Ex Parte Kaburlasos et al

Patent Trial and Appeal BoardSep 27, 2017

13024536 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office 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. 13/024,536 02/10/2011 Nikos Kaburlasos ITL.2701US (P35959) 1865 47795 7590 09/29/2017 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER LERNER, MARTIN ART UNIT PAPER NUMBER 2657 NOTIFICATION DATE DELIVERY MODE 09/29/2017 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 following e-mail address(es): tphpto@tphm.com Inteldocs_docketing @ cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIKOS KABURLASOS, SCOTT W. CHENG, HONG JIANG, MICHAEL D. STONER and NARAYAN BISWAL Appeal 2017-002737 Application 13/024,536 Technology Center 2600 Before CARL W. WHITEHEAD JR, KEVIN C. TROCK and AARON W. MOORE, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Final Rejection of claims 1—17 under 35 U.S.C. § 134(a). Appeal Brief 7—9. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Introduction The invention is directed to processing audio streams. Abstract. Appeal 2017/002737 Application 13/024,536 Illustrative Claim (disputed limitations emphasized) 1. A method, comprising: receiving a content stream at a decoder, the content stream including an encoded audio stream comprising audio frames; combining more than one encoded audio frame in said encoded audio stream into a single larger encoded audio frame to form a modified encoded audio stream such that frame boundaries of said audio encoded frames go away after combining encoded audio frames to form a larger encoded audio frame with a larger frame size; and producing, in the decoder, a decoded audio stream from the modified encoded audio stream. Rejections on Appeal Claims 1—17 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement. Answer 2—3. Claims 1 and 6—9 stand rejected under pre-AlA 35 U.S.C. § 102(b) as being anticipated by Blair (U.S. Patent 7,130,528 B2; issued October 31, 2006). Answer 4—9. Claims 2, 3, 11, 13, 14, 16 and 17 stand rejected under pre-AlA 35 U.S.C. § 103(a) as being unpatentable over Blair and Ezer (U.S. Patent 6,275,239 Bl; issued August 14, 2001). Answer 9—13. Claims 4 and 10 stand rejected under pre-AlA 35 U.S.C. § 103(a) as being unpatentable over Blair and Fielder (U.S. Patent 6,124,895; issued September 26, 2000). Answer 13—14. 2 Appeal 2017/002737 Application 13/024,536 Claim 5 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Blair, Ezer and Ort (U.S. Patent 5,630,005; issued May 13, 1997). Answer 15—16. Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Blair, Ezer and Fielder. Answer 16. Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Blair, Ezer and Furlan (U.S. Patent Application Publication 2011/0043641 Al; published February 24, 2011). Answer lb- 17. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 29, 2016), the Reply Brief (filed December 7, 2016), the Answer (mailed October 28, 2016), and the Final Rejection (mailed April 14, 2016) for the respective details. 35 U.S.C. $ 112(a) Rejection Appellants contend the “§ 112 rejection is focused on the limitation ‘such that frame boundaries of said audio encoded frames go away after combining encoded audio frames,’ arguing this is new matter;” “[hjowever, this is untenable since the claim says you basically combine frames into a larger frames so you necessarily make original boundaries go away. See Specification at | 56, second sentence.” Appeal Brief 6. The Examiner finds: [T]he current rejection is not premised on the enablement clause. The claims are being rejected under the written description clause, where the issue is whether one skilled in the art would 3 Appeal 2017/002737 Application 13/024,536 understand that the inventor has possession of the claimed invention at the time the application was filed. That is, the issue is whether one skilled in the art would understand that the new claim limitations are supported by the Specification, not whether one skilled in the art would find that the new claim limitations are obvious. If one were to apply the standard proposed by Appellants, whether it would be obvious to do something, then an applicant could add almost anything to the claims, as long as it was obvious, regardless of what is actually disclosed by the Specification. Answer 17—18. Appellants further argue, “If you have two frames, you have four boundaries, two for each frame. If you combine those two frames into one frame, you have two boundaries. Therefore you have made two boundaries go away.” Reply Brief 1. The Examiner does not provide sufficient technological rationale to support the written description rejection of claims 1—17 in light of the disclosure of “combining multiple audio frames into a single larger frame” in paragraph 56 of the Specification. Accordingly, we find Appellants’ arguments persuasive and reverse the Examiner’s 35 U.S.C. § 112(a) rejection of claims 1—17. 35 U.S.C. $ 102 Rejection Appellants argue: Claim 1 calls for a modified encoded audio stream formed by combining more than one encoded audio frame, in said encoded audio stream into a single larger encoded audio frame. The cited reference to Blair does not do this. Blair starts with thirty frames per set and then deletes some frames per set in some cases cited in the office action to change the set size but not the frame size. Each of the remaining frames has the same size. No larger frame was ever formed. You either delete some or all of the frames of a set, but in any case, you never change the length of any frame. 4 Appeal 2017/002737 Application 13/024,536 Appeal Brief 7. The Examiner finds Blair teaches claim 1 limitation of “combining more than one encoded audio frame in said encoded audio stream into a single larger encoded audio frame'1'’ in Step 216 of Figure 2. Answer 5. The Examiner additionally finds Figure 3a illustrates a set of audio frames that is equivalent to a single larger encoded audio frame produced by combining the more than one encoded audio frame. See Answer 5. Appellants argue “the cited reference always talks about frames and sets of frames” and although the reference “deletes frames, in every case, the frames are always the same size.” Reply Brief 4. Appellants contend, “Deleting frames does not in any way constitute removing frame boundaries to make a larger frame.” Reply Brief 4. Appellants further contend: The way the Answer attempts to circumvent this problem with the § 102 rejection is to equate “sets of frames” and “frames.” There is no basis for this construction. The reference consistently talks about frames, deleting frames and sets but he never says that a set containing a number of frames is somehow itself a frame. This would make no sense because now you would have frames that are frames and frames that are sets of frames. Reply Brief 4. We find Appellants’ arguments persuasive and reverse the Examiner’s anticipation rejection of claims 1 and 6—9.1 1 “‘For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element of the claimed invention must be identically shown in a single reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir. 1988)). 5 Appeal 2017/002737 Application 13/024,536 35 U.S.C. $ 103 Rejection Appellants argue the obviousness rejection of claims 2, 3, 11, 13, 14, 16 and 17 in view of the Blair/Ezer combination should be reversed for the same reasons as the anticipation rejection. Appeal Brief 7. We find Appellants” argument persuasive because Ezer does not address the noted deficiency of Blair. See Answer 10 (“Concerning independent claim 11, then, Ezer et al. teaches a media coprocessor with graphics, video, and audio tasks partitioned by time division multiplexing. An update interval, synchronized to a video frame, is defined, and this update interval is divided into a number of partitions.”). Consequently, we reverse the Examiner’s obviousness rejection of claims 2, 3, 11, 13, 14, 16 and 17. We also reverse the Examiner obviousness rejections of dependent claims 4, 5, 10, 12, and 15 because none of the cited references address the noted deficiency of Blair. See Answer 13-17. DECISION The Examiner’s written description rejection of claims 1—17 is reversed. The Examiner’s anticipation rejection of claims 1 and 6—9 is reversed. The Examiner’s obviousness rejections of claims 2—5 and 10—17 are reversed. REVERSED 6