Ex Parte Gunatilake

Patent Trial and Appeal Board

Oct 23, 2017

13771563 (P.T.A.B. Oct. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/771,563 02/20/2013 Priyan Deveka Gunatilake 200902914.03 6065
36738 7590 10/25/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
4420 Hotel Circle Court RAMSEY, PATRICK RANDAL
SUITE 230
SAN DIEGO, CA 92108 ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRIYAN DEVEKA GUNATILAKE
Appeal 2017-000251
Application 13/771,563
Technology Center 2100
Before JOHN A. EVANS, JOYCE CRAIG, and SCOTT E. BAIN,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—9 and 11—20, which are all of the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Sony Corporation.
App. Br. 2.
Appeal 2017-000251
Application 13/771,563
INVENTION
Appellant’s invention relates to a video preview module to enhance
online video experience. Abstract. Claim 1 reads as follows, with the
disputed limitation shown in italics:
1. Client-side apparatus comprising:
at least one computer memory that is not a transitory signal
and that comprises instructions executable by at least one
processor to:
create a storyboard of a video accessible to the processor,
the storyboard including only a subset of frames in the video, the
instructions when executed by the processor configuring the
processor for presenting the storyboard on a video display;
establish an initial storyboard including video frames from
the video;
present on the display an expanded storyboard with more
video frames from the video than the initial storyboard after a
predetermined period from first presenting the initial
storyboard.
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Li et al. (US 2003/0210886 Al; published Nov. 13,
2003) (“Li”) in view of Bozdagi et al. (US 6,647,535 Bl; issued Nov. 11,
2003) (“Bozdagi”). Final Act 4—6.
Claim 1 alternatively stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shimizu et al. (US 2005/0257152 Al;
published Nov. 17, 2005) (“Shimizu”) in view of Oshiro et al. (US
2008/0320413 Al; published Dec. 25, 2008) (“Oshiro”). Final Act. 13-15.
Claims 2—9 and 11 stand rejected as unpatentable under 35 U.S.C.
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Application 13/771,563
§ 103(a) over the combination of Li, Bozdagi, and various other references.2
Final Act. 6—13.
Claims 2—9 and 11 alternatively stand rejected as unpatentable under
35 U.S.C. § 103(a) over the combination of Shimizu, Oshiro, and the various
other references. Final Act. 15—22.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rangan et al. (US 6,154,771; issued Nov. 28, 2000)
(“Rangan”) and E. Deardorff, T.D.C. Little, J.D. Marshall, D. Venkatesh,
and R. Walzer, “Video Scene Decomposition with the Motion Picture
Parser,” MCL Technical Report 01-10-1994 (“MPP”). Final Act. 22.
Claims 13—16 stand rejected as unpatentable under 35 U.S.C. § 103(a)
over the combination of Rangan, MPP, and the various other references.
Final Act. 24—27.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Shimizu and MPP. Final Act. 28—29.
Claims 18—20 stand rejected as unpatentable under 35 U.S.C. § 103(a)
over the combination of Shimizu, MPP, and the various other references.
Final Act. 29—33.
ANALYSIS
We have considered Appellant’s arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner’s
findings of facts and conclusions as set forth in the Answer and in the Action
2 Ratakonda
Boreczky
Obrador
Dufaux
U.S. 5,956,026
U.S. 2002/0075572 Al
U.S. 2004/0128308 Al
U.S. 2005/0002452 Al
Sept. 21, 1999.
June 20, 2002.
July 1, 2004.
Jan. 6, 2005.
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Appeal 2017-000251
Application 13/771,563
from which this appeal was taken. We provide the following explanation for
emphasis.
Rejections of Claims 19 and 11 under 35 U.S.C. §103
In rejecting claim 1, the Examiner found that Li teaches the recited
limitations, except “after a predetermined period from” an initial
presentation, for which the Examiner relied on Bozdagi. Final Act. 5; Ans.
4.
Appellant contends the Examiner erred because the cited portions of
Bozdagi do not teach the limitation “present on the display an expanded
storyboard with more video frames from the video than the initial storyboard
after a predetermined period from first presenting the initial storyboard,” as
recited in claim 1. App. Br. 3. Appellant argues that the time period taught
in Bozdagi “has nothing to do with when an initial storyboard was
presented.” Id.
We are not persuaded the Examiner erred. Appellant attacks Bozdagi
individually, even though the Examiner relied on the combination of Li and
Bozdagi in rejecting claim 1. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, Appellant presents no persuasive argument or objective
evidence to rebut the Examiner’s findings regarding Bozdagi. See Reply Br.
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2—5. The Examiner found that in Bozdagi the addition of a representative
image to the web document in step SI000 on a first pass through the loop of
Figure 6 teaches or suggests presentation of an initial storyboard, and
subsequent passes teach or suggest the presentation of an expanded
storyboard. Ans. 5. The Examiner further found Bozdagi performs a “time
lapse greater than a threshold” test between the initial and expanded
storyboard displays such that the expanded storyboard display can only
occur “after” the time lapse threshold, which teaches or suggests the recited
“a predetermined period” from the initial storyboard display. Id. In reply,
Appellant argues “[t]his time lapse has nothing to do with the predetermined
period that is claimed” and is not “predetermined,” but Appellant offers no
persuasive explanation as to why the cited “threshold” in step S845 of
Bozdagi Figure 7B does not teach or suggest the “predetermined period”
recited in claim 1. Reply Br. 3^4. In short, Appellant’s arguments are
insufficient to persuasively rebut the Examiner’s findings.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Li and Bozdagi teaches or suggests the
limitations of claim 1.
Appellant also contends the Examiner erred in finding, in the
alternative, that the combination of Shimizu and Oshiro teaches or suggests
the disputed limitation in claim 1 (discussed above). Appellant argues that
the cited portions of Oshiro “simply change user interface (UI) screen
layouts after an interval” and do not suggest application to storyboards.
App. Br. 4 (emphasis omitted).
Appellant’s arguments are not persuasive because Appellant attacks
Oshiro individually, even though the Examiner relied on the combination of
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Shimizu and Oshiro in rejecting claim 1. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See Merck, 800 F.2d
at 1097.
Appellant next argues that, “because Oshiro has no concept of
constructing video storyboards” and “is directed to the realm of live content
as opposed to recorded content,” the Examiner engaged in improper
hindsight in combining Oshiro and Shimizu. App. Br. 5—7.
We are not persuaded the combination is the result of improper
hindsight. Appellant has not identified knowledge gleaned only from the
present application that was not within the level of ordinary skill at the time
the claimed invention was made. See In re McLaughlin, 443 F.2d 1392
(CCPA 1971). The Examiner has set forth articulated reasoning with
rational underpinnings for the combination. See Final Act. 14; Ans. 10.
Moreover, Appellant has not provided objective evidence of secondary
considerations, which “operates as a beneficial check on hindsight.” Cheese
Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Shimizu and Oshiro teaches or suggests the
limitations of claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 (a) rejections
of independent claim 1, as well as the Examiner’s rejections of dependent
claims 2—9 and 11, not argued separately.
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Rejections of Claims 12 16 under 35 U.S.C. §103
In rejecting claim 12, the Examiner found that Rangan teaches the
recited limitations, except “the feature selection parameter being established
at least in part by video frame size,” for which the Examiner relied on MPP.
Final Act. 23 (emphasis omitted). Appellant contends the Examiner erred in
combining the references because MPP teaches away from using its
technique for a storyboard. App. Br. 7. Appellant further argues that
“nowhere does Rangan teach the artisan to look for ideas in the art of finding
boundaries between scenes in a video.” Id. at 8. Appellant also argues “that
snatching the boundary frames as taught in MPP to use in a storyboard
would result in a summary in which only frames indicating abrupt scene/shot
changes would be presented” and “[s]uch a summary would be by its nature
disjointed and confusing.” Id. Finally, Appellant argues the combination of
references amounts to impermissible hindsight. Id.
Appellant’s arguments are not persuasive. Appellant’s “teaching
away” argument fails because Appellant has not identified where MPP
actually criticizes, discredits, or otherwise discourages locating boundaries
between scenes or shots for use in a storyboard. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
Moreover, the Examiner provided “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In particular, the Examiner relied
on MPP’s teaching that the use of compressed frame sizes for scene/shot
detection promotes efficiency. Ans. 11 (citing MPP 5.3). The Examiner
also relied on a finding that this is a combination of familiar elements
according to known methods that does no more than yield predictable
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Application 13/771,563
results. Ans. 11; seeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). KSR states that the “analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
With regard to Appellant’s argument that combining the teachings of
the references would give a “disjointed and confusing result,” Appellant has
not persuaded us 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” at the
time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). It
would have been within the skill of an ordinarily-skilled artisan to modify
the scene change detection of Rangan with the use of video frame size as a
feature selection parameter for scene change detection, as taught by MPP.
See KSR 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill” (citations omitted)).
We are also not persuaded the combination is the result of improper
hindsight. The Examiner has set forth articulated reasoning with rational
underpinnings for the combination. See Final Act. 23—24; Ans. 11—12.
Appellant has not identified knowledge gleaned only from the present
application that was not within the level of ordinary skill at the time the
claimed invention was made. See McLaughlin, 443 F.2d at 1395.
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For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Rangan and MPP teaches or suggests the
limitations of claim 12. Accordingly, we sustain the Examiner’s 35 U.S.C.
§ 103 (a) rejection of independent claim 12, as well as the Examiner’s
rejections of dependent claims 13—16, not argued separately.
Rejections of Claims 17—20 under 35 U.S.C. §103
In rejecting claim 17, the Examiner found that Shimizu teaches the
recited limitations, except using “1-frame” size, for which the Examiner
relied on MPP. Final Act. 28—29. Appellant contends the Examiner erred in
combining Shimizu and MPP for reasons similar to those Appellant set forth
for claim 12, discussed above. See App. Br. 9—10. In particular, Appellant
contends MPP teaches away from using its frame size principles to construct
a story board, the result of doing so would be “disjointed and confusing,”
and the combination is the result of improper hindsight. Id. at 10.
Appellant’s arguments are not persuasive. Appellant’s “teaching
away” argument fails because Appellant has not identified where MPP
actually criticizes, discredits, or otherwise discourages using I-frame size to
select frames from a video to construct a storyboard. See Fulton, 391 F.3d at
1201. Moreover, the Examiner provided “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”
Kahn, 441 F.3d at 988; Final Act. 29 (citing MPP 8). Appellant has not
identified knowledge gleaned only from the present application that was not
within the level of ordinary skill at the time the claimed invention was made.
See McLaughlin, 443 F.2d at 1395.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Shimizu and MPP teaches or suggests the
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limitations of claim 17. Accordingly, we sustain the Examiner’s 35 U.S.C.
§103 (a) rejection of independent claim 17, as well as the Examiner’s
rejections of dependent claims 18—20, not argued separately.
DECISION
The decision of the Examiner to reject claims 1—9 and 11—20 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)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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