Ex parte Johnson

Board of Patent Appeals and Interferences

Mar 9, 1999

08179458 (B.P.A.I. Mar. 9, 1999)

Application for patent filed January 10, 1994.1
Claims 2 to 4 and 9 to 11 were canceled in response to the first Office action as per appellant’s instructions2
at page 2 of the amendment dated April 17, 1995.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No.11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM J. JOHNSON
__________
Appeal No. 96-2997
Application 08/179,4581
___________
ON BRIEF
___________
Before THOMAS, JERRY SMITH, and FRAHM, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s final rejection of claims 1, 5 to 8, and
12 to 14. Claims 2 to 4 and 9 to 11 have been canceled. In the Brief, appellant indicated that claims2
Appeal No. 96-2997
Application 08/179,458
2
7 and 14 are "not appeal[ed]" (Brief, page 2). Thus, claims 7 and 14 stand withdrawn, and only claims
1, 5, 6, 8, 12, and 13 remain on appeal.
BACKGROUND
The subject matter on appeal is directed to the field of slow motion video (specification, page
1), and in particular, to a method and apparatus for providing slow motion video at normal motion
playing speed through the use of replicated frames (specification, page 2; and all claims 1, 5, 6, 8, 12,
and 13 on appeal). As indicated in the specification (page 2), a stream of video data frames is dilated
or replicated in order to provide slow motion, and the dilated stream contains copies or replications of
the frames which are to be played in slow motion. Either a constant replication value (i.e., constant time
dilation) can be used to copy the frames, or a non-constant value (i.e., skewed time dilation) can be
used to copy the frames (specification, pages 2 to 3). In general, appellant’s invention recited in all of
the independent claims on appeal (method claims 1, 5, and 6, and apparatus claims 8, 12, and 13)
seeks to provide a slow motion video method and apparatus which replicates certain frames in a video
stream a greater number of times than other frames in the video stream. As further discussed, infra, we
find that the applied reference to Poulett fails to teach or suggest at least this feature as it is recited in
each of the claims on appeal.
Representative claim 1 is reproduced below:
1. A computer implemented method of providing slow motion to a video information stream
that is provided to a display, said video information stream containing frames, each of said frames
Appeal No. 96-2997
Application 08/179,458
We note that while the Answer lists Cohen et al. as being relied upon in the rejection of the claims on3
appeal (Answer, page 2, section 7), neither the statement of the rejection in the Answer (Answer, pages 2 to 6,
section 9) nor the statement in the Final Rejection (Final Rejection, page 3, paragraphs 7 and 9) expressly rely upon
Cohen et al.. In explaining the rejection of claims 6 and 13 under 35 U.S.C. § 103, the examiner takes Official Notice as
to the feature of repeating original frames based on the position of the original frames in the video stream, i.e.,
acceleration or deceleration (first Office action, pages 10 to 11; Final Rejection, page 14; Answer, pages 9 to 10).
Appellant traversed this statement, and the examiner then cited Cohen et al. in the Final Rejection as showing this
feature. Lastly, we note that even when a reference is relied upon in a minor capacity to support a rejection, "there
would appear to be no excuse for not positively including the reference in the statement of rejection." In re Hoch,
3
having a place in said video information stream relative to said other frames in said video information
stream, comprising the steps of:
a) identifying a segment of said frames, said frames in said segment being original frames,
said segment having beginning frames, intermediate frames and ending frames;
b) dilating said segment by replicating said original frames to produce replicated frames,
and for each of said original frames, placing said respective replicated frames in said video information
stream adjacent to said original frame;
c) said step of replicating said original frames further comprises the step of replicating said
intermediate frames a greater number of times than the number of times that said beginning and ending
frames are replicated.
The following reference is relied on by the examiner:
Poulett 3,637,928 Jan. 25, 1972
Claims 1, 5, 8, and 12 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Poulett.
Claims 6 and 13 stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the
examiner relies upon Poulett alone.3
Appeal No. 96-2997
Application 08/179,458
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). Cohen et al. has not been positively included in a
statement of the rejection, and thus we find Cohen et al. not to be relied upon in the rejection of claims 6 and 13.

4
Rather than repeat the positions of appellant and the examiner, reference is made to the Brief
and the Answer for the respective details thereof.
OPINION
At the outset, we note that the claims on appeal (claims 1, 5, 6, 8, 12, and 13) fall into three
groups. Claims 1 and 8 on appeal recite a method and apparatus for slow motion video wherein
middle frames are copied more times than beginning and end frames; claims 5 and 12 on appeal recite a
method and apparatus for slow motion video wherein frames at one end of a video stream are copied
more times than frames at the other end; and claims 6 and 13 on appeal recite a method and apparatus
for slow motion video wherein the number of times each frame in the video stream is copied is
dependent upon frame position in the video stream.
In reaching our conclusion on the issues raised in this appeal, we have carefully considered
appellant’s specification and claims, the applied patent, the respective viewpoints of appellant and the
examiner, and all other evidence of record. While we cannot say that there is better prior art available
than that applied by the examiner, we can say that the art relied upon does not support the rejection.
Appeal No. 96-2997
Application 08/179,458
5
We find, for the reasons that follow, that the feature recited in claims 1, 5, 6, 8, 12, and 13 on appeal,
of providing slow motion by dilating a segment of frames and replicating some frames of the segment
more times than other frames, is neither taught nor would have been suggested by the prior art applied
by the examiner. Accordingly, we will reverse the decision of the examiner rejecting claims 1, 5, 6, 8,
12, and 13 on appeal.
Rejection of Claims 1, 5, 8, and 12 Under 35 U.S.C. § 102(b) Over Poulett
A prior art reference anticipates a claim if it discloses, either explicitly or inherently, each and
every limitation of the claimed invention. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997); Akzo v. U.S. International Trade Commission, 808 F.2d 1471, 1479, 1
USPQ2d 1241, 1245 (Fed. Cir. 1986), cert. denied, 107 S.Ct. 2490 (1987); In re Donohue, 766
F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985). For an unstated element to be found inherent
in an anticipating reference, it must exist as a matter of scientific fact and flow naturally from the
elements expressly disclosed in the prior art reference. Hughes Aircraft Co. v. United States, 15 Cl.
Ct. 267, 271, 8 USPQ2d 1580, 1583 (Cl. Ct. 1988). However, inherency may not be established by
probabilities or possibilities regarding what may have resulted in the prior art. In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981). Furthermore, “[t]he mere fact that a certain thing may
result from a given set of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)(emphasis in original); see also Ex parte Skinner, 2 USPQ2d 1788,
Appeal No. 96-2997
Application 08/179,458
6
1789 (BPAI 1986).
Claims 1 and 5 on appeal are directed to a method of, and claims 8 and 12 on appeal are
directed to the apparatus for, providing slow motion video by identifying and dilating a segment of
frames. Each of the frames in the segment is dilated to produce replicated frames. Furthermore,
intermediate frames (claims 1 and 8 on appeal) or frames at one end of the segment (claims 5 and 12
on appeal) are replicated a greater number of times than beginning and ending frames (claims 1 and 8
on appeal) or frames at a second end of the segment (claims 5 and 12 on appeal). The examiner
repeatedly (Answer, pages 3 to 4) relies upon Poulett’s disclosure at column 3, lines 53 to 55 as
inherently anticipating the recited feature of replicating intermediate or
first frames more times than beginning and ending or second frames. The examiner states that it is
"inherent that the frames at one end of the segment could have a different repetition rate than the
frames at the other end of the segment" (Answer, pages 3 and 4). We find this to be a possibility or
probability regarding what may have resulted from Poulett’s express disclosure of replicating frames in
a segment with three possible constant speeds (slow motion 1, slow motion 2, and slow motion 3 as
shown in figure 10C). Poulett’s slow motion device is capable of three speeds: constant slow motion
speed 1 using button S8; constant slow motion speed 2 using button S7; and variable slow motion
speed 3 using button S6 which allows the operator to vary speed using a control lever. While it is
Appeal No. 96-2997
Application 08/179,458
7
possible that a user might choose different speeds during playback of a slow motion segment of frames
such that some frames in the segment are replicated more than others, we can find no express or
inherent disclosure in Poulett of varying a replication amount within a frame segment which is to be
dilated in order to provide slow motion video.
The examiner argues that each element of claims 1, 5, 8, and 12 on appeal is expressly
disclosed, with the exception of the most important element of a step or means for replicating certain
frames in a segment more times than other frames in the segment. The examiner says this step or means
for replicating is inherent in light of column 3, lines 53 to 55 of the Poulett reference (Answer, pages 3
to 4). However, we find it clear that such a feature is not expressly disclosed by Poulett nor is it
inherent from Poulett’s column 3, lines 50 to 53 as alleged by the examiner. In other words, such a
feature does not flow naturally from the elements expressly
disclosed in Poulett, and does not flow undeniably and irrefutably from the express disclosure of
Poulett. It is only present by virtue of the possibility of the intervening step of human perception,
awareness and understanding (e.g., user intervention to vary slow motion speed, using buttons S6-S8,
during playback of a segment of frames to be dilated).
We find the examiner’s argument, that the speed in Poulett may vary according to user
preference such that some frames in a segment may have a different speed or number of replicants than
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Application 08/179,458
8
other frames in the segment (Answer, top of page 9), to be unpersuasive. This line of reasoning smacks
of obviousness, and considerations of obviousness or user preference are not applicable to the rejection
before us under 35 U.S.C. § 102. We agree with appellant (Brief, pages 5 to 6) that Poulett
discloses a constant slow motion as opposed to a skewed slow motion where different speeds exist in
the same segment, and that Poulett does not specifically disclose any change in slow motion speed
within a segment (Brief, page 7). We find that the examiner has failed to make a prima facie case of
anticipation.
Therefore, we conclude that appellant’s claims 1, 5, 8, and 12 are not anticipated by Poulett
under the doctrine of inherency. This is because the important recited feature of appellant’s claims 1, 5,
8, and 12 on appeal of providing slow motion, by replicating certain frames in an identified segment
more times than other frames in the segment (i.e., utilizing skewed time dilation), is neither expressly nor
inherently disclosed by the applied reference to Poulett.
Rejection of Claims 6 and 13 Under 35 U.S.C. § 103 Over Poulett Alone
With respect to claims 6 and 13 on appeal, appellant argues that Poulett does not teach nor
would have suggested that the number of times of replication of frames be dependent upon frame
position (Brief, page 7). The examiner agrees (Answer, pages 5 to 6), as do we. The examiner alleges
(Answer, pages 5 and 6) that by connecting a frame buffer to the output of Poulett, frames could be
recorded and then read out to create the type of skewed dilation recited in claims 6 and 13 on appeal.
Appeal No. 96-2997
Application 08/179,458
We note that any judgment on obviousness is in a sense necessarily a reconstruction based upon4
hindsight reasoning. But when it takes into account knowledge and motivation gleaned only from the applicant’s
9
Our careful review of Poulett fails to reveal any motivation or suggestion to record and play back a
video segment in different slow motion speeds for the purpose of providing a gradual slow motion
effect. In addition, the examiner has not cited any persuasive motivation for doing so, other than to say
that such a video effect is well-known in the art (Answer, pages 5 and 6). We agree with appellant
(Brief, pages 7 to 8) that there would have been no motivation for one of ordinary skill in the art to
attach and use a buffer in such a way and that to have done so would have involved the use of
hindsight.
The primary purpose of appellant's disclosed invention is to vary slow motion speed
within a dilated frame segment in order to permit gradual slow motion effects (specification, page 9) and
to avoid abrupt changes from/to normal video speed to/from slow motion video speed which is a
common problem in the prior art (appellant’s amendment of April 17, 1995, page 9). Appellant
attempts to overcome these difficulties with the prior art by using skewed time dilation which is
dependent upon frame position. This feature is positively recited in appellant’s claims 6 and 13 on
appeal. To say that it would have been obvious to use frame position to control replication in a slow
motion video segment, in light of a reference which fails to teach or suggest
such, is not plausible and would require recourse to appellant’s disclosure, i.e., the use of hindsight. 4
Appeal No. 96-2997
Application 08/179,458
disclosure, and not only knowledge and motivation which was within the level of ordinary skill at the time the
claimed invention was made, such a reconstruction is improper and is said to employ hindsight. See In re
McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
10
To modify Poulett to achieve appellant’s claimed invention involves the application of knowledge and
motivation not clearly present in the prior art. See In re Sheckler, 438 F.2d 999, 1001, 168 USPQ
716, 717 (CCPA 1971). We conclude that there would have been no motivation to modify Poulett to
achieve the subject matter of claims 6 and 13 on appeal.
In response to appellant’s traversal of the examiner’s statement that video effects such as
acceleration and deceleration were well-known in the art (appellant’s amendment of April 17, 1995,
page 10; Brief, page 8), the examiner relied (Final Rejection, page 14; Answer, pages 9 to 10) on
Cohen et al. (columns 13 and 44 to 47) to show that such a feature would have been well-known at the
time of appellant’s invention. Our close review of the Cohen et al. reference reveals that Cohen et al.
fail to disclose acceleration and deceleration in the replication of frames in a video segment. Instead,
we agree with appellant (Brief, page 8), and find that Cohen et al. (see column 1, lines 15 to 20) are
concerned with switching from a first segment of frames to a second segment of frames (e.g., wiping,
fading, or cutting between video segments). Cohen et al. do not appear to be related to skewed time
dilation or replication of frames to make slow motion effects.
Appeal No. 96-2997
Application 08/179,458
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In view of the foregoing, the decisions of the examiner rejecting claims 1, 5, 6, 8, 12, and 13
under 35 U.S.C. §§ 102(b) and 103 are reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )
Appeal No. 96-2997
Application 08/179,458
12
ESF/ki
Geoffrey A. Mantooth
Wofford, Fails, Zobal & Mantooth
110 West Seventh Street
Suite 500
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