Ex Parte KRUEGER et al

Patent Trial and Appeal Board

Sep 21, 2018

13150960 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/150,960 06/01/2011
27557 7590 09/25/2018
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Craig KRUEGER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
146527.00101 4009
EXAMINER
ALI,FARHAD
ART UNIT PAPER NUMBER
2478
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
Belay@blankrome.com
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG KRUEGER and
STEVEN PETER SPENCER
Appeal2017-001912
Application 13/150,960 1
Technology Center 2400
Before JOHN A. EVANS, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 5-10, 12, 14, 16-20, 22, and 25, which are all
claims pending in the application. Appellants have canceled claims 3, 4, 11,
13, 15, 21, and 23-24. An oral hearing was held September 13, 2018, and a
transcript thereof will be added to the record in due course. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Fancaster, Inc. App.
Br. 1.
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Application 13/150,960
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to the presentation and recording of multimedia content." Spec.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A computer-implemented method, comprising:
receiving at an interface component of a mobile device,
first content information from a first camera built-in on the
mobile device on a forward-facing side of the mobile device,
wherein the first content information comprises a first
audio/video content information of an event;
receiving at the interface component of the mobile
device, second content information from a second camera built-
in on the mobile device on a rearward-facing side of the mobile
device, wherein the second content information comprises a
second audio/video content information of the event, and
wherein the second content information is received
simultaneously with the first content information;
synchronizing the first content information with the
second content information; and
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 4, 2016); Reply Brief ("Reply Br.," filed Nov. 23, 2016); Examiner's
Answer ("Ans.," mailed Sept. 27, 2016); Final Office Action ("Final Act.,"
mailed June 4, 2015); and the original Specification ("Spec.," filed
June 1, 2011).
2
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Application 13/150,960
generating combined content, wherein the combined
content comprises the synchronized first content information
and second content information.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Heinonen
Kulas
US 2006/0139463 Al June 29, 2006
US 2009/0092374 Al Apr. 9, 2009
Landow et al. ("Landow") US 2011/0320627 Al Dec. 29, 2011
Rejections on Appea/3
RI. Claims 1, 7, 9, 10, 12, 14, 19 and 20 stand rejected under 35
U.S.C. § I02(b) as being anticipated by Heinonen. Final Act. 3.
R2. Claims 2, 5, 6, 8, 16, 17, 22 and 25 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over the combination of Heinonen
and Landow. Final Act. 10.
R3. Claim 18 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Heinonen and Kulas. Final Act. 21.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6-9), we decide the appeal
of anticipation Rejection RI of claims on the basis of representative
claim 1; we decide the appeal of obviousness Rejection R2 of claims 2, 5, 6,
8, 16, 17, 22 and 25 on the basis of representative claim 8. Remaining claim
3 We note claims 19 and 22 are objected to by the Examiner (Final Act. 2),
but form no part of our Decision.
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Application 13/150,960
18 in obviousness Rejection R3, not argued separately, stands or falls with
independent claim 9 from which it depends. 4
ISSUE
Appellants argue (App. Br. 6-7; Reply Br. 1-2) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Heinonen is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a
computer-implemented method that includes, inter alia, the step of
"synchronizing the first content information with the second content
information," as recited in claim 1?
ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 1, 2, 5-10, 12, 14, 16-20, 22, and 25 for the specific reasons
discussed below. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4
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Application 13/150,960
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010). A reference inherently discloses an element of a claim "if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d
1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
"Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Therasense, 593 F .3d at 1332 ( quoting
Cont'! Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264,1269 (Fed. Cir.
1991)).
The Examiner cites Heinonen paragraph 52 as expressly disclosing
the disputed "synchronizing" step. Final Act. 5. In Heinonen, two separate
video streams are captured, and then integrated into a single video stream.
See Heinonen i-fi-f45--46 and Fig. 1.
Appellants respond by arguing " [ t ]he Examiner thus appears to
contend that the concept of video stream 'integration' is the same as video
stream 'synchronization."' App. Br. 6. "In the present invention,
synchronization of the first content information with the second content
information is not simply an integration of the content." Id. at 6-7 (citing
Spec. ,r 58). "Heinonen simply discloses a merging of video frames, rather
than an actual synchronization of content .... [N]owhere does Heinonen use
the term 'synchronize' or discuss the claimed concept of synchronizing a first
video stream with a second video stream." App. Br. 7.
As an aid to rendering our Decision, and consistent with the
discussion held during Oral Argument (see generally, Transcript), we further
note Heinonen Figure 3 (infra) and supporting disclosure in paragraph 49:
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Application 13/150,960
FIG. 3, reproduced below, shows a possible embodiment
of integrating two independent video streams, respectively
comprising a succession of single frames 1, 1', l" and 2, 2', 2",
into a single integrated video stream, according to the
invention. Here the resulting video stream is composed by
using the successive frames of video stream 1 as the odd
number frames of the single video stream to be produced, while
frames of video stream 2 are used for the even number frames
of the resulting video stream.
Heinonen ,r 49 ( emphases omitted).
Fig. 3
Figure 3 of Heinonen shows how two video streams according to the
invention can be integrated to provide a single integrated video stream
according to an embodiment. Heinonen ,r 3 8.
Thus, based upon this disclosure of Heinonen, we agree with
Appellants that Heinonen does not expressly disclose synchronization of
content, as claimed, but instead discloses integration of two video streams
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Application 13/150,960
into a single video stream by interleaving frames from the two video
sources. 5, 6
We further find there is no evidence on this record to support the
proposition that synchronization of either content or frames between two
video sources is an inherent property of the arrangement in Heinonen, e.g.,
Figure 3 and supporting its disclosure. 7
Therefore, based upon the findings above, on this record, and for
essentially the same reasons argued by Appellants, supra, we are persuaded
of at least one error in the Examiner's finding that claim 1 is anticipated by
Heinonen. Therefore, we reverse the Examiner's anticipation rejection of
independent claim 1, and also the rejection of independent claims 9, 20,
and 22, which recite the disputed limitation in commensurate form. For the
same reasons, we also reverse the rejections of claims 2, 5-8, 10, 12, 14, 16-
19, and 25 that depend therefrom.
5 Definitions of "synchronize" include "to happen at the same time" or "to
represent or arrange (events) to indicate coincidence or coexistence." See
Merriam-Webster.com (https://www.merriam-webster.com/dictionary/
synchronize) (last visited Sept. 13, 2018).
6 Following the oral hearing, Appellant provided a dictionary definition for
the term "synchronous." However, we do not find it necessary to consult the
proffered definition.
7 As the rejection before us is for anticipation under 35 U.S.C. § 102, we
offer no opinion in this Decision as to the propriety of a rejection for
obviousness under § 103 in view of Heinonen, either taken alone or in
combination with another reference. While the Board is authorized to reject
claims under 37 C.F.R. § 4I.50(b), no inference should be drawn when the
Board elects not to do so. See MANUAL OF p ATENT EXAMINING PROCEDURE
§ 1213.02 (9th Ed., Rev. 08.2017 (Jan. 2018)).
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Application 13/150,960
In light of our reversal of the rejection of independent claims 1 and 9,
supra, we also reverse obviousness Rejections R2 and R3 under§ I03(a) of
claims 2, 5, 6, 8, 16-18, 22 and 25, which variously and ultimately depend
from claims 1 and 9. On this record, the Examiner has not shown how the
additionally cited secondary Landow and Kulas references overcome the
aforementioned deficiencies with Heinonen, as discussed above regarding
claim 1.
CONCLUSIONS
(1) The Examiner erred with respect to anticipation Rejection RI of
claims 1, 7, 9, 10, 12, 14, 19 and 20 under 35 U.S.C. § I02(b), and we do not
sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
and R3 of claims 2, 5, 6, 8, 16-18, 22, and 25 under 35 U.S.C. § I03(a) over
the cited prior art combinations of record, and we do not sustain the
rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 5-10, 12,
14, 16-20, 22, and 25.
REVERSED
8