Ex Parte Ackley

Board of Patent Appeals and Interferences

Jul 18, 2011

10960385 (B.P.A.I. Jul. 18, 2011)

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.
10/960,385 10/06/2004 Jonathan Ackley 0260116 4369
63649 7590 07/19/2011
DISNEY ENTERPRISES
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
07/19/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN ACKLEY
____________

Appeal 2009-013732
Application 10/960,385
Technology Center 2100
____________

Before JOHN A. JEFFERY, CAROLYN D.THOMAS, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013732
Application 10/960,385
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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 18 and 21-35. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention displays and controls the playback of
prerecorded media. Simultaneously, and without interrupting the video
playback, a user interface is overlaid on the video image that permits the
user to control scene selection, settings and viewing rights. See Abstract.
Claim 18 is illustrative with key disputed limitations emphasized:
18. A method of displaying scenes in a video navigation
system, comprising:
playing a main video stream on a display connected to a
media player;
displaying a user interface to navigate available scenes
by displaying selectable thumbnails on the display connected to
the media player;
receiving a first user selection of a first one of the
selectable thumbnails;
starting to play a thumbnail video stream of a scene
portrayed in the first one of the selectable thumbnails while
playing the main video stream on the display, in response to the
first user selection.

The Examiner relies on the following as evidence of unpatentability:
Srinivasan US 6,357,042 B2 Mar. 12, 2002

Appeal 2009-013732
Application 10/960,385
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THE REJECTION
The Examiner rejected claims 18 and 21-35 under 35 U.S.C. § 102(b)
as anticipated by Srinivasan. Ans. 3-10.1

CONTENTIONS
Regarding representative claim 18, the Examiner asserts that
Srinivasan discloses a method for displaying scenes in a video navigation
system which includes a display connected to a media player. Figures 14
and 15 of Srinivasan are said to depict thumbnail representations of video
clips which may be selected by a user and subsequently displayed within the
display. Ans. 3-5.
Appellant argues that Srinivasan does not disclose the ability of
playing a thumbnail video stream while playing the main video stream, as
set forth in independent claims 18 and 28, nor does Srinivasan disclose the
detection of an alternate scene for a present scene being displayed on the
display and then the automatic display a selectable thumbnail in response to
such detection, as set forth in independent claims 24 and 32. App. Br. 6-11;
Reply Br. 2-5. The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claims 18 and 21-35
by finding that Srinivasan anticipates (1) a video navigation system which
includes a display connected to a media player which permits selected

1 Throughout this opinion, we refer to the Reply Brief filed May 1, 2009, the
Appeal Brief filed December 5, 2008, and the Examiner’s Answer mailed
March 17, 2009.
Appeal 2009-013732
Application 10/960,385
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thumbnail video streams to be played while playing the main video stream,
and (2) a video navigation system that detects an alternate scene for a
present scene being displayed and then automatically displays a selectable
thumbnail in response to such detection?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

1. Srinivasan discloses an authoring system which permits separately-
authored metadata to be inserted into a video data stream. See
Srinivasan, Abstract.
2. Figure 15 of Srinivasan depicts a graphic user interface of a video
editor. Col. 5 lines 39 through 41.
3. The graphic user interface of Figure 15 of Srinivasan includes a
display window 202 for displaying a video stream. Col. 25 line 48.
4. The graphic user interface of Figure 15 of Srinivasan includes a
workspace 206 for storing multiple markers 206a-206d, which are
described as “bitmap thumbnails.” Col. 25 lines 60 through 64.
5. An editor may select a particular thumbnail within workspace 206
and “then optionally view that portion (clip) in window 202 at
either normal or accelerated rate.” Col. 26 lines 58 through 61.

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ANALYSIS
The Examiner has urged that Srinivasan discloses a system, such as
that sets forth within independent claims 18 and 28, wherein “[v]ideo clips
can be viewed within their respective thumbnails without being displayed on
the main display window.” Ans. 7. Like Appellant, we are unable to find
this disclosure within Srinivasan. Indeed, thumbnails 206 are described by
Srinivasan as bit-mapped representations of a first frame within the
associated video clip. Col. 26 lines 20 through 23. This is supported by our
Finding of Facts above. (FF1-4). The viewing of a bit-mapped
representation of a first frame of a video cannot fairly be said to be the
viewing of a video clip, as required by Appellant’s claim, since a bitmap is
merely a stationary spatially mapped array of bits..
With respect to claims 24 and 32, the Examiner asserts that object
tracking module 13, which Srinivasan teaches may be utilized to track image
entities in a video presentation, along with user thumbnail selection, are
together somehow suggestive of the detection of an alternate scene for a
scene being displayed and the automatic display of a thumbnail including
that alternate scene in response to the detection. Ans. 10. Srinivasan
teaches that tracking module 13 is utilized to “determine a pixel signature
associated with a visual entity to be tracked in a video display, and then to
determine the path of the pixel signature in the display as the path of the
image entity to be tracked.” Col. 7, ll. 16-20. Consequently, we are
unpersuaded that Srinivasan’s path determining features are suggestive of
the alternative scene features set forth expressly in claims 24 and 32.
Consequently, on the record before us, we cannot sustain the
Examiner’s rejection of claims 18 and 21-35.

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CONCLUSION
The Examiner erred in rejecting claims 18 and 21-35 under § 102.

ORDER
The Examiner’s decision rejecting claims 18 and 21-35 is reversed.

REVERSED

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