Ex Parte Sekiguchi et alDownload PDFPatent Trial and Appeal BoardJun 17, 201310493823 (P.T.A.B. Jun. 17, 2013) Copy Citation 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. 10/493,823 04/28/2004 Shunichi Sekiguchi 0054-0286PUS1 9698 7590 06/18/2013 Birch Stewart Kolasch & Birch PO Box 747 Falls Church, VA 22040-0747 EXAMINER HUYNH, AN SON PHI ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 06/18/2013 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 PATENT TRIAL AND APPEAL BOARD _____________ Ex parte SHUNICHI SEKIGUCHI, HIROFUMI NISHIKAWA, YOSHIMI MORIYA, YOSHIHISA YAMADA, KENJI OTOI, SHINICHI KURODA, FUMINOBU OGAWA, and KOHTARO ASAI _____________ Appeal 2010-011838 Application 10/493,823 Technology Center 2400 ______________ Before ROBERT E. NAPPI, JEAN R. HOMERE, and HUNG H. BUI, Administrative Patent Judges. NAPPI, Administrative Patent Judge DECISION ON APPEAL Appeal 2010-011838 Application 10/493,823 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 15. We affirm. INVENTION The invention is directed to a video content sending system, which can present video data in a form requested. See pages 2 and 3 of Appellants’ Specification. Claim 13 is representative of the invention and reproduced below: 13. A video content reproduction method adapted to request, receive and reproduce video contents comprising video data and metadata related to said video data, comprising: sending to a service host a user's request to register said video contents based on request information, including information whether the user wants to create the metadata with video analysis in the form of authoring; authenticating, in response to receiving the request, whether the requesting user is a person authorized to send registration request; creating, based on said authentication, a request condition concerning the presentation forms of video contents, and requesting video contents; authoring processing said video contents specific to said extracting according to the request condition concerning the presentation forms of said video data; creating a metadata requiring the processing of said video contents; recording the created metadata in a database; and receiving video contents which are dynamically processed into presentation forms by managing the video contents in metadata pairs corresponding to said video data according to said request condition, decoding and reproducing video data of said video contents. Appeal 2010-011838 Application 10/493,823 3 REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 5, 7 through 12, and 14 under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement.1 Answer 4-6.2 The Examiner has rejected claims 1, 2, 6, 8, 13, and 15 under 35 U.S.C. § 102(e) over Fu (US 6,882,793 B1). Answer 17-20. The Examiner has rejected claims 1 through 3 and 5 through 15 under 35 U.S.C. § 103 (a) over Thomas (2002/0023270 A1) and Jain (U.S. 6,144,375). Answer 7-16. The Examiner has rejected claim 4 under 35 U.S.C. § 103 (a) over Thomas (2002/0023270 A1), Jain (U.S. 6,144,375) and Bonomi (US 6,769,127 B1). Answer 16-17. Rejection under 35 U.S.C. § 112 first paragraph ISSUE Appellants argue on pages 9 through 12 of the Appeal Brief that the Examiner’s rejection under 35 U.S.C. § 112 first paragraph is in error.3 These arguments present us with the issue: 1 We note that the statement of the rejection omits dependent claim 7. However, we construe this as being included as the rejection is directed to independent claims 1 and 8 and includes all of the claims which depend therefrom. Claim 7 is a multi-dependent claim which ultimately relies upon independent claim 1. 2 Throughout this opinion we refer to the Examiner’s Answer mailed on May 24, 2010. Appeal 2010-011838 Application 10/493,823 4 Did the Examiner err in finding that the originally filed Specification does not demonstrate Appellants had possession of the invention of a video content sending device that sends a user’s request to a host, and includes a content extraction part as recited in independent claims 1 and 8? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred and the Examiner’s response to Appellants’ arguments. We disagree with Appellants’ conclusion that the Examiner erred in rejecting independent claims 1 and 8 under 35 U.S.C. § 112 first paragraph. Appellants’ arguments directed to this issue appear to confuse the indefiniteness, enablement and written description requirement of 35 U.S.C. § 112. Answer 7-8. The Examiner’s rejection is based upon the written description requirement. Our reviewing court has said the written description requirement “serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed.” Capon v. Eshhar, 418 F. 3d 1349, 1357 (Fed Cir. 2005). The Examiner reasons that Appellants’ Specification discusses in one embodiment (first embodiment shown in figure 1) a video content sending device (user device in figure 1) that sends a user’s request to a host (part of the content registration processing), but in that embodiment the video content sending device does not include the other claimed parts 3 Throughout this opinion we refer to Appellants’ Appeal Brief filed on May 10, 2010. Appeal 2010-011838 Application 10/493,823 5 (content extracting part and authoring part). Answer 5-6, 23-24. Further, the Examiner finds in a second embodiment (a peer to peer network, shown in figures 5-7); the content extracting and authoring parts are also in the same device, the user terminal. Answer 5-6, 23-24. However, the Examiner finds that Appellants’ Specification does not describe a situation where the content extracting part and authoring part are on the same device as the registration part, which sends a request to a service host (e.g. in the embodiment of figure 5, there is no host device or any disclosure which would show that one peer terminal views another as a host device for registration). Answer 24. We concur with the Examiner. Accordingly we sustain the Examiner’s rejection under 35 U.S.C. § 112 first paragraph of independent claims 1 and 8 and the claims which depend thereupon claims 2 through 5, 7, 9 through 12, and 14 Anticipation rejection based upon Fu ISSUE Appellants argue on pages 9 through 11 of the Appeal Brief that the Examiner’s rejection of independent claims 1, 6, 8, 13, and 15 under 35 U.S.C. § 102(e) based upon Fu is in error. These arguments present us with the issue: Did the Examiner err in finding that Fu teaches a content processing part that dynamically process the extracted video contents as recited in independent claims 1, 6, 8, 13, and 15? Appeal 2010-011838 Application 10/493,823 6 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred, and the Examiner’s response to Appellants’ arguments. We disagree with Appellants’ conclusion that the Examiner erred in finding that Fu teaches a content processing part that dynamically process the extracted video contents. The Examiner finds that Fu teaches dynamically processing the extracted video contents in that when the user changes selection of metadata corresponding to the video data, the extracted video content is changed. Answer 26-27. Appellants’ arguments have not directly addressed this finding by the Examiner. Appellants’ statement, on page 10 of the Brief, that Fu’s system “merely provides editing option” has not persuaded us of error in the Examiner’s finding of Fu’s teaching of changing video selection in response to user input meets the claimed content processing. Further, Appellants’ arguments on pages 9 and 10 of the Brief, which restate the claim limitation, provide a summary of Fu and assert that Fu does not teach the quoted claim language, have not persuaded us of error in the Examiner’s rejection as they lack specificity and do not address or dispute the Examiner’s findings. Accordingly, we sustain the Examiner’s rejection of independent claims 1, 2, 6, 8, 13, and 15 under 35 U.S.C. § 102(e). Appeal 2010-011838 Application 10/493,823 7 Rejections under 35 U.S.C. § 103 based upon Thomas and Jain ISSUE Appellants argue on page 12 through 15 of the Appeal Brief that the Examiner’s rejection of claims 1 through 3 and 5 through 15 based upon Thomas and Jain is error. These arguments present us with the issue: Did the Examiner err in finding that the combination of Thomas and Jain discloses a content provider that dynamically processes the extracted video contents as recited in claims 1 through 3 and 5 through 15? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred, and the Examiner’s response to Appellants’ arguments. We agree with Appellants’ conclusion that the Examiner erred in finding the combination of Thomas and Jain teaches a content processing part that dynamically processes the extracted video contents. Appellants argue that the Examiner has failed to identify a specific element of Thomas which can be properly interpreted as the content processing part. Brief 13. Further, Appellants argue that Thomas’ content provider unit 102 does not dynamically process the video elements as claimed because it does not process the data by managing metadata pairs as claimed. Brief 13-14. Appellants assert that Jain discloses a viewer that provides a timeline for the user to select events and does not teach dynamically processing video and as such when combined with Thomas does not teach the claimed feature. Brief 15. We concur. Each of Appeal 2010-011838 Application 10/493,823 8 independent claims 1, 6, 8, 13, and 15, recite a feature of dynamically processing video contents by managing the video contents in metadata pairs. The Examiner states that any component in Thomas’ content provider or receiving unit that processes the content for display based upon the condition of program title meets the claimed content processing part. Answer 28. However, the Examiner’s finding is broad and does not provide enough specificity to adequately determine whether the claimed feature is taught or obvious when combined with the Jain. Further, we note that the several of the passages cited by the Examiner relate to the content receiver which receives a channel selection; however, it is unclear how this is related to processing in metadata, a user request or could be combined with the teachings of Jain. Accordingly, we are persuaded of error in the Examiner’s rejection as the Examiner’s finding is not supported by sufficient explanation and facts. As such we will not sustain the Examiner’s obviousness rejections based upon the combination of Thomas and Jain. DECISION We sustain the Examiner’s rejection of claims 1 through 5, 7 through 12 and 14 under 35 U.S.C. § 112 first paragraph and claims 1, 2, 6, 8, 13, and 15 under 35 U.S.C. § 102(e) over Fu. We will not sustain the Examiner’s rejection of claims 1 through 3, 5 through 15 under 35 U.S.C. § 103(a) over Thomas and Jain or the rejection of claim 4 under 35 U.S.C. § 103(a) over Thomas, Jain, and Bonomi. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision to reject claims 1 through 15 is affirmed. See 37 C.F.R. § 41.50(a)(1). Appeal 2010-011838 Application 10/493,823 9 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). AFFIRMED ELD Copy with citationCopy as parenthetical citation