Ex Parte Cooper et al

Patent Trial and Appeal Board

Nov 18, 2013

10494955 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/494,955 05/10/2004 Jeffery Allen Cooper PU010255 1548
7590 11/19/2013
Joseph S Tripoli
Thomson Multimedia Licensing Inc
PO Box 5312
Princeton, NJ 08543-5312
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
11/19/2013 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 JEFFERY ALLEN COOPER and
JILL MACDONALD BOYCE
____________________

Appeal 2011-005806
Application 10/494,955
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, BRUCE R. WINSOR, and JON B.
TORNQUIST, Administrative Patent Judges.

TORNQUIST, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005806
Application 10/494,955

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Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
The disclosure relates to an apparatus for recording video programs
for playback in combination with handheld mobile devices. Spec.1: 5-7.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A television recording and playback system, comprising:

a storage device;

means for receiving a first television program from a
signal source;

means for generating a graphic user interface (GUI) for
allowing a user to select the first television program to be
received and stored in the storage device, and a display format,
or formats, in which the first television program is to be stored;

first means for encoding the first selected television
program into a first display format;

second means for encoding the first selected television
program into a second display format;

wherein the first and second means are adapted to
simultaneously encode the first selected television program into
the first and second display formats respectively;

means for receiving and storing in the storage device the
first selected television program simultaneously in the first and

1 Appellants identify the real part in interest as Thomson Licensing S.A. Br.
3.
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second display formats in response to the user selection, the
second display format being adapted for display on a handheld
display device; and

means for transferring, to the handheld display device,
the first television program in the second display format in
response to user input if the first television program has been
stored [i]n the storage device in the second display format.

REFERENCES
Kuhn US 2002/0157112 A1 Oct. 24, 2002
Kaars US 2003/0066084 A1 Apr. 3, 2003
Chang US 2003/0093812 A1 May 15, 2003
McKenna US 2005/0155067 A1 July 14, 2005
(filed Jul. 19, 2001)
Ellis US 2006/0031883 A1 Feb. 9, 2006
(filed Jul. 16, 1999)
Gordon US 7,024,678 B2 Apr. 4, 2006
(filed Nov. 30, 1998)
Son US 7,159,235 B2 Jan. 2, 2007
(filed Jan. 29, 2001)
Creemer US 7,249,198 B1 July 24, 2007
(filed May 23, 2000)

REJECTIONS
The Examiner rejected claims 1, 7, 13, 14, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Chang, Kaars, Son, and Gordon.
The Examiner rejected claims 2, 8, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Chang, Kaars, Son, Gordon, and Ellis.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Chang, Kaars, Son, Gordon, Ellis, and Kuhn.
The Examiner rejected claims 4, 10, and 19, under 35 U.S.C. § 103(a)
as unpatentable over Chang, Kaars, Son, Gordon, and Creemer.
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The Examiner rejected claims 5, 6, and 20 as unpatentable under
35 U.S.C. §103(a) over Chang, Kaars, Son, Gordon, Creemer, and Ellis.
The Examiner rejected claims 9, 16, and 17 under 35 U.S.C. § 103(a)
as unpatentable over Chang, Kaars, Son, Gordon, and Kuhn.
The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Chang, Kaars, Son, Gordon, and McKenna.

GROUPING OF CLAIMS
In view of Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We have only considered those arguments that Appellants actually
raised in the brief. Arguments Appellants could have made but did not make
in the brief have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in finding the combination of Chang, Kaars,
Son, and Gordon teaches or suggests a system “adapted to simultaneously
encode the first selected television program into the first and second display
formats respectively,” as recited in claim 1?

ANALYSIS
In the Brief, Appellants focus their arguments on the combination of
Son and Gordon. Appellants assert the combination of Son and Gordon does
not teach or suggest a system “adapted to simultaneously encode the first
selected television program into the first and second display formats
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respectively,” because Son does not teach simultaneously encoding the first
television program into first and second display formats and Gordon’s trick
play system generates “two different playback speeds having the same
display format.” Br. 11-13.
We are not persuaded by Appellants’ arguments. We agree with, and
adopt as our own, the Examiner’s finding that Son and Gordon teach or
suggest a system “adapted to simultaneously encode the first selected
television program into the first and second display formats respectively.”
Ans. 15-16; Gordon, col. 2, ll. 27-43, col. 5, ll. 20-64; Son col. 6, ll. 28-41.
We also agree with the Examiner that, contrary to Appellants’ arguments,
the combination of Son and Gordon would neither change “the principle
operation of Gordon” nor result in a system encoding a television program at
two different playback speeds. Br. 12-13; Ans. 15-16. As noted in the
Answer, the Examiner does not seek to incorporate Gordon’s specific trick
play encoding method into the system of Son. Ans. 15-16, 18. Instead, the
Examiner relies on Gordon for the technique of using two encoders to
simultaneously encode a television program into multiple formats. Id.
Therefore, Appellants’ arguments related to Gordon’s two different playback
speeds and principle of operation do not sufficiently address the combination
of Son and Gordon as set forth by the Examiner to persuade us the Examiner
erred. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
Appellants also assert the Examiner has failed to set forth “articulated
reasoning with some rational underpinning to support the legal conclusion
of obviousness.” Br. 13. Appellants argue that because Son “discloses that
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multiple copies of the content are stored in the various packet formats . . .
there is no reason to have real-time availability of the various video
streams.” Br. 14.
We are not persuaded by Appellants’ arguments. Storing encoded
video before it is transferred to end users does not appear to contradict the
Examiner’s real-time availability rationale as both Son and Gordon store
encoded video before it is transferred to end users. See Son, col. 6, ll. 28-34;
Gordon, col. 2, ll. 52-55. Furthermore, the Examiner has articulated a
separate, reasonable rationale for combining the teachings of Son and
Gordon, i.e., one of skill would seek to increase efficiency and reduce
processing time by simultaneously employing multiple encoders. Ans. 18.
Based on the foregoing, we are not persuaded the Examiner erred in
finding the combination of Chang, Kaars, Son, and Gordon teaches or
suggests the limitations as recited in claim 1, and claims 2-20 not argued
with particularity. Therefore, the Examiner did not err in rejecting claims 1-
20 under 35 U.S.C. § 103(a) for obviousness.

DECISION
The Examiner’s rejection of claims 1-20 as being unpatentable under
35 U.S.C. § 103(a) is affirmed.
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).

AFFIRMED
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