Ex Parte Perng et alDownload PDFBoard of Patent Appeals and InterferencesFeb 25, 200910454741 (B.P.A.I. Feb. 25, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SHYAN-MING PERNG and NATHANIEL H. ERSOZ ____________________ Appeal 2008-2241 Application 10/454,7411 Technology Center 2100 ____________________ Decided:2 February 25, 2009 ____________________ Before: JOHN C. MARTIN, JAY P. LUCAS, and ST. JOHN COURTENAY III, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed June 3, 2003. Appellants claim the benefit under 35 U.S.C. § 119 of provisional applications 60/385,473 and 60/385,474, both filed 06/3/2002. The real party in interest is Siemens Corporation of New Jersey. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Data (electronic delivery). Appeal 2008-2241 Application 10/454,741 STATEMENT OF CASE Appellants appeal from a final rejection of claims 1 to 6 under authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 7 to 50, the remaining claims in the application, are cancelled. Appellants’ invention relates to an improved method for demultiplexing and removing one program from an MPEG-2 stream of many programs for the purpose of recording that one program. In the words of the Appellants: Methods and systems for processing streams of media data are provided. In one embodiment, the personal video recording (“PVR”) system provides various techniques for efficiently and effectively recording media data. The system may allow for the demultiplexing of a multi-program transport stream (“MPTS”) into a single program transport stream (“SPTS”). The SPTS can be recorded without having to also record the other programs of the MPTS. The system also provides a data structure for storing of a program that facilities the rapid positioning at a desired time within a stream. In addition, the system when recording a program processes time discontinuities so that positioning based on time during playback can occur rapidly. The system also allows live television broadcast to be paused indefinitely in [a] way that will not use up all system storage and allow the most recent broadcast to be available for playback. When a program is being recorded, the system uses a file naming convention that allows recorded programs to be rapidly identified at system startup without having to persistently store a mapping of each program to its files. When a user specifies the begin and end times for recording of programs, the system checks the bandwidth of the data communications channel to ensure that the recording of each new program will not result in the bandwidth of the data communications channel being exceeded. Spec. 5. 2 Appeal 2008-2241 Application 10/454,741 Claim 1 is exemplary: 1. A method of removing a program from a multi-program stream, the method comprising: receiving an indication of the program to be removed; modifying a program association table of the multi-program stream to reflect the removal of the program, including modifying a section length; and removing all packets from the multi-program stream that are associated with the program to be removed. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Naimpally US 5,619,337 Apr. 8, 1997 Dokic US 5,959,659 Sep. 28, 1999 REJECTION Claims 1 to 6 stand rejected under 35 U.S.C. § 103(a) for being obvious over Dokic in view of Naimpally. Groups of Claims: The claims will be considered in order, with claim 1 representative. See 37 CFR § 41.37 (c) (1) (vii). See also In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002). 3 Appeal 2008-2241 Application 10/454,741 Appellants contend that the claimed subject matter is not rendered obvious by Dokic in combination with Naimpally, for failure of the references to teach the claimed limitations, and for improper combining of the references. The Examiner contends that each of the claims is properly rejected. Rather than repeat the arguments of Appellants or the Examiner, we make reference to the Briefs and the Answer for their respective details. Only those arguments actually made by Appellants have been considered in this opinion. Arguments which Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. We affirm the rejections. ISSUE The issue is whether Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether there is a legally sufficient justification for combining the disclosures of Dokic and Naimpally, and whether the combination of references teaches the modification of the program association table as claimed. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Appellants have invented a method and system (“method”) for processing a stream of MPEG-2 data that typically contains a plurality of television programs to extract a single program’s audio and video information for the purpose of storing that one program in a Personal 4 Appeal 2008-2241 Application 10/454,741 Video Recorder (PVR) for later viewing. (Spec, ¶ 2, 3)3. In the MPEG-2 standard, the stream of programs contains data structures called a Program Association Table (PAT) and a Program Map Table (PMT). (Spec, ¶ 7). The PAT contains a list of the programs within the multiplexed stream, with some information about them. (Id.). When choosing the program for storage, the PVR strips off the transport packets that do not contain the appropriate program identifiers (PIDs) and modifies the PAT to describe the one program that is remaining. (Spec, ¶ 25). 2. Dokic teaches removing a single program from a MPEG-2 stream containing multiple programs in a manner that speeds the process of switching from one program to another in the stream. (Col. 4, l. 6 to 11). 3. Naimpally teaches a system and method for extracting one program from many encoded in an MPEG-2 data stream for the purpose of recording the selected program. (Abstract). A user selects the desired program, and the system extracts the packets in the stream with the desired PIDs. (Col. 7, ll. 30 to 64). The program is extracted from the stream and the processor constructs a modified PAT with information tailored to the one program that has been selected. (Id.) 3 Paragraph numbers in the Specification refer to the numbering in the Patent Application Publication of this application dated January 1, 2004, consistent with the references in Appellants’ Brief and Reply. 5 Appeal 2008-2241 Application 10/454,741 PRINCIPLES OF LAW Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 1740. This court has held in a number of decisions that a United States patent speaks for all it discloses as of its filing date, even when used in combination with other references. In re Zenitz, 333 F.2d 924, 925 (CCPA 1964). References within the statutory terms of 35 U.S.C. § 103 qualify as prior art for an obviousness determination only when analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re 6 Appeal 2008-2241 Application 10/454,741 Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). ). Furthermore, “‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS From our review of the administrative record, we find that the Examiner has presented a prima facie case for the rejection of Appellants’ claims under 35 U.S.C. § 103. The prima facie case is presented on pages 2 to 6 of the Examiner’s Answer. In opposition, Appellants present a number of arguments. Arguments with respect to the rejection of claims 1 to 6 under 35 U.S.C. § 103 Appellants first contend that the Examiner erred in rejecting representative claim 1 under 35 U.S.C. § 103 as “Naimpally does not teach the limitation ‘modifying a program association table of the multi- program stream to reflect the removal of the program, including modifying a section length.’” (Br. 8, middle). Instead, Appellants argue, Naimpally constructs a program application table which describes the single program transport stream that contains only the selected program (id,) (citing 7 Appeal 2008-2241 Application 10/454,741 Naimpally col. 7, ll. 34-36). Reviewing the findings of facts recited above, and the references, we agree that Naimpally does teach constructing a new revised table PAT*. (FF #3). However, we agree with the Examiner that this teaching of “construction” of a data structure in a computer system context would have rendered the claimed modification of the original table obvious. Whether one duplicates the table in the MPEG-2 multiple programs stream and modifies it for the single program as claimed, or constructs a variant of the old table for the single stream with the same content and purpose, we find to be an inconsequential inventive variation. In further support of that finding, we note that Appellants’ Specification indicates as part of the Appellants’ modification method the step “rewrites the PAT section data with the following values” indicating that at least a partial rewrite is envisioned in the claimed invention. (Spec., ¶ 28). In short, we decline to find error in the rejection related to Appellants’ first contention. In the Reply Brief (at 2), Appellants also argue that the portions of the references relied upon by the Examiner fail to teach “modifying a section length,” as required by claim 1. This argument is entitled to no consideration because it was not necessitated by a new point in the Answer and thus should have been made in the opening Brief. See Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply brief that could have 8 Appeal 2008-2241 Application 10/454,741 been raised in the opening brief is waived); accord, Ex parte Scholl, No. 2007-3653, slip op. at 18 n.13 (BPAI March 13, 2008) (designated as “Informative Opinion”), http://www.uspto.gov/web/ offices/dcom/bpai/its/fd073653.pdf (last visited Feb. 23, 2009). Appellants next contend that there is no motivation or suggestion in the cited references to combine the Dokic and Naimpally references. (Br. 9, bottom). The Examiner explained that the motivation for combining the reference teachings “would be to provide a selected program from an MPEG-2 stream to a user in such a way that the stream can be readily processed by a standard MPEG-2 decoder (Naimpally; col. 3, lines 19-27).” Final Action 4 (bolding omitted). Appellants responded by arguing that “the decoder in Dokic is capable of decoding an ‘MPEG-2 transport stream’ without applying any portion of Naimpally.” Br. 10. We agree with the Examiner (Ans. 8) that this argument is not responsive to the Examiner’s above-quoted rationale. Appellants’ arguments for claims 2 to 6 are repetitions and variants of the two arguments addressed above, and fail to convince us of error for the reasons stated. CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that the Examiner did not err in rejecting claims 1 to 6 under 35 U.S.C. § 103(a). 9 Appeal 2008-2241 Application 10/454,741 DECISION The Examiner's rejection of claims 1 to 6 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). AFFIRMED pgc SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 10 Copy with citationCopy as parenthetical citation