Ex Parte Post

Board of Patent Appeals and Interferences

May 15, 2002

08821938 (B.P.A.I. May. 15, 2002)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LAUREN LEE POST
_____________
Appeal No. 2000-1309
Application 08/821,938
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH, and FLEMING, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
rejection of claims 1-25, which constitute all the claims in the application. An
amendment after final rejection was filed on June 14, 1999 but was denied entry by the
examiner.
The disclosed invention pertains to a method and apparatus for processing a
data stream including audio and video data where high data rates and throughput is
required. Thresholds are employed to control the processing of the video and audio
Appeal No. 2000-1309
Application No. 08/821,938
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data in the stream.
Representative claim 1 is reproduced as follows:
1. A method in a data processing system for dynamically synchronizing a data
stream, the method comprising:
receiving the data stream;
parsing the data stream into packets for form a plurality of packets,
wherein the plurality of packets includes audio packets and video packets;
comparing the plurality of packets to a threshold as packets are added to
the plurality of packets; and
selectively decoding of audio packets and video packets based on a result
from the comparison of the plurality of packets to the threshold.
The examiner relies on the following references:
Maturi et al. (Maturi) 5,559,999 Sep. 24, 1996
Rosenau et al. (Rosenau) 5,598,352 Jan. 28, 1997
Glaser et al. (Glaser) 5,793,980 Aug. 11, 1998
(filed Nov. 30, 1994)
Claims 1-20 and 22-25 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Glaser in view of Maturi with respect to each of these
claims, and the examiner adds Rosenau for a second rejection of claims 22-25. Claims
21-25 stand rejected under 35 U.S.C. § 102(e) as being anticipated by the disclosure of
Rosenau.
Rather than repeat the arguments of appellant or the examiner, we make
Appeal No. 2000-1309
Application No. 08/821,938
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reference to the brief and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness relied
upon by the examiner as support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the appellant’s arguments set forth in
the brief along with the examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence relied
upon does not support any of the rejections made by the examiner. Accordingly, we
reverse.
We consider first the rejection of claims 1-20 and 22-25 under 35 U.S.C. § 103
based on Glaser and Maturi. In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the examiner is expected to make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to
provide a reason why one having ordinary skill in the pertinent art would have been led
to modify the prior art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion or implication in the
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Application No. 08/821,938
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prior art as a whole or knowledge generally available to one having ordinary skill in the
art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the examiner
are an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). If that burden is met, the burden then shifts to the applicant to overcome the
prima facie case with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the arguments.
See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make in the brief have
not been considered [see 37 CFR § 1.192(a)].
The claims within this rejection stand or fall together in three groups which are
represented by claims 1, 6 and 9 [brief, page 8]. The examiner essentially finds that
Glaser teaches the invention of claim 1 except that Glaser does not disclose parsing a
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data stream including video and audio packets. The examiner cites Maturi as teaching
the parsing of a data stream into video and audio blocks. The examiner finds that it
would have been obvious to the artisan to provide the parsing operation as taught by
Maturi in the processing system of Glaser [answer, pages 4-7].
With respect to representative claim 1, appellant argues that Glaser does not
teach comparing both video and audio packets to a threshold as claimed. Appellant
also argues that the time stamp comparison of Maturi is completely different from the
claimed comparison of the plurality of packets to a threshold as packets are added to
the plurality of packets as claimed. Appellant notes that comparing data contained
within a packet to a threshold is not suggestive of comparing a plurality of packets to a
threshold value.
The examiner points to Figure 4B of Glaser and Figure 10 of Maturi and states
that the prior art fully suggests and teaches the limitation disclosed and claimed by
appellant [answer, pages 15-18].
We will not sustain the examiner’s rejection of representative claim 1 because
the examiner has failed to establish a prima facie case of obviousness. We agree with
appellant that neither the ramp-up determination of Glaser nor the time synchronization
determination of Maturi teaches the claimed step of comparing the plurality of packets
to a threshold as packets are added to the plurality of packets and the step of
selectively decoding audio and video packets based on a result of this comparison.
Appeal No. 2000-1309
Application No. 08/821,938
1 Claims 22-25 are dependent claims which respectively depend from independent claims 1, 6, 19
and 20. Since none of these independent claims was rejected on Rosenau, we fail to see how the examiner
found anticipation with respect to these dependent claims based on Rosenau.
6
Although the comparing and decoding steps might be viewed as relatively broad, these
steps are nevertheless different from the operations disclosed by Glaser and Maturi.
The examiner has at best found teachings involving comparisons and decoding of data,
but these finding do not teach or suggest the specific steps of comparing and decoding
as recited in claim 1. Therefore, we do not sustain the examiner’s rejection of
representative claim 1.
Since representative claims 6 and 9 contain limitations similar to the recitations
of claim 1, we do not sustain the rejection of claims 6 and 9 for the same reasons
discussed above. Therefore, the rejection of claims 1-20 and 22-25 under 35 U.S.C.
§ 103 based on Glaser and Maturi is reversed. With respect to the rejection of claims
22-25 under 35 U.S.C. § 103 based on Glaser, Maturi and Rosenau, since Rosenau
does not overcome the basic deficiencies in the combination of Glaser and Maturi
discussed above, we also do not sustain this second rejection of claims 22-25.
We now consider the rejection of claims 21-25 under 35 U.S.C. § 102(e) as
being anticipated by the disclosure of Rosenau1. Anticipation is established only when
a single prior art reference discloses, expressly or under the principles of inherency,
each and every element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Applied Digital
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Application No. 08/821,938
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Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner indicates how he reads independent claim 21 on the disclosure of
Rosenau [answer, pages 13-15]. Appellant argues that Rosenau does not disclose
comparing a threshold to the audio and video packets themselves, but instead,
Rosenau discloses comparing a system timing threshold with decoding time data which
is contained within a data packet. Appellant argues that the comparison of time stamps
in Rosenau does not meet the recitations of comparing audio and video packets to first
and second thresholds as packets are added to the plurality of packets as claimed
[brief, pages 16-17].
We agree with the position argued by appellant. The time code comparison of
Rosenau is not the same as the claimed comparing of audio and video packets to a first
and second threshold as claimed and halting the parsing of the data stream based on
these comparisons. Therefore, we do not sustain the examiner’s rejection of claim 21
as anticipated by the disclosure of Rosenau.
In summary, we have not sustained any of the examiner’s rejections of the
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claims on appeal. Therefore, the decision of the examiner rejecting claims 1-25 is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JS:yrt
cc: Duke W. Yee, Esq.
CARSTENS YEE CAHOON, LLP
Appeal No. 2000-1309
Application No. 08/821,938
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P.O. Box 802334
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