Ex parte Crane et al.

Board of Patent Appeals and Interferences

Jul 10, 2000

08482905 (B.P.A.I. Jul. 10, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN E. CRANE, LEEANN HERRINGER,
MICHAEL SHINSKY, GERALD A. RAITZER,
MICHAEL A. OGRINC, and STEVEN T. MAYER
____________
Appeal No. 1998-1397
Application No. 08/482,905
____________
ON BRIEF
____________
Before KRASS, FLEMING, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 21-42. We reverse.
BACKGROUND
The invention at issue in this appeal relates to video
editing. Various methods of video editing are well known.
For tape-based editing, an editor cycles source tapes back and
Appeal No. 1998-1397 Page 2
Application No. 08/482,905
forth on a source video cassette recorder (VCR) or a source
video tape
recorder (VTR) to find a scene to be edited. He positions a
destination tape on a destination VCR to receive the scene
from the source tape. The scene from the source tape is then
recorded on the destination tape; this process is repeated for
each successive scene. Because it requires constant cycling
of physical tapes having slow access times, however, tape-
based editing is slow and cumbersome.
For disk-based editing, all video material is stored on a
disk drive of a computer. The computer can find any frame in
the stored video material quickly; it also keeps track of all
edit and record frames for the entire production. After
creating an edit decision list for a program, an editor
inserts source tapes in one or more VTRs and a destination
tape into a destination VCR. The computer executes the edit
decision list to record the entire edited program onto the
Appeal No. 1998-1397 Page 3
Application No. 08/482,905
destination tape. Because it requires enormous storage
capacities, however, disk-based editing is expensive.
The invention employs a computer with a disk drive for
interactive editing of video material. At any given time,
only a
small portion of video taped material is stored as video
frames on the computer’s disk. By software control, video
material is cached back and forth between the disk and source
video tapes. By this means editing is accomplished and an
edit decision list is constructed for compilation of a final
video production. The invention offers the advantage of fast
access time for editing the material on the disk while
allowing actual physical editing at the end of the project of
the actual video tape material. Furthermore, the logging of
the material onto the disk and the editing of the final tape
are done automatically.
Claim 21, which is representative for our purposes,
follows:
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Application No. 08/482,905
21. A method for editing video material using a
video source device storing video source material, a
storage device having faster access speed than the
video source device, and a display coupled to the
storage device, comprising the steps of:
transferring only a portion of a first
video scene from the video source device to the
storage device, the portion being a plurality of
sequential video frames of the first video
scene;
displaying on the display at least a part
of the transferred video scene, the displayed
part thereby representing all of the video
scene; automatically transferring
only a portion of a second video scene from the
video source device to the storage device when
needed, the portion being a plurality of
sequential video frames of the second video
scene;
automatically deleting at least a part of
the portion of the first video scene from the
storage device when needed, thereby to provide
additional storage capacity on the storage
device; and
creating an edit decision list of edit
decisions for the video material.
The references relied on in rejecting the claims follow:
Westland 4,685,003 Aug. 4, 1987
Izeki et al. (Izeki) 4,974,178 Nov. 27, 1990
(filed Nov. 20, 1987)
Mita et al. (Mita) 5,060,280 Oct. 22, 1991
(filed Mar. 22, 1990).
Appeal No. 1998-1397 Page 5
Application No. 08/482,905
Claims 21-22, 26-27, 29-30, and 37-42 stand rejected under
35 U.S.C. § 103(a) as obvious over Westland. Claims 23-25 and
31-34 stand rejected under 35 U.S.C. § 103(a) as obvious over
Westland in view of Izeki. Claim 28 stands rejected under
35 U.S.C. § 103(a) as obvious over Westland in view of Mita.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as
obvious over Westland in view of Izeki further in view of
Mita. Rather than repeat the arguments of the appellants or
examiner
in toto, we refer the reader to the briefs and answer for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
the totality of the record, we are persuaded that the examiner
erred in rejecting claims 21-42. Accordingly, we reverse.
Appeal No. 1998-1397 Page 6
Application No. 08/482,905
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these principles in mind, we consider the appellants’
argument and the examiner’s reply.
The appellants’ argument follows.
[A]lthough Westland does disclose providing a
“snapshot” (still picture) of one or two frames of
each video scene, and also recognizes that a fast
access storage devices e.g. [sic] the disk drive,
could not store the entire scene economically, he
did not recognize or suggest that storage and
display of e.g. [sic] several seconds of video for
each scene was useful. (Appeal Br. at 6.)
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Application No. 08/482,905
The examiner replies, “it merely [sic] an obvious engineering
choice in selecting the labels for the video scenes because
the number of the ‘labels’ for identifying the particular
video scene can be selected by the editor.” (Examiner’s
Answer at 11.)
Claims 21-28 and 41 each specify in pertinent part the
following limitations:
transferring only a portion of a first video
scene from the video source device to the storage
device, the portion being a plurality of sequential
video frames of the first video scene;
...
automatically transferring only a portion of a
second video scene from the video source device to
the storage device when needed, the portion being a
plurality of sequential video frames of the second
video scene ....
Similarly, claims 29-40 and 42 each specify in pertinent part
the following limitations:
means for transferring only a portion of a first
video scene from the video source device to the
storage device, the portion being a plurality of
sequential video frames of the first video scene;
...
means for automatically transferring only a portion
of a second video scene from the video source device to
the storage device when needed by the processing unit,
the portion being a plurality of sequential video frames
of the second video scene ....
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Accordingly, claims 21-42 each require transferring sequential
video frames of a video scene from a video source device to a
storage device.
The examiner fails to show a suggestion of the
limitations in the prior art. “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551-53, 220 USPQ 303, 311-13 (Fed. Cir.
1983)). “The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as
an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious.” Id. at 1266, 23 USPQ2d at 1784,
Appeal No. 1998-1397 Page 9
Application No. 08/482,905
(citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888
(Fed. Cir. 1991)).
Here, the examiner admits, “Westland does not
specifically discloses [sic] the newly added limitations
wherein the portion of the first video scene is a plurality of
sequential video frames of the first video scene as recited in
claims 21 and 29 ....” (Examiner’s Answer at 6.) He further
admits, “the use of several second [sic] of video for
identifying the particular scene is not suggested in
Westland.” (Id. at 10.) For its part, although the
reference’s controller 22 collects an “image pair” of frames
of a video segment from a video source to a magnetic disk,
col. 21, ll. 6-10, the frames are not sequential. To the
contrary, the image pair “includes a digitized snapshot of the
frames, typically the first and last frames of the segment,
which are employed as the label pair for the segment.” Id. at
10-12.
Faced with this difference, the examiner fails to
identify a suggestion in Izeki, in Mita, or anywhere else in
the prior art to modify Westland’s controller to collect video
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Application No. 08/482,905
frames that are sequential. Rather than providing a line of
reasoning that explains why such a modification would have
been desirable, he asserts that such a modification would have
been undesirable. Specifically, the examiner asserts,
“selecting more than two
labels for the video scene as claimed has a disadvantage over
Westland because more than two labels for the video scene will
fill the storage 146 faster than two labels for the video
scene as disclosed in Westland.” (Examiner’s Answer at 6.)
Furthermore, his opinion that “it merely an obvious
engineering choice in selecting the labels for the video
scenes because the number of the ‘labels’ for identifying the
particular video scene can be selected by the editor,” (id. at
11), is conclusory and unsupported by facts.
In view of the examiner’s conclusory opinion and his
assertion of undesirability, we are not persuaded that
teachings from the prior art would appear to have suggested
the limitations of “transferring only a portion of a first
video scene from the video source device to the storage
device, the portion being a plurality of sequential video
Appeal No. 1998-1397 Page 11
Application No. 08/482,905
frames of the first video scene;” “automatically transferring
only a portion of a second video scene from the video source
device to the storage device when needed, the portion being a
plurality of sequential video frames of the second video
scene;” “means for transferring only a portion of a first
video scene from the video source device to
the storage device, the portion being a plurality of
sequential video frames of the first video scene;” and “means
for automatically transferring only a portion of a second
video scene from the video source device to the storage device
when needed by processing unit, the portion being a plurality
of sequential video frames of the second video scene ....”
The examiner impermissibly relies on the appellants’ teachings
or suggestions. He fails to establish a prima facie case of
obviousness. Therefore, we reverse the rejection of claims
21-22, 26-27, 29-30, and 37-42 under 35 U.S.C. § 103(a) as
obvious over Westland; the rejection of claims 23-25 and 31-34
under 35 U.S.C. § 103(a) as obvious over Westland in view of
Izeki; the rejection of claim 28 under 35 U.S.C. § 103(a) as
obvious over Westland in view of Mita; and the rejection of
claims 35 and 36 under 35 U.S.C.
Appeal No. 1998-1397 Page 12
Application No. 08/482,905
§ 103(a) as obvious over Westland in view of Izeki further in
view of Mita.
CONCLUSION
In summary, the rejection of claims 21-22, 26-27, 29-30,
and 37-42 under 35 U.S.C. § 103(a) as obvious over Westland;
the rejection of claims 23-25 and 31-34 under 35 U.S.C. §
103(a) as obvious over Westland in view of Izeki; the
rejection of claim 28 under 35 U.S.C. § 103(a) as obvious over
Westland in view of Mita; and the rejection of claims 35 and
36 under 35 U.S.C.
§ 103(a) as obvious over Westland in view of Izeki further in
view of Mita are reversed.
REVERSED
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Application No. 08/482,905
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
LLB/kis
Norman R. Klivans
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