Ex Parte Larsen et al

Patent Trial and Appeal Board

Sep 15, 2014

12606564 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMM[SSIONER 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.
12/606,564 10/27/2009 Tonni Sandager Larsen SONY-52401 2978
102824 7590 09/16/2014
EXAMINER
HAVERSTOCK & OWENS, LLP
162 N, WOLFE ROAD CHU,DAVIDH
SUNNYV ALE, CA 94086
ART UNIT PAPER NUMBER
2616
MAIL DATE DELIVERY MODE
09/16/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte TONNI SANDAGER LARSEN and KOJI MATSUBAYASHI

_____________

Appeal 2012-001228
Application 12/606,564
Technology Center 2600
______________

Before STEVEN D. A. McCARTHY, DAVID M. KOHUT, and JENNIFER
L. McKEOWN, Administrative Patent Judges.

KOHUT, 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 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to transitioning between two high resolution
video signals. Spec. 1. Claims 1 and 11 are illustrative of the invention and
are reproduced below:
1. A method of transitioning between two high resolution
video signals, said method comprising:
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on a display device, replacing a first image which is a
frame of a first video signal with a lower resolution copy of
said first image; and
on the display device, fading out said lower resolution
copy of said first image to reveal a second image from a second
video signal.

11. A system for transitioning between two high resolution
video signals, said system comprising a video chip comprising:
a first video buffer for containing a first image which is a
frame of a first video signal;
a second video buffer for containing a second image
which is a frame of a second video single; and
a graphic buffer for containing a lower resolution copy of
said first image;
wherein said chip is configured to replace said first image
with said lower resolution copy of said first image and fade out
said lower resolution copy of said first image to reveal said
second image to commence display of said second video signal.

REFERENCES
Fisher US 5,371,519 Dec. 6, 1994

Qureshi US 6,396,500 B1 May 28, 2002

Ono US 2003/0012402 A1 Jan. 16, 2003

Chen US 2004/0096200 A1 May 20, 2004

Wright US 2004/0244036 A1 Dec. 2, 2004

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REJECTIONS AT ISSUE
Claims 1, 4, 9, 11, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen in view of Ono. Ans. 5–7.
Claims 2, 3, 5–8, and 12–15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen in view of Ono and in further view of Fisher.
Ans. 7–10.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chen in view of Ono and in further view of Qureshi. Ans. 10–11.
Claims 17–19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Ono and in further view of Wright. Ans.
11–12.

ISSUES
Did the Examiner err in finding the combination of Chen and Ono
teaches or suggests “on the display device, fading out said lower resolution
copy of said first image,” as recited in independent claim 1 and similarly
recited in independent claims 11 and 16?
Did the Examiner err in finding the combination of Chen and Ono
teaches or suggests “a first video buffer,” “a second video buffer,” and “a
graphic buffer for containing a lower resolution copy of said first image,” as
recited in independent claim 11?
Did the Examiner err in finding the combination of Chen, Ono, and
Fisher teaches or suggests “disabling a graphic overlay,” as recited in
dependent claim 2?
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Did the Examiner err in finding the combination of Chen, Ono, and
Fisher teaches or suggests “pointing a video overlay,” as recited in
dependent claim 3?
Did the Examiner err in finding the combination of Chen, Ono, and
Qureshi teaches or suggests “centering and resizing said first and second
images to fit respective buffers prior to said replacing said first image,” as
recited in dependent claim 10?
Did the Examiner err in finding the combination of Chen, Ono, and
Wright teaches or suggests “a set-top box selectively outputting said first
video signal corresponding to a first channel of video programming and said
second video signal corresponding to a second channel of video
programming,” as recited in dependent claim 17?
Did the Examiner err in finding the combination of Chen, Ono, and
Wright teaches or suggests “said first or second video signal source is any
one of a set-top box, a high definition receiver, an optical disc player, a
video server, a video recorder or a broadcast network,” as recited in
dependent claim 19?

ANALYSIS
Claims 1, 4, 9, 16, and 18
We select claim 1 as representative of the group comprising claims 1,
4, and 9 since Appellants do not argue claims 4 and 9 with particularity. 37
C.F.R. § 41.37(c)(1)(vii). Independent claim 1 recites “replacing a first
image which is a frame of a first video signal with a lower resolution copy of
said first image,” and “on a display device, fading out said lower resolution
copy of said first image.” The Examiner finds that Chen teaches all of the
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limitations recited above. Ans. 5–6.1 Specifically, the Examiner cites to ¶
50 and ¶ 51 where Chen teaches a method of creating a video by combining
different images together with one or more transitions which include: fade-
in, fade-out, overlap, scale-down,2 and push. Ans. 5 and 12. Because one or
more of these transitions can be combined, the Examiner finds that one of
ordinary skill in the art would combine them in any desired order. Ans. 6
and 12. Thus, the Examiner finds that one of ordinary skill in the art could
have used the scale-down transition first to lower the resolution of a first
image and a fade-out transition second to view a second image. Ans. 6 and
12.
Appellants allege that Chen is silent as to the order in which one or
more transition effects may be performed and that the Examiner has not
provided any objective evidence such as an affidavit to support Examiner’s
statement that, “[i]t is well known in the art to combine any given set of
image transition effects in any desired order.” App. Br. 11-15; Reply Br. 7–
12. Regarding Ono, Appellants acknowledge that Ono arguably teaches that
scaling changes the resolution of the image simultaneously with the size of
the image. App. Br. 15. However, Appellants contend that Ono is silent as
to replacing a first image with a lower resolution copy of the first image.
App. Br. 16.
We agree with Examiner’s findings and reasoning. While Chen is
silent as to the order of how to apply the one or more transition effects, we

1 Throughout this Opinion, we refer to the Appeal Brief dated March 3,
2011, the Reply Brief dated November 22, 2011, and the Examiner’s
Answer mailed on May 25, 2011.
2 The Examiner cites to Ono to show that it is known in the art that a scale-
down transition changes the resolution of the image. Ans. 6 and 12.

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agree with the Examiner that given the finite set of transition effects it would
have been obvious to one of ordinary skill in the art to implement the order
of the transition effects as claimed. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007).
In addition, Appellants argue that Chen is silent as to the creation of a
“lower resolution copy,” and that Chen fails to disclose the scaling of image
size as being the replacement of a first image with “a lower resolution copy”
of the first image. Reply Br. 6–7. This argument raises a new issue not
presented before in the Appeal Brief and need not be considered. See
37 C.F.R. § 41.41(a)(2).
Even so, we do not find Appellants’ arguments to be persuasive
because claim 1 does not recite “creation” of a lower resolution copy. We
find that the process of scale-down effect performs a replacement of the
image with a scaled down version of the same image (i.e., the scaled down
version of the image is a scaled down copy of the image). See Chen ¶ 50.
Furthermore, since Ono teaches that scaling an image changes the resolution
of the image, see Ono ¶ 124, we find that the teachings of Chen, as
understood in view of the teachings of Ono, suggest “a lower resolution
copy” and replacement of a first image with “a lower resolution copy” of the
first image.
Therefore, for the reasons indicated supra, we affirm the Examiner’s
rejection of claims 1, 4, and 9.
Appellants make the same arguments with respect to claim 16 as with
claim 1. App. Br. 21–22; Reply Br. 17–18. Thus, we sustain the
Examiner’s rejection of claim 16 for the reasons stated supra, with respect to
claim 1.
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Appellants make the same arguments with respect to claim 18 as with
claim 16. App. Br. 44–45; Reply Br. 36–37. Thus, we sustain the
Examiner’s rejection of claim 18 for the reasons stated supra, with respect to
claim 16.

Claim 2
Dependent claim 2 recites “disabling a graphic overlay and displaying
said first image prior to replacing said first image.” The Examiner finds that
the combination of Chen, Ono, and Fisher teaches this limitation. Ans. 7.
Specifically, the Examiner finds that “Fisher teaches, clearing the image
memory (disable graphic overlay) by setting a pointer (overlay) at a
different address within the memory, as data is read out of the image
memory (prior to displaying said first image).” Ans. 7. Appellants argue
that clearing an image memory is not the same as disabling a graphic
overlay. App. Br. 24. We agree with Appellants.
The relevant portion of Fisher cited by the Examiner (Ans. 7),
discloses a method of clearing the row image memory 22 by setting the end
of row pointer 28 to point to one increment less than the first data location in
the associated initial segment. See Fisher, col. 10, ll. 21–29. The Examiner
did not provide, nor do we find, any rationale for why clearing the row
image memory 22 is the same as disabling a graphic overlay. As such, we
cannot sustain the Examiner’s rejection of claim 2.
Therefore, for the reasons indicated supra, we reverse the Examiner’s
rejection of claim 2.

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Claims 3 and 5-8
Dependent claim 3 recites “pointing a video overlay at said first image
to display said first image prior to said replacing of said first image.”
Claims 5–8 depend from claim 3.
The Examiner finds that the combination of Chen, Ono, and Fisher
teaches the disputed limitation. Ans. 7. Specifically, the Examiner cites col.
10, ll. 21–29 of Fisher and indicates that “the video overlay is just another
type of pointer, taught by Fisher, that points at different address[es] in the
image memory to display the initial image of Chen.” Ans. 8.
However, Appellants argue that Fisher’s pointers are an “end of row
pointer 28” and a “next segment pointer 34” and these pointers do not teach
displaying a first image prior to replacing the first image, as claimed. App.
Br. 26. We agree with Appellants.
The Examiner’s findings do not explain, nor do we find, how Fisher’s
pointer is the same as a video overlay. Furthermore, the Examiner has not
shown that Fisher’s pointer points to the next image. As such, we cannot
sustain the Examiner’s rejection of claims 3 and 5–8.
Therefore, for the reasons indicated supra, we cannot sustain the
Examiner’s rejection of claims 3 and 5–8.

Claim 10
Dependent claim 10 recites “centering and resizing said first and
second images to fit respective buffers prior to said replacing said first
image.” The Examiner finds that the combination of Chen, Ono, and
Qureshi teaches the disputed limitation. Ans. 15. The Examiner cites col.
11, ll. 29–41 of Qureshi and indicates that “automatically resizing the
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graphical contents to fit browser’s display window” is the same as “resizing
and centering said graphical contents,” and that “the corresponding image
buffer (frame buffer) for displaying the content within the display browser
correspond to the respective buffers.” Ans. 15.
Appellants disagree and make the same arguments with respect to
claim 10 as with claim 1. Reply Br. 29. Additionally, Appellants argue that
Qureshi, while arguably teaching resizing, does not teach centering the first
and second images. App. Br. 42; Reply Br. 28. Even though Qureshi
teaches an embodiment where a black background with white colored text is
centered in the middle of a display, Appellants contend that there is nothing
in Qureshi that explains that the black background and text are the first and
second images. Reply Br. 28–29. We agree with Appellants.
Qureshi teaches enabling the contents of a selected slide HTML page
to fit the dimensions of the display window 126 in the browser 122. See
Qureshi col. 11, ll. 29–41. However, the cited portion of Qureshi is silent as
to centering and resizing the first and second images in order to fit the
respective buffers prior to replacing. As such, we cannot sustain the
Examiner’s rejection of claim 10.
Therefore, for the reasons indicated supra, we reverse the Examiner’s
rejection of claim 10.

Claims 11–15
Independent claim 11 recites similar limitations to independent claim
1. Additionally, claim 11 recites “a video chip comprising: a first video
buffer . . . , a second video buffer . . . , and a graphic buffer.” Claims 12–15
depend from independent claim 11. The Examiner finds that the
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combination of Chen and Ono teaches the limitations of claim 11 for the
same reasons indicated in claim 1. Ans. 7. Additionally, the Examiner finds
that Chen teaches that respective memory locations of the non-volatile
storage medium reads on a first video buffer, a second video buffer, and a
graphic buffer. Ans. 13.
Appellants argue that Chen fails to teach or suggest the disputed
limitations. App. Br. 17–20; Reply Br. 14–17. Specifically, Appellants
argue that there is nothing in the references that teaches any other memory
other than Random Access Memory (RAM). Reply Br. 15. We agree with
Appellants.
The portion of Chen cited by the Examiner does not disclose a first
video buffer, a second video buffer, and a graphic buffer for containing a
lower resolution copy of the first image, but rather the non-volatile
medium 1 is used to store still image files to be combined together using the
transcription device 5 into a video to be stored on a video disc 2 for later
playback. See Chen ¶ 48. Although Chen teaches that still images are
stored in a non-volatile medium 1, the Examiner has not shown, nor do we
find, where Chen teaches storing said images in a first video buffer and a
second video buffer. As such, we cannot sustain the Examiner’s rejection of
claims 11–15.
Therefore, for the reasons indicated supra, we reverse the Examiner’s
rejection of claims 11–15.

Claim 17
Claim 17 recites “wherein said at least one video signal source
comprises a set-top box selectively outputting said first video signal
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corresponding to a first channel of video programming and said second
video signal corresponding to a second channel of video programming.”
The Examiner finds that the combination of Chen, Ono, and Wright teaches
the limitations of claim 17. Ans. 11 and 15. Specifically, the Examiner
finds that Wright contains a set-top box that selectively outputs channels
dependent upon user input. Ans. 11 and 15.
Appellants allege that Wright does not mention any “output from the
set-top box,” because Wright merely refers to program channels that are
received. Reply Br. 34. Thus, Appellants contend that Wright fails to teach
selectively outputting any video signals. Reply Br. 35. We disagree.
The portion of Wright cited by the Examiner (Ans. 15) teaches a DBS
set top box for providing a program guide that identifies each channel in the
group by a channel number and a processor 740 for controlling channel
switching in the STB. See Wright ¶ 40. Therefore, contrary to Appellants’
assertion, we find that the DBS set top box of Wright does teach “selectively
outputting” channels based on the user selection and allows the user to
switch between different channels.
Therefore, for the reasons indicated supra, we affirm the Examiner’s
rejection of claim 17.

Claim 19
Claim 19 recites “wherein either said first or second video signal
source is any one of a set-top box, a high definition receiver, an optical disc
player, a video server, a video recorder or a broadcast network.” The
Examiner finds that the combination of Chen, Ono, and Wright teaches the
limitations of claim 19 for the same reasons as claim 17. Ans. 11 and 15.
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Appellants contend that Wright fails to teach or suggest “the set top
box 110 being a first or second video signal source,” because Wright
describes a set top box 110 being a receiver, not an output source. Reply Br.
37. We disagree.
The Examiner finds, and we agree, that the set top box is an output
source that sends signals to the display device. Ans. 11 and 15; see also
Wright ¶ 40. As such, it is an output source. In addition, Wright also
teaches a broadcast network, because Wright teaches the use of a satellite
transponder. Id.
Therefore, for the reasons indicated supra, we affirm the Examiner’s
rejection of claim 19.

CONCLUSION
The Examiner did not err in finding the combination of Chen and Ono
teaches or suggests “on a display device, fading out said lower resolution
copy of said first image,” as recited in independent claim 1 and similarly
recited in independent claims 11 and 16.
The Examiner erred in finding the combination of Chen and Ono
teaches or suggests “a first video buffer,” “a second video buffer,” and “a
graphic buffer for containing a lower resolution copy of said first image,” as
recited in independent claim 11.
The Examiner erred in finding the combination of Chen, Ono, and
Fisher teaches or suggests “disabling a graphic overlay,” as recited in
dependent claim 2.
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The Examiner erred in finding the combination of Chen, Ono, and
Fisher teaches or suggests “pointing a video overlay,” as recited in
dependent claim 3.
The Examiner erred in finding the combination of Chen, Ono, and
Qureshi teaches or suggests “centering and resizing said first and second
images to fit respective buffers prior to said replacing said first image,” as
recited in dependent claim 10.
The Examiner did not err in finding the combination of Chen, Ono,
and Wright teaches or suggests “a set-top box selectively outputting said
first video signal corresponding to a first channel of video programming and
said second video signal corresponding to a second channel of video
programming,” as recited dependent claim 17.
The Examiner did not err in finding the combination of Chen, Ono,
and Wright teaches or suggests “said first or second video signal source is
any one of a set-top box, a high definition receiver, an optical disc player, a
video server, a video recorder or a broadcast network,” as recited in
dependent claim 19.
SUMMARY
The Examiner’s decision to reject claims 2, 3, 5–8, 10–15 is reversed.
The Examiner’s decision to reject claims 1, 4, 9, and 16–19 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)(1)(iv).

AFFIRMED-IN-PART
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