Ex Parte Gough

Patent Trial and Appeal Board

Sep 8, 2016

13347735 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/347,735 0111112012
69316 7590 09/12/2016
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Michael L. GOUGH
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.
346078.07 3924
EXAMINER
BOCCIO, VINCENT F
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. GOUGH
Appeal2015-002828
Application 13/347,735
Technology Center 2100
Before BRUCE R. WINSOR, HUNG H. BUI, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-16, which are all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is directed to a method and apparatus for
traversing a multiplexed data packet stream, particularly MPEG and DVD
Appeal2015-002828
Application 13/347,735
streams. Title; Spec. 1: 15-16. Claims 1, 9, and 14 are independent. Claim
1 is reproduced below for reference:
1. A method for forward play of a multiplexed data packet
stream comprising:
(a) jumping in a multiplexed data packet stream from a
starting location to a later location, whereby intervening data in
said multiplexed data packet stream is skipped;
(b) in response to a determination that the later location
is not the start of a system stream object including at least one
playable object in said multiplexed data packet stream, searching
in the multiplexed data packet stream in a direction opposite to
the direction of normal play until the system stream object
including at least one playable object is identified; and
( c) playing forward from the later location.
References and Rejection
Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shim (US 2001/0043802 Al; Nov. 22, 2001) and Tozaki
(US 6,091,674; July 18, 2000). Final Act. 2.
CONTENTIONS
Appellant argues the Examiner erred in finding Shim and T ozaki
render claims 1-16 obvious, because:
A. "The Proposed Combination Fails to Teach Each Limitation of
Claims 1-16" (emphasis removed). Br. 4. 1
B. "The Rejection Fails to Provide Any Reasons for Combining Shim
and Tozaki in the Proposed Manner and thus Fails to Satisfy a
Prima Facie Case of Obviousness" (emphasis removed). Br. 5.
1 References to the Brief (Br.) refer to the Appeal Brief filed July 16, 2014.
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Application 13/347,735
ANALYSIS
Appellant does not separately argue claims 1-16. See Br. 5, 6. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). We have
reviewed the Examiner's rejections in light of Appellant's arguments, and
we adopt the Examiner's findings and conclusions as our own to the extent
they are consistent with our analysis below.
A. Each Limitation of the Claims
Appellant argues the Examiner erred in rejecting independent claim 1,
because Tozaki does not teach or suggest "'in response to a determination
that the later location is not the start of a system stream object including at
least one playable object in said multiplexed data packet stream, searching in
the multiplexed data packet stream in a direction opposite to the direction of
normal play,' as recited in Claim 1." Br. 4. In particular, Appellant
contends that "prior to the jumpback [in Tozaki], the pickup is already at the
beginning of a [video object unit] and thus does not determine 'that the later
location is not the start of a system stream object including at least one
playable object in said multiplexed data packet stream."' Id.
We are not persuaded the Examiner erred. Claim 1 recites jumping to
a later location, and a determination that the later location is "not the start of
a system stream object" (emphasis added). We conclude the Examiner
broadly but reasonably construed the limitation to encompass Tozaki's
method to determine if the later location is before the target time in a target
VOBU (video object unit). See Ans. 14 (finding Tozaki determines whether
"the later location is not the start of a desired stream object by the system
search operation, including wherein the object is a playable object");
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Appeal2015-002828
Application 13/347,735
Tozaki's Fig. 12 (steps 15 and 20); see also Br. 2 (citing Fig. 17). Tozaki
teaches searching in a direction opposite to the direction of normal play (i.e.,
jumping backwards) if the later location is not the start (i.e., if the later
location is not before the target time). See Ans. 11-12 (citing Tozaki 30: 11-
30).
Accordingly, we are not persuaded the Examiner erred in finding
Tozaki teaches or suggests the disputed limitation of claim 1.
B. Reason for Combining Shim and Tozaki
Appellant argues "the Examiner has not presented sufficient
'articulated reasoning with some rational underpinning' that it would have
been obvious to make the proposed combination." Br. 5 (citations removed).
Appellant further argues that, instead, "the Examiner's attempt to combine
Shim with Tozaki appears to constitute the type of impermissible hindsight
reconstruction of Appellant's claims, using Appellant's claims as a
blueprint." Br. 6.
We recognize that the Examiner must articulate "reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). However, "[u]nder the correct
[obviousness] analysis, any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007).
The Examiner has provided reasoning to modify Shim with the
teachings of Tozaki. See Final Act. 4; Ans. 16-17. Although the Examiner's
"opinions in the present appeal[] are not a model of clarity," we find the
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Appeal2015-002828
Application 13/347,735
Examiner's "path may reasonably be discerned." Jn re Applied Materials,
Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citations removed). We agree
with the Examiner that one of ordinary skill would modify Shim with
Tozaki's backwards searching, in order to "search and locate a playable
object." Ans. 17. Shim and Tozaki are both directed to searching and
playing digital media, and this is a case in which the skilled artisan would
"be able to fit the teachings of multiple patents together like pieces of a
puzzle." KSR 550 at 421; see also Ans. 17; Shim Figs. 5-7, i-f 37; Tozaki
Fig. 12.
Consequently, we are not persuaded that the Examiner failed to
articulate a sufficient rationale for combining Shim and Tozaki. See In re
Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (Appellant's hindsight
argument of no moment where the Examiner provides a sufficient, non-
hindsight reason to combine the references).
DECISION
The Examiner's rejection of claims 1-16 is affirmed.
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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