Ex Parte Winter

Patent Trial and Appeal Board

May 24, 2016

10484860 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/484,860 01/23/2004
7590
Joseph S Tripoli
Patent Operations
Thomson Licensing Inc
P 0 Box 5312
Princeton, NJ 08543-5312
05/25/2016
FIRST NAMED INVENTOR
Marco Winter
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.
PD010040 1385
EXAMINER
CHIO, TAT CHI
ART UNIT PAPER NUMBER
2486
MAILDATE DELIVERY MODE
05/25/2016 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 MARCO WINTER
Appeal2014-006748
Application 10/484,860
Technology Center 2400
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal 2014-006748
Application 10/484,860
ILLUSTRATIVE CLAIM
Claim 1 is illustrative of the subject matter on appeal:
1. Digital video device for the reproduction or recording
of a digital video signal, the device comprising:
an analog video input configured to receive an analog
signal carrying video information coded in accordance with an
analog video format;
a digital output configured to output a digital signal
carrying video information coded in accordance with a second
network compatible data format to a network external to said
device;
a coder connected to the analog video input and which
converts the video information coded in the analog video
format into video information coded in accordance with a
transport stream format;
a first converter connected to said coder, which converts
the video information coded in accordance with the transport
stream format output from said coder into a digital signal
cauying video data coded in a first device-specific data format;
and
a second converter connected to said coder and said
digital output, which converts the video information coded in
accordance with the transport stream format output from said
coder into the digital signal carrying video data coded in the
second network compatible data format.
REJECTIONS ON APPEAL
Claims 1, 4, 5, 8, and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Ono (US 6,879,768 Bl; issued Apr. 12, 2005).
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Ono and Okada (US 7,305,170 B2; issued
Dec. 4, 2007).
2
Appeal 2014-006748
Application 10/484,860
Claims 6, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Ono and Inose (US 7 ,051,3 55 B 1;
issued May 23, 2006).
ISSUE
Appellant's contentions present us with this dispositive issue: Did
the Examiner err in finding Ono discloses a second converter which converts
the video information coded in accordance with the transport stream format
into the digital signal carrying video data coded in the second network
compatible format ("second converter" limitation), as recited in independent
claim 1? 1
ANALYSIS
The Examiner finds the "second converter" limitation recited in claim
1 is disclosed by Ono. Final Act. 5. Specifically, the examiner finds Ono
discloses a demuitipiexer (second converter) for converting the transport
data into PES (packetized elementary stream), which is equivalent to the
second network compatible data format. Final Act. 5 (citing Ono 4:42--46;
see also Ans. 9--10.
Appellant contends that "PES does not correspond to a network
compatible data format as understood by those skilled in the art." App. Br.
20. In support of this contention, Appellant argues the PES format is
defined by the MPEG standards and provides for a packetized format for
carrying elementary streams, which are then further encapsulated within
MPEG transport streams, and that the demultiplexer 17 of Ono simply
1 Appellant presents additional contentions that we do not reach because the
identified issue is dispositive of the appeal.
3
Appeal 2014-006748
Application 10/484,860
removes the transport header from the packets to recover the PES therein.
Id.
We have reviewed the sections of Ono cited by Appellant and the
Examiner. We agree with Appellant that Ono describes a transport stream
based on a MPEG 2. App. Br. 15; see Ono 1:44--45; Fig. 1. Ono further
describes the demultiplexer 17 converts the MPEG TS (transport stream)
data into PES data, which are MPEG data. Ono 4:44--46. Because both the
TS input and the PES output of the demultiplexer are both coded in the same
format (MPEG), we agree with Appellant that the demultiplexer does not
convert information coded in accordance with transport stream format into
data coded in a second network compatible data format.
Appellant's arguments persuade us the Examiner has not established
Ono discloses the "second converter" limitation. The Examiner did not use
the additional references of record (Okada and Inose) to teach or suggest this
iimitation. Accordingly, we do not sustain the 35 U.S.C. § 102(b) and
§ 103(a) rejections of: (1) claim 1; (2) independent claim 4, which recites a
limitation substantially similar to the "second converter" limitation and is
rejected on the same basis; and (3) their dependent claims 2, 3, 6-10, and 11.
The Examiner rejects claim 5 on the same basis as claim 1. Final Act.
4--5. However we agree with Appellant that features of independent claim 5
are distinct from independent claim 1 and that the basis for the rejection of
these limitations is unclear. App. Br. 22-23; Compare claim 1 (App. Br. 31)
with claim 5 (App. Br. 33-34). 2 Accordingly, we agree the Examiner has
2 Although the Examiner explains the mapping for one limitation in the
Answer, the Examiner does not explain the mapping for the remaining
limitations of claim 5. Ans. 10. For example, if the output of the AID is
4
Appeal 2014-006748
Application 10/484,860
not established Ono discloses all of the limitations of claim 5, and do not
sustain the 35 U.S.C. § 102(b) rejection of this claim.
DECISION
We reverse the Examiner's decision to reject claims 1-11.
REVERSED
mapped differently in claim 5 to be the "network compatible format" (see
id.), it is not clear what component the Examiner finds discloses the decoder
that converts the transport stream format into the analogue video format.
5