NAVER Corporation

Patent Trials and Appeals Board

Feb 2, 2021

2019005582 (P.T.A.B. Feb. 2, 2021)

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.
15/156,900 05/17/2016 Yu-Sik Kim 5540.123260 9259
24978 7590 02/02/2021
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
DANG, HUNG Q
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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@gbclaw.net
ptomail@gbclaw.net
verify@gbclaw.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YU-SIK KIM
____________________

Appeal 2019-005582
Application 15/156,900
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
ERIC B. CHEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6, 9–13, 16, 19–21, and 23.
Appeal Br. 5. Claims 4, 5, 7, 8, 14, 15, 17, 18, 22, 24, and 25 have been
cancelled. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest is NAVER Corporation.
Appeal Br. 3.
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Application 15/156,900

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CLAIMED SUBJECT MATTER
Claim 1 (reproduced in part) is illustrative of the claimed subject
matter (emphasis, formatting, and bracketed material added):
1. A video providing system for providing user selected portions
of a video, the system comprising:
[A.] a first grouper configured to generate a first group that is a set of
one or more video files, wherein the first grouper is further
configured to generate the first group based on position
information of each of the video files, wherein a determination is
made by the first grouper as to whether the position information
of each of the video files corresponds to a position within a preset
radius from a specific position;
[B.] a second grouper configured to group at least a portion of the
video files included in the first group into a second group,
wherein the second grouper is further configured to generate a
second group by synchronizing at least a portion of the video files
included in the first group; and
[C.] a provider configured to provide a video file selected by the user
from the video files included in the second group,
[D.] wherein the second grouper is further configured to generate a
second group by synchronizing at least a portion of the video
files based on a time index of each of at least a portion of the
video files,
[E.] wherein the second grouper setting of the time index of each of
the video files is based on the play time of the video file having
the longest time index among the video files grouped into the
second group and synchronizes the video files based on said
longest time index,
[F.] wherein the video file having the longest time index is defined
as the master file and the remaining video files in the second
group are defined as sub files,
. . .
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[K.] wherein when the another channel selected by the user lacks an
associated video file for the synchronized time index, the provider
provides the video file at the synchronized time index associated
with the master file.
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Das US 2010/0077289 A1 Mar. 25, 2010
Hartley US 2013/0188923 A1 July 25, 2013
Tan US 9,110,988 B1 Aug. 18, 2015

REJECTION
The Examiner rejects claims 1–3, 6, 9–13, 16, 19–21, and 23, under
35 U.S.C. § 103 as being unpatentable over the combination of Das, Tan,
and Hartley. Final Act. 4–9.
We select claim 1 as the representative claim for this rejection. The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Therefore, except for our ultimate decision, we do not address the merits of
the § 103 rejection of claims 2, 3, 6, 9–13, 16, 19–21, and 23 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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Application 15/156,900

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are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A.1.
As reproduced supra, parts D–F of claim 1 require (emphasis and
bracketed material added):
[D] wherein the second grouper is further configured to generate a
second group by synchronizing at least a portion of the video
files based on a time index of each of at least a portion of the
video files,
[E] wherein the second grouper setting of the time index of each of
the video files is based on the play time of the video file having
the longest time index among the video files grouped into the
second group and synchronizes the video files based on said
longest time index,
[F] wherein the video file having the longest time index is defined
as the master file and the remaining video files in the second
group are defined as sub files.
A.2.
In rejecting claim 1, the Examiner determines that as to the directly
supra features of parts D–F:
[D] wherein the second grouper is further configured to
generate a second group by synchronizing at least a portion of
the video files based on a time index of each of at least a portion
of the video files, [E] wherein the second grouper setting of the
time index of each of the video files is based on the play time of
the video file having the longest time index among the video files
grouped into the second group and synchronizes the video files
based on said longest time index (Figs. 3-4), [F] wherein the
video file having the longest time index is defined as the master
life and the remaining video files in the second group are defined
as sub files (Fig. 4 - video file B comprising B1-B6 is the master
file, video files A and C are sub files).
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Final Act. 5.
A.3.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
On Page 2 of the Advisory Action, starting on line 4, the
Examiner asserted that the file starting with image B1 of Figure
4 of the Das et al. reference is the master file because it has the
longest time index, and the other files (the files starting with
images A1 and C1) are the sub files. In response, Applicant notes
that although the file starting with image B1 does appear to have
the longest time index, there is no indication that the file starting
with the image B1 satisfies the claimed feature related to how the
master file is utilized. Specifically, each of the independent
claims (Claims 1 and 11) defines that “when the another channel
selected by the user lacks an associated video file for the
synchronized time index, the provider provides the video file at
the synchronized time index associated with the master file”
(emphasis added). Thus, Applicant’s independent claims not
only require that the file with the longest time index be defined
as the master file, they also require that the master file is to be
used in a particular manner. Accordingly, as the Das et al.
reference does not disclose or suggest using the file associated
with image B1 in the particular manner defined in the
independent claims, Applicant respectfully submits that the file
associated with the image B1 cannot be considered as the
claimed “master file” of Applicant’s independent Claims 1
and 11.
Appeal Br. 19.
A.4.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
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re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
We agree with Appellant that “the Das et al. reference does not
disclose or suggest using the file associated with image B1 in the particular
manner defined in the independent claims” (Appeal Br. 19) as required by
parts D–F. We conclude, consistent with Appellant’s argument, that there is
currently insufficient articulated reasoning to support the Examiner’s finding
that Das teaches, suggests, or otherwise renders obvious parts D–F as
required by claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–3, 6, 9–13, 16, 19–21, and 23 as being unpatentable under
35 U.S.C. § 103.
The Examiner’s rejection of claims 1–3, 6, 9–13, 16, 19–21, and 23 as
being unpatentable under 35 U.S.C. § 103 is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 9–
13, 16, 19–
21, 23
103 Das, Tan, Hartley 1–3, 6, 9–
13, 16, 19–
21, 23

REVERSED