Ex Parte QIAN et al

Board of Patent Appeals and Interferences

Jul 27, 2011

09455964 (B.P.A.I. Jul. 27, 2011)

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.
09/455,964 12/06/1999 RICHARD QIAN SLA0112 (7146.0048) 5789
55648 7590 07/27/2011
KEVIN L. RUSSELL
CHERNOFF, VILHAUER, MCCLUNG & STENZEL LLP
1600 ODSTOWER
601 SW SECOND AVENUE
PORTLAND, OR 97204
EXAMINER
HUYNH, SON P
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
07/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD QIAN and PETER J.L. VAN BEEK
____________

Appeal 2009-007262
Application 09/455,964
Technology Center 2400
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007262
Application 09/455,964

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12. Appeal Brief 3. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A method of creating a semantic summary of a video comprising
the steps of:

(a) identifying a domain of said video;

(b) using said domain to locate information related to said video at a
source other than said video;

(c) extracting a datum related to a semantic event from said
information, said semantic event describing a portion of said video;

(d) identifying said portion of said video related to said datum; and

(e) creating a summary of said identified portion of said video in
response to the extraction of said datum.

Rejection on Appeal
Claims 1-12 stand rejected under 35 U.S.C. § 102(e) as being
unpatentable over U.S. Patent Application Number 2003/0066085 A1 issued
to Boyer (“Boyer”). Answer 3-9.

Appeal 2009-007262
Application 09/455,964

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Appellants’ Contention
Appellants contend that Boyer discloses a programming guide by
which available video content can be browsed by time, category, etc.. and
does not disclose the limitation recited in claim 1 of “creating a summary of
said identified portion of said video in response to the extraction of said
datum.” Appeal Brief 6.

Issue on Appeal
Did the Examiner err in finding that Boyer discloses “creating a
summary of said identified portion of said video in response to the extraction
of said datum?” Appeal Brief 6.

PRINCIPLE OF LAW
“‘For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir.
1988)). “These elements must be arranged as in the claim under review,”
Bond, 910 F.2d at 832 (citing Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)), but
this is not an “ipsissimis verbis” test, Bond, 910 F.2d at 832-33 (citing Akzo
N.V. v. United States Int'l. Trade Com'n, 808 F.2d 1471, 1479 & n.11 (Fed.
Cir. 1986)).

Appeal 2009-007262
Application 09/455,964

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
agree with Appellants’ conclusion and will not sustain the Examiner’s
rejection of claims 1-12.
The Examiner contends that the claimed feature of “creating a
summary . . .” is interpreted as creating a summary of an image, title, etc.,
related to the extraction of datum related to images of video clips, video
interview segments of the video in response to the extraction of datum
related to images of video clips, video interviews, etc., used to generate
titles, images, video clips, etc., for display on a web page. Answer 10. The
Examiner relies upon Boyer’s Figures 30, 32, and 33 as well as paragraphs
[0105] and [0119] to [0129]. Id.
In the Reply Brief, the Appellants respond that the Examiner cannot
simultaneously contend that the video clips, video interviews, episodes etc.,
are both the claimed datum identified from the information external to the
video and the portions of the video identified by the datum. Reply Brief 4.
Appellants further argue that when a claim is structured as “find A, extract A
from B, use B to locate C,” the Examiner cannot read each of A, B, and C on
the same thing in the prior art. Reply Brief 4-5. Appellants repeat the
argument made in the Appeal Brief that one cannot create a summary using
video clips on a web page, when that web page displays what is alleged to be
the summary. Reply Brief 5.
We agree with Appellants’ assessment of the rejection. The Examiner
contends that even though the alleged prior art summary is already
accessible via Boyer’s web page when a viewer accesses the web page to
Appeal 2009-007262
Application 09/455,964

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extract data related to a video being summarized, the rejection is still proper
because the act of navigating to the web page creates the summary by
loading the web page into the browser. Answer 10-11. The Examiner’s
contention that the act of navigating to the web page creates the summary by
loading the web page into the browser appears to be relying upon circular
logic and fails to disclose the claimed limitations. Therefore, we will not
sustain the Examiner’s rejection of claims 1-12.

CONCLUSION
The Examiner has erred in rejecting claims 1-12 as being unpatentable
under 35 U.S.C. § 102(e).

REVERSED

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