Ex Parte Poslinski et al

Patent Trial and Appeal Board

Jun 28, 2013

10830236 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS POSLINSKI and ERIC HSIAO
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Appeal 2012-009203
Application 10/830,236
Technology Center 2400
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009203
Application 10/830,236

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 36-84. Claims 1-35 were cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The rejected claims on appeal are generally directed to the field of
video presentation. More particularly, the claims before us are directed to “a
method for partial deletion of a recorded program stored on a digital
recording device.” (Spec. 1). Claim 36, reproduced below, is representative
of the claimed subject matter:
36. A data management method for recorded programs
stored on a digital recording device, said method comprising:

rendering a portion of a first multimedia data file to an
audio/video device; and

releasing memory associated with said rendered portion
of said first multimedia data file, wherein said memory is
available to store data associated with a second multimedia data
file and a remaining portion of said first multimedia data file is
preserved and wherein said releasing is performed according to
the format of said first multimedia data file, wherein said
releasing comprises releasing memory up to a last frame
rendered that comprises information for a complete image while
retaining all undisplayed frames.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Kato US 7,106,946 B1 Sep. 12, 2006
Boston US 7,529,471 B2 May 5, 2009
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REJECTION
Claims 36-84 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kato and Boston.
35 U.S.C. §101 Rejection Withdrawn
At the outset, we note that the rejection under 35 U.S.C. §101 for
claims 53-61 (Final Office Action mailed July 7, 2011, p. 4) was withdrawn
by the Examiner in the Advisory Action mailed Oct. 18, 2011, page 2: “In
view of the amendment to claim 53 filed in 10/7/2011, the rejection under 35
U.S.C. 101 regarding claims 53-61 is now withdrawn.”
35 U.S.C. § 103 Rejection
CONTENTIONS
Appellant contends:
To the extent that the relied upon portion of Boston may
mention:
Then when a displayed frame count indicates a mid-GOP
[Group of Pictures] discard, the PVR [(Personal Video
Recorder)] can still include a stream out to the new video file
the entire current GOP, including the displayed frames in the
GOP as well as the undisplayed frames in the block, thereby
deleting somewhat fewer than all the displayed frames, but
conservatively preserving all the frames not yet displayed (Col.
45, lines 54-60)[.]

Appellants respectfully assert that Boston fails to teach or
suggest that releasing comprises releasing memory up to a last
frame rendered that comprises information for a complete
image while retaining all undisplayed frames, as claimed.
Appellant[s] respectfully assert that the relied upon portion of
Boston is silent as to releasing memory up to a last frame
rendered that comprises information for a complete image while
retaining all undisplayed frames, as claimed. Appellants
respectfully assert that the relied upon portion of Boston is
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silent as a frame comprising information for a complete image,
as claimed, and thus cannot teach or suggest releasing memory
up to a last frame rendered comprising information for a
complete image, as claimed.

The Examiner is attempting to rely on inherency.
Appellants respectfully submit that to establish inherency, the
extrinsic evidence must make clear that the missing descriptive
matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of
ordinary skill.
(App. Br. 14).
The Examiner disagrees:
Boston teaches “an alternative for MPEG that is slightly more
conservative and slightly more complex is to buffer GOPs, that
is, buffering all the frames in each GOP one-by-one as each
GOP is processed for deletion or exclusion. Then when a
displayed frame count indicates a mid-GOP discard, the PVR
can still include or stream out to the new video file the entire
current GOP, including the displayed frames in the GOP as well
as the undisplayed frames in the block, thereby deleting
somewhat fewer than all the displayed frames, but
conservatively preserving all the frames not yet displayed.” In
this method, when the deletion occurs in the middle of a GOP,
some of the displayed frames will not be deleted to retain the
undisplayed frames. For illustration, GOP1, GOP2, GOP3, . . .
GOPn. The GOP structure is: IPBBBPBBPBPBBBPP. See
Fig. 34. When the deletion occurs in the middle of GOP3 that
is either a P or B frame, the PVR will delete GOP1 and GOP2
but keep the entire GOP3. Because I frame is an Intra frame
that can be decoded without reference to any other frame, it is a
frame that comprises information for a complete image. Thus,
Boston teaches deleting up to a last frame rendered that
comprises information for a complete image while retaining all
undisplayed frames.
(Ans. 16-17).

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ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejection of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants’ Appeal Brief. (Ans. 16-19). We
highlight and address specific findings and arguments below.
Independent Claims 36, 45, 53, 62, and 71
Based on Appellants’ arguments, we decide the appeal of the
obviousness rejection of independent claims 36, 45, 53, 62, and 71 on the
basis of claim 36. See 37 C.F.R. § 41.37(c)(1)(iv).
Issue: Under § 103, did the Examiner err in finding the cited
references, either alone or in combination, would have taught or suggested:
wherein said releasing comprises releasing memory up to a last
frame rendered that comprises information for a complete
image while retaining all undisplayed frames[,]

within the meaning of representative claim 36, and the commensurate
language of claims 45, 53, 62, and 71?
We agree with the Examiner’s broad but reasonable reading of “a
complete image” on the MPEG I-frames (intracoded frame) described by
Boston:
Frame types are checked in such embodiments, for MPEG
video, to determine that the first frame in continuation is an I-
frame, that is, that the next frame after a last frame deleted or
excluded is an I-frame, so that an MPEG decoder in
reconstructing the modified or new file for display is not
presented initially with a P-frame or a B-frame, frames which
cannot be decoded without a preceding I-frame.
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(Boston, col. 44, ll. 32-39; see also col. 43, ll. 45-55 regarding I-frames).
See particularly the Answer, page 16, regarding the Examiner’s discussion
of I-frames: “[b]ecause I frame is an Intra frame that can be decoded without
reference to any other frame, it is a frame that comprises information for a
complete image.”
Thus, from Boston’s description (cols. 43-44), we find an artisan
would have known to edit, delete, and join (concatenate) MPEG video
scenes along I-frame boundaries, which we find teach the claimed “complete
images.” We find the Examiner’s interpretation of the claimed “complete
image” is fully consistent with Appellants’ Specification: “[b]ecause an Intra
frame comprises information for a complete image, the MPEG video stream
for the first recorded program is concatenated at an Intra frame.” (Spec. 15,
3-5).
Appellants appear to at least partially agree:
Appellants respectfully assert that one of ordinary skill in
the art, upon reading Boston, would be led to perform deletions
of all the frames up to the next I frame which is expected to
exclude about eight undisplayed frames (see Boston, col. 45,
lines 40-41,47-50), as taught by Boston[.]
(App. Br. 17).
We also agree with the Examiner that Boston’s alternative
embodiment of buffering GOPs (Groups of Pictures) which “conservatively
preserv[es] all the frames not yet displayed” (col. 44, ll. 62-63) (emphasis
added) would have taught or suggested the claimed “releasing comprises
releasing memory up to a last frame rendered that comprises information for
a complete image while retaining all undisplayed frames,” within the
meaning of representative claim 36 (emphasis added). The Examiner
combines Boston with Kato’s general teaching of the releasing (freeing)
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memory (Kato, Fig. 16). (Ans. 5-6). We note the Examiner’s rejection is
based on the combined teachings and suggestions of Kato and Boston.
Thus, we disagree with Appellants’ additional contention that Boston
“teaches away” from the claim limitations. (App. Br. 16-17). Likewise, we
are not persuaded Kato “teaches away” from Appellants’ claimed invention
because the failure of a reference to mention alternatives known in the art
does not constitute a teaching away from using the known elements. See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (“A reference does not teach away [. . . ] if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed” (citation omitted).
We also find Appellants’ arguments regarding inherency (App. Br.
15) are misplaced, because we find the aforementioned disputed limitations
are either taught or suggested by the Examiner’s proffered combination of
Kato and Boston, as discussed above.
For at least these reasons, on this record, we are not persuaded of error
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness. We sustain the Examiner’s rejection of
representative claim 36, and independent claims 45, 53, 62, and 71 (not
argued separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).

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Dependent claims 40, 49, 57, 66, and 75
Regarding claims 40, 49, 57, 66, and 75, we observe representative
claim 40 does not indicate what specifically is concatenated with the “first
multimedia data file at an Intra frame of said MPEG video stream.” (Claim
40). As discussed above, we find Boston’s description of I-frames (col. 44,
ll. 31-34) evidences an artisan would have known to edit, delete, and join
(concatenate) MPEG video scenes along I-frame boundaries. Therefore, on
this record, we are not persuaded of Examiner error. Accordingly, we
sustain the Examiner’s rejection of representative claim 40, and claims 49,
57, 66, and 75 (not separately argued) which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Dependent claims 41, 50, 58, 67, and 76
Regarding claims 41, 50, 58, 67, and 76, we find Kato in combination
with Boston, would have taught or suggested the disputed “synchronizing
audio and video of said MPEG video stream according to a presentation time
stamp of said MPEG video stream.” (Representative claim 41). We observe
Kato expressly teaches the use of a PTS (Presentation Time Stamp) in the
context of MPEG2 stream data. (Col. 4, ll. 20-25; see also col. 11, l. 31:
“PTS”). Kato also teaches receiving user commands. (Col. 9, ll. 65-67, Fig.
15). Therefore, on this record, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner’s rejection of representative claim 41,
and claims 50, 58, 67, and 76 (not separately argued) which fall therewith.
See 37 C.F.R. § 41.37(c)(1)(iv).

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Dependent claims 83 and 84
Although Appellants present nominal separate arguments for rejected
claims 83 and 84 (App. Br. 19-20), we sustain the Examiner’s rejection of
these claims for the same reasons set forth by the Examiner in the Answer
and for the reasons discussed above regarding commensurate limitations and
issues.
All remaining dependent claims not argued separately fall with the
base claim from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 36-84 under 35 U.S.C.
§ 103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 36-84 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).

ORDER
AFFIRMED

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