Ex Parte Blattman et alDownload PDFPatent Trial and Appeal BoardAug 29, 201411445659 (P.T.A.B. Aug. 29, 2014) Copy Citation 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). Appeal 2012-000196 Application 11/445,659 2 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? Appeal 2012-000196 Application 11/445,659 3 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 Appeal 2012-000196 Application 11/445,659 4 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. Appeal 2012-000196 Application 11/445,659 5 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: Appeal 2012-000196 Application 11/445,659 6 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. Appeal 2012-000196 Application 11/445,659 7 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) msc Copy with citationCopy as parenthetical citation