Ex Parte Chiu et al

Patent Trial and Appeal Board

Mar 30, 2016

11783955 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111783,955 04/13/2007
108359 7590 04/01/2016
Sony Corporation of America/EVS
Intellectual Property Department
16535 Via Esprillo
MZ 1036
San Diego, CA 92127
FIRST NAMED INVENTOR
Vincent Chiu
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.
50W8687.02 1264
EXAMINER
ADAMS, EILEEN M
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
EVS@am.sony.com
Megan.Steltzer@am.sony.com
vida.mueller@am. sony .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT CHIU and JOSEPH MACIEL
Appeal2014-005579
Application 11/783,955 1
Technology Center 2400
Before ELENI MANTIS MERCADER, NATHAN A. ENGELS, and
STACY B. MARGOLIES, Administrative Patent Judges.
MARGOLIES, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action rejecting claims 1-21. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Sony Corporation.
App. Br. 2.
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SUMMARY OF THE INVENTION
The invention is directed encoding and storing image files on an
optical disc and building a navigational structure that is used to
accommodate playback of the images. See Abstract.
Claims 1 and 2 are illustrative of the subject matter on appeal and are
reproduced below, with disputed limitations emphasized:
1. A method for converting digital images and storing them
for playback on an optical disc player, the method comprising:
accessing image files stored on an external device and
having a digital image format;
decoding one of the image files to provide a decoded
image file as raw digital image data;
encoding the decoded image file to provide an encoded
image file having a video file format;
storing the encoded image file on an optical disc in a
location designated for video files;
iteratively repeating the decoding, encoding, and storing
steps for each of one or more remaining image files to compile
a series of encoded image files having the video file format on
the optical disc;
building a navigation structure when the encoded image
file having a video format is encoded; and
updating the navigation structure when each of the one
or more remaining image files is encoded.
2. The method of claim 1, wherein building a navigation
structure comprises:
retaining information corresponding to each encoded
image file that is stored on the optical disc;
building the navigation structure for the series of
encoded image files from the retained information; and
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storing the navigation structure on the optical disc in a
location designated for navigational information.
REFERENCES AND REJECTIONS
The Examiner rejected claims 1-5, 7-11, and 13-17 under 35 U.S.C.
§ 103(a) as being unpatentable in view of Bourke (US 2006/0200744 Al;
Sept. 7, 2006), Grandbois (US 6,188,835 Bl; Feb. 13, 2001), and Ricci (US
2007/0031112 Al; Feb. 8, 2007). Final Act. 4--18.
The Examiner rejected claims 6, 12, and 18 under 35 U.S.C. § 103(a)
as being unpatentable in view of Bourke, Grandbois, Ricci, and Koizumi
(US 2007/0116130 Al; May 24, 2007). Final Act. 18-19.
The Examiner rejected claims 19-21under35 U.S.C. § 103(a) as
being unpatentable in view of Bourke, Grandbois, Ricci, and Smelt (US
6,349,077 Bl; Feb. 19, 2002). Final Act. 20-23.
ISSUES
The issues are:
(i) whether the Examiner erred in finding that the combination of
Bourke, Grandbois and Ricci teaches or suggests "building a navigation
structure when the encoded image file having a video format is encoded"
and "updating the navigation structure when each of the one or more
remaining files is encoded," as recited in independent claim 1 and similarly
recited in independent claims 7 and 13;
(ii) whether the Examiner erred in finding that the combination of
Bourke, Grandbois and Ricci teaches or suggests "retaining information
corresponding to each encoded image file that is stored on the optical disc"
and "building the navigation structure for the series of encoded image files
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from the retained information," as recited in dependent claim 2 and similarly
recited in dependent claims 8 and 14.
ANALYSIS
Independent claims 1, 7, and 13
Appellants argue that the combination of Bourke, Grandbois, and
Ricci does not teach or suggest building a navigation structure when an
image file is encoded and updating the navigation structure when the
remaining files are encoded, as required by independent claims 1, 7, and 13.
See App. Br. 7-12. Specifically, Appellants argue that Bourke does not
disclose building the navigation structure when encoding because Bourke
discloses a dual transcoding processing in which subtitle formats are first
passed to a first transcoder that produces raw data and then passed to a
second transcoder. App. Br. 8. Appellants also argue that Ricci does not
remedy the deficiencies of Bourke because Ricci likewise discloses two-
stage transcoding that first creates an MPEG file that is not fully compliant
with modem DVD standards, and then formats that file to make it fully
compliant. App. Br. 11.
The Examiner responds that Ricci discloses the claimed features.
Ans. 24--28. Specifically, the Examiner finds that Ricci discloses encoding
files to include formatting in compliance with DVD standards, and inserting
navigation packs into the encoded MPEG bitstream. Ans. 28.
We are not persuaded that the Examiner erred. Claim 1 is broadly
drafted and does not specify the type or extent of "encoding" other than
reciting that the encoded image file has a "video file format." Appellants'
specification also discloses that navigation information is stored during the
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iterative process of decoding, encoding, and storing, and that the navigation
structure is built at the end of the iterative process. See, e.g., Spec. i-fi-1 46-
49, Fig. 4. Similarly, Ricci discloses an encoding process which includes
encoding files into a multimedia format compliant for playback on an optical
disc, such as MPEG-2, and inserting navigation packs into the MPEG
bitstream. See Ricci i1 31, Fig. 3. Thus, Ricci discloses building a
navigation structure when the file having a video format is encoded, as
claimed.
The Examiner also finds, and we agree, that Ricci teaches updating
navigation pointers after new files are added, and Bourke teaches iteratively
repeating the decoding, encoding, and storing steps for each of the remaining
image files to compile a series of encoded image files. See Ans. 6-8, 26-27;
Ricci i-fi-147--48; Bourke i-fi-15, 6, 54, 79-89, 99. Appellants fail to explain
how the combined teachings of the references fail to teach or suggest
building a navigation structure when the encoded image file having a video
format is encoded, and updating the navigation structure when each of the
remaining image files is encoded. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 415--422 (2007) (criticizing a rigid approach to determining
obviousness based on the disclosures of individual prior art references, with
little recourse to the knowledge, creativity, and common sense that a skilled
artisan would have brought to bear when considering combinations or
modifications); In re Keller, 642 F .2d 413, 425 (CCP A 1981) ("The test for
obviousness is not ... 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
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ordinary skill in the art."). The Examiner finds, and we agree, that the
claimed invention would have been obvious to one of ordinary skill in the art
because of the benefit taught by Ricci of providing a mechanism for accurate
presentation during playback of video, and that updating navigation
information is required for accurate presentation of encoded video data. See
Ans. 8.
For the foregoing reasons, we sustain the Examiner's obviousness
rejection of claims 1, 13, and 18 in view of Bourke, Grandbois, and Ricci.
Dependent claims 2-6, 8-12, and 14-21
Appellants do not separately address the limitations added by
dependent claims 3---6, 9-12, and 15-21, and rely exclusively on their
arguments for the independent claims. See App. Br. 12-14. We therefore
sustain the Examiner's obviousness rejections of those claims for the reasons
explained above.
With respect to dependent claims 2, 8, and 14, Appellants raise the
additional argument that the Examiner erred in finding that the combination
of Bourke, Grandbois, and Ricci teaches or suggests retaining information
corresponding to each encoded image file and building the navigation
structure from the retained information. App. Br. 12-13. Specifically,
Appellants argue that Bourke's menu that enables navigation by a user is not
a navigation structure that is retained, built, and stored. Id. at 13.
We are not persuaded that the Examiner erred. The Examiner finds,
and we agree, that the combination of Bourke, Grandbois, and Ricci teaches
or suggests the features recited in claims 2, 8, and 14. See Ans. 8-12; Final
Act. 8-12. Grandbois discloses retaining information corresponding to each
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encoded image file that is stored on the optical disc. Grandbois Abstract,
2: 10-13, 2:28-31. Ricci discloses building a navigation structure based on
information corresponding to each encoded file. Ricci i-f 4 7. Bourke
discloses storing the navigation structure. Bourke i-f 81. The Examiner
finds, and we agree, that a skilled artisan would have combined the
teachings of the references because retaining an updated navigation structure
that is based on information corresponding to each video file provides the
benefit taught by Ricci of providing an accurate presentation of the encoded
video data. See Ans. 9-12. Appellants fail to explain how the combined
teachings of the references fail to suggest the features recited in claims 2, 8,
and 14. We therefore sustain the Examiner's obviousness rejection of
claims 2, 8, and 14.
DECISION
We affirm the Examiner's rejection of claims 1-5, 7-11, and 13-17
under 35 U.S.C. § 103(a) as being unpatentable in view of Bourke,
Grandbois, and Ricci.
We affirm the Examiner's rejection of claims 6, 12, and 18 under 35
U.S.C. § 103(a) as being unpatentable in view of Bourke, Grandbois, Ricci,
and Koizumi.
We affirm the Examiner's rejection of claims 19-21 under 3 5 U.S. C.
§ 103(a) as being unpatentable in view of Bourke, Grandbois, Ricci, and
Smelt.
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).
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AFFIRMED
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