Ex Parte Washino

Patent Trial and Appeal Board

Sep 20, 2016

10664244 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/664,244 09/17/2003
25006 7590 09/22/2016
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
FIRST NAMED INVENTOR
Kinya Washino
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.
FNI-02902/03 3743
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
09/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KINY AW ASHINO
Appeal2015-005156
Application 10/664,244
Technology Center 2400
Before JOSEPH L. DIXON, THU A. DANG, and KAMRAN JIV ANI,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-10, 13-29 and 32-36, which are all of the pending
claims. Claims 11, 12, 30, and 31 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to "a multiformat digital
video production system capable of maintaining full-bandwidth resolution
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Application 10/664,244
while providing professional quality editing and manipulation of images for
various applications, including digital HDTV and specialized video
monitoring" (Spec. 1, 11. 6-9).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A high-quality, reduced-data-rate digital video system, comprising:
a source of a data compressed streaming color video program in an original
format having a progressive-scanned image with a constant frame rate of
less than substantially 24 fps;
a video server in communication with the source for storing the
program in the original format; and
one or more computers in network communication with the video
server for locally displaying the program or portions thereof received in the
original format.
C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hendricks et al., US 6,675,386 Bl
hereinafter "Hendricks"
Ercan et al., US 6,240,217 B 1
hereinafter "Ercan"
Hosokawa US 2002/0124122 Al
Kumagai et al., US 6,592,804 B2
hereinafter "Kumagai"
Anand et al., US 6,920, 179 B 1
hereinafter "Anand"
Jain US 6,144,375
Esbensen US 7,124,427 Bl
2
Jan. 6, 2004;
May 29, 2001;
Sep. 5,2002
Oct. 4, 2005;
Jul. 19, 2005;
Nov. 7, 2000
Oct. 17, 2006
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Application 10/664,244
Claims 1 and 19 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 1--4, 9, 14, 16, 17, 19, 20, 23, 25-27, 32, 34, and 35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of
Hendricks, and Ercan.
Claims 3, 4, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Hendricks, Ercan, and Hosokawa.
Claims 5, 7, 8, 23, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the teachings of Hendricks, Ercan, and Kumagai.
Claims 13 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Hendricks, Ercan, and Anand.
Claims 6 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Hendricks, Ercan, and Jain.
Claims 10, 15, 18, 28, 33, and 36 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Hendricks, Ercan, and
Esbensen.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Hendricks and Ercan teaches or would have suggested a
"source" of a video program having an image "with a constant frame rate of
less than substantially 24 fps" (claim 1 ).
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Ill. ANALYSIS
35 U.S.C. § 112, second paragraph
Regarding claims 1 and 19, the Examiner finds "the scope of the term
'substantially' cannot be determined" (Ans. 3). According to the Examiner,
Appellant "makes no reference to the specification of the instant
application" wherein the Specification "fails to show a person of ordinary
skill in the art to determine a definite range of value" (id.).
However, our reviewing court has adopted a broad interpretation for
the term "substantial" as used in patent claims. The Court of Appeals for the
Federal Circuit has repeatedly reaffirmed that the term "substantial" implies
"approximate." Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442
F.3d 1322, 1329 (Fed. Cir. 2006). See also Playtext Products, Inc. v.
Procter & Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005) ("The term
'substantial' is a meaningful modifier implying 'approximate,' rather than
'perfect."'), citing Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d
1361, 1368 (Fed. Cir. 2004). In Wilson Sporting Goods, the Court
determined that a claimed "insert having a substantially circular cross-
section" did not need to be perfectly circular [emphasis added]. Wilson
Sporting Goods, 442 F.3d at 1328-29. Similarly, in Playtext Products, the
Court determined that the claimed "substantially flattened surfaces" did not
require a perfectly flat surface. Playtext Products, 400 F.3d at 907.
We agree with Appellant that "the term 'substantially' within the field
of video data transfer is well established, sufficiently notifies the public of
the scope of the claims and is not an indefinite term" (App. Br. 5). On this
record, we reverse the Examiner's rejection of claims 1 and 19 under 35
U.S.C. § 112, second paragraph.
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35 u.s.c. § 103
Appellant contends that the references "teach away from each other"
and thus "there is no motivation to combine or modify these two prior art
references" (App. Br. 6, emphasis omitted). According to Appellant,
Hendricks discloses "communicating multiple live video feeds over the
internet and allows a user to view a plurality of remote locations in real
time" wherein Hendricks "accomplishes its objective with 'a remote system
with increased realism and accuracy .... "'(App. Br. 10.). Thus, Appellant
contends Hendricks "is void of any image distortion, correction, pixel
intensity alteration, etc.," since image correction would defeat the purpose of
'increased realism and accuracy"' (id.). Appellant then contends, in
contrast, Ercan discloses a system/process that "intentionally introduces
distortions to a digital image" wherein a provided software "modifies pixel
intensities of a digital image in order to improve legibility or visibility of
parts of the digital image" (App. Br. 11). Thus, Appellant contends,
"impermissible hindsight has been used to reject the claims" (App. Br. 12).
We have considered all of Appellant's arguments and evidence
presented. However, we disagree with Appellant's contentions regarding the
Examiner's rejections of the claims. Instead, we agree with the Examiner's
findings, and find no error with the Examiner's conclusion that the claims
would have been obvious over the combined teachings.
We first note that Appellant does not specifically argue that cited
references lack the claimed features. Instead, Appellant's arguments are
directed to that the references "teach away from each other," "there is no
motivation to combine or modify these two prior art references" (App. Br. 6,
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emphasis omitted) and thus "impermissible hindsight has been used to reject
the claims" (App. Br. 12).
However, we agree with the Examiner's finding that although
Hendricks discloses "an increased realism and accuracy," Hendricks "does
not exclude that additional image correction" could be applied, or that such
additional image correction "would benefit the system of Hendricks" (Ans.
5). Specifically, we find no portion of Hendricks that states that additional
image correction "would defeat the purpose of 'increased realism and
accuracy"' as Appellant contends (App. Br. 10). As the Examiner points
out, "the terms intentionally and distortions are not found in the Ercan
specification" (Ans. 6), and thus, such contention is mere attorney
arguments.
Mere attorney arguments that are unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843, slip op. at *7-8 (BPAI
Aug. 10, 2009) (informative).
Although Appellant contends the references "teach away from each
other" (App. Br. 6), our reviewing court guides: "A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332
(Fed. Cir. 2008) (citations omitted). Here, we are unpersuaded that
Hendricks teaches away from (discourages) additional image correction by
merely disclosing "realism and accuracy" (App. Br. 10), especially, as the
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Examiner finds such additional image correction as set forth in Brean
"would benefit the system of Hendricks" (Ans. 5). That is, having increased
image correction would provide better realism and accuracy rather than
teaching away from it. We are unconvinced Hendricks actually criticizes,
discredits, or otherwise discourages investigation into the claimed solution
of image correction provided by Ercan. See In re Fulton, 391F.3d1195,
1201 (Fed. Cir. 2004).
Although Appellant contends Hendricks "is void of any image
distortion, correction, pixel intensity alteration, etc." (App. Br. 10), wherein
combining Ercan's image correction to Hendricks "would render
[Hendricks] unsatisfactory for its intended purpose" (App. Br. 12),
Appellant appears to view the combination in a different perspective than
that of the Examiner. The issue here is whether the ordinarily skilled artisan,
upon reading Ercan, would have found it obvious to provide for additional
image correction, as set forth in Ercan, to Hendricks' system for
communicating video feeds over the internet. Here, we agree with the
Examiner that it would have been obvious "to modify camera/compression
stage" as taught by Henricks, "to include the CCD color image sensor and
compression stage" as taught by Ercan "for the purpose of providing a
system that ensures that a sufficient dynamic range of data is available for
the image combining/compression processes" and "ensures successful
outcomes" (Final Act. 6). That is, the Examiner has provided sufficient
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
As to Appellant's hindsight contentions (App. Br. 12), we are mindful
the Supreme Court has clearly stated the "combination of familiar elements
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according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). As the Examiner points out, "motivation has clearly been
gleaned directly from the Ercan prior art reference" which "represents
knowledge that was within the level of ordinary skill in the art prior to the
time of the claimed invention, not from Applicant's disclosure" (Ans. 5).
Here, Appellant has presented no evidence that providing additional
image correction to a system for communicating video feeds would have
been "uniquely challenging or difficult for one of ordinary skill in the art."
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Instead, we find such a combination of
references in the same field of endeavor of video communication would
have been well within the ordinary level of skill of the art. See KSR, 550
U.S. at 417. In particular, we find that Appellant's invention is simply a
modification (adding image correction as taught and suggested by Ercan) of
familiar prior art teaching of communicating video feeds (as taught or
suggested by Hendricks) that would have realized a predictable result to the
skilled artisan. The skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 421.
Based on the record before us, we find no error in the Examiner's
rejection of claims 1--4, 9, 14, 16, 17, 19, 20, 23, 25-27, 32, 34, and 35 over
the combination of Hendricks and Ercan.
Appellant does not provide separate arguments for the other pending
claims (App. Br. 12), and thus, we also affirm the rejections of claims 3, 4,
21, and 22 over Hendricks, Ercan, and Hosokawa; of claims 5, 7, 8, 23, 25,
and 26 over Hendricks, Ercan, and Kumagai; of claims 13 and 29 over the
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Hendricks, Brean, and Anand; of claims 6 and 24 over Hendricks, Brean,
and Jain; and of claims 10, 15, 18, 28, 33, and 36 over Hendricks, Ercan, and
Esbensen.
IV. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1-10, 13-29 and 32-36
under 35 U.S.C. § 103(a), but reverse the Examiner's rejection of claims 1
and 19 under 35 U.S.C. § 112, second paragraph. Because we affirm at least
one ground of rejection with respect to each claim on appeal, we affirm the
Examiner's decision to reject all of the pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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