Ex Parte Hakim et al

Patent Trial and Appeal Board

Dec 21, 2016

12014046 (P.T.A.B. Dec. 21, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/014,046 01/14/2008 Andy Hakim 772.203US1 9779
45833 7590 12/23/2016
smwfPtMan t ttndrf.ro & wofssnfr/appt f EXAMINER
PO BOX 2938 XIAO, DI
SUITE 300
MINNEAPOLIS, MN 55402 ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDY HAKIM and KEN GOTO1
Appeal 2016-002221
Application 12/014,046
Technology Center 2100
Before ERIC S. FRAHM, LARRY J. HUME, and KAMRAN JIVANI,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—5, 8—13, 16—21, 24, 25, and 27—38. Appellants have
canceled claims 6, 7, 14, 15, 22, 23, and 26. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Apple Inc. App.
Br. 2.
Appeal 2016-002221
Application 12/014,046
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate "systems and
techniques for creating and viewing preview objects." Spec. 11
("TECHNICAL FIELD").
Exemplary Claims
Claims 1, 4, 5, 27, and 33, reproduced below, are representative of the
subject matter on appeal (emphases added to contested limitations):
1. A method of generating a movie preview, the
method comprising:
receiving a selection of a plurality of frames of a movie;
generating a preview object including the plurality of
frames, wherein generating the preview object comprises
concatenating the plurality of frames to form a single image
comprising a plurality of different portions, wherein each
portion of the plurality of different portions respectively
corresponds to one of the plurality of frames of the movie; and
encoding the preview object for display in a display area
such that:
based on different positions of a control
device within the display area, the different
portions of the single image are individually
selected for display in the display area, and
only one portion of the plurality of different
portions of the single image corresponding to only
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
July 6, 2015); Reply Brief ("Reply Br.," filed Dec. 16, 2016); Examiner's
Answer ("Ans.," mailed Oct. 16, 2015); Final Office Action ("Final Act.,"
mailed Dec. 4, 2014); and the original Specification ("Spec.," filed
Jan. 14, 2008).
2
Appeal 2016-002221
Application 12/014,046
one of the frames of the movie is displayed in the
display area at a time.
4. The method of claim 1, wherein encoding the
preview object for display further comprises encoding the
preview object to render a key frame in the display area when
the control device is associated with a position outside of the
display area.
5. The method of claim 4, wherein the key frame is
included in the preview object.
27. The method of claim 25, wherein concatenating
the plurality of frames to form the single image comprises',
vertically concatenating the frames to form the single image.
33. The method of claim 1, wherein generating the
preview object includes concatenating the plurality of frames
and additional frames from the movie to form the single image.
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hoffert et al. ("Hoffert") US 6,374,260 B1 Apr. 16, 2002
Prior Art
Mills et al. ("Mills") US 5,513,306 Apr. 30, 1996
Tojo
Sull et al. ("Sull")
Hio
US 2005/0201628 Al Sept. 15, 2005
US 2006/0064716 Al Mar. 23, 2006
US 2008/0136790 Al June 12, 2008
US 2008/0263448 Al Oct. 23, 2008Oppenheimer
3
Appeal 2016-002221
Application 12/014,046
Rejections on Appeal
Rl. Claims 1, 8, 9, 16, 17, 24, 25, 27, 28, 33, 36, and 38 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Tojo and Oppenheimer. Final Act. 3.
R2. Claims 29, 30, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Tojo, Oppenheimer,
and Hio. Final Act. 9.
R3. Claims 2, 3, 10, 11, 18, 19, 34, and 37 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Tojo,
Oppenheimer, and Hoffert. Final Act. 10.
R4. Claims 34, 35, and 37 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Tojo, Oppenheimer, and
Mills. Final Act. 11.
R5. Claims 4, 5, 12, 13, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Tojo, Oppenheimer,
and Sull. Final Act. 13.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8—17), we decide the
appeal of obviousness Rejection Rl of claims 1, 8, 9, 16, 17, 24, and 25 on
the basis of representative claim 1; we decide the appeal of obviousness
Rejection Rl of claims 27 and 28 on the basis of representative claim 27;
and we decide the appeal of obviousness Rejection Rl of claims 33,36, and
38 on the basis of representative claim 33.
4
Appeal 2016-002221
Application 12/014,046
We decide the appeal of obviousness Rejection R5 of claims 4, 12,
and 20 on the basis of representative claim 4; and we decide the appeal of
obviousness Rejection R5 of claims 5, 13, and 21 on the basis of
representative claim 5.
Remaining claims 2, 3, 10, 11, 18, 19, and 29 in rejections R2 through
R4, not argued separately, stand or fall with the respective independent
claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to obviousness Rejection R1 of claims 27 and 28 for at least the
specific reasons discussed below.
However, we disagree with Appellants' arguments with respect to
claims 1—5, 8—13, 16—21, 24, 25, and 29—38, and we incorporate herein and
adopt as our own: (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken, and (2) the reasons and rebuttals
set forth in the Examiner's Answer in response to Appellants' arguments.
We incorporate such findings, reasons, and rebuttals herein by reference
unless otherwise noted. However, we highlight and address specific
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
5
Appeal 2016-002221
Application 12/014,046
findings and arguments regarding claims 1, 4, 5, 27, and 33 for emphasis as
follows.
1. $ 103 Rejection R1 of Claims 1, 8, 9, 16, 17, 24, and 25
Issue 1
Appellants argue (App. Br. 9—13; Reply Br. 1—6) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tojo and Oppenheimer is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method of generating a movie preview" that includes, inter
alia, the steps of "generating a preview object including the plurality of
frames, wherein generating the preview object comprises concatenating the
plurality of frames to form a single image comprising a plurality of different
portions," and "encoding the preview object for display. . . such that. . .
based on different positions of a control device within the display area, the
different portions of the single image are individually selected for display in
the display area," as recited in claim 1?
Analysis
Argument 1
Appellants contend, "Tojo does not disclose concatenating multiple
frames into a single image, let alone an image with multiple portions that
can be selectively displayed." App. Br. 10. Appellants further contend the
Examiner erred in the rejection by failing
to articulate how a person skilled in the appropriate art would
interpret the multi-part "moving image file, " [citing Tojo, Fig.
6
Appeal 2016-002221
Application 12/014,046
4] of Tojo as teaching a "single image file" as recited in claim
1. In contrast with the concatenation of frames into a single
image, as recited in claim 1, Tojo discusses the use of an
"index" or offset to reference "relative portions" of a moving
image file.
Id. (citing Tojo, Fig. 5, 40, 68).
We note, as the Examiner finds, Appellants have not cited to a
definition of "concatenating" in the Specification that would preclude the
Examiner's broader reading.4 See Final Act. 4; Ans. 4. We particularly
agree with the Examiner's finding that "applicant did not claim nor describe
in the specification the aspect of forming 'a single image file' through
concatenation, but only to form a'single image'." Ans. 4. Thus, we find
Appellants' argument is not commensurate with the scope of the claim. We
further note Appellants' argument that Tojo does not "concatenate" frames
into a single image because the reference teaches the use of an "index" or
offset to reference relative portions of a moving image file, is not persuasive.
We are not persuaded because, lacking an explicit definition of
"concatenate," on this record, claim 1 does not preclude the use of an index
as taught or suggested by Tojo to concatenate the images.
4 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
7
Appeal 2016-002221
Application 12/014,046
Argument 2
Appellants also allege error in the Examiner's finding that:
Tojo discloses . . . [the limitation of] based on different position
of a control device, different portions of the single image are
selected for display in the display area, only one portion of the
plurality of different portions of the single image corresponding
to only one of the frames of the movie is displayed in the
display area,
as recited in claim 1. Final Act. 3-A. Appellants allege error because Tojo
appears "to discuss user manipulation of 'moving image files' that may be
selected and 'dragged and dropped' from one portion of a user interface to
another and further manipulated," and the Examiner purportedly fails to
articulate how a skilled artisan would interpret Tojo as teaching or
suggesting this limitation because "[njeither the content of the Office Action
nor the disclosure of the cited references provides for the display of
'different portions of the single image,' selected 'based on different position
of a control device,' as recited in claim 1." App. Br. 11.
The Examiner responds by relying upon Tojo Figure 10 and
paragraph 91, as set forth on page 5 of the Answer, to teach or suggest
selective display of different portions, and also finds Oppenheimer Figure 4
and paragraph 23 teaches or suggests the contested limitation based upon
user input on a different position of control bar 304, thereby individually
displaying different portions or frames. Ans. 5. We agree with the
Examiner's findings.
Argument 3
Appellants further contend "Oppenheimer fails to disclose, teach or
suggest, the individual selection for display of different portions of a single
8
Appeal 2016-002221
Application 12/014,046
image 'based on different positions of a control device within the display
area,' as recited in claim 1." Id. Oppenheimer is allegedly deficient because
it discusses a cursor (Fig. 3) in the form of a time relative slider 304 separate
from content 302 that "provide[s] a video playback mechanism where a
separate thumbnail preview is depicted in response to the cursor position
along the time relative slider, both the slider and the preview are separate
from the content being viewed," such that "Oppenheimer fails to disclose,
teach or suggest, 'based on different positions of a control device within the
display area,' as recited in claim 1." Id. (citing Oppenheimer Fig. 4).
Lacking an explicit definition, the Examiner applies the broadest
reasonable interpretation5 to the recited "within a display area," and
interprets the phrase to mean "within an area that is displayed to the user, an
area that a user[r] can see," which is taught by Oppenheimer Figure 4.
Ans. 6. Further, the Examiner finds "a display area is generally interpreted
as an area that user can see on the screen. Neither the specification nor the
claims specifically require that the user control must be within the frame
themselves and partially block the frames as applicant seems to be arguing."
Ans. 7.
5 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
9
Appeal 2016-002221
Application 12/014,046
On this record, we find Appellants do not point to any explicit
definition that would render the Examiner's interpretation as being overly
broad, unreasonable, or inconsistent with Appellants' Specification.
Argument 4
Finally, Appellants argue the Examiner's motivation to combine is
deficient because, allegedly:
[n]o explanation or articulated reasoning is provided by the
Examiner as to how the dissimilar Tojo and Oppenheimer
references could or would be combined to modify, "the window
1001" of Tojo to include the "motion of user's cursor" of
Oppenheimer to produce the conjectured "fixed area" that
would allow "more preview images, " let alone the recited
subject matter.
App. Br. 12-13.
We note that U.S. Supreme Court has held that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The Court further instructs:
[ojften it will be necessary for a court to look to
interrelated teachings of multiple patents; . . . and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
Id. at 418.
Additionally, the Court instructs 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
10
Appeal 2016-002221
Application 12/014,046
support the legal conclusion of obviousness .... [HJowever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. (citation and quotations omitted).
The Examiner's stated basis of the motivation to combine Tojo with
Oppenheimer is:
[i]t would have being obvious to one of ordinary skill in the art,
at the time the invention was made to apply Oppenheimer to
Tojo to allow the user to view more preview images in a fixed
area and be able to have a greater control over which preview
image to view.
Final Act. 5. The Examiner further finds:
[Tjhere is a clear and obvious reason to combine Oppenheimer
with Tojo. Oppenheimer uses the position control so a user can
quickly select a position and view a frame or portion that
corresponds to that position. Tojo on the other uses traditional
playback control of play stop fast forward and reverse, which is
more cumbersome to select a specific portion or frame to
display. So it would be obvious to add the teaching of
Oppenheimer to Tojo so user can have more precise control
over which portion to view instead of using traditional playback
control to wait for a specific portion to be displayed. Therefore
applicant's argument is unpersuasive.
Ans. 8.
Thus, we are not persuaded by Appellants' arguments cited above that
the Examiner provided "[n]o explanation or articulated reasoning" regarding
the motivation to combine.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
11
Appeal 2016-002221
Application 12/014,046
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness Rejection R1 of independent claim 1, and grouped
claims 8, 9, 16, 17, 24, and 25 which fall therewith. See Claim Grouping,
supra.
2. $103 Rejection R1 of Claims 27 and 28
Issue 2
Appellants argue (App. Br. 13—14; Reply Br. 7) the Examiner's
rejection of claim 27 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tojo and Oppenheimer is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 25 wherein, inter alia, "concatenating the
plurality of frames to form the single image comprises[] vertically
concatenating the frames to form the single image," as recited in claim 27?
Analysis
Appellants contend:
The rejection of claims 27 and 28 merely cite FIGs. 8a and 10
of Tojo without any discussion or analysis. Tojo appears to
merely discuss the presentation of "a list thumbnails" in a
selection area as shown in FIGs. 8A & 10. However, Tojo does
not disclose, contemplate, or suggest the concatenation of the
thumbnails into either a vertical or horizontal single image, as
recited in claims 27 and 28, respectively. Each "thumbnail" in
Tojo may be individually selected and manipulated through the
use of the user interface discussed in Tojo. Therefore the
12
Appeal 2016-002221
Application 12/014,046
Examiner's implication that any image or frame in Tojo's
disclosure is "concatenated" is in error.
App. Br. 13—14 (footnotes omitted).
We find Appellants' arguments to be persuasive. We are persuaded by
Appellants because the Examiner's position, with which we disagree, is that
Tojo figures 8 and 10 "clearly" teaches both vertical and horizontal
concatenation:
wherein from example the sun thumbnail is displayed above the
happy face thumbnail, and the lightning thumbnail is display
next to the happy face thumbnail. Applicant's specification also
describes the aspect wherein the frames can concatenate
vertically and horizontally at the same time (see paragraph 45
of the application) . . . [such that] applicant's argument is
unpersuasive.
Ans. 8. We have reviewed Figures 8A and 10 of Tojo, and the
accompanying supporting disclosure (e.g., Tojo 74 and 91—93), and find
no disclosure, teaching, or suggestion of the claimed "concatenation" in
Tojo, whether vertical or horizontal concatenation, as such terms would be
understood in light of Appellants' disclosure. See Spec. 140; Fig. 7.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the combined
teachings and suggestions of the cited prior art combination to teach or
suggest the disputed limitation of claim 27, such that we find error in the
Examiner's resulting legal conclusion of obviousness. Therefore, we cannot
sustain the Examiner's obviousness Rejection R1 of dependent claim 27, and
grouped claim 28 which falls therewith. See Claim Grouping, supra.
13
Appeal 2016-002221
Application 12/014,046
3. $103 Rejection R1 of Claims 33, 36, and 38
Issue 3
Appellants argue (App. Br. 14; Reply Br. 7) the Examiner's rejection
of claim 33 under 35 U.S.C. § 103(a) as being obvious over the combination
of Tojo and Oppenheimer is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1 wherein, inter alia, "generating the
preview object includes concatenating the plurality of frames and additional
frames from the movie to form the single image," as recited in claim 33?
Analysis
Appellants contend:
The Examiner fails to even discuss the claim language
"concatenating the plurality of frames and additional frames,"
as recited in these claims, which differentiate them from the
language of independent claims 1 and 17. Appellants
respectfully assert that Tojo and Oppenheimer, alone or in any
combination, would not be understood by one skilled in the art
as disclosing the claimed subject matter.
App. Br. 14.
Appellants merely argue that the prior art combination does not teach
or suggest the recited claim limitations. Id. Such statements are not
considered to be arguments. 37 C.F.R. § 41.37(c)(l)(iv) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
14
Appeal 2016-002221
Application 12/014,046
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.").
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 33, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness Rejection R1 of dependent claim 33, and grouped
claims 36 and 38 which fall therewith. See Claim Grouping, supra.
4. $103 Rejection R5 of Claims 4, 12, and 20
Issue 4
Appellants argue (App. Br. 15—16; Reply Br. 8) the Examiner's
rejection of claim 4 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tojo, Oppenheimer, and Sull is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1 wherein, inter alia, "encoding the preview
object for display further comprises encoding the preview object to render a
key frame in the display area when the control device is associated with a
position outside of the display area," as recited in claim 4?
Analysis
Appellants contend the Examiner erred in rejecting claim 4 because
"Sull merely discusses the animation of a still image thumbnail in response
to an activation by a user. Sull does not disclose the rendering of a key
15
Appeal 2016-002221
Application 12/014,046
frame with a control device is outside of a display area." App. Br. 15.
Appellants further argue "Sull suggests the presentation of multiple
simultaneous animated visual fields, which teaches away from the claimed
subject matter of a 'key frame' that is displayed when the control device is
outside of the display area." Id. Appellants also contend the Examiner's
motivation to combine Tojo, Oppenheimer, and Sull is deficient. Id.
In response, the Examiner finds, and we agree, Figure 9B and
paragraph 348 of Sull teaches or suggests:
[Bjefore a cursor enters a thumbnail area, a still image is
displayed to represent the thumbnail. And when the cursor
enters the thumbnail area, different frames are displayed in the
form a slide show. So the still image is equivalent to the key
frame and all the above limitation is taught in Sull in
combination in combination with Tojo and Oppenheimer.
Ans. 9 (emphasis added). Under the broadest reasonable interpretation, we
agree with the Examiner's finding that Sull's still image teaches or at least
suggests the recited "key frame."
With respect to Appellants' "teaching away" argument, we disagree.
We disagree because Appellants do not meaningfully explain why the Sull
reference's teaching of simultaneous animated visual fields suggests that the
line of development flowing from its disclosures is unlikely to be productive
of the objective of Appellants' invention. See Syntex (U.S.A.) v. Apotex, Inc.,
407 F.3d 1371, 1380 (Fed. Cir. 2005). A teaching of something different is
not necessarily a teaching away.
Moreover, "[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
16
Appeal 2016-002221
Application 12/014,046
divergent from the path that was taken by the applicant." In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent
method, however, does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 4, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness Rejection R5 of dependent claim 4, and grouped
claims 12 and 20 which fall therewith. See Claim Grouping, supra.
5. $103 Rejection R5 of Claims 5, 13, and 21
Issue 5
Appellants argue (App. Br. 16—17; Reply Br. 8—9) the Examiner's
rejection of claim 4 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tojo, Oppenheimer, and Sull is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 4 wherein, inter alia, "the key frame is
included in the preview object," as recited in claim 5?
Analysis
Appellants contend the Examiner's citation to Sull as teaching or
suggesting the contested limitation of claim 5 is "cursory," and the
combination of Tojo, Oppenheimer, and Sull all fail to teach or suggest a
17
Appeal 2016-002221
Application 12/014,046
"key frame" that is "included in" a "preview object," as recited in claim 5.
App. Br. 16.
Appellants further contend "the Examiner has provided no motivation,
other than a conclusory and irrelevant hypothetical..." {Id.), and "[n]o
explanation or articulated reasoning is provided by the Office action as to
how the dissimilar references could or would be combined to modify Tojo
and Oppenheimer to include the purported teachings of Sull." App. Br. 17.
The Examiner responds by finding:
Sull is not merely a representation that relates to a program or
image video file. As disclosed in paragraph 251 "the poster-
thumbnail of a TV program or video means at least a reduced-
size thumbnail image of a whole frame image captured from the
program". So a poster thumbnail is a whole frame image from
the video program that is reduced in size.
Ans. 10. We agree with the Examiner's findings.
We agree because Appellants do not point to any explicit definition of
a "key frame included in the preview object" that would preclude the
Examiner's broad but reasonable interpretation.
Additionally, similar to the reason to combine the references
discussed in connection with claim 4, Issue 4, supra, we agree with the
Examiner that:
It would have being obvious to one of ordinary skill in the art,
at the time the invention was made to apply Sull to Tojo and
Oppenheimer to use an object in the preview as the key frame
so the user can have a good idea of what the video segment is
about just by looking at the key frame.
Final Act. 14; and see Ans. 9—10.
18
Appeal 2016-002221
Application 12/014,046
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 5, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness Rejection R5 of dependent claim 5, and grouped
claims 13 and 21 which fall therewith. See Claim Grouping, supra.
6. Rejections R2—R4 of Claims 2, 3, 10, If 18, 19, and 29
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R4 of claims 2, 3, 10, 11, 18, 19,
and 29 under § 103 (see App. Br. 17), we sustain the Examiner's rejection of
these claims. Arguments not made are waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1—10) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
The Examiner did not err with respect to obviousness Rejections R1
through R5 of claims 1—5, 8—13, 16—21, 24, 25, and 29—38 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
19
Appeal 2016-002221
Application 12/014,046
The Examiner erred with respect to obviousness Rejection R1 of
claims 27 and 28 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we cannot sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—5, 8—13, 16—21,
24,25, and 29-38.
We reverse the Examiner's decision rejecting claims 27 and 28.
AFFIRMED-IN-PART
20