Ex Parte Ackley et al

Patent Trials and Appeals Board

Aug 9, 2018

13590116 - (D) (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/590,116 08/20/2012
63649 7590 08/13/2018
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Jonathan Ackley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
02601 l 1C2 1016
EXAMINER
CHOWDHURY, NIGAR
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN ACKLEY, CHRISTOPHER T. CAREY,
BENNET S. CARR, and KATHLEEN S. POOLE
Appeal2018-000739
Application 13/590,116
Technology Center 2400
Before JUSTIN BUSCH, JOYCE CRAIG, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 46-48, 50-52, 54--57, 59---61, and 63-
69, which constitute all claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellants' invention is generally directed to a "system and method of
programmatic window control[, which] provides video playback devices
with the ability to display multiple media streams simultaneously on the
same screen." Spec. ,r 14. Appellants' invention "expands on the concept of
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Application 13/590,116
picture-in-picture for video playback devices by providing such a format
along with customizable features" such as "placement, size, aspect ratio,
cropping, scale, transparency, tint, contrast, and cropping of the media."
Spec. ,r 15. The invention further relates to synchronizing video streams to
display multiple video streams synchronously. Spec. ,r 16. Certain
embodiments "give the user the ability to composite video streams against
each other, allowing for bluescreen-type overlays." Spec. ,r 72. This is
accomplished by maximizing the size of the secondary display to completely
overlay the first video. Spec. ,r 72, Fig. 10. Claims 46, 55, and 64 are
independent claims. Claim 46 is reproduced below:
46. A media playback device comprising:
a processor;
at least one media interface configured to obtain a first
video and a second video; and
a control program for execution by the processor to:
advance the first video at a first video frame rate;
advance the second video at a first video frame rate;
overlay the second video on the first video for
generating a multi-layered overlay with the first video
being a background layer and the second video being
another layer on the background layer, wherein at least a
portion of the second video overlaying the first video is an
alpha transparent portion; and
playback the multi-layered overlay on a display.
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REJECTIONS 1
Claims 46, 50, 52, 55, 59, 61, 64, and 69 stand rejected under
35 U.S.C. § 103 as obvious in view of Dean (US 5,914,757; June 22, 1999)
and Ma (US 2004/0201608 Al; Oct. 14, 2004). Final Act. 6-11, 16-21.
Claims 47, 48, 56, 57, 65, and 66 stand rejected under 35 U.S.C. § 103
as obvious in view of Dean, Ma, and Kim (US 2003/0208751 Al; Nov. 6,
2003). Final Act. 11-12, 22-23.
Claims 51, 60, 67, and 68 stand rejected under 35 U.S.C. § 103 as
obvious in view of Dean, Ma, and Endress (US 5,726,715; Mar. 10, 1998).
Final Act. 13-14, 23-25.
Claims 54 and 63 stand rejected under 35 U.S.C. § 103 as obvious
in view of Dean, Ma, and Ahn (US 6,191,823 Bl; Feb. 20, 2001). Final
Act. 14--16.
ANALYSIS
CLAIMS 46, 47, 50-52, 54--56, 59---61, AND 63---69
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
1 The Examiner includes claim 60, which depends from claim 55, in the
rejection over Dean and Ma. Claim 60, however, includes an additional
limitation commensurate in scope to the additional limitation recited in
claim 51, which depends from claim 46. Claim 51 stands rejected in view of
the combination of Dean, Ma, and Endress, and the Examiner finds Endress
teaches the additional limitation recited in claim 51. As Appellants point
out, the Examiner presumably intended to include claim 59, not claim 60, in
the obviousness rejection over Dean and Ma. See App. Br. 7. Similarly, the
Examiner presumably intended to include claim 60, not claim 59 in the
obviousness rejection over Dean, Ma, and Endress. See App. Br. 11.
Because Appellants understood the rejection, we treat the error as harmless,
but encourage the Examiner to clarify and/or correct the rejection should this
matter undergo further prosecution.
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considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Appellants argue
claims 46, 50, 52, 55, 60, and 61 as a group. App. Br. 7-9. We select claim
46 as representative of the group. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds Dean teaches or suggests nearly every limitation
recited in claim 46. Final Act. 6-8 (citing Dean 4:32-34, 5:2-25, Fig. 1).
The Examiner finds Ma teaches the remaining limitation recited in claim 46,
namely "wherein at least a portion of the second video overlaying the first
video is an alpha transparent portion." Final Act. 8-9 (citing Ma ,r 15,
Figs. 1, 6).
The Examiner cites a dictionary that defines "overlay" as "to cover
(something) with a layer of another material" and finds Dean teaches a
second video overlaying a primary video to generate its PIP display.
Ans. 24. The Examiner, therefore, finds the combination of Dean and Ma
teaches the disputed limitation, which recites:
overlay the second video on the first video for generating a multi-
layered overlay with the first video being a background layer and
the second video being another layer on the background layer,
wherein at least a portion of the second video overlaying the first
video is an alpha transparent portion
(the "disputed limitation"). Ans. 24--25; See, e.g., Final Act. 6-9.
Appellants argue Dean does not teach or suggest overlaying a second
video on a first video because "Dean merely performs synchronizing the
secondary video signal and the primary video signal, such that a line from
the secondary video signal can be substituted for a line from the primary
video signal in a buffer when needed." App. Br. 7. Appellants contend
Dean only teaches the appearance of an overlay, whereas the claims require
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"an actual overlay." Reply Br. 2-3. Appellants assert Dean's process of
substituting video signal lines does not actually overlay one video line on
top of another. App. Br. 8.
We agree with the Examiner that the broadest reasonable
interpretation of" overlay" encompasses Dean's disclosed technique of
replacing a line of video from a primary video source with a line of video
from a secondary video source. See Ans. 24. The dictionary definition the
Examiner cites is consistent with the plain meaning of overlay and with
Appellants' disclosure. For example, Appellants' Specification describes
conventional PIP on a television as overlaying one broadcast over another.
Spec. ,r 10 ("A second television broadcast is overlaid on the primary
television broadcast in a rectangular-shaped box substantially near the comer
of the television display. The rectangular-shaped box is positioned such
that it may be blocking a desirable portion of the first broadcast."). The
Specification further identifies a particular type of overlay in which both
the underlying and overlaid images may be seen as a "bluescreen-type
overlay[]." Spec. ,r 72.
Moreover, claim 46 simply requires generating a multi-layered
overlay including with a first video being a background layer and a portion
of a second video, which overlays the first video, is an alpha transparent
portion. The Examiner finds Dean's disclosure of displaying a secondary
video stream in a PIP picture over a main video stream displayed on the
entirety of the screen where the main video stream and secondary video
streams are synchronized teaches a second video overlaying a first. See
Final Act. 6-8 (citing Dean 4:32-34, 5:2-25, Fig. 1). Claim 46 does not
recite a particular method of generating the overlay ( or blending the video
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streams) and, therefore the details of how the overlay is generated is not
relevant to the obviousness of the claim. Thus, the fact that Dean substitutes
lines of the second video for lines of the first video is not fatal to the
Examiner's conclusion of obviousness.
Furthermore, as the Examiner notes, claim 46 is rejected as obvious
in view of the combined teachings of Dean and Ma. See Ans. 25. The
Examiner relies on Ma as teaching transparent windows where one window
overlays another. See Final Act. 8-9 (citing Ma ,r 15, Figs. 1, 6). Ma's
Figure 6, which the Examiner cites, depicts an embodiment where a main
window "is primarily used to display" an active window and the main
window "includes a PIP video window 610 used to display a nonactive
video. Ma ,r 51. In some embodiments, the PIP window has a lower priority
and its transparency "can be set to allow the user to see the active video 620
through the nonactive video," which is the video display in the PIP window.
Ma ,r 52. The Examiner finds the combination of these disclosures in Dean
and Ma teaches the disputed limitation.
Appellants assert nothing in Dean or Ma would suggest modifying
Dean's substitution approach and that combining Ma with Dean would be
opposite to Dean's teaching such that an ordinarily skilled artisan "would
not modify Dean to eliminate synchronization of the video signals, which is
the crux of Dean's disclosure, and instead use the alpha blending mentioned
in Ma." App. Br. 8; see also App. Br. 9 (arguing that, "because Dean does
not lay video frames on top of each other ... using transparent frames in
Dean would not make sense").
The Examiner points to Ma's disclosure to support proposed
combination. See Final Act. 9. More specifically, the Examiner concludes it
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would have been obvious to an ordinarily skilled artisan to combine Ma's
teaching of the second, overlaid video having at least a portion that is alpha
transparent with Dean's system in order to more readily distinguish the
picture-in-picture (PIP) picture from the main picture, thereby increase user
accessibility. Final Act. 9; see Ma ,r 15 ("The characteristics are altered to
focus the attention of the user to higher priority video windows.").
Accordingly, we are not persuaded by Appellants' argument that neither
Dean nor Ma provide a motivation for the proposed modification.
Nor are we persuaded by Appellants' argument that the proposed
combination would eliminate Dean's purpose of synchronizing the video
signals. Appellants present no persuasive argument or evidence that the
proposed combination would eliminate Dean's synchronization. In fact,
we understand the Examiner's proposed combination would include both
Dean's synchronization and PIP techniques, but would merely incorporate
Ma's alpha blending so that the PIP picture can be transparent. Dean may
not disclose using a transparent PIP, but we see nothing in Appellants'
arguments or in Dean that would suggest Dean's PIP video stream would
not function if it were made transparent, and we see no reason a person of
ordinary skill in the art would be incapable of combining Dean and Ma's
disclosures to generate a video display having a transparent video stream in
the PIP picture. In fact, as discussed above, Ma explicitly discloses such an
embodiment. Ma ,r,r 51-5 2.
As mentioned above, Appellants argued claims 46, 50, 52, 55, 59, and
61 as a group. Although not argued as part of that group, Appellants' only
arguments with respect to claims 47, 51, 54, 56, 60, 61, and 63 is that they
depend from and further limit one of independent claims 46 and 55 and are
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patentable for the same reasons presented with respect to claims 46 and 55.
App. Br. 9-12. Appellants separately argue claim 64, but present
substantively similar arguments as those presented with respect to claim 46.
App. Br. 12-13. With respect to claims 65---69, which depend from claim
64, Appellants argue only that claims 65-69 are patentable for the same
reasons asserted with respect to claim 64. App. Br. 13-14. Accordingly, for
the above reasons, we are not persuaded the Examiner erred in rejecting:
(1) claims 46, 50, 52, 55, 59, 61, 64, and 69 as obvious in view of Dean and
Ma; (2) claims 47, 56, 65, and 66 as obvious in view of Dean, Ma, and Kim;
(3) claims 51, 60, 67, and 68 as obvious in view of Dean, Ma, and Endress;
and (4) claims 54 and 63 as obvious in view of Dean, Ma, and Ahn.
CLAIMS 48 AND 57
Claims 48 and 57 incorporate the limitations of claims 46 and 55 from
which they respectively depend. Appellants argue claims 48 and 57 are
not obvious in view of Dean, Ma, and Kim because Kim does not cure the
alleged deficiencies of the Dean-Ma combination. Specifically, Appellants
assert Kim's disclosure of adjusting the PIP picture size simply changes the
amount of screen the PIP picture occupies, but does not disclose, teach, or
suggest overlaying video frames from one screen on top of video frames
from another screen. App. Br. 10. We find this argument unpersuasive
because we are not persuaded the combination of Dean and Ma fails to
disclose claim 46' s disputed limitation.
Appellants also argue the combination of Dean, Ma, and Kim fails to
teach or suggest "the second video completely overlays the first video on the
display" (the "complete overlay limitation"), as further recited in claims 48
and 57. The Examiner finds Kim teaches or suggests the complete overlay
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limitation because Kim discloses adjusting the PIP picture size, which
teaches or suggests making the PIP picture cover the entire main screen.
Final Act. 12 ( citing Kim ,r 51, Fig. 5).
As discussed above, we agree with the Examiner that the combination
of Dean and Ma teaches or suggest the subject matter recited in claims 46
and 55. Additionally, we agree with the Examiner that the combination of
Dean and Ma, which teaches or suggests a transparent PIP picture, in further
combination with Kim's disclosure of changing the PIP picture at least
suggests the ability to change the transparent PIP and, therefore, teaches or
suggests the complete overlay limitation. Accordingly, for these reasons, we
are not persuaded the Examiner erred in finding claims 48 and 57 obvious in
view of the combination of Dean, Ma, and Kim.
DECISION
We affirm the Examiner's decision to reject claims 46-48, 50-52, 54--
57, 59---61, and 63---69 under 35 U.S.C. § 103 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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