Ex Parte Perng et al

Board of Patent Appeals and Interferences

Feb 25, 2009

10454741 (B.P.A.I. Feb. 25, 2009)

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
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Decided:2 February 25, 2009
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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.
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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).

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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
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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.
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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
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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
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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

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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).

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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
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