AUTODESK, INC.

Patent Trials and Appeals Board

Mar 24, 2021

2020000005 (P.T.A.B. Mar. 24, 2021)

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.
13/651,317 10/12/2012 Justin Frank Matejka AUTO/1247US 2709
107456 7590 03/24/2021
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
BLAUFELD, JUSTIN R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
03/24/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bkistler@artegislaw.com
jmatthews@artegislaw.com
sjohnson@artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN FRANK MATEJKA,
TOVI GROSSMAN, and GEORGE FITZMAURICE
Appeal 2020-000005
Application 13/651,317
Technology Center 2100
Before ALLEN R. MacDONALD, DAVID J. CUTITTA II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4–13, 15–20, 22, and 23, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Autodesk, Inc. as the real party in
interest. Appeal Br. 3.
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Application 13/651,317

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TECHNOLOGY
The application relates to “[m]anually searching for a specific location
in a digital video file by ‘scrubbing,’ i.e., by moving a cursor along a
timeline slider associated with the video,” during which a “low-resolution
version of the video is displayed instead of the streaming, high-resolution
version of the video.” Spec. ¶¶ 3, 12. “Because the low-resolution version
is fully downloaded before navigating the video takes place, any portion of
the low-resolution version is available and any appropriate frame can be
immediately displayed whenever a cursor is moved along a video timeline
slider,” even though the full-resolution version may not yet have streamed
that portion. Id. ¶ 12.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method for traversing streaming video files, the method
comprising:
receiving a fully-downloaded representative video file of
a first streaming video file, wherein the fully-downloaded
representative video is a complete version of the representative
video file that includes less information than the first streaming
video file, but comprises each and every frame included in the
first streaming video file;
receiving and displaying the first streaming video file;
upon receiving a selection of a navigation tool associated
with the first streaming video file, displaying the fully-
downloaded representative video file in place of the first
streaming video file;
while displaying the fully-downloaded representative
video file in place of the first streaming video file, receiving a
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Application 13/651,317

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navigation selection for a first selected portion of the first
streaming video file; and
based on navigation information that is associated with the
fully-downloaded representative video file and that allows any
portion of the first streaming video file to be selected, causing a
playback engine to navigate to the first selected portion of the
first streaming video file.
REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Fleming US 2006/0288392 A1 Dec. 21, 2006
Kandekar US 2009/0292819 A1 Nov. 26, 2009
Lin ’440 US 2010/0303440 A1 Dec. 2, 2010
Lin ’679 US 2011/0191679 A1 Aug. 4, 2011
Mukherjee US 8,391,370 B1 Mar. 5, 2013
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C.
§ 103(a):
Claims References Final Act.
1, 2, 6–10, 12,
13, 17–19, 22, 23
Lin ’679, Lin ’440, Mukherjee 6
4, 5, 15, 16 Lin ’679, Lin ’440, Mukherjee, Fleming 17
11, 20 Lin ’679, Lin ’440, Mukherjee, Kandekar 20
ISSUES
1. Did the Examiner err in finding Mukherjee teaches or suggests
“receiving a fully-downloaded representative video file . . . that . . .
comprises each and every frame included in the first streaming video file,”
as recited in claim 1?
2. Did the Examiner err in finding Kandekar teaches or suggests
“prior to receiving the fully-downloaded representative video file, receiving
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Application 13/651,317

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an initial, fully-downloaded representative video file that includes less
information than the fully-downloaded representative video file and spans
the entire first streaming video file,” as recited in claim 11?
ANALYSIS
Claims 1, 2, 4–10, 12, 13, 15–19, 22, and 23
Independent claims 1 and 12 recite “receiving a fully-downloaded
representative video file . . . that . . . comprises each and every frame
included in the first streaming video file.”
Appellant argues that although Mukherjee discloses a full-resolution
video bitstream and a lower-resolution video bitstream, its lower-resolution
video bitstream “includes only those frames of the full-resolution video
bitstream that have been previously acknowledged by the decoder,” not
“each and every frame” as claimed. Appeal Br. 10–11 (citing Mukherjee
4:36–58).
However, the Examiner correctly points out that “the Appeal Brief
omits three critical words that appear immediately before that teaching: ‘In
one embodiment.’” Ans. 4 (citing Mukherjee 4:37–38). “It is unreasonable
for Appellant to read a feature from this ‘one’ embodiment into every other
embodiment . . . when Mukherjee makes no suggestion that the optional
‘previously acknowledged frame’ embodiment is a critical feature of the
invention,” as evidenced by it not being in any of Mukherjee’s claims. Id.
We agree with the Examiner. Although Mukherjee may not expressly
disclose an embodiment in which “each and every frame” is included,
Mukherjee’s disclosure that “[i]n one embodiment” a subset of frames is
used would have at least suggested to a person of ordinary skill in the art that
in other embodiments, all frames would be used. See Ans. 3–5.
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Accordingly, we sustain the Examiner’s rejections of independent
claims 1 and 12, and their dependent claims 2, 4–10, 13, 15–19, 22, and 23,
which Appellant argues are patentable for similar reasons. See Appeal
Br. 11; 37 C.F.R. § 41.37(c)(1)(iv).
Claims 11 and 20
Dependent claims 11 and 20 recite “prior to receiving the fully-
downloaded representative video file, receiving an initial, fully-downloaded
representative video file that includes less information than the fully-
downloaded representative video file and spans the entire first streaming
video file.”
According to Appellant, “Kandekar describes a system for obtaining
look-ahead segments associated with a media item during playback” in
which the system chooses “look-ahead segments that are likely to be of
interest to the user” and “[u]pon receiving a user selection of a particular
look-ahead segment, the media client switches playback from a given
segment of the media item to the look-ahead segment.” Appeal Br. 11
(citing Kandekar ¶¶ 26–29, 4, 46, Abstract). Appellant argues that
“Kandekar does not disclose that a given look-ahead segment spans the
entire media item.” Id. at 12.
The Examiner, however, determines that Appellant’s argument only
addresses “‘a given look-ahead segment’ within Kandekar’s plurality of
look-ahead segments.” Ans. 5 (emphasis added). The Examiner further
finds that Kandekar discloses selecting “one or more segments of the media
item to prefetch” that can be both after or before the current point in
playback. Id. at 6 (quoting Kandekar ¶ 28).
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Application 13/651,317

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We agree with the Examiner. For example, when starting at the
beginning of a new video, it would have been obvious for Kandekar’s “one
or more segments of the media item” collectively to span across the entire
unwatched video. See also Kandekar ¶ 45, Fig. 4A (depicting multiple
segments across a media item with “a total playback time of 2 hours and 20
minutes (02:20)”).
In the Reply Brief, Appellant newly tries to argue that “Kandekar does
not disclose that the media client receives an initial set of look-ahead
segments spanning the entire media item prior to receiving a second set of
look-ahead segments.” Reply Br. 6. However, Appellant provides no
reason why this argument was not raised in the Appeal Brief, so by
regulation we decline consideration of such a new argument in reply. See 37
C.F.R. § 41.37(c)(1)(iv) (“any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal”); 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply
brief which was not raised in the appeal brief, or is not responsive to an
argument raised in the examiner’s answer, . . . will not be considered by the
Board for purposes of the present appeal, unless good cause is shown.”).
Accordingly, we sustain the Examiner’s rejection of claims 11 and 20.
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Application 13/651,317

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OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 6–10,
12, 13, 17–
19, 22, 23
103(a) Lin ’679, Lin ’440,
Mukherjee
1, 2, 6–10,
12, 13, 17–
19, 22, 23

4, 5, 15, 16 103(a) Lin ’679, Lin ’440,
Mukherjee, Fleming
4, 5, 15, 16
11, 20 103(a) Lin ’679, Lin ’440,
Mukherjee, Kandekar
11, 20
Overall Outcome 1, 2, 4–13, 15–20, 22, 23

TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED