Ex Parte Clapper

Board of Patent Appeals and Interferences

Aug 17, 2004

09528628 (B.P.A.I. Aug. 17, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte EDWARD O. CLAPPER

Appeal No. 2004-0172
Application No. 09/528,628

ON BRIEF

Before HAIRSTON, KRASS and BARRY, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 31-44.
The invention is directed to a system for facilitating
access to digital video by permitting a user to indicate a
starting frame of a video sequence and a time interval of the
sequence, with an automatic display of a thumbnail depiction of a
series of frames from the selected starting frame to a frame
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Application No. 09/528,628
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sufficient to fill the time interval.
Representative independent claim 31 is reproduced as
follows:
31. A method comprising:
receiving an indication of a starting frame of a video
sequence;
automatically displaying a thumbnail depiction of the
selected starting frame of the sequence;
receiving an indication of the time interval of the
sequence; and
automatically displaying a thumbnail depiction of a series
of frames following said starting frame sufficient to fill said
time interval.
The examiner relies on the following references:
Shore et al. (Shore) 5,760,767 Jun. 2, 1998
Desai et al. (Desai) 6,034,746 Mar. 7, 2000
Claims 31, 35-37 and 41-43 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Shore.
Claims 32-34, 38-40 and 44 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Shore and Desai.
Reference is made to the brief and answer for the respective
positions of appellant and the examiner.
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Application No. 09/528,628
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OPINION
At the outset, we note that, in accordance with appellant’s
grouping of claims at page 6 of the brief, all claims will stand
or fall with independent claim 31.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984),
citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
It is the examiner’s position that Shore discloses all of
the claimed subject matter recited in claim 31 in Figure 3,
specifically by elements 320, 334, 336 and 395 depicted therein.
We disagree.
Instant claim 31 requires “automatically displaying” a
thumbnail depiction of a selected starting frame of a sequence of
frames. It also requires “automatically displaying” a thumbnail
depiction of a series of frames from the selected starting frame
up to a number of frames sufficient to fill an indicated time
interval.
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Application No. 09/528,628
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The examiner alleges that Shore teaches such an automatic
display by asserting “that any process on a computer system is
considered an ‘automatic’ process” (answer-page 6).
Shore does appear to disclose the display of clips generated
by a user and that log cards provide a visual representation of
those clips (see column 4, lines 56-65), but the examiner has
pointed to nothing within the disclosure of Shore suggesting that
there is any “automatic” display of a thumbnail depiction of
frames and a subsequent series of frames, as claimed.
With regard to the examiner’s assertion that any process on
a computer system is considered an “automatic” process, we do not
agree. While a computer system may permit certain automatic
processes, not every process in such a system may be considered
“automatic.” For example, input required from a user is not
automatic and a process to be carried out on the computer system
may await some manual entry or confirmation by a user before
performing some processes, in which case, the start of such a
process would not be said to be “automatic.”
In any event, the automatic display of the thumbnail
depiction in instant claim 31 occurs as a result of specific
inputs, to wit, a selected starting frame and a time interval of
a sequence. The examiner has pointed to nothing in Shore that
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shows such an automatic display of a thumbnail depiction of a
selected starting frame of a sequence and of a series of frames
following the starting frame sufficient to fill an indicated time
interval.
Accordingly, we will not sustain the rejection of claims 31,
35-37 and 41-43 under 35 U.S.C. § 102(b). We also will not
sustain the rejection of claims 32-34, 38-40 and 44 under 35
U.S.C. § 103 since Desai does not provide for the deficiencies of
Shore.
The examiner’s decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
EK/RWK
Appeal No. 2004-0172
Application No. 09/528,628
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TIMOTHY N. TROP
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