Ex Parte Boyle

Board of Patent Appeals and Interferences

Mar 31, 2009

09747002 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM B. BOYLE
_____________

Appeal 2009-1423
Application 09/747,002
Technology Center 2600
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Decided:1 March 31, 2009
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).
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Application 09/747,002

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 17-29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellant’s claimed invention is directed to a video system and method
storing the compressed stream of video data on a storage medium, for example, a
hard disk drive (HDD) (Spec. 2:1-2). Modified transport packets are created by
adding a predetermined number of bytes to the original transport packets (Spec.
5:19-23). The modified transport packets are stored on a medium that is
addressable on sector boundaries (Spec. 5: 24-27). The predetermined number of
sectors aligning with the modified transport packets is less than the predetermined
number of sectors aligning with the original transport packets (Spec. 5:28-6:6).
Claim 17, reproduced below, is representative of the subject matter on
appeal:
17. A method of storing a video data stream on a hard disk drive (HDD) for
efficient, non-sequential access to the stored stream of video data, the HDD having
a plurality of sectors, each sector having a first integer of user data bytes, the HDD
addressable on sector boundaries for non-sequential access, the video data stream
including a sequence of original transport packets, each original transport packet
having a second integer of bytes, the second integer of bytes different from the first
integer of user data bytes, wherein a third integer of original transport packets are
storable in a fourth integer of sectors, the fourth integer being a minimum
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number of sectors with the same number of user data bytes as the number of bytes
in the third integer of original transport packets, the method comprising:
receiving the sequence of original transport packets;
adding a fifth integer of bytes to each original transport packet to create a
sequence of modified transport packets, each modified transport packet having a
sixth integer of bytes; and
storing the sequence of modified transport packets on the HDD, wherein a
seventh integer of modified transport packets are stored in an eighth integer of
sectors, the eighth integer being a minimum number of sectors with the same
number of user data bytes as the number of bytes in the seventh integer of modified
transport packets, the eighth integer of sectors smaller than the fourth integer of
sectors.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Okamoto US 6,134,384 Oct. 17, 2000

Morinaga US 6,792,000 B1 Sep. 14, 2004
(filed Sep. 26, 2000)

The following rejection is before us for review:
The Examiner rejected claims 17-29 under 35 U.S.C. § 103(a) as being
unpatentable over Okamoto in view of Morinaga.
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OBVIOUSNESS
ISSUE
Appellant contends that the Examiner ignores features recited in independent
claims 17 and 26 regarding the alignment of the first byte in the original transport
packet and the modified transport packet (App. Br. 8).
The Examiner asserts that the combination of Okamoto and Morinaga
teaches the ability to store transport packets on a hard disk (HDD) (Ans. 10).
However, the Examiner did not respond to Appellant’s argument regarding the
asserted deficiency.
The issue before us, then, is as follows:
Has the Appellant shown that the Examiner erred by determining that the
Okamoto and Morinaga combination teaches that the predetermined number of
sectors aligning with the modified transport packets is less than the predetermined
number of sectors aligning with the original transport packets as recited in
independent claims 17 and 26?

FINDINGS OF FACT
The relevant facts include the following:
1. Neither Okamoto nor Morinaga individually or in combination teach that the
predetermined number of sectors aligning with the modified transport
packets is less than the predetermined number of sectors aligning with the
original transport packets.
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2. The Examiner has not addressed this limitation in the final rejection nor did
the Examiner respond to Appellant’s argument on how the Okamoto and
Morinaga combination teaches the limitation (Ans. 3-11).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is
met, then the burden shifts to the Appellants to overcome the prima facie case with
argument and/or evidence. Id. The Supreme Court, citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006), stated that “‘[r]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007).
“The Patent and Trademark Office (PTO) must consider all claim limitations
when determining patentability of an invention over the prior art.” In re Lowry, 32
F.3d 1579, 1582 (Fed. Cir. 1994).

ANALYSIS
Claim 17 recites “the fourth integer being a minimum number of sectors
with the same number of user data bytes as the number of bytes in the third integer
of original transport packets . . . and storing the sequence of modified transport
packets on the HDD . . . the eighth integer being a minimum number of sectors
with the same number of user data bytes as the number of bytes in the seventh
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integer of modified transport packets, the eighth integer of sectors smaller than the
fourth integer of sectors” (emphasis added). Neither Okamoto nor Morinaga
individually or in combination teaches that the predetermined number of sectors
aligning with the modified transport packets is less than the predetermined number
of sectors aligning with the original transport packets (Finding of Fact 1).
Furthermore, the Examiner has not addressed this limitation in the final rejection
nor did the Examiner respond to Appellant’s argument on how the Okamoto and
Morinaga combination teaches the limitation (Finding of Fact 2). Thus, the recited
claim 17 and commensurate limitation in claim 26 was not considered in
determining patentability of the invention over the prior art. Lowry, 32 F.3d at
1582.
For the above reasons, Appellant has shown error in the Examiner’s
rejection of claims 17 and 26 under 35 U.S.C. § 103(a). We are therefore likewise
persuaded of error in the Examiner’s obviousness rejections of claims 18-25 and
27-29 under 35 U.S.C. § 103(a) for similar reasons as these claims depend directly
or indirectly from independent claims 17 and 26.

CONCLUSION OF LAW
Under 35 U.S.C. § 103(a), Appellant has shown that the Examiner erred by
determining that the Okamoto and Morinaga combination teaches that the
predetermined number of sectors aligning with the modified transport packets is
less than the predetermined number of sectors aligning with the original transport
packets as recited in claims 17 and 26. Furthermore, dependent claims 18-25 and
27-29 fall with claims 17 and 26.
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ORDER
The decision of the Examiner to reject claims 17-29 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

KIS

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