Ex Parte Schmidt

Patent Trial and Appeal Board

Feb 7, 2014

10563709 (P.T.A.B. Feb. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JURGEN SCHMIDT
____________

Appeal 2011-009616
Application 10/563,709
Technology Center 2100
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-12 (App. Br. 2).
Examiner entered a rejection under 35 U.S.C. § 102(b). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Thomson Licensing (App. Br. 2).
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STATEMENT OF THE CASE
The claims are directed to a method and apparatus for decoding a data
stream. Claims 1 and 8 are representative and are reproduced in the Claims
Appendix of Appellant’s Brief.
Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Katto.2
ISSUE
Did Examiner meet his burden of establishing that the preponderance
of evidence on this record supports a finding that Katto teaches Appellant’s
claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Katto teaches that: (1) “‘media stream properties
are containers of decoder control parameters. The parameters indicate
compression algorithm, bit rates, buffer sizes...’ at page 326, col. 2 and
paragraph 3;” (2) “‘Streams are separated by a demultiplexer into video,
audio, scene-description, and control data. They are stored in buffers and
decoded...’ at, page 328, col. 2 and paragraphs 3, 4;” (3) “‘count specifies
the number of subsequent components, of which data structure is determined
by the mode field. Currently, four modes are considered: replace, append,
insert, and remove...’ at page 327, col. 2 and paragraphs 2 and 3;” and (4)
“‘Replace sets new values, and append adds values to previous ones...’ at
page 328, col. 1, paragraph 1” (Ans. 4-6 (alteration original; emphasis
removed); see generally 8-11).

2 Katto, System Architecture for Synthetic/Natural Hybrid Coding and Some
Experiments, 9 IEEE TRANSACTIONS ON CIRCUITS AND SYSTEMS FOR VIDEO
TECHNOLOGY 325-335 (1999).
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FF 2. Katto’s Figures 3 and 4 are reproduced below

Katto’s Fig. 3(a) “shows an example of scene-description syntax” (Katto
326: col. 2, l. 26). Katto’s Fig. 3(b) “shows the corresponding syntax for
scene update, to which time stamps may be attached when necessary” (id. at
327: col. 2, ll. 5-6). Katto’s “Fig. 4 demonstrates an example of browser
configuration” (id. at 328: col. 2, l. 17).
ANALYSIS
Examiner interprets Katto’s specific teachings, as set forth in finding
of facts 1-2, to support a finding that Katto teaches
[E]xtracting from [the] control information of the second
substream first, second and third control data wherein the first
control data are suitable for defining buffer size to be allocated .
. ., since, the media stream is packetized by encapsulating
sequential data bytes from the elementary stream and the
control parameters of the media stream allocates the buffer
sizes[] the second control data are suitable for defining one or
more second multimedia data packets to be buffered . . . and the
third control data are suitable for defining a mode for buffering
the second multimedia data packets[] . . ., thus, the control data
are being used appropriately for defining the different mode for
buffering multimedia data packets[;]

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“[A]llocating, in a buffer, buffer size according to the first
control data (Length)” . . ., since, the control parameters of the
media stream allocates the buffer sizes[];

“[S]toring the first decoded multimedia data packets in the
buffer” . . ., thus, the decoded multimedia data packets are
stored in the buffer[]; and

“[S]toring one or more multimedia data packets according to
the second control data in the buffer, wherein depending on the
third control data either the second multimedia data packets are
appended to the first decoded multimedia data packets in the
buffer, or replace some or all of the first decoded multimedia
data packets in the buffer” . . . thus, the corresponding decoded
multimedia data packets are being efficiently appended,
replaced, inserted, removed and stored in a buffer[].
(Ans. 4-5 (emphasis omitted); see generally Ans. 8-11; Cf. FF 1-2.)
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C.
§ 102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
On this record, Examiner established that Katto uses some of the same
words used in Appellant’s claims (see, e.g., FF 1 (“stream,” “buffer sizes,”
“append,” and “replace”)). Examiner, however, failed to articulate how the
various teachings of Katto, as relied upon by Examiner, necessarily lead a
person of ordinary skill in this art to the specific requirements of Appellant’s
claims. Examiner directs attention to specific passages/figures in Katto, and
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when Katto fails to teach the precise elements of Appellant’s claimed
invention as arranged in Appellant’s claims, Examiner fills in the voids of
Katto’s teachings with conclusory statements, leaving one reading
Examiner’s rationale to guess what precise evidentiary basis in Katto
supports Examiner’s rejection (see Ans. 4-5 and 8-11; Cf. FF 1-2; see, e.g.,
App. Br. 7 (“The claimed second control data may be the multiplexing
control data described in . . . Katto” (emphasis added)) and id. at 12; see also
id. at 8 (“[T]he third control data may be the multiplexing, buffer control or
synchronization data” (emphasis added)) and id. at 13). On this record,
Examiner failed to meet his initial burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d at 1445. Accordingly, we are
compelled to reverse the rejection of record.
CONCLUSION OF LAW
Examiner failed to meet his burden of establishing that the
preponderance of evidence on this record supports a finding that Katto
teaches Appellant’s claimed invention. The rejection of claims 1-12 under
35 U.S.C. § 102(b) as being anticipated by Katto is reversed.

REVERSED

cdc