Ex Parte Sullivan et al

Patent Trial and Appeal Board

Aug 12, 2016

12275384 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/275,384 11/21/2008
84326 7590 08/12/2016
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Marc Andrew Sullivan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LBl 107-Dl 1980
EXAMINER
TRAN, TRANGU
ART UNIT PAPER NUMBER
2422
MAILDATE DELIVERY MODE
08/12/2016 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 MARC ANDREW SULLIVAN, PHILIP TED KORTUM, and
JEFFREY LEWIS BRANDT
Appeal2015-002721
Application 12/275,384
Technology Center 2400
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JAMES W. DEJMEKAdministrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 8, 9, 12-16, 19-28, and 31 under 35 U.S.C. § 103(a).
Claims 1-7, 10, 11, 17, 18, 29, and 30 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We Affirm.
Invention
The invention on appeal relates to a system and method of displaying
a video stream. (Spec. i-f 2).
Appeal2015-002721
Application 12/275,384
Representative Claim
8. A method of displaying a video stream, the method
compnsmg:
receiving a signal requesting a channel change from a first
television channel to a second television channel;
receiving a video stream associated with the second
television channel to be displayed on a display device in response
to receiving the signal;
during a first time period before a received portion of the
video stream enables a full motion video display of the video
stream, [L] displaying a frame of the video stream received in
response to the signal as a still image while receiving the video
stream, wherein the still image is obtained from the video stream
after receiving the signal requesting the channel change; and
switching from display of the still image to display of the
video stream as the full motion video display when the received
portion enables the full motion video display of the video stream.
(Emphasis and bracketed lettering added regarding the contested limitation,
labeled as "L").
Rejections
A. Claims 8, 9, 12-16, 19, 20, 23, 26-28, and 31 are rejected under 35
U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Reitmeier (US 6,118,498; issued Sept. 12, 2000)
and Ogura et al. (US 5,311,317; issued May 10, 1994) ("Ogura").
B. Claims 21, 22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Reitmeier, Ogura, and Norsworthy et al. (US 2003/0016304 Al;
published Jan. 23, 2003) ("Norsworthy").
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Application 12/275,384
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of rejection A
of claims 8, 9, 12-16, 19, 23, 26-28, and 31 on the basis of representative
claim 8. We address separately argued claim 20, also rejected under
Rejection A, infra. We address the remaining claims rejected under
rejection B, separately, infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the Final
Office Action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments (Ans. 8-15). However, we highlight and address specific
findings and arguments for emphasis in our analysis below.
Rejection A of Independent Claim 8 under 35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Reitmeier and Ogura would have taught or suggested
contested limitation L: "displaying a frame of the video stream received in
response to the signal as a still image while receiving the video stream,
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Application 12/275,384
wherein the still image is obtained from the video stream after receiving the
signal requesting the channel change," within the meaning of claim 8? i, 2
The Examiner finds Reitmeier teaches "displaying a frame of the
video stream received in response to the signal as a still image while
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See Spec. i-f24 ("The above disclosed subject
matter is to be considered illustrative, and not restrictive, and the appended
claims are intended to cover all such modifications, enhancements, and other
embodiments which fall within the true spirit and scope of the present
invention. Thus, to the maximum extent allowed by law, the scope of the
present invention is to be determined by the broadest permissible
interpretation of the following claims and their equivalents, and shall not be
restricted or limited by the foregoing detailed description."). (Emphasis
added).
2 We note contested limitation L recites "the video stream" at line 9.
However, claim 8 twice recites "a video stream" (claim 8, 11. 1 and 4). In the
event of further prosecution of this application~ vve leave it to the Exarniner
to consider whether at least independent claim 8 should be rejected under 35
lJ.S.C. § 112, second paragraph, as indefinite, because the dual antecedent
basis appears to render claim 8 amenable to two or more plausible claim
constructions. "[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim ... indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI
2008) (precedential). Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02 (9th Ed., Rev. 07.2015, Nov. 2015).
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Application 12/275,384
receiving the video stream." (Final Act. 3 (citing Reitmeier, col. 3, 11. 18-
33)).
Specifically, Reitmeier describes:
The channel changing program 300 will be described in
more detail below with respect to FIG. 3. Briefly, when running
the channel changing program 300, the controller 70 causes a
main processing portion of the receiver to tune, demodulate and
decode a new channel in response to a user input (e.g., a channel
change request). If the new channel is one of the channels
included in the scan list 150, then the controller 70 causes the
auxiliary processing portion to retrieve the most recently stored
I-frame associated with the new channel. The retrieved I-frame
is then decoded and displayed. Contemporaneously, the audio
portion of the new channel is decoded and sent to an audio output
device. This approach provides the illusion of rapid
responsiveness, in spite of the real latency that is inherent in an
ATSC television receiver channel change.
(Reitmeier col. 3, 11. 18-33 (emphasis in original omitted and emphasis
added)).
The Examiner additionally finds Ogura teaches "the video signal from
the tuner 2 is also supplied to the one frame memory 7, for example, and an
output of the video memory 7 is supplied to the switch 4 and output by the
channel-selection microcomputer 10 during the non-signal period of the
video signal (during the tuning period)." (Final Act. 4 (citing Ogura col. 4,
1. 7---col. 5, 1. 8)). Thus, the Examiner concludes:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to incorporate the video memory 7 as
taught by Ogura et al into Reitmeier'[s] system in order to
provide a video signal processing apparatus in which a stable
picture can be obtained constantly
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Application 12/275,384
(id.), rendering the contested limitation L "wherein the still image is
obtained from the video stream after receiving the signal requesting the
channel change" obvious.
Appellants contend Ogura fails to teach "wherein the still image is
obtained from the video stream after receiving the signal requesting the
channel change," because:
Ogura describes that when a channel-selection instruction
signal is supplied to a channel-selection microcomputer 10, a
process is carried out. See Ogura, col. 4, 11. 30-34. The process
includes storing a video signal in a video memory 7, connecting
a switch 4 to the video memory 7, and starting the channel-
selection operation of a tuner 2. See Ogura, col. 4, 11. 35-38.
Since the signal stored in the video memory 7 is output via the
switch 4 by the channel-selection microcomputer 10 during a
non-signal period of a video signal, a disturbed video signal can
be inhibited from being output. See Ogura, col. 5, 11. 2-6. Thus,
in Ogura, the channel selection microcomputer 10 outputs an
image from the video memory 7 during a channel change
operation by switching the switch 4 to the video memory 7.
When the switch 4 is switched to the video memory 7, the
channel-selection operation has not been started yet. Thus, the
image stored in the video memory 7, and displayed during the
channel-selection operation, is from the previous channel (e.g., a
first channel) and is not from the channel being tuned to (e.g., a
second channel).
(App. Br. 4).
In the Examiner's Answer, the Examiner finds "the still image stored
in the video memory 7 of Ogura et al[.] is . . . associated with a second
television channel to be displayed on a display device in response to a signal
requesting a channel change ... " and therefore, "the combination of
Reitmeier and Ogura, does disclose[] the claimed [contested limitation L]."
(Ans. 9-10 (citing Ogura col. 3, 11. 20-36) (emphasis omitted)).
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Application 12/275,384
In reply, Appellants contend Ogura (column 3, lines 20-36) also
discloses the still image is "from a previously displayed television channel"
and not the claimed second television channel. (Reply Br. 3--4 (emphasis
omitted). Additionally, Appellants restate the arguments presented in the
Appeal Brief. (Id. at 4--5).
We are not persuaded by Appellants' arguments. Our reviewing court
guides "one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references." In re Keller, 642 F.2d413, 425(CCPA1981). "[Each
reference cited by the Examiner must be read,] not in isolation, but for what
it fairly teaches in combination with the prior art as a whole." See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
This reasoning is applicable here. The Examiner finds contested
limitation L is obvious over the combination of Reitmeier and Ogura, not
Ogura alone. (Final Act. 4). The Examiner incorporates video memory 7 of
Ogura into a system of Reitmeier that teaches "in response to a user input
(e.g., a channel change request) ... then [i.e., after receiving the signal
requesting the channel change] the controller 70 causes the auxiliary
processing portion to retrieve the most recently stored I-frame associated
with the new channel. The retrieved I-frame is then decoded and displayed."
(Reitmeier, col. 3, 11. 18-3 3 (emphasis in original omitted and emphasis
added)).
Given this evidence (id.), we find the combination of Reitmeier and
Ogura would have taught or suggested contested limitation L: "displaying a
frame of the video stream received in response to the signal as a still image
while receiving the video stream, wherein the still image is obtained from
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Application 12/275,384
the video stream after receiving the signal requesting the channel change,"
within the meaning of claim 8. (Emphasis added).
For these reasons, on this record, and by a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain rejection A of representative independent claim 8. Grouped claims
9, 12-16, 19, 23, 26-28, and 31 (also rejected under rejection A, but not
separately argued) fall with claim 8. See Grouping of Claims, supra.
Rejection A of Dependent Claim 20 under 35 U.S. C. § 103 (a)
Claim 20 recites:
[ t ]he video stream processing system of claim 12, wherein
the operations further include: generating a low resolution
version of the video stream; and sending the low resolution
version of the video stream to the display device during a second
time period, wherein the low resolution version of the video
stream replaces the still image until the full resolution version of
the video stream is available.
The Examiner finds the subject matter of claim 20 was "well-known
in the art" and relies on Official Notice in concluding claim 20 would have
been obvious to an artisan at the time of the invention. (Final Act. 5---6).
Appellants argue, "Official Notice was traversed in the response to the
Non-Final Office Action filed December 13, 2013 at pages 8-9." (App.
Br. 5). Appellants aver: "[h ]owever, the Office has simply reiterated the
Official Notice in the Final Office Action rather than providing documentary
evidence as required." (Id.).
We find Appellants' contention is unsupported in the record. As
answered by the Examiner, Appellants first contested the Examiner's use of
Official Notice in the Remarks dated July 23, 2013 at page 10 (i.e.,
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Application 12/275,384
"Assignee respectfully submits that the Official Notice is not properly based
upon common knowledge .... "). In the Non-Final Office Action, mailed
September 13, 2013, at page 7, Kempisty (US 6,714,264 Bl; issued Mar. 30,
2004), was proffered by the Examiner as evidence the claimed limitations
would have been "well-known in the art" at the time of the invention.
(Ans. 12).
We find the teachings of Kempisty provide sufficient evidence to
support the Examiner's reliance on Official Notice. Kempisty evidences it
was known in the art that one may substitute a low resolution version of a
video stream for a high resolution version of a video stream during a time
period while a digital signal is obtained. (Kempisty col. 2, 11. 29--40). We
find such common knowledge would have suggested to one of ordinary skill
in the art to replace the still image of Reitmeier and Ogura with a low
resolution video stream, and then a high resolution video stream, as it
becomes available, as found by the Examiner. (Final Act. 5---6).
Therefore, on this record, and based on a preponderance of the
evidence, we are not persuaded the Examiner erred in concluding the
combination of Reitmeier, Ogura, and Official Notice would have rendered
obvious the contested limitation of claim 20. Accordingly, we sustain
rejection A of dependent claim 20.
Rejection B of claims 21, 22, 24, and 25 under§ 103 (a)
Appellants advance no separate arguments for remaining claims 21,
22, 24, and 25, which are rejected under rejection B. Arguments not made
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Appeal2015-002721
Application 12/275,384
• .. .. • .. r-1 ,...,. ,.., "" ___..., ~ n A -1 ,...,. ,.., / >. / -1 >. /• >. 1. rT""I.. ro
are cons10erea waivea. (')ee j / L.1'.K. s 41.j /~CJUJ~IVJ.J inererore, we
sustain rejection B of dependent claims 21, 22, 24, and 25.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2). 4
Conclusion
For at least these reasons, on this record, we are not persuaded the
Examiner erred. We find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal.
3 See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the
appellant fails to contest a ground of rejection to the Board, ... the Board
may treat any argument with respect to that ground of rejection as waived").
4 In the Reply Brief ( 6), Appellants advance the following new argument:
Kempisty fails to disclose the limitations of claim 20.
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Application 12/275,384
DECISION
We affirm the Examiner's decision rejecting claims 8, 9, 12-16,
19-28, and 31under35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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