Ex parte KOZ et al.

Board of Patent Appeals and Interferences

Jul 31, 2000

08140043 (B.P.A.I. Jul. 31, 2000)

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(2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK C. KOZ and MASATO HATA
____________
Appeal No. 1997-0653
Application No. 08/140,043
____________
ON BRIEF
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Before DIXON, GROSS, and BARRY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 63-98,
which are all of the claims pending in this application.
We REVERSE.
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BACKGROUND
Appellants’ invention relates to an adaptive video file server and methods for its
use. The system retrieves audio/video data compressed in a first standard from storage
and compresses the retrieved audio/video data using a different standard than the first
standard. The system then transmits the data compressed according to the second
standard to subscribers via at least one of various available formats. An understanding of
the invention can be derived from a reading of exemplary claim 63, which is reproduced
below.
63. A video file server for storing video data and transmitting
compressed video data to a plurality of subscriber systems, said video file
server comprising:
a main unit controller for controlling transmission of compressed
video data to subscriber systems;
a random access data storage subsystem for storing compressed
video data and from which such data is randomly retrievable;
a plurality of communication subsystems, for transmitting compressed
video data to the subscriber systems; and
compressed video data format conversion subsystem for receiving
compressed video data from said random access data storage subsystem
that is compressed in accordance with a first compression standard, for
converting the received compressed video data from the first compression
standard to a second compression standard that differs from the first
compression standard, and for transmitting such converted compressed
video data compressed in accordance with the second compression
standard to at least one of said communication subsystems.
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The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Yurt et al. (Yurt) 5,132,992 Jul. 21, 1992
(Filed Jan. 07, 1991)
Claims 63-98 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Yurt.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 15, mailed Aug. 6, 1996) for the examiner's reasoning in support of the
rejections, and to the appellants’ brief (Paper No. 14, filed May 8, 1996) and reply brief
(Paper No. 17, filed Oct. 7, 1996) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of our
review, we make the determinations that follow.
Throughout the brief appellants argue that the examiner has not properly interpreted
the teachings of Yurt with respect to the compression and transmission of data to
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subscribers. We disagree with appellants. Rather, the examiner has essentially read the
figure 2b on the claimed limitations instead of the figures 2a and 2b which the examiner
references in the rejection. (See answer at page 3.) With the examiner using compressed
data library 118 of Yurt as the random access data storage, then the transmission format
conversion CPU 119 must perform the conversion of the compressed stored data to a
different format. Appellants argue that Yurt does not teach or suggest that the
transmission format conversion CPU 119 compresses the data using a different standard.
(See brief at page 13.) We agree with appellants.
The examiner maintains that the transmission format conversion CPU 119 would
“tailor the data into a format best suited for the particular channel.” (See answer at pages
3-4.) Appellants argue that Yurt does not disclose the compression of data in the
transmission format conversion CPU 119 because the disclosure of Yurt with respect to
this element only contains 131 words. (See brief at page 15 and Appendix II.) Appellants
further argue that the declaration of Mark C. Koz, one of the inventors, addresses the
compression of data using a second different standard and the
examiner’s asserted bandwidth motivation. (See brief at page 16 and reply brief at page
4.) The examiner has not addressed the evidence presented in the declaration. While we
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agree with the examiner that the transmission format conversion CPU 119 would tailor the
data, in our view, it is unreasonable to equate this conversion or encoding for formatting
purposes as a compression of the data according to a second different standard as
recited in the language of claim 63. Furthermore, the examiner's motivation for further
compression by the transmission format conversion CPU 119 has been rebutted by
appellants, but the examiner has not responded thereto. Therefore, we accept appellants’
evidence that skilled artisans would not have been motivated to have the processing by the
transmission format conversion CPU 119 perform a second compression using a different
compression standard as recited in the language of claim 63. Therefore, the examiner has
not set forth a prima facie case of obviousness with respect to claim 63 or its dependent
claims 64-84. As such, we cannot sustain the rejection of these claims. Accordingly, since
independent claim 85 contains limitations similar to those of claim 63, we also cannot
sustain the rejection of claim 85 nor its dependent claims 86-98.
CONCLUSION
To summarize, the decision of the examiner to reject claims 63-98 under
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35 U.S.C. § 103 is reversed.
REVERSED
JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
jld/vsh
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MARK C. KOZ
21449 TOLLGATE RD.
SARATOGA , CA 95070