Ex Parte Blattman et al

Patent Trial and Appeal Board

Aug 29, 2014

11445659 (P.T.A.B. Aug. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIRK BLATTMAN, GLENN CONNERY, and
ANDREW PALFREYMAN
___________

Appeal 2012-000196
Application 11/445,659
Technology Center 2400
____________

Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) of finally rejected claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to techniques for supporting trick modes
in a streaming digital video environment. Spec. ¶ 2.

1 Throughout this Decision, we refer to Appellants’ Appeal Brief (“App.
Br.,” filed April 28, 2011), Appellants’ Reply Brief (“Reply Br.,” filed
September 16, 2011), The Examiner’s Answer (“Ans.,” mailed July 19,
2011), and the original Specification (“Spec.,” filed June 2, 2006).
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Claim 1, reproduced below, is illustrative with a disputed limitation in
italics:
1. A method for supporting trick modes in a digital video
environment, the method comprising:
receiving a source stream of digital video content, the
source stream of digital video content being encoded for a
normal playout rate;
generating a root trick mode stream from the source
stream of digital video content, wherein the root trick mode
stream is generated for a playout rate that is faster than the
normal playout rate; and
generating, from the root trick mode stream, a trick mode
stream for a playout rate that is faster than the playout rate of
the root trick mode stream.

THE REJECTIONS
Claims 1, 4, 8–10, 13, and 16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Honjo (US 2001/0033737 A1, Oct. 25, 2001).
Claims 2, 3, 5–7, 11, 12, 14, 15, and 17–20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Honjo and Surline (US
2006/0117357 A1, June 1, 2006).

ISSUE
The dispositive issue raised by Appellants’ arguments is: Has the
Examiner erred finding Honjo teaches, “generating, from the root trick mode
stream, a trick mode stream for a playout rate that is faster than the playout
rate of the root trick mode stream” (emphasis added) as recited in claim 1?

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ANALYSIS
The Examiner rejects claim 1, finding:
wherein the root trick mode stream is generated for a playout
rate that is faster than the normal playout rate (figure 3(b)
shows double speed); and generating, from the root trick mode
stream, a trick mode stream for a playout rate that is faster than
the playout rate of the root trick mode stream (see figures 3(c)
to 3(e) which generated from figure 3(b), including 15x speed
transfer data).
Ans. 5.
Appellants argue,
Although Honjo discloses how to generate decoded video
streams, Dv, at rates of lx, 2x, 5x, and 15x, given input video
streams of lx, 2x, 5x, and 15x, respectively, Honjo does not
disclose a “generated from” relationship between lx, 2x, 5x, and
15x streams as recited in claim 1. In particular, Honjo does not
disclose that one stream is generated from another stream or
that a root trick mode stream is generated from a source stream
(i.e., a normal playout rate stream) and then a trick mode
stream, with a playout rate higher than the root trick mode
stream, is generated from the root trick mode stream as recited
in claim 1.
App. Br. 11 (emphasis omitted). Appellants further contend,
Here, the Examiner alleges that when the user of the
Honjo apparatus switches from one mode to another mode (e.g.,
from 2x mode to 5x mode) that the subsequent video stream is
somehow “generated from” the preceding video stream.
Appellants respectfully assert that there is no support for this
interpretation of Honjo.
App. Br. 12.
We concur with Appellants’ contentions of Examiner error. A claim
is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
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reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). While it may be the case that Honjo Figure 3(c) (5x
playback) is generated from the 2x stream of Figure 3(b), the Examiner has
not shown where such a teaching is found, either expressly or inherently, in
Honjo. Thus, we are persuaded the Examiner erred finding Honjo teaches,
“generating, from the root trick mode stream, a trick mode stream for a
playout rate that is faster than the playout rate of the root trick mode stream”
(emphasis added) as recited in claim 1.
Independent claims 10, 16, and 19 include a similar disputed
limitation and dependent claims 2–9, 11–15, 17, 18, and 20 depend from the
independent claims (directly or indirectly). Therefore, we are persuaded the
Examiner erred in rejecting claims 2–20 for the same reason as claim 1.
Accordingly, on the record before us, we will not sustain the
Examiner’s rejection of claims 1, 4, 8–10, 13, and 16 as anticipated by
Honjo. For the same reasons, we will not sustain the Examiner’s rejection of
claims 2, 3, 5–7, 11, 12, 14, 15, and 17–20 as unpatentable over Honjo and
Surline.

NEW GROUNDS OF REJECTION
We reject independent claims 1, 10, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Honjo and reject claim 19 under § 103(a) as
unpatentable over Honjo and Surline. We adopt as our own the Examiner’s
findings in rejecting claims 1, 10, and 16 (Ans. 4–5) and the Examiner’s
findings rejecting claim 19 (Ans. 10–11). We make further findings as
follows.
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We find Honjo’s Figures 3(a) through 3(e) reasonably suggest to the
person of ordinary skill in the art, at the time of the invention, modifying
Honjo to generate a trick mode stream from a root trick mode stream as
recited in claim 1 and similarly recited in claims 10, 16, and 19. Decoded
output (“Dv”) of Figure 3(a) shows a source data stream, which is used to
generate a root trick mode stream as decoded output of Figure 3(b) at double
speed. Decoded output (“Dv”) in each of Figures 3(c) and 3(d) (5x and 15x
speeds, respectively) shows selections of frames in each group of pictures
(“GOP”) that are subsets of the selected frames in double speed (of Figure
3(b)) and thus, can be generated from the double speed decoded output. For
example, for Honjo’s depicted GOP comprising frames 1–15, source data
stream decoded output (Figure 3(a)) comprises frames [I1–B–B–P1–B–B–
P2–B–B–P3–B–B–P4–B–B]. Double speed decoded output (Figure 3(b)) is
easily generated from the source data stream by eliminating the P frames and
thus comprises [I1–P1–P2–P3–P4] thereby generating the recited root trick
mode stream. Quintuple speed decoded output (Figure 3(c)) may be easily
generated from the double speed decoded output by further eliminating
frames P2 and P4 and thus, comprises [I1–P1–P3] thereby generating a trick
mode stream from the root mode stream as recited. We find the
modification of Honjo is nothing more than a predictable variation of the
teachings of Honjo. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Furthermore, given a source data stream (Figure 3(a)) and a double
speed (root) trick mode stream (Figure 3(b)) generated from the source
stream, there are a small, finite number of predictable solutions for
generating a trick mode stream having a still higher playback rate—namely:
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generating from the source data stream and the double speed (root) trick
mode stream.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Id. at 421. We further find choosing between the two possible solutions for
generating a trick mode stream is well within the technical grasp of the
ordinary skilled artisan.
We adopt the Examiner’s findings (Ans. 5–11) in rejecting dependent
claims 2–9, 11–15, 17, 18, and 20. Appellants do not dispute these findings
(App. Br. 15–16) and thus, we reject dependent claims 4, 8, 9, and 13 under
35 U.S.C. § 103(a) as unpatentable over Honjo for the reasons set forth
above regarding independent claims 1 and 10 and the Examiner’s
uncontested findings regarding dependent claims 4, 8, 9, and 13. We further
reject dependent claims 2, 3, 5–7, 11, 12, 14, 15, 17, 18, and 20 under
35 U.S.C. § 103(a) as unpatentable over Honjo and Surline for the reasons
set forth above regarding independent claims 1, 10, 16, and 19 and the
Examiner’s uncontested findings regarding dependent claims 2, 3, 5–7, 11,
12, 14, 15, 17, 18, and 20.

DECISION
For the above reasons, the Examiner’s decision rejecting claims 1–20
is reversed.
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We have entered new grounds of rejection of claims 1–20 under § 103
pursuant to our authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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