Ex Parte Hua

Patent Trial and Appeal Board

May 16, 2014

11504320 (P.T.A.B. May. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HAI HUA
____________

Appeal 2012-000800
Application 11/504,320
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-000800
Application 11/504,320

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5-13, 17-21, and 25-28. Claims 2-4, 14-16, and 22-24
have been cancelled previously. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s Invention
Appellant’s invention relates to a video processing device (e.g., Fig. 4,
video processing device 125).
Representative Claim on Appeal
1. A video processing device that produces a processed
video signal for display on a first video display device, the
video processing device comprising:
a receiving module that produces a video signal from a
received signal;
a user interface module that selects first settings
corresponding to a first video display device based on a user
selection of a first compression depth setting for the first video
display device from a plurality of available compression depth
settings and that selects second settings corresponding to a
second video display device based on a user selection of a
second compression depth setting for the second video display
device from the plurality of available compression depth
settings;
video record/playback module that includes:
a driver interface module that stores a plurality of
record settings, the plurality of record settings including
the first settings and the second settings;
a driver module, coupled to the driver interface
module, that encodes the video signal based on the first
settings to produce a first processed video signal in a first
Appeal 2012-000800
Application 11/504,320

3
format, and that contemporaneously encodes the video
signal based on the second settings to produce a second
processed video signal in a second format, wherein the
first format is different from the second format;
a memory module, coupled to the driver module,
for storing a plurality of compressed video files including
a first compressed video file that is based on the first
processed video signal and including a second
compressed video file that is based on the second
processed video signal; and
a playback module, coupled to the memory module, that
produces the processed video signal from the first compressed
video file; and
a device interface, coupled to the memory module and
coupleable to the second video display device, to transfer the
second compressed video file to the second video display
device.

Rejections on Appeal
The Examiner rejected claims 1, 5-7, 9-13, 17-19, 21, and 25-27 under
35 U.S.C. § 103(a) as being unpatentable over Cooper (US 2004/0237104
A1, Nov. 25, 2004) and Morishita (US 2002/0009289 A1, Jan. 24, 2002).
Ans. 4-7
The Examiner rejected claims 8, 20, and 28 under 35 U.S.C. § 103(a)
as being unpatentable over Cooper, Morishita, and Grundstrom (US
2004/0161039 Al, Aug. 19, 2004). Ans. 7-8.

ISSUES AND ANALYSIS
Based on Appellant’s arguments in the Appeal Brief (App. Br. 7-9;
Reply Br. 1-2), the principal and dispositive issue of whether the Examiner
erred in rejecting claims 1, 5-13, 17-21, and 25-28 turns on whether the
Appeal 2012-000800
Application 11/504,320

4
combination of Cooper and Morishita teaches or suggests the following
limitation recited in independent claim 1, and similarly recited in
independent claims 11 and 21:
a user interface module that selects first settings
corresponding to a first video display device based on user
selection of a first compression depth setting for the first video
display device from a plurality of available compression depth
settings and that selects second settings corresponding to a
second video display device based on a user selection of a
second compression depth setting for the second video display
device from the plurality of available compression depth
settings

Claim 1 (emphasis ours) (hereinafter “first and second video display
devices”).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We 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 set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. We concur with the conclusions reached by the
Examiner.
Appellant contends the combination of Cooper and Morishita
contemplate[s] selecting a recording setting for only one device.
Accordingly, the combination of Cooper and Morishita
proposed by the Office would result in a system whereby a user
would select a format for a particular device (as taught by
Cooper) and would select a compression setting for the same
device (as taught by Morishita).

Reply Br. 2; see also App. Br. 8.
Appeal 2012-000800
Application 11/504,320

5
The Examiner finds
the user would first select the format (handheld or large screen)
as taught by Cooper, then the user would select the compression
depth setting as taught by Morishita depending on the quality of
video the user desires and the amount of disk space the user
wishes to use on the recording.

Ans. 9-10.
In particular, the Examiner finds that Cooper teaches encoding “the
signal into two separate formats (handheld and large display)” (Ans. 8
(citing Cooper ¶ 17)), and thus, “discloses an individual setting for multiple
devices.” Ans. 9. In other words, Cooper’s teaching of handheld devices
and large display devices meets the first and second video display devices
limitations.
We agree with the Examiner’s findings because all of the features of
the structure in the secondary reference need not be bodily incorporated into
the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA
1981)). In that regard, the Supreme Court has indicated that:
[It is an error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted).
Appeal 2012-000800
Application 11/504,320

6
Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)). As such, Morishita would be adjusted to
accommodate teachings from Cooper for multiple devices by one of
ordinary skill in the art. In particular, the combination as a whole would
have taught one of ordinary skill in the art “that there is a tradeoff that exists
between quality and disk space and therefore would recognize the
applicability of the teachings of Morishita to the system of Cooper.” Ans.
10.
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1, 11, and 21 and claims 5-10, 12, 13, 17-20, and 25-28,
not separately argued by Appellant, is sustained.

CONCLUSION
The Examiner has not erred in rejecting claims 1, 5-13, 17-21, and 25-
28 as being unpatentable under 35 U.S.C. § 103(a) for the reasons discussed
above.

DECISION
We affirm the Examiner’s decision to reject claims 1, 5-13, 17-21, and
25-28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
Appeal 2012-000800
Application 11/504,320

7
msc