Ex Parte Abrams et al

Patent Trial and Appeal Board

Jan 31, 2013

10115681 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS ALGIE ABRAMS JR. and MARK F. BEAUCHAMP
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Appeal 2010-001505
Application 10/115,6811
Technology Center 2400
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Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Microsoft Corporation.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 5-8, 12, 17-19, 22-24, 27, and
28, which are all the claims pending in the application. Claims 2-4, 9-11,
13-16, 20, 21, 25, 26, and 29-52 are canceled. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to methods, devices, systems
and/or storage media for video and/or audio processing. See Spec., 1, ll. 10-
11.
Claim 1 is illustrative:

1. A method for processing video data comprising:
receiving video data via an interface of a video appliance
wherein the interface supports data rates of at least approximately 270
Mbps;
serving code from a controller unit to an encoder unit of
the video appliance via an intranet of the video appliance using an
intranet address for the encoder unit, the code for execution on a
runtime engine of the encoder unit wherein the code includes
instructions for compressing digital video data at one or more average
compression ratios, wherein the runtime engine comprises a software
layer that acts as an interface between the code and an operating
system of a processor of the encoder unit and wherein execution of the
code by the runtime engine generates operating system instructions
for the processor;
receiving the code at the encoder unit via the intranet of
the video appliance; and
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in response to execution of the code by the encoder unit,
compressing digital video data to produce compressed digital video
data.

Appellants appeal the following rejections:

R1. Claims 1, 6, 8, and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Northcutt (US 6,185,737 B1, Feb. 6, 2001) in view
of Kalluri (US 5,937,331, Aug. 10, 1999);
R2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Northcutt in view of Kalluri, and further in view of
Bonneau (US 5,870,502, Feb. 9, 1999);
R3. Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kurosawa (US 6,654,060 B1, Nov. 25, 2003) in
view in view of Kalluri, and clarification.
R4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kurosawa in view of Kalluri, and further in view of
Bonneau.
R5. Claims 8, 12, 17-19, 22-24, 27-28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Noro (US 6,646,677 B2, Nov. 11, 2003)
in view in view of Enomoto (US 6,278,739 B2, Aug. 21, 2001).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

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ANALYSIS
Rejection under Northcutt and Kalluri
Claims 1, 6, 8, and 12

Issue 1: Did the Examiner err in finding that the combination of
Northcutt and Kalluri renders the claims unpatentable?

Appellants contend “modification of the appliance 30 of the Northcutt
reference, to meet the subject matter of claim 1, would change the principle
of operation of the appliance 30 of the Northcutt reference” (App. Br. 11).
The Examiner found that the disclosure of Northcutt “teaches the
same as code-based control of units of a video appliance where a unit
receives code via an intranet of the video appliance and executes the code on
its own runtime engine” (Ans. 14).
Notwithstanding Appellants’ assertion that the Examiner’s
combination would improperly change the principle of operation of
Northcutt (App. Br. 11), we find that Appellants have not provided evidence
or sufficient reasoning as to why. The Supreme Court has provided clear
guidance that “when a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR Intl’ Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)(quoting
Sakraida v. Aq Pro, Inc., 425 U.S. 273, 282 (1976)). This reasoning is
applicable here. Given the breadth of Appellants’ representative claim 1, we
are not persuaded that combining the respective familiar elements of the
cited references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” (see
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Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007)(citing KSR, 550 U.S. at 418)).
Therefore, we find Appellants’ arguments unpersuasive that the
proposed modification would have changed the principle operation of
Northcutt so as to render Northcutt unsatisfactory for its intended purpose.
On this record, we find the Examiner’s proffered combination of Northcutt
and Kalluri references is supported by articulated reasoning with sufficient
rational underpinning that reasonably justifies the Examiner’s ultimate legal
conclusion of obviousness. (See Ans. 3-6 and 13-14.)

Rejection under Northcutt, Kalluri, and Bonneau
Claim 7

Appellants present no arguments pertaining to this Examiner’s
obviousness rejection of claim 7 (Ans. 5-6). Accordingly, we summarily
sustain this rejection. See Manual of Patent Examining Procedure (MPEP)
§ 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, that ground of rejection
will be summarily sustained by the Board.”).

Rejection under Kurosawa and Kalluri
Claims 1, 5, and 6

Issue 2: Did the Examiner err in finding that the combination of
Kurosawa and Kalluri renders the claims unpatentable?

Appellants contend “that modification of the system of the controller
1001 and external device 1002 of the Kurosawa reference, to meet the
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subject matter of claim 1, would change the principle of operation of the
system of the Kurosawa reference” (App. Br. 11-12).
Notwithstanding Appellants’ assertion that the Examiner’s
combination would improperly change the principle of operation of
Kurosawa (App. Br. 11), we again find that Appellants have not provided
evidence or sufficient reasoning as to why. Given the breadth of Appellants’
representative claim 1, we are still not persuaded that combining the
respective familiar elements of the cited references in the manner proffered
by the Examiner would have been “uniquely challenging or difficult for one
of ordinary skill in the art” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d at 1162 (citing KSR, 550 U.S. at 418)). For example, merely
because a device may “no longer be external” as proffered by Appellants
(see App. Br. 12) does not necessarily make it unsatisfactorily for its
intended use absent a showing of the same. Mere attorney arguments and
conclusory statements 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);
37 C.F.R. § 1.111(b).
Therefore, we find Appellants’ arguments unpersuasive that the
proposed modification would have changed the principle operation of
Kurosawa so as to render Kurosawa unsatisfactory for its intended purpose.
On this record, we find the Examiner’s proffered combination of Kurosawa
and Kalluri references is supported by articulated reasoning with sufficient
rational underpinning that reasonably justifies the Examiner’s ultimate legal
conclusion of obviousness. (See Ans. 6-8 and 12-15.)

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Rejection under Kurosawa, Kalluri, and Bonneau
Claim 7

Appellants present no arguments pertaining to this Examiner’s
obviousness rejection of claim 7 (Ans. 8). Accordingly, we summarily
sustain this rejection. See Manual of Patent Examining Procedure (MPEP)
§ 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, that ground of rejection
will be summarily sustained by the Board.”).

Rejection under Noro and Enomoto
Claims 8, 12, 17-19, 22-24, 27, and 28

Issue 3: Did the Examiner err in finding that Noro teaches and/or
suggests a runtime engine, as claimed?

Appellants contend that there is “no evidence of a runtime engine or
evidence to suggest a runtime engine” (App. Br. 12) and “that evidence of
simple commands does not support a finding that code in an executable file
is taught or suggested” (id. at 13).
The Examiner found that “[s]ince the control commands are executed
by the camera controller (1206 of fig. 14), the control commands are in a
form of executable code” (Ans. 13). We agree with the Examiner.
For example, Noro discloses “a control command receiver which
receives a camera control command sent from the viewer end system 1300. .
. . a camera controller which interprets the control command . . . and controls
the operation of the camera device 1201 in accordance with the control
command” (col. 14, ll. 15-21). Noro further discloses that “a camera control
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user interface unit, which interprets user’s camera operation, and converts it
into an internal camera control command” (col. 14, ll. 32-34).
In other words, Noro discloses sending control commands (control
directives) to a camera’s processor which acts upon the commands to control
the camera functions. We find that such functionality is strikingly similar to
a file containing instructions for a software interpreter, i.e., an executable
file, and is at least suggestive of a “runtime engine” as a conversion into
control commands is performed. Therefore, the Examiner’s reliance on this
functionality is therefore persuasive.

Reply Brief
Here, Appellants' Reply Brief includes new arguments (Reply Br. 3-9)
that are not shown to be prompted by any new Examiner’s response. The
Appellants could have made the argument in the Appeal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”) (absent a
showing of good cause, the Board is not required to address arguments in the
Reply Brief that could have been presented in the principal Brief).
Therefore, we will not consider the new argument.
In view of the above discussions, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of the cited art, all of the Examiner’s 35 U.S.C. § 103(a)
rejections are sustained.

DECISION
We affirm each of the Examiner’s § 103(a) rejections.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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