Ex Parte Ma et al

Board of Patent Appeals and Interferences

Apr 11, 2011

10409717 (B.P.A.I. Apr. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TSANG FAI MA and JITESH ARORA
____________

Appeal 2009-010082
Application 10/409,717
Technology Center 2100
____________

Before JAY P. LUCAS, JOHN A. JEFFERY, and JAMES R. HUGHES,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 7-9, 15-18, 28, 29, 32-46, and 53-70. Claims 6,
10-14, 19-27, 30, 31, and 47-52 have been canceled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention displays multiple video streams simultaneously,
and alters a stream’s characteristics based on the stream’s status. See
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generally Spec. 1-3. Claim 1 is reproduced below with key disputed
limitations emphasized:
1. A method comprising:
determining that a first video data having a first priority
level based on a priority characteristic is to be displayed in a first
window simultaneously with a second video data having a second
priority level to be displayed in a second window, the second
window being different than the first window, the priority
characteristic selected from the group consisting of: z-ordering
level, a video event, user activity in the first window, and a user-
programmed preference;
modifying, at a first time, in response to determining the first
priority level is lower than the second priority level, the first video
data to generate a modified first video data having a first alpha
blending level different than the first video data; and
storing the modified first video data.

The Examiner relies on the following as evidence of unpatentability:
Frank US 5,651,107 July 22, 1997
Porter US 5,838,318 Nov. 17, 1998
Tsunoda US 7,051,287 B1 May 23, 2006
(filed Dec. 13, 1999)

THE REJECTIONS
1. The Examiner rejected claims 1, 4, 5, 7-9, 15, 28, 29, 32-43, 46,
53-56, and 65
1
under 35 U.S.C. § 102 as anticipated by Frank.
2
Ans. 2-7.

1
Claim 4 depends from claim 2; claim 5 indirectly depends from claim 2;
claim 7 indirectly depends from claim 2; and claim 64 depends from claim
58. Claim 2 is rejected under § 103 over Frank and Tsunoda; and claim 58
is rejected under § 103 over Frank and Porter. See Ans. 8, 10, 12. The
Examiner, however, erroneously includes claims 4, 5, 7, and 64 in the
anticipation rejection. See Ans. 2. Although Appellants did not argue this
error, we nonetheless deem it harmless, since the rejections of claims 4, 5, 7,
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2. The Examiner rejected claims 2-5, 7, and 68-70 under 35 U.S.C.
§ 103(a) as unpatentable over Frank and Tsunoda. Ans. 8-10.
3. The Examiner rejected claims 16-18, 44, 45, 57-64, 66, and 67
under 35 U.S.C. § 103(a) as unpatentable over Frank and Porter. Ans.
10-14.

THE ANTICIPATION REJECTION
Claims 1, 8, 9, 15, 28, 29, 32-37, and 53-56
Regarding representative independent claim 1, the Examiner finds that
Frank discloses all recited limitations, including modifying the first video
data responsive to determining that the first priority level is lower than the
second priority level, which is said to correspond to Frank’s selecting alpha
values for first and second windows to adjust a window’s transparency. See
Ans. 3, 15-16.
Appellants argue that Frank’s alpha level is not a priority
characteristic or a priority level. App. Br. 10-11; Reply Br. 2-3. Appellants
also contend that Frank does not change the alpha-blending level of a
window responsive to a window having a lower priority than another
window because the windows are equally visible. App. Br. 9; Reply Br. 2-3.
The issue before us, then, is as follows:

and 64 rely on the disclosure of Frank which is included in the rejections of
claims 2 and 58. Based on the record before us, we presume that the
Examiner intended to reject (1) claims 4, 5, 7 as being unpatentable over
Frank and Tsunoda, and (2) claim 64 as being unpatentable over Frank and
Porter.
2
Throughout this opinion, we refer to (1) the Appeal Brief filed July 28,
2008; (2) the Examiner’s Answer mailed October 3, 2008; and (3) the Reply
Brief filed December 1, 2008.
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Frank modifies first video data responsive to determining that the first
priority level is lower than the second priority level?

FINDINGS OF FACT (FF)
1. Appellants provide examples of priority and priority
characteristics with respect to video windows. Spec. 4:8-5:5; 11:19-12:2;
18:17-22; see also App. Br. 3.
2. Appellants have not defined a priority level. See generally
Specification.
3. Frank discloses a way to eliminate obscured windows. Figure 8
shows the value for window 260 is set to less than 1 (approximately 0.8) by
the user moving slide bar 264 to the appropriate position on the slide 262.
Slide bar 272 for window 255 has been set to an α value of 1. These α
values render window 260 partially transparent, allowing a user to view the
clock face 275 in window 255. Window 255 having an α value of 1 is a
traditional window which is not transparent. Frank, col. 9, ll. 25-40; Fig. 8.

ANALYSIS
We begin by construing the key disputed limitation of claim 1 which
calls for, in pertinent part, modifying first video data responsive to
determining that the first priority level is lower than the second priority
level. Appellants disclose non-limiting examples of priority characteristics
with respect to video windows. See FF 1. Nonetheless, claim 1 limits the
recited priority characteristic to be ―selected from the group consisting of:
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z-ordering level, a video event, user activity in the first window, and a user-
programmed preference[.]‖ Claim 1, ll. 6-7. On the other hand, Appellants
do not define what the ―first priority level‖ and ―second priority level‖ are.
See FF 2. As such, we interpret the phrase ―priority level,‖ which is based
on a priority characteristic, with its broadest reasonable construction to
include a level or value programmed or chosen by user that conveys the
user’s preference. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (internal citations omitted).
As the Examiner explains (Ans. 3), Frank allows a user to choose
alpha (α) values or levels by moving sliding bars (e.g., 264, 272) within
windows (e.g., 260, 255). FF 3. Figure 8 shows a user has selected an α
value of about 0.8 for window 260 and α value of 1 for window 255. See id.
In this scenario, as the Examiner explains (see Ans. 15-16), the user chooses
α values that render window 260 partially transparent, thus allowing the user
to view the clock face (e.g., 275) in underlying window 255. See id. Thus,
the user-chosen α values (1) determine whether a user can see overlapping
features of a second window below a top window (e.g., an obscured clock
face of window 255 below window 260), or (2) establish a preference to
view certain information in the second window ―through‖ the first window
by making the first window partially transparent. See id.
These user-selected α-values affecting a window’s transparency, in
essence, are user-programmed preferences that define or program a user’s
priority for viewing the clock’s face in the second window. Moreover, the
second window’s α value is set to 1, and therefore is a normal
non-transparent window that would completely obscure any window below
it. We therefore disagree with Appellants (see App. Br. 10-11) that Frank’s
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α values cannot be first and second priority levels. Nor are we persuaded by
Appellants’ contention that Frank fails to disclose determining a first priority
level (e.g., level associated with window 260) that is lower than the second
priority level (e.g., level associated with window 255) as required by claim
1.
Moreover, each window in this example will not be equally visible, as
Appellants contend (App. Br. 9). Rather, the α settings permit partial
transparency or visibility. See id. Additionally, in response to the user’s
selections, Frank adjusts or modifies a window (e.g., 260). See FF 3. That
is, the selected desired transparency is generated to create modified ―first‖
video data (e.g., new window 260) that has a new transparency (i.e., first
alpha-blending level) defined by the selected α values. We therefore
disagree with Appellants (see App. Br. 9-10) that Frank fails to disclose
modifying a first video data responsive to determining the priority levels as
recited in claim 1.
For the first time in the Reply Brief, Appellants argue that Frank does
not disclose the window priority monitor is coupled to a video controller as
recited in claim 29. See Reply Br. 3. This argument, however, is waived as
untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (―[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.‖).
For the foregoing reasons, Appellants have not persuaded us of error
in the anticipation rejection of: (1) independent claim 1; (2) independent
claims 29 and 32, which are commensurate in scope and rely on similar
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arguments presented for claim 1 (see App. Br. 12-13); and (3) dependent
claims 8, 9, 15, 28, 33-37, and 53-56 not separately argued with particularity
(see App. Br. 7-16).

Claims 38-42 and 65
Regarding representative independent claim 38, the Examiner finds
that Frank discloses all recited limitations, including modifying the first
video data to generate a modified first video stream having a first video
characteristic different than the first video stream when the second window
is active—a feature that presumably corresponds to the functionality of
Frank’s Figures 7 and 8. See Ans. 3, 19.
Appellants refer to the arguments made in connection with claim 1.
See App. Br. 14. Appellants also assert that Frank does not refer to the
active state of a window, and therefore does not modify an alpha-blending
level of a first video stream associated with a first window when a second
window is active. App. Br. 15.
The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 38 by finding
that Frank modifies an alpha-blending level of a first video stream associated
with a first window when a second window is active?

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ADDITIONAL FINDING OF FACT (FF)
4. Appellants have not defined the term ―active.‖ See generally
Specification.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 38 which calls for, in pertinent
part, modifying an alpha blending level of a first video stream associated
with a first window when a second window is active. As discussed above in
connection with claim 1, we find that Frank modifies a first video stream
associated with a first window to generate or modify first video data having
a first alpha-blending level. See FF 1-3.
We also disagree with Appellants’ contention that this modification
does not occur when the second window is active. App. Br. 15. First, the
term ―active‖ has not been defined (FF 4), and we therefore give this term its
broadest reasonable construction to include a window having features that
remain active. See Am. Acad., 367 F.3d at 1364. Second, Figure 8 shows
that a clock face (e.g., 275) in both the first and second windows (e.g., 260,
255) that keeps time. See FF 3. Thus, at least a portion of the second
window (e.g., 255) remains active to the user even when the user operates on
the top window (e.g., 260). See id. We therefore find that Frank modifies
an alpha-blending level of a first video stream associated with a first window
when a second window is active as required by claim 38.

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For the foregoing reasons, Appellants have not persuaded us of error
in the anticipation rejection of independent claim 38, and dependent claims
39-42 and 65 not separately argued with particularity (see App. Br. 7-11,
13-15).

Claims 43 and 46
Regarding representative independent claim 43, the Examiner finds
that Frank discloses all recited limitations, including providing a first video
stream for display with a first and second characteristic, when the first video
window has a higher or lower priority respectively than the second video
window—a feature that is said to correspond to the functionality associated
with Frank’s windows of varying transparency. See Ans. 6, 19-20.
Appellants refer to the arguments made for claim 1 (App. Br. 16), and we
refer to our previous discussion of claim 1 in response.
Also, Appellants assert that Frank does not disclose providing a first
video stream for display with a second characteristic, when the first video
window has a lower priority than the second video window. App. Br. 16.
However, mere arguments that are unsupported by factual evidence are
entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). Nonetheless, as discussed above, Frank discloses
situations providing a first video stream for display with a first or second
characteristic, when the first video window has a higher (e.g., first window’s
α value set to 1, and second window’s α value set to 0) or lower (e.g., first
window’s α value set to about 0.8, and second window’s α value set to 1)
priority respectively than the second video window. See FF 3.
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For the foregoing reasons, Appellants have not persuaded us of error
in the anticipation rejection of independent claim 43 and dependent claim 46
not separately argued with particularity (see App. Br. 15-16).

THE OBVIOUSNESS REJECTION OVER FRANK AND TSUNODA
Claims 2-5, 7, and 68-70 are rejected under 35 U.S.C. § 103 as being
unpatentable over Frank and Tsunoda. See Ans. 8-10. Appellants have
presented no arguments related to this rejection. See App. Br. 16-23; Reply
Br. 2-4. Therefore, we summarily sustain this rejection.
3

THE OBVIOUSNESS REJECTION OVER FRANK AND PORTER
Claims 16, 57, 66, and 67
Claims 16-18, 44, 45, 57-64, 66, and 67 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Frank and Porter. See Ans. 10-14.
Appellants have presented no arguments for claims 16, 57, 66, and 67. See
App. Br. 16-23; Reply Br. 2-4. Therefore, we summarily sustain the
rejection of these claims.

Claims 17 and 18
Claim 17 depends from claim 1. The Examiner finds that Frank
teaches all recited limitations in this claim, except for modifying a first audio
stream to generate a modified first audio stream having a first audio

3
See Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th ed.,
Rev. 8, July 2010 (―If a ground of rejection stated by the examiner is not
addressed in the appellant's brief, that ground of rejection will be summarily
sustained by the Board.‖).
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characteristic different than the first audio stream based on the priority level.
Ans. 10. The Examiner relies on Porter to teach this missing limitation. See
Ans. 10-11, 20.
Appellants argue, among other things, that Porter fails to generate a
modified audio stream having a first characteristic different than the first
audio stream based on the priority level. App. Br. 18; Reply Br. 3.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 17 by finding
that Frank and Porter collectively would have taught or suggested modifying
a first audio stream to generate a modified first audio stream having a first
audio characteristic different than the first audio stream based on the priority
level?

ADDITIONAL FINDINGS OF FACT
5. Porter teaches that a video conference can include audio and
video inputs, including changes to audio inputs (e.g., speaking into a
microphone) and changes to video inputs (e.g., moving within the field of
view of a video camera). Porter explains that turn-taking controls placed on
a conference dictate whether these inputs become outputs at the other end.
Porter, col. 7, ll. 42-49.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of claim 17 which calls for, in pertinent part,
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modifying a first audio stream to generate a modified first audio stream
having a first audio characteristic different than the first audio stream based
on the priority level. The key phrase in this recitation is that the first audio
stream is modified to have a first audio characteristic based on the priority
level. As discussed above and in the Examiner’s Answer (Ans. 3), the first
priority level is the disclosed α value for the first window—a parameter that
varies window transparency. See FF 3. Thus, even assuming, without
deciding, that Porter generates a modified audio stream, we fail to see how
this teaching to modify an audio stream is based on Frank’s α value (i.e., the
priority level) – a video-based parameter that is for an entirely different
purpose. That is, while Frank’s α value relates to how transparent the
windows will be (see FF 3), Porter bases whether an audio stream input
becomes an output (e.g., generates a modified audio stream having a first
characteristic) on turn-taking controls (see FF 5).
We therefore find that the Examiner has not adequately explained how
the audio stream’s characteristics taught in Porter are incorporated into
Frank so that the audio stream’s characteristic is based on the video stream’s
priority level disclosed in Frank. In short, the Examiner has not articulated
sufficient reasoning with some rational underpinning to support the
conclusion that claim 17 is obvious over Frank and Porter. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
For the foregoing reasons, Appellants have persuaded us of error in
the obviousness rejection of claim 17, and dependent claim 18 for similar
reasons.

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Claims 44 and 45
Claim 44 depends from claim 43. The Examiner finds that Frank
teaches all recited limitations in claim 43, except for identifying priorities
associated with the video windows include identifying a time each of the
video windows were accessed by the user. Ans. 11. The Examiner relies on
Porter to teach this missing limitation. See Ans. 11-12.
Appellants argue, among other things, that Porter’s discussion of
monitoring window events does not teach identifying a time that video
windows were accessed by the user. App. Br. 20-21; Reply Br. 4.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 44 by finding
that Frank and Porter collectively would have taught or suggested
identifying priorities associated with the video windows include identifying
a time each of the video windows were accessed by the user?

ADDITIONAL FINDINGS OF FACT
6. Porter teaches that windows may be arranged based on a
predetermined event. The events include: (1) opening a window; (2)
removing an old window; (3) minimizing a window to an icon; (4) restoring
a window from an icon; (5) starting a conferencing connection; (6) ending a
conferencing connection; (7) changing an application within the domain
from being shared to not being shared or vice-versa; and (8) switching tasks

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(e.g., changing the active window). Porter monitors for these events, and
notes that monitoring window events is well-known. Porter, col. 10, ll.
19-43; Figs. 4A-B.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of claim 44 which calls for, in pertinent part,
identifying priorities associated with the video windows include identifying
a time each of the video windows were accessed by the user. The Examiner
relies on Porter’s teaching of monitoring window events to teach this
limitation. See Ans. 11. But monitoring a window event, such as
identifying a window being opened, removed, minimized, or restored (see
FF 6), does not mean that the time each window is accessed is identified as
claimed. Although time-stamping activities may be well-known to an
ordinarily skilled artisan (see Ans. 12), the Examiner has not shown how this
commonly-recognized feature would have been used to identify priorities for
the windows based on a time when a video window was accessed as claim
44 requires.
4
We therefore find that the Examiner has not articulated
sufficient reasoning with some rational underpinning to support the
conclusion that claim 44 is obvious over Frank and Porter. See KSR, 550
U.S. at 418.

4
To the extent that Frank’s window-based real-time clock representation
would at least suggest identifying such a time (see FF 3) has simply not been
articulated on this record. Nor will we speculate in this regard here in the
first instance on appeal.
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Additionally, in the Response to Arguments (Ans. 20-21), the
Examiner elaborates that Porter’s teaching (see FF 6) ―may be reasonably
interpreted by one of ordinary skill in the art as identifying when a view
window was accessed.‖ See Ans. 21. We agree that some of the monitored
events in Porter (see FF 6), such as starting or ending to a conferencing
connection, are linked to a temporal component or time when an event
occurred (e.g., the start or end). Nonetheless, Porter does not teach or even
suggest that monitoring for these events involves identifying the time that a
video window was accessed by the user – let alone a time each of the
claimed video windows were accessed by the user as required by claim 44.
For the foregoing reasons, Appellants have persuaded us of error in
the obviousness rejection of claim 44, and dependent claim 45 for similar
reasons.

Claims 58-64
Claim 58 depends from claim 57. The Examiner finds that Frank
teaches all recited limitations in claim 58, except for the video event being a
scene change associated with the first video data. Ans. 12. The Examiner
relies on Porter to teach this missing limitation. See Ans. 12-13, 21.
Appellants argue that Porter’s discussion of monitoring different
window events does not teach an associated scene change. App. Br. 23;
Reply Br. 4. Appellants also assert that the claimed priority level is not
based on a scene change in the video data. App. Br. 23.
The issue before us, then, is as follows:

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ISSUE
Under § 103, has the Examiner erred in rejecting claim 58 by finding
that Frank and Porter collectively would have taught or suggested that (1)
the priority characteristic is a video event, and (2) the video event is a scene
change associated with the first video data?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 58. Porter arranges windows based on
monitored predetermined events, including starting and ending a
conferencing connection. See FF 6. Thus, Porter’s monitoring detects the
beginning or end of a conference connection (e.g., a change in a conference
connection) in some manner. Porter further teaches that the conference can
include changes to video inputs, such as moving within the field of view of a
camera. See FF 5. We therefore find that Porter at least suggests that
detecting the beginning and end of a conference connection can include
detecting changes in video inputs (see FF 5-6) (i.e., a scene change) as
recited in claim 58.
Additionally, by monitoring for particular events, Porter suggests that
these events are of interest and therefore preferred over other events that are
not being monitored. See FF 6. This preferential monitoring thus defines a
priority level (e.g., some events are considered more important because they
are monitored). See FF 6. Moreover, as explained above, the priority level
is based on a priority characteristic that includes a video event having scene
change. See FF 5-6. Porter therefore at least suggests including within
Frank’s technique a particular priority level for a video event that includes a
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scene change (see id.), and such an inclusion would predictably yield no
more than determining that the video data has a first priority level for video
events that include scene changes so that the windows can be arranged
accordingly (see FF 6) responsive to this predetermined event. See KSR,
550 U.S. at 416-17.
For the foregoing reasons, Appellants have not persuaded us of error
in the obviousness rejection of claim 58, and dependent claims 59-64 not
argued with particularity (App. Br. 16-23).

CONCLUSION
The Examiner did not err in rejecting (1) claims 1, 8, 9, 15, 28, 29,
32-43, 46, 53-56, and 65 under § 102, and (2) claims 2-5, 7, 16, 57-64, and
66-70 under § 103. The Examiner, however, erred in rejecting claims 17,
18, 44, and 45 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-5, 7-9, 15-18, 28, 29,
32-46, and 53-70 is affirmed-in-part.

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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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