81, or o O'Brien, or o Craft.

• Claim 82 is unpatentable under 35 U.S.C. § 103(a) by Reynar in view of: o Simpson ACM, or o Parallel Lossless I CBN, or o Dye, or o McLean.

7. Summary of Reexamination before the CRU

The Central Reexam Unit (CRU) granted the Request August 14, 2009, and on December

15, 2009, issued a Non-Final Office Action ("Office Action").

Patent Owner replied to the Office Action ("Reply") on March 15, 2010. The CRU

issued an Action Closing Prosecution ("ACP") on August 27, 2010, and Patent Owner timely

submitted a Response to the ACP ("Realtime's Response to ACP") on September 27, 2010. The

CRU issued a Right of Appeal Notice ("RAN") on January 6, 2011.

Patent Owner timely filed its Notice of Appeal on February 7, 2011. Though it was

entitled to appeal over the allowed claims, Requester did not file a notice of appeal or a notice of

cross appeal in this case. The issues on appeal are therefore limited to those presented by Patent

Owner in this appeal brief.

C The Problem to Be Solved by the Present Invention

The "506 patent issued from U.S. Patent Application No. 10/668,768 ("the "768

application"), which was a continuation of U.S. Patent Application No. 10/016,355 ("the •355




application"), filed on October 29, 2001, which was a continuation-in-part (CIP) of parent U.S.

Patent Application No. 091705,466 ("the '466 parent application"), filed on November 3, 2000.

In the Background section of these applications, Patent Owner explained that prior art

compression of an input data stream involved two phases. The first phase was "retrieval" of a

priori data type information, also referred to as file descriptors, file type descriptors, or filename

extensions, and the second phase was compression of the data. (See '506 Patent at 2:54 et seq.)

The "prior art" retrieval of data type information involved looking at "type" information

already provided in the input data stream. Filename extensions, such as ".doc," ".txt" and ".pdf,"

(a Word document, a Text file and an Adobe file), for example, are self-identifying information

provided with the data, which specify the data type of the associated data. (Id. at 2:56-61.) A

shortcoming of the prior art resulting in non-optimal compression occurred when files with

disparate data types were self-identified by a single descriptor. (Id. at 3:36-42.)

The problem was solved by actually "analyzing" a data block of an input data stream to

be compressed. The resulting analysis would determine the type of compression to be used. The

prior art in this case does not solve this problem and does not invalidate the claims at issue.

D. Use of the Term "Analyzing" in the Specification

A key issue in this reexamination is the construction of the term "analyzing" as it is used

in the analyzing step of the claims, as supported by the specification. The CRU has interpreted

"analyzing" too broadly, even under the Broadest Reasonable Interpretation rubric.

1. Patent Owner is Allowed to be his Own Lexicographer

"In examining a patent claim, the PTO must apply the broadest reasonable meaning to the

claim language, taking into account any definitions presented in the specification." In re Bass,

314 F.3d 575, 577 (Fed. Cir. 2002) (emphasis added). Furthermore, "[w]ords in a claim are to be




given their ordinary and accustomed meanmg unless the inventor chose to be his own

lexicographer in the specification." Id. (emphasis added).

An inventor may choose to be his own lexicographer in two ways. "First, the claim term

will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly

set forth a definition of the disputed claim term in either the specification or prosecution history."

CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). "Second, a claim

term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee

distinguished that term from prior art on the basis of a particular embodiment, expressly

disclaimed subject matter, or described a particular embodiment as important to the invention."

Id. at 1366-67 (citing SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337,

1343-44 (Fed. Cir. 2001) (limiting a claim term based in part on statements in the specification

indicating that "all embodiments" of the claimed invention used a particular structure));

Spectrum Int'!, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) (narrowing a claim

term's ordinary meaning based on statements in intrinsic evidence that distinguished claimed

invention from prior art).

2. Patent Owner has Provided a Definition of "Analyzing"

The Office has not proffered a specific definition for the term "analyzing." The non-final

Office Action, the ACP, and the RAN do not articulate a definition of this term. Instead of

properly relying on the '506 patent specification to construe these terms, the CRU points to

portions of the cited prior art and concludes that "analyzing" is taught by the references.

For example, in connection with Franaszek, the CRU states that:

Franaszek discloses using type information 205 to identify the data type of the data block (column 4, lines 25-35; column 6, lines 1-11). In response to PO's argument that the references failed to



(ACP ft 31.)


show certain features of PO' s invention, it is noted that the feature upon which PO relies (i.e., "direct examination of the state within the data block for known patterns that may be indicative of a data type" as discussed by PO on page 16 of PO Response) are not recited in the rejected claim(s).

Similarly, in connection with Sebastian, the CRU states that:

(ACP ii 28.)

Sebastian discloses analyzing information "such as byte values at the beginning of the file or file title suffixes" to identify/determine the data type of the data block (column 4, lines 46-50). In response to PO's argument that the references failed to show certain features of PO's invention, it is noted that the features upon which capital PO relies (i.e., "direct examination of the data contained in the data block" as discussed by PO on page 13 of PO Response) are not recited in the rejected claim(s).

The CRU' s chief complaint is that the patentee did not define "analyzing" in the claims

themselves. But where the Patent Owner has acted as his own lexicographer and clearly set forth

the definition and scope, of "analyzing" in the specification, this is not required.

Extensive intrinsic evidence exists regarding the meaning of "analyzing," as that term is

used in the specification. The '355 (CIP) application was filed with new FIGs. 13-18 and

corresponding written description, (Id. at 15:66-26:43), that defined the "analyzing a data block

, •• to identify one or more data types of the data block [then] performing content dependent

data compression," as recited in claim 1 and "analyzing said data block to determine a type of

said data block [then] compressing said data block," as recited in claim 69. Specifically, the

new descriptive matter added to '355 (CIP) application's written description recited that:

A content dependent data recognition module 1300 analyzes the incoming data stream to recognize data types, data structures, data block formats, file substructures, file types, and/or any other parameters that may be indicative of either the data type/content of a given data block or the appropriate data compression algorithm or algorithms (in serial or in parallel) to be applied.




(Id at 16:29-35 (emphasis added).)

The new descriptive matter defined "analyzing" in the context of evaluating an incoming

data stream in order to recognize, from the data itself, the associated data type. The claimed

"analyzing a data block" yields data type information about the data contained in that data

block. This is distinct from the prior art technique of retrieving type information that is already

provided, as discussed, supra, and disclosed in the Background section of the • 506 patent.

Therefore, "analyzing" is not defined as simply retrieving a file descriptor that identifies a data

type. But that is what the prior art references in this reexam, at best, teach.

In particular, Figure 13A of the '506 patent, reproduced below, illustrates content

dependent data recognition module 1300 that "analyzes the incoming data stream to recognize

data types .... " ('506 at 16:29-30.)

Additionally, an example of "analyz[ing] the incoming data stream for recognition of

data types" was provided in connection with HGs. 17 A-B:

More specifically, a content dependent data recognition and or estimation module 1700 is utilized to analyze the incoming data




stream for recognition of data types. . . . It is to be appreciated that process of recognition (modules 1700 and 1710) is not limited to a deterministic recognition, but may further comprise a probabilistic estimation of which encoders to select for compression from the set of encoders of the content dependent 40 module 1320 or the content independent module 30. For example, a method may be employed to compute statistics of a data block whereby a determination that the locality of repetition of characters in a data stream is determined is high can suggest a text document, which may be beneficially 45 compressed with a lossless dictionary type algorithm. Further the statistics of repeated characters and relative frequencies may suggest a specific type of dictionary algorithm.

(Id at 23:28-54 (emphasis added).)

In this example, "analyz[ing] the incoming data stream for recognition of data types" to

perform content dependent data compression on the data block comprises "comput[ing] statistics

of a data block" to determine the data type of the data block. Thus, the '506 patent defines the

meaning of the term "analyze" and provides consistent examples of the meaning of the term

"analyze" throughout that specification.2 Additionally, and as previously noted, the patent

specification distinguishes the claimed invention from prior art compression systems that simply

read a descriptor appended to the data block to identify the data type.

The claim language itself is consistent with the specification. For example, claim 1

recites "analyzing a data block of an input data stream to identify one or more data types," and

claim 69 recites "analyzing said data block to determine a type of said data block." If the data

type is identified, claim 1 recites "performing content dependent data compression," and claim

69 recites "compressing said data block to provide a compressed data block, wherein if one or

2 See Abstract; Summary: (3:55-57), (4:38-40); Detailed Description: (14:62-15:6); (16:29-38); (18:32-38); (19:29-37); (21:22-29); (22:21-29); (23:28-37; 41-51); (24:19-29); (25:19-34).




more encoders are associated to said [data] type." These claimed features are supported by the

new figures and description as acknowledged by the Examiner in the ACP. (ACP i 4.)

Consequently, the Patent Owner has acted as his own lexicographer and clearly set forth

the definition and proper scope of "analyzing" by (1) narrowing this claim term's ordinary

meaning based on statements in specification that distinguished the claimed invention from prior

art, see Spectrum Int'!, 164 F .3d at 13 78, and (2) limiting this claim term by indicating that all of

the embodiments of the claimed invention perform the "analyzing" step in the same manner, see

SciMed Life Sys., 242 F.3d at 1343-44.

3. Dr. Modestino's Declaration Under 37C.F.R.§1.132

In addition to the intrinsic evidence of the definition of "analyze," Dr. Modestino's § 132

declaration, attached as Exhibit C, provides extrinsic evidence that comports with the definition

provided in the specification of the '506 patent.

First, Dr. Modestino, explained that "[t]he process disclosed in the prior art of simply

checking file descriptors provided as self-identifying information is certainly an indirect

process." (Modestino Deel. iJ 18 (emphasis added).)

Second, Dr. Modestino stated:

[T]he patent-in-reexamination discloses direct examination of the contents of a data block to identify its data type, , , [that] is in sharp contrast to the simpler indirect approaches. Indeed, because the patent-in-reexamination is not limited to receiving data blocks that have self-identifying file descriptors associated with them, there is perhaps no other recourse than a direct examination of the contents of a data block to identify parameters that would be useful in selecting an encoder that could be expected to be effective on that data block.

(Modestino Deel. iJ 19 (emphasis added).)




The term "direct examination" was coined by Dr. Modestino to explain that those skilled

in the art would understand the distinction between Patent Ovvner's claimed "analyze" and the

prior art approach of retrieving data type infonnation provided in the input data stream by way of

a descriptor appended to or associated with the data block, e.g., in an "indirect" manner. Neither

the CRU nor the requester have presented rebuttal evidence on this point

4. The CRU Has 11'fisco11strued the 1l1eaning of "Analyze'~

The CRU is required to interpret the term "analyzing" in light of the specification and

teachings of the underlying patent. Jn re Bass, 314 F.3d at 577. But it failed to do so in this

proceeding. During reexamination "claims should ahvays be read in light of the specification

and teachings in the underlying patent." See In re Suitco Surface, Jne,, 603 F.3d 1255, 1260

(Fed. Cir. 2010) (citing Schriber-Schroth Co. v. Cleveland Trust Co., 311 1.J.S. 211, 217 (1940)

("The claims of a patent are always to be read or interpreted in light of its specifications.")).

Vv'hile Patent Owner recognizes the CRU's duty to give the claims their broadest reasonable

interpretation without reading limitations from the specifications into the claims, such

interpretation must be not only reasonable, hut also consistent with any definitions provided by

the specification of the '506 patent. Jn re Bass, 314 F.3d at 577.

The CRU erroneously concluded that the term "analyzing" is not limited to "direct

examination" of the data type. \\lhile the CRU does not conclude that the prior art teaches

"direct examination," it takes the position that it will not read such limitations from the

specification into the claims. (ACP ,-r,.; 28, 31.) The notion that the claims could have been

amended in this manner, however, is misplaced. As noted in the previous section, the phrase

"direct examination" is a constrnct of Dr. Modestino. The term "analyzing," on the other hand,

is defined in the specification of the '506 patent to distinguish \Vhat Dr. Modestino refers to as

Atty. Dkt No. 2855.002REX3



the difference between "direct" and "indirect" examination. Thus, no amendment was necessary

to distinguish the claims over the prior art. The term "analyzing" is consistent with the

patentee's use of that term to describe and define the claimed invention, and to distinguish the

prior art in the specification and in the prior prosecution.

Additionally, Patent Owner's repeated arguments on the record regarding the meaning of

"analyzing" puts the public on notice of its defined and intended meaning. CCS Fitness, 288

F.3d atl366-67 (citing Spectrum Int'/, 164 F.3d at 1378). Indeed, Patent Owner is no less bound

by prosecution history estoppel than it is by explicit claim amendments commensurate with those

arguments. As the Federal Circuit has stated, "[a] court may look to incomplete reexamination

proceedings during claim construction." Proctor & Gamble Co. v. Kraft Foods Globe/, Inc., 549

F.3d 842, 848 (Fed. Cir. 2008); CVI!Beta Ventures v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir.

1997) ("Statements made during prosecution or reexamination may commit the patentee to a

particular meaning for patent tem1, which meaning is then binding in litigation.") Thus, if a

patentee limits the scope of the claims to avoid the asserted art in a reexamination, then the

claims are so limited-with or without an explicit amendment to that effect. The "broadest

reasonable interpretation" rubric ought to accommodate such prosecution disclaimers in lieu of

claim term amendment. While Patent Owner is not aware of any case law that yet supports this

view, it is respectfully submitted that such a position is both reasonable and warranted.

5. The CRU Did Not Properly Consider Modestino's Declaration

The ultimate determination of patentability must be based on consideration of the entire

record by a preponderance of the evidence. See In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992).

Each piece of rebuttal evidence should not be evaluated for its ability to "knock down" the prima

facie case. Instead, all of the competent rebuttal evidence, taken as whole, should be weighed



- 26- Reexam of U.S. Patent No. 7,161,506 Control No. 95/000,479

against the evidence supporting the prima facie case. See In re Piasecki, 745 F.2d 1468 (Fed.

Cir. 1984). Expert opinion supported by documentary evidence, for example, may be given

weight. See In re Carroll, 601 F.2d 1184 (CCPA 1979). Additionally, evidence of non-

technological nature is pertinent to the conclusion of obviousness. See In re Piasecki, 745 F.2d

at 1473 (finding that the declarations of those skilled in the aii regarding the need for the

invention and its reception by the art were improperly discounted by the Board). Office

personnel should avoid giving evidence no weight, except in rare circumstances. See In re Alton,

76 F.3d 1168, 1174-75 (Fed. Cir. 1996). The CRU, however, failed to give Dr. Modestino's

declaration appropriate weight in its evaluations of the patented invention. (ACP if'J 28, 31.)

E. Grounds 1 and 2-Rejections of Claims 69, 70, 72, 73, 79, 81, 82, 84 and 85 Under 35 U.S.C. § 102(b) over Franaszek and Claims 1-5, 8, 9, 11, 17, 21-23, 43, 69, 72, 73, 79 and 81 Under 35U.S.C.§102(e) over Sebastian

1. Overview of Rejections

Claims 1-5, 8, 9, 11, 17, 21-23, 43, 69, 72, 73, 79 and 81 stand rejected under 35 U.S.C. §

102(e) as allegedly being anticipated by Sebastian. (ACP i16.)3 Claims 69, 70, 72, 73, 79, 81,

82, 84 and 85 stand rejected under 35 U.S.C. § 102(b) as allegedly being anticipated by

Franaszek. (ACP if 7.) These rejections should be reversed.

2. Franaszek does not Disclose ''Analyzing a Data Block" to "identify One or More Data Types of the Data Block," or ''Analyzing said Data Block to Determine a Type of said Data Block"

Franaszek does not disclose "analyzing said data block to determine a type of said data

block," as recited in claim 69 of the '506 patent. Franaszek, instead, retrieves data type

descriptors in a manner consistent with "indirect examination" as discussed by Dr. Modestino.

3 Reference is made to the ACP for the grounds ofrejection as the RAN refers to the ACP for the reasoning associated with the rejections.




In fact, Franaszek's retrieval of type descriptors is consistent with the prior art described in the

Background section of the '761 patent and was therefore disclaimed by the patentee. See

Spectrum Int'!, 164 F.3d at 1372. In particular, Franaszek discloses a system for compressing an

uncompressed data block based on information included in an associated, separate and distinct,

type descriptor field. Franaszek refers to the type descriptor field as a "type field 205."4

Franaszek's type field 205 does not contain data that is to be compressed, but rather

contains information that identifies the type of data (i.e., data type) contained within the

"uncompressed data blocks 210." (Id. at 4:30-31.) The data blocks to be compressed and

separate type descriptor fields are illustrated in Franaszek's FIG. 2, shown below:

FIG 2 COMPRESSED 2EiOS DA TA BLOCKS • BLOCKS

YP Llp ~~~--~i._._. ... ""'·w,., ..

2

1.35

il'1D JJMD

• • • -·-·~ ~ DATA __.._ dtO-IX'

J COMPRESSOR

210 TYPE• DATA TYPE

<TEXT, IMAGE, ETC.> <OPTIONAL)

230 COMPRESSION

METHOD TABLE . ,~-·~... CMD• COMPRESSION :--·----w···················

1 .. ·i / nl '\'"-~-··- METHOD DESCRIPTION

l. ~~"' i ~. . -.-... '., ,.............................. ..... ' " \

In this figure, Franaszek shows that "type field 205" is separate and distinct from uncompressed

data block 210, and states that only "data blocks 210 are input to the data compressor 220."5

(Id. at 4:34-35.)

The same distinction is shown in FIG. 3, shown below, where only the uncompressed

data block 210 is input to the data compressor 220.

4 "In step 414, it is determined if a data type is available (i.e. the block includes a "data type" entry in the type field 205) .... " (Franaszek at 6:1-2.)

5 Patent Owner assumes element number 205 refers to type field 205 as shown in FIG. 2 and element number 210 refers to uncompressed data as shown in FIG. 2, FIG. 3 and FIG. 6. Franaszek incorrectly refers to uncompressed block 205 at 5: 10 and 5 :20 which reference is inconsistent with the Figures and the remainder of the Franaszek specification.



- 28 - Reexam of U.S. Patent No. 7,161,506

FIG. 3

<DO NOT COMPR£S$)

Control No. 95/000,479

Based on the information contained within type field 205, the compression is performed

on uncompressed data based on "a list of dictionary block identifiers that have been preselected

for the data type when using compression method M." (Id. at 6:1-11.) Franaszek does not

disclose inputting the type field 205 into the data compressor 220 to compress type field 205

based on the information contained in type field 205. Rather, Franaszek discloses identifying

information within a specifically-defined field, type field 205, to control the compression of

separate and distinct data, that data being contained in data block 210.

In contrast, claim 69 recites "analyzing said data block to determine a type of said data

block." Based on the data in the specific data block, the invention in independent claim 69 then

identifies the data type of that specific data block that is to be compressed. Franaszek, on the

other hand, looks at type field 205 to retrieve information about a separate data block. More

specifically, the invention of claims 1, 69 and 86 does not analyze a first data block to identify a

data type of a second data block. Franaszek, then uses the information in type field 205 to

identify the type of data block 210 that is separate and distinct from the type field 205. Again,

to be clear, Franaszek only looks at the type field 205, not data block 210. Thus, Franaszek

discloses retrieval of the type field 205 and not "analyzing" of the data block 210 itself, as

required by claim 69. Retrieval of the type field 205 is therefore synonymous with the first




phase compression disclosed as prior art in the background section of the '506 patent and cannot

be read onto the claims.

Additionally, independent claim 69 recites "compressing said data block." Thus, claim

69 requires data compression to be performed on the data block that was analyzed. In contrast,

Franaszek compresses data block 210 based on the field type descriptor contained in the separate

and distinct type field 205.

Finally, this interpretation of Franaszek comports with Dr. Modestino's explanation of

the "indirect examination" method:

However, nowhere in Franaszek '036 is there any discussion of directly "analyzing" a data block by direct examination of its contents to "identify" or "determine" a data type as claims 1 and 69 of the '506 patent require. In the Franaszek '036 patent each data block either has a self-identifying data type already associated with it or it does not and the data compression device merely checks to see if a data type is "available" and, if so, can presumably use this information in selecting the compression device to use on that data block. . . . There is no discussion of directly "analyzing" a data block to "identifY" or "determine" a data type by examining the contents of the data block as claims 1 and 69 require, respectively. , . . One of ordinary skill in the art would recognize that this passive indirect checking of selfidentiJYing data types in Franaszek '036 is not the same as the direct process of "analyzing" a data block to "identiJY" or "determine" a data type as these claims of the patent-inreexamination require. As a result Franaszek '036 does not anticipate claims 1 and 69 of the '506 patent.

(Modestino Deel. i122 (emphasis added).)

Neither the CRU, nor the requestor have pointed to record evidence rebutting Dr.

Modestino' s interpretation of Franaszek.




3. Sebastian does not disclose ''Analyzing a Data Block" to "Identify One or More Data Types of the Data Block," or ''Analyzing said Data Block to Determine a Type of said Data Block"

Sebastian does not disclose "analyzing a data block , , , to identify one or more data

types of the data block [then] performing content dependent data compression," as recited in

claim 1 of the '506 patent. Nor does Sebastian disclose "analyzing said data block to determine

a type of said data block," as recited in claim 69 of the '506 patent. Similar to Franaszek,

Sebastian retrieves data type descriptors in a manner consistent with "indirect examination" as

discussed by Dr. Modestino and described in the Background section of the '506 patent.

Specifically, Sebastian discloses a "filter selection system 22" that checks the "selection criteria

12a-z." (Sebastian at 4:9-10.)

Sebastian's selection criteria 12a-z does not analyze the data that is that is to be

compressed, but instead determines the selection criteria 12a-z "by the file format specification."

(Sebastian at 4:47-50.) According to Sebastian, the "file format specification , , . includes

information needed to recognize files served by the filter IOx such as byte values at the beginning

of the file or file title suffi[x]es." (Id.) Once the file format is retrieved, "[p]arsing instructions

14, also determined by the file format specification, include the information needed to parse the

source file into parsed Arrays 25 , , .. " (Id. at 4:50-53.) Thus, Sebastian simply retrieves the

type of the data that is received from a well-defined file header and then compresses the data

based on the information retrieved from the field.

In contrast, claim 1 recites "analyzing a data block .. , to identify one or more data types

of the data block [then] performing content dependent data compression," and claim 69 recites

"analyzing said data block to determine a type of said data block." Based on the data in the

specific data block, the invention in claims 1 and 69 then identifies the data type of that specific




data block that is to be compressed. Sebastian, on the other hand, looks at "byte values at the

beginning of the file or file title suffi[x]es" to retrieve information about contents of the data

block. More specifically, Sebastian simply retrieves the type of the data by looking at a well-

defined file header containing information such as file title suffixes that is separate from the data

to be compressed. The invention of claims 1 and 69, on the other hand, does not simply look at a

file header to identify the data type of the data. Thus, Sebastian discloses retrieval of a file type

and not "analyzing" of the data itself as required by claims 1 and 69. As with Franaszek,

Sebastian's method of looking at "byte values at the beginning of the file or file title suffi[x}es"

is synonymous with the first phase compression disclosed as prior art in the background section

of the '506 patent and was therefore disclaimed by the patentee.

Additionally, claim 1 recites "performing content dependent data compression; if a data

type of the data block is identified," and claim 69 recites "compressing said data block." Thus,

claims 1 and 69 require data compression to be performed on the data block that was analyzed.

In contrast, Sebastian compresses data based on a well-defined file header separate that is

distinct from the data to be compressed.

Finally, this interpretation of Sebastian comports with Dr. Modestino' s explanation of the

"indirect examination" method:

Furthermore, the process that Sebastian discloses for establishing the data type of an input file is clearly an indirect process unlike the direct process required by claims 1 and 69 of the patent-inreexamination. More specifically, the Sebastian system assumes that either the byte values at the beginning of a file or file title suffixes (e.g., pdf for postscript files, xis for Excel files or doc for Microsoft Word files) are available for input source files and can be used to ascertain the data type of a file. Once the data type is ascertained, the corresponding publicly available file format specification is then used to check all of the selection criteria to determine if a filter is available for that data type .... Nowhere in Sebastian, is there any "analyzing" of a data block to "determine"




or "identify" a data type by directly examining the contents of an input file. In the Sebastian system each source file either has a self-identifying data type already associated with it, which can be readily established through examining "byte values" at the beginning of a file or "file title suffi[ x ]es", or it does not and the data compression device merely checks to see if a filter associated with that data type is installed in the system. There is no direct process of "analyzing a data block .•. to determine a data type ..

"

(Modestino Deel.~ 21 (emphasis added).)

Again, neither the CRU nor the requester have pointed to record evidence rebutting Dr.

Modestino' s interpretation of Sebastian.

4. Conclusion

For at least the reasons set forth above, Franaszek does not describe each and

every element as set forth in independent claim 69. Nor does Sebastian describe each and every

element as set forth in independent claims 1 and 69. Thus, Sebastian does not anticipate claim 1,

and neither Franaszek nor Sebastian anticipate claim 69. Claims 2-5, 8, 9, 11, 17, 21-23 and 43

depend from claim 1, and claims 70, 72, 73, 79, 81, 82 84 and 85 depend from claim 69. The

dependent claims are thus distinguishable over Franaszek and Sebastian for at least the reasons

discussed above, in addition to their own allowable features. Therefore, for at least these

reasons, the rejection of claims 1-5, 8, 9, 11, 17, 21-23, 43, 69, 72, 73, 79 and 81under35 U.S.C.

§ 102(e) as being anticipated by Sebastian, and claims 69, 70, 72, 73, 79, 81, 82, 84 and 85 under

35 U.S.C. § 102(b) as being anticipated by Franaszek should be reversed.




F. Ground 3 -Rejection of claim 20 under 35 U.S.C. § 103(a) Over Sebastian in view of Franaszek or Reynar

1. Overview of Rejection

Dependent claim 20 stands rejected under 35 U.S.C. § 103(a) as allegedly being obvious

over Sebastian in view ofFranaszek or Reynar.

2. Sebastian in view of Franaszek or Reynar does not disclose ''Analyzing a Data Block of an Input Data Stream to Identify One or More Data Types of the Data Block"

For the reasons discussed above regarding independent claim 1, Sebastian fails to

disclose "analyzing a data block of an input data stream to identify one or more data types of the

data block, the input data stream comprising a plurality of disparate data types."

Franaszek and Reynar fail to overcome the deficiencies of Sebastian. The ACP admits

that Sebastian "does not specifically disclose counting the size of the data block." (ACP ii 9.)

For this claimed feature the ACP relies on Franaszek. (ACP ~ 9.) However, the referenced

portions of Franaszek or Reynar are not used to disclose, nor does Franaszek or Reynar teach or

suggest, at least the above noted distinguishing features of claim 1. Therefore, as Franaszek or

Reynar do not overcome the deficiencies of Sebastian, the references cannot be used, alone or in

combination, to establish a prima facie case of obviousness.

Claim 20 depends from claim 1 and is therefore patentable for at least the same reasons

as independent claim 1, as well as for its own respective distinguishing features.

3. Conclusion

Accordingly, Patent Owner respectfully requests that the rejection of claim 20 be

reconsidered and reversed.




G, Ground 4 - Rejection of claims 27 and 39 under 35 U.S.C § 103(a) Over Sebastian in view of CCITT V.42 bis or Reynar


Dependent claims 27 and 39 stand rejected under 35 U.S.C. § 103(a) as allegedly being

obvious over Sebastian in view of CCITT V.42 bis or Reynar.

2. Sebastian in view of CCITT V.42 bis or Reynar does not disclose "Analyzing a Data Block of an Input Data Stream to Identify One or More Data Types of the Data Block"


disclose "analyzing a data block of an input data stream to identify one or more data types of the

data block, the input data stream comprising a plurality of disparate data types."

CCITT V.42 bis and Reynar fail to overcome the deficiencies of Sebastian. The ACP

admits that Sebastian "does not specifically disclose providing a compression threshold and

outputting a compressed data block that exceeds the compression threshold." (ACP 'I! 10.) For

this feature of claims 27 and 39, the ACP relies on CCITT V.42 bis or on Reynar. (ACP ~ 10.)

However, the referenced portions of CCITT V.42 bis or Reynar are not used to disclose, nor does

CCITT V.42 bis or Reynar teach or suggest, at least the above noted distinguishing features of

claim 1. Therefore, as CCITT V.42 bis or Reynar do not overcome the deficiencies of Sebastian,

the references cannot be used, alone or in combination, to establish a prima facie case of

obviousness.

Claims 27 and 39 depend from claim 1 and are therefore patentable for at least the same

reasons as independent claim 1, as well as for their own respective distingui~hing featureso



- 35 - Reexarn of U.S. Patent No. 7,161,506 Control No. 95/000,479

3. Conclusion

Accordingly, Patent Ovvner respectfully requests that the rejection of claims 27 and 39 be

reconsidered and reversed.

H, Ground 5 - Rejection of claim 82 under 35 U .• S".C § 103(a) Over Sebastian in view of 1l1m:Lerm


Dependent claim 82 stands rejected under 35 U.S.C. § 103(a) as allegedly being obvious

over Sebastian in view of Maclean.

2. Sebastian ill view of 11/.acLean does not disclose "Ana~vzing said Data Block to Determine a TJpe of said Data Block"


disclose "analyzing said data block to determine a type of said data block."

MacLean fails to overcome the deficiencies of Sebastian. The ACP admits that Sebastian

"does not specifically disclose that the at least one of the one or more encoders comprises a

plurality of encoders provided in parallel." (ACP if 11.) For this claim 82 feature the ACP relies

on MacLean. (ACP ~ 11.) However, the referenced portion of rvfacLean is not used to disclose,

nor does MacLean teach or suggest, at least the above noted distinguishing features of claim 69.

Therefore, as MacLean does not overcome the deficiencies of Sebastian, the references cannot be

used, alone or in combination, to establish a prima facie case of obviousness.

Claim 82 depends from claim 69 and is therefore patentable for at least the same reasons

as independent claim 69, as well as for its own respective distinguishing features.




3. Conclusion

Accordingly, Patent Owner respectfully requests that the rejection of claim 82 be

reconsidered and that the rejection be reversed.

L Ground 6 - Rejection of claims 70, 71, 84-90, 96 and 98 under 35 U.S.C. § 103(a) Over Sebastian in view of Kawashima


Dependent claims 70, 71, 84-90, 96 and 98 stand rejected under 35 U.S.C. § 103(a) as

allegedly being obvious over Sebastian in view of Kawashima.

2. Regarding claims 70, 71, 84 and 85, Sebastian in view of Kawashima does not disclose "Analyzing said Data Block to Determine a Type of said Data Block"


disclose "analyzing said data block to determine a type of said data block."

Kawashima fails to overcome the deficiencies of Sebastian. Kawashima discloses "an

apparatus for and a method of transmitting data, compressed by a loss-less data compression

process, between memories, communication devices (including computer terminals), processors,

or a host computer and an external memory." (Kawashima at 1:9-13.) Therefore, as Kawashima

does not overcome the deficiencies of Sebastian, the references cannot be used, alone or in

combination, to establish a prima facie case of obviousness.

Claims 70, 71, 84 and 85 depend from claim 69 and are therefore patentable for at least

the same reasons as independent claim 69, as well as for its own respective distinguishing

features. Therefore, Patent Owner respectfully requests that the rejection of claims 70, 71, 84

and 85 be reconsidered and reversed.




3. Regarding claims 86-90, 96 and 98, Sebastian in view of Kawashima does not Disclose "Determining Whether to Output said Data Block in Received Form or in a Compressed Form" or "Determining Whether to Compress Said Data Block with Content Dependent Data Compression Based on the Type of Said Data Block"

For similar reasoning discussed above regarding independent claims 1 and 69, Sebastian

fails to disclose "determining whether to output said data block in received form or in a

compressed form," and "determining whether to compress said data block with content

dependent data compression based on the type of said data block," as recited in claim 86.

Further, the RAN admits that Sebastian "does not disclose determining whether to output the

data block in received form or in a compressed form." (RAN iJ 2.) For this claim 86 feature the

RAN relies on Kawashima. (RAN iJ 3.)

Kawashima fails to overcome the deficiencies of Sebastian. Kawashima discloses "an

apparatus for and a method of transmitting data, compressed by a loss-less data compression

process, between memories, communication devices (including computer terminals), processors,

or a host computer and an external memory." (Kawashima at 1:9-13.) The above referenced

sections of Kawashima disclose a decision on whether to transfer compressed or pre-compressed

data based on whether the actual compression ratio is smaller than a threshold amount, not on a

data type as required by claim 86. Specifically, Kawashima discloses "[i]f the actual difference

is smaller than the preset difference a in step S 11 or if the actual compression ratio is smaller

than the preset compression ratio~ in the step S12, then control goes to a step S15 in which the

transfer request data generating means 78 generates transfer request data for the pre-compression

data." (Kawashima at 30:1-6.) Thus, Kawashima does not overcome the deficiencies of

Sebastian, and the references cannot be used, alone or in combination, to establish a prima facie

case of obviousness.




Therefore, the applied references cannot be used to establish a prima facie case of

obviousness for claim 86. Claims 87-90, 96 and 98 depend from claim 86 and are therefore

patentable for at least the same reasons as independent claim 86, as well as for its own respective

distinguishing features. Therefore, Patent Owner respectfully requests that the rejection of

claims 86-90, 96 and 98 be reconsidered and reversed.

4. A Person of Ordinary Skill Would Not Combine Sebastian and Kawashima

Patent Owner respectfully submits that a person of ordinary skill would not have been

inclined to combine Sebastian and Kawashima, for the reasons proposed in the RAN and ACP.

The RAN and ACP allege that it would have been obvious to a person of ordinary skill in

the art to combine Sebastian and Kawashima "to ensure that resources are used for compression

only when compression would be effective." (RAN~ 25; ACP ~ 34.) Patent Owner respectfully

disagrees.

As discussed in the Office Action Responses filed on March 15, 2010, and September 23,

2010, Patent Owner respectfully submits that a person of ordinary skill would not have been

inclined to combine Sebastian and Kawashima, for the reasons proposed in the Office Action.

And Patent Owner's declarant agrees that it is not permissible to make the alleged combination.

(Modestino Deel. if 31.)

In response to Patent Owner arguments of September 23, 2010, the RAN states:

Kawashima specifically teaches that transmitting non-compressed data, if the system determines that compression for that data would not be effective, shortens time of transmission for the data (column 7, lines 60-61; column 8, line 11-22). For example, Kawashima states that ". . . since the pre-compression data is not compressed when the decision means determines the data to be transmitted as the pre-compression data, it is possible to shorten the overall processing time . , , ," (column 8, line 15-20) Kawashima also




teaches compressing only a portion of the data to predict a compression ratio that will be used to determine whether the complete data should be compressed at all (column 33, lines 30-35). Therefore, Kawashima teaches providing compression for larger amounts of data only when compression would be effective and conserving computational resources when compression would not be effective.

(RAN if 25 (emphasis added).)

Patent Ovvner respectfully disagrees.

(a) Combination of Sebastian and Kawashima does not Reduce Computational Resources

As discussed in the Modestino Declaration, in referring to FIG. 11 of Kawashima

"at col. 30, lines 54-62, it's stated ', .. it is determined whether the compressed data or the pre-compression data is to be transferred to the data destination 3 based on the comparison between the actual difference and the preset difference a and the comparison between the actual compression ratio and the preset ratio B. Based on the decision, the compressed data or the pre-compression data is transferred to the data destination 3.' So Kawashima compresses first and then bases the first determination step on whether or not these 2 preset conditions are both satisfied. One skilled in the art would not be motivated to combine Kawashima with Sebastian, as proposed, because computational resources would be expended in compressing the data block even if a subsequent determination is made to not output a compressed but a pre-compressed version of the input data. This would be a waste of computational resources and would be counter to the Examiner's proposed motivation."

(Modestino Deel.~ 31 (emphasis added).)

(b) Kawashima Teaches that Compression Ratio at which to Compress Data Remains Unknown Until All the Data is Compressed

Patent Owner recognizes that Kawashima appears to disclose an embodiment that

detennines whether or not to compress based on "compressing a portion of the pre-compression

data." However, Patent Owner submits that compressing a portion of the uncompressed data




would not ensure that resources are used for compression only and computational resources are

conserved when compression is not effective.

Specifically, Kawashima discloses that "the loss-less data compression technique is of

such a nature that a compression ratio at which to compress data , , , remains unknown until all

the data is compressed because the compression data varies depending on the content of the data

to be compressed." (Kawashima at 2:13-19.) Therefore, compressing a portion of the

uncompressed data does not resolve this problem posed by Kawashima (i.e., that the

compression ratio remains unknown until all of the data is compressed), because the compression

data varies depending on the content of the data to be compressed.

(c) Kawashima Discloses that Compressing a Portion of Data May Result in Errors.

Kawashima appears to disclose that when a portion of the pre-compression data is

compressed and is used to determine the predicted compression ratio, the accuracy of the

predicted compression ratio depends on attributes of the pre-compression data. "If all the pre-

compression data is text data, for example, then a predicted compression ratio ... suffers only a

small error with respect to actual compression ratio , .... " (Kawashima at 36:8-14). "If,

however, the pre-compression data . , . comprises data having different attributes , .. then an

expected final compression ratio would tend to suffer a larger error .... " (Id. at 36:15-20). In

order to overcome the "large error," Kawashima discloses a method to multiply a quotient by a

weighting coefficient corresponding to a type of data to produce a predicted compression ratio

(Id at 36:21-27). By using this technique, any error of the predicted compression ratio can be

minimized. (Id at 36:28-32). Therefore, it is improbable that use of Kawashima's system in

combination with Sebastian teachings would result in conservation of computational resources.




Moreover, it is likely that the combination of Kawashima' s system with Sebastian would

result in determinations based on predicted compression ratios with large errors and would

require considerably more computational analysis to overcome these errors. This is further

supported by Kawashima's statements that such errors are only minimized and not eliminated.

(Kawashima at 8:28.)

In response to Patent Owner arguments of September 23, 2010, the RAN states:

(RAN if 25.)

In response to PO's arguments on page 25 of PO Response that Kawashima allegedly teaches errors that need to be corrected by "a method to multiply a quotient by a weighting coefficient corresponding to a type of data to produce a predicted compression ratio," the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.

Patent Owner respectfully disagrees and maintains that the extra steps performed by

Kawashima to correct any error that might occur, is an additional reason why it is improbable

that use of Kawashima's system in combination with Sebastian teachings would result in

conservation of computational resources (the reason alleged in the RAN that it would have been

obvious to a person of ordinary skill in the to combine Sebastian and Kawashima).

Because of these uncertainties, the RAN has not provided a permissible basis for

combining Sebastian and Kawashima. The RAN' s assertion that it would have been obvious to a

person of ordinary skill in the art to combine Sebastian and Kawashima is unsupported by the

evidence of record. Specifically, the Third Party Requestor's declarant did not opine on this

issue. However, Patent Owner's declarant concluded that such a combination would not be




obvious. (Modestino Deel. ii 31 .) Thus, the rejection should be reversed because there is no

record evidence to support such a rejection.

5. Conclusion

Accordingly, Patent Ovvner respectfully requests that the rejection of claim 33 be

reconsidered and that the rejection be reversed. Also, at least based on its respective dependency

to claim 33, as well as for its own respective distinguishing featmes, Patent Ovvner respectfully

requests that the rejection of claim 36 be reconsidered and reversed.




J. Conclusion

Based on Realtime's foregoing arguments, all of the outstanding rejections should be

reversed.

Date: ....... Anril 2L 2011

1100 New York Avenue, N.W. Washington, D.C. 20005-3934 (202) 371-2600

1343610_1.DOC

Respectfully submitted,

Donald J. Featherstone Registration No. 33,876

Attorneys for Patent Owner



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