Ex Parte Murray et al

Patent Trial and Appeal Board

Feb 6, 2015

10555214 (P.T.A.B. Feb. 6, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER 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.
10/555,214 01/04/2006 Kevin Murray 7251-95173 4485
24628 7590 02/06/2015
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
VO, TUNG T
ART UNIT PAPER NUMBER
2486
MAIL DATE DELIVERY MODE
02/06/2015 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 KEVIN MURRAY, DAVID FINK, and EZRA DARSHAN

Appeal 2012-0078951
Application 10/555,214
Technology Center 2400
____________________

Before ROBERT E. NAPPI, JEAN R. HOMERE, and JOHN P.
PINKERTON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–13 and 15–40. Claim 14 has been cancelled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants have identified the real party in interest as NDS, LTD. App.
Br. 2. An oral hearing was held in this appeal on January 22, 2015.
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Appellants’ Invention
Appellants invented a method and system for accessing in a personal
video recorder (PVR) content information (e.g., start, end, locations, types,
time) pertaining to a digital video signal encoded in a plurality of layers.
Spec. 1: 9–19. In particular, upon detecting content information extracted
from a first encoding layer of the signal has been modified, the second
encoding layer thereof is updated with the extracted content, and placed in a
readily accessible retrieval area of the digital signal. Spec. 4:2–15, Fig. 2.

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for providing access to operation information relating to
a digital signal, the method comprising:

providing a digital signal encoded, in accordance with a layered
encoding scheme, in a plurality of layers; and

extracting operation information from a first layer of encoding
within the digital signal, and placing the extracted information in a
data section in
a second layer of encoding within the digital signal, wherein the
extracted
information is placed in the second layer as a consequence of the
extracted
information having changed relative to an earlier version of the
extracted information.

Prior Art Relied Upon
Sugahara US 6,683,987 B1 Jan. 27, 2004
Balakrishnan US 2005/0036557 A1 Feb. 17, 2005
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Zhang US 7,096,488 B1 Aug. 22, 2006
Candelore US 7,124,303 B2 Oct. 17, 2006
Hallberg US 7,298,959 B1 Nov. 20, 2007
Kabayashi US 7,397,819 B2 Jul. 8, 2008

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1–4, 7–9, 13, 15–27, 35, 36, 38, and 39 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Balakrishnan.
Claims 1–4, 7–13, 15–27, 35, 36, 38, and 39 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Zhang.
Claims 1–4, 7, 8, 10–13, 15–27, 35, 36, 38, and 39 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Sugahara.
Claims 1–7, 13, 15, 16, 18, 35, and 38 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Kobayashi.
Claims 1, 35, and 38 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Hallberg.
Claims 9, 28–34, 37, and 40 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Sugahara and Candelore.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 8–45, and the Reply Brief, pages 2–7.2

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed December 30, 2011), the Reply Brief (filed
April 16, 2012), and the Answer (mailed February 22, 2012) for the
Footnote continued on next page.

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Anticipation Rejections
Dispositive Issues: Under 35 U.S.C. § 102, did the Examiner err in
finding Balakrishnan, Zhang, Sugahara, Kobayashi, and Hallberg
individually describe that as a consequence of information extracted from a
first layer of encoding within a digital signal having changed relative to an
earlier version, placing the extracted information in a second layer within
the signal, as recited in claim 1?
Appellants argue none of the cited references describe the disputed
limitations emphasized above. App. Br. 10–24. We have reviewed the
Examiner’s rejections in light of Appellants’ arguments. We are
unpersuaded by Appellants’ contentions. As noted above in our summary of
Appellants’ invention, the disputed claims on appeal are primarily directed
to maintaining data consistency in different layers of an encoded data stream
associated with a digital signal. Therefore, except as indicated otherwise, we
adopt as our own the findings and reasons set forth by the Examiner in the
action from which this appeal is taken, and as detailed in the Examiner’s
Answer in response to Appellants’ Appeal Brief. See Ans. 30–61.
However, we highlight and address specific arguments and findings for
emphasis as follows.

respective details. We have considered in this decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
which Appellants could have made, but chose not to make in the Briefs, are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Balakrishnan
Appellants argue Balakrishnan does not describe extracting operation
information from a first encoding layer, and placing the extracted
information in a second layer of a same digital signal as a consequence of
the extracted information having changed as recited in independent claim 1.
App. Br. 10–13. According to Appellants, in Balakrishnan, “the signal into
which the ancillary information is inserted is not necessarily the same signal
from which it was extracted.” Id. at 12. Further, Appellants argue
Balakrishnan does not describe “the extracted ancillary information is
inserted in a different encoding layer than the encoding layer from which it
was extracted.” Id. Additionally, Appellants argue because Balakrishnan’s
extraction and insertion of ancillary information has to be aligned with the
synchronization points, the insertion of information is not performed as a
consequence of the extracted information having changed. Id. at 13. These
arguments are not persuasive. Balakrishnan discloses processing ancillary
information at synchronization points identified in the lower layer of an
elementary stream to produce a modified sequence, which is inserted into a
system layer stream. Balakrishnan Abstr., ¶¶ 7, 28, 42, 51. We agree with
the Examiner that because Balakrishnan discloses extracting ancillary
information from a first layer of an elementary stream, and subsequently
inserting the extracted information into a new layer of the elementary stream
when the extracted stream has been modified (Ans. 31–33), Balakrishnan is
directed to maintaining data consistency between different encoding layers
of a data signal, and thereby describes the disputed limitations. Therefore,
we will sustain the Examiner’s rejection of claim 1 as being anticipated by
Balakrishnan. It therefore follows that Appellants have failed to show error
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in the Examiner’s anticipation rejection of claims 1, 35, and 38 which are
grouped together.

Zhang
Appellants argue Zhang does not describe extracting operation
information from a first encoding layer, and placing the extracted
information in a second layer of a same digital signal as a consequence of
the extracted information having changed. App. Br. 14–16. According to
Appellants, Zhang’s disclosure of converting a B or P frame into an I frame
merely describes changing certain information in a data stream, as opposed
to placing on a different layer information extracted from another layer. Id.
Further, Appellants argue because Zhang discloses inserting the location
information in the data stream regardless, such insertion is not done as a
consequence of having extracted the information from the incoming bit
stream. Id. at 16. These arguments are not persuasive. Zhang discloses a
two stage strategy for providing compressed video data from multiple bit
streams. Zhang Abstr. In the first stage, an incoming compressed bit stream
of video data is de-multiplexed to obtain insertion points and splicing
locations included therein. Zhang Col. 11, ll. 38–50. The compressed video
data is subsequently conditioned by inserting digital content at extracted
insertion locations and spliced points. In the second stage, a second bit of
the compressed video data is spliced into the conditioned first bit thereby
updating the first bit with changes made to the first bit stream. Zhang Col.
11, ll. 57–67. As a result, different layers of the data stream are aligned.
Zhang Col. 12, ll. 32–38. Thus, we agree with the Examiner because
Zhang’s disclosure of identifying in an incoming video bit stream insertion
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locations and corresponding splice points to thereby update a second video
bit stream (Ans. 34–35), Zhang describes placing the extracted information
on a second layer of the video content as a consequence of modifying
content of a first layer in the video stream. It therefore follows that
Appellants have failed to show error in the Examiner’s anticipation rejection
of claims 1, 35, and 38 which are grouped together.

Sugahara
Appellants argue Sugahara does not describe extracting operation
information from a first encoding layer, and placing the extracted
information in a second layer of a same digital signal as a consequence of
the extracted information having changed. App. Br. 17–20. According to
Appellants, the Examiner erroneously equates Sugahara’s current picture to
a first encoding layer and a preceding picture to a second encoding layer. Id.
at 18. Further, Appellants argue because a picture substituted for another
remains in its original layer, as opposed to a different layer, Sugahara does
not describe placing the extracted information into a different layer. Id.
These arguments are persuasive. Sugahara discloses a method and system
for altering the picture updating frequency within a compressed video data
stream. Abstr. In particular, after extracting temporal references from an
incoming data stream portion corresponding to a current basic picture (B
picture), the extracted characteristics are compared to those of a preceding
B-picture in another portion of the data stream to copy the previous picture
code into the current one thereby making them consistent. Sugahara Col. 15,
l. 60– col. 16, l. 13, Figs. 13A, 13B. We do not agree with the Examiner that
the different portions of the data stream can be construed as layers thereof.
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Thus, although we agree with the Examiner that Sugahara discloses
extracting temporal information from a current picture to thereby cause a P
picture to be consistent with a B picture that has been modified, such
disclosure does not describe placing the extracted information on a second
layer of the video content as a consequence of modifying content of a first
layer in the data stream. Ans. 35–36. Because Appellants have shown at
least one reversible error in the Examiner’s anticipation rejection of claim 1,
we need not reach Appellants’ additional argument regarding the claim. It
therefore follows that Appellants have shown error in the Examiner’s
anticipation rejection of claim 1. Likewise, because claims 2–4, 7, 8, 10–13,
15–20, 35, 38 also recite the disputed limitations discussed above, the
Examiner’s anticipation rejection of these claims is in error. We will not
sustain this rejection.
Because claims 21–27, 36, and 39, included in the anticipation
rejection based upon Sugahara, do not recite the different layer encoding
schemes, Appellants’ arguments (App. Br. 36–37) are not persuasive. We
therefore agree with the Examiner that Sugahara’s disclosure of extracting
data from a B picture that has been modified to update a subsequent picture
in a video frame teaches the disputed limitations. Ans. 54–57.
Consequently, we sustain the Examiner’s anticipation rejection of claims
21–27, 36, and 39.

Kobayashi
Appellants argue Kobayashi does not describe extracting operation
information from a first encoding layer, and placing the extracted
information in a second layer of a same digital signal as a consequence of
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the extracted information having changed. App. Br. 20–21. Appellants
submit Kobayashi discloses inserting into the payload of a compressed
Ethernet frame an identifier extracted from an IP header of an ordinary
Ethernet frame. App. Br. 20. According to Appellants, however, because
such insertion is done regardless of whether the extracted information has
changed, Kobayashi does not describe the disputed limitations. Id. These
arguments are not persuasive. Although the claim recites an
extraction/insertion when an earlier version has been changed, such
recitation cannot be limited to performing the extraction/insertion only when
an update to an earlier version has occurred. It suffices that the prior art
provides an extraction/insertion continuum that includes or encompasses the
conditional extraction/insertion recited in the claim. Kobayashi discloses a
method and system for compressing data packets encoded in a plurality of
layers. Abstr. In particular, after extracting an identifier from an IP header
of an Ethernet frame in a first layer of the data packet, the extracted
information is inserted into the payload of another frame in a different layer.
Id., Fig. 6A. Thus, although Appellants correctly note the insertion of the
codec signal extracted from one layer into the payload of another layer is
done routinely for compression reasons, (App. Br. 20), we find such
continuous insertion encompasses the occasional insertion that occurs when
the extracted information has changed. Besides, the claimed insertion does
not preclude the continuous insertion taught by Kobayashi. Thus, we agree
with the Examiner, Kobayashi’s disclosure of inserting into a subsequent
layer frame data extracted from a preceding layer describes placing the
extracted information on a second layer of the video content as a
consequence of modifying content of a first layer in the data stream. Ans.
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37–38. It therefore follows that Appellants have failed to show error in the
Examiner’s anticipation rejection of claim 1.

Hallberg
Appellants argue Hallberg does not describe extracting operation
information from a first encoding layer, and placing the extracted
information in a second layer of a same digital signal as a consequence of
the extracted information having changed. App. Br. 23–24. Appellants
contend the difference between DV formatted packets and IEEE 1394
packets do not necessarily imply that DV MPEG data are inserted into the
1394 packets. App. Br. 23. According to Appellants, because such insertion
is done regardless of whether the extracted information has changed,
Hallberg does not describe the disputed limitations. Id. at 24. These
arguments are not persuasive. Hallberg discloses a multi-layered encoding
of video data wherein data previously encoded in a first layer is forwarded to
an IEEE 1394 encoder in a second encoding layer. Abstr, Fig. 5. Appellants
correctly argue the insertion of the MPEG data extracted from one layer into
IEEE 1394 layer occurs regardless of whether there has been any change in
the particular data being moved. App. Br. 24. However, because such
continuous insertion encompasses the occasional insertion that occurs when
the extracted information has changed, and the claimed insertion does not
preclude the continuous insertion taught by Hallberg, the reference describes
the disputed limitations. Thus, we agree with the Examiner, Hallberg’s
disclosure of inserting into an IEEE 1394 layer MPEG data extracted from a
preceding layer describes placing the extracted information on a second
layer of the video content as a consequence of modifying content of a first
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layer in the data stream. Ans. 38–39. It therefore follows that Appellants
have failed to show error in the Examiner’s anticipation rejection of claim 1.

Claims 2–13, 15–27, 35, 36, 38, and 393
Regarding the rejections of claims 2–13, 15–27, 35, 36, 38 and 39, to
the extent Appellants have either merely restated claim limitations without
identifying error in the Examiner’s findings (which we do not consider
arguments for separate patentability) or have reiterated substantially the
same arguments as those previously discussed for patentability of claim 1
above, claims 2–13, 15–27, 35, 36, 38 and 39 fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii). Thus, we sustain the Examiner’s anticipation
rejections of those claims for the reasons discussed with respect to claim 1.
Further, to the extent Appellants have raised additional arguments for
patentability of these claims (App. Br. 24–45), we find that the Examiner has
rebutted in the Answer each and every one of those arguments by a
preponderance of the evidence. Answer 39–59. We adopt the Examiner’s
findings and underlying reasoning, which we incorporate herein by
reference. Because Appellants have failed to persuasively rebut the
Examiner’s findings regarding the rejections of claims 2–13, 15–27, 35, 36,
38 and 39, Appellants have failed to show error in the Examiner’s rejections
of these claims.

3 This discussion excludes the Examiner’s rebuttal arguments in support of
the anticipation rejections of claims 1–4, 7–13, 15–20 over Sugahara as set
forth above.
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Obviousness Rejection
Because dependent claim 9 also recites the different layering schemes
not taught by Sugahara as discussed above, and Candelore is not relied upon
to remedy the noted deficiencies, Appellants have shown error in the
Examiner’s rejection of the claim. We will not sustain this rejection.
Regarding the rejection of claims 28–34, 37, and 40, Appellants argue
the combination of Sugahara and Candelore does not teach or suggest a
received signal comprising an encrypted packet, and unencrypted packet,
each containing a copy of the same operation information. App. Br. 42.
According to Appellants, although Candelore discloses encrypted packets
and unencrypted packets, the two kinds of packets do not contain copies of
the same operation information. Id. at 43. We agree with Appellants. Even
though the Examiner correctly finds that Candelore teaches inserting
encrypted and unencrypted packets into an output stream (Ans. 59), the
Examiner has not shown that the two kinds of packets contain the same
operation information. Because Appellants have shown at least one
reversible error in the Examiner’s rejection of those claims, we need not
reach Appellants’ additional arguments regarding these claims. Appellants
have therefore shown error in the Examiner’s obviousness rejection of
claims 28–34, 37, and 40.

DECISION
We reverse the Examiner’s rejection of claims 1–4, 7, 8, 10–13, 15–
20, 35, and 38 as being anticipated by Sugahara. We also reverse the
Examiner’s rejection of claims 9, 28–34, 37, and 40 as being unpatentable
over the combination of Sugahara and Candelore. However, we affirm all
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other rejections of record pertaining to claims 1–13 and 15–27, 35, 36, 38,
and 39 as set forth above.
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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