Ex Parte Lin et alDownload PDFPatent Trial and Appeal BoardJan 11, 201712472953 (P.T.A.B. Jan. 11, 2017) Copy Citation 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. 12/472,953 05/27/2009 Andrew Cheng-min Lin 000118-000500US 8650 68155 7590 01/13/2017 FOUNTAINHEAD LAW GROUP, PC Chad R. Walsh 900 LAFAYETTE STREET SUITE 301 SANTA CLARA, CA 95050 EXAMINER MONTOYA, OSCHTA I ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 01/13/2017 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): docketing@fountainheadlaw.com rbaumann@fountainheadlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW CHENG-MIN LIN, DANIEL HONIG BEAR, ROBERT MASAO WONG, and CHARLES BARCLAY REEVES Appeal 2016-001005 Application 12/472,9531 Technology Center 2400 Before LARRY J. HUME, JOHN P. PINKERTON, and MATTHEW J. McNEILL, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—37, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Hulu, LLC as the real party in interest. App. Br. 2. Appeal 2016-001005 Application 12/472,953 STATEMENT OF THE CASE Introduction Appellants’ described and claimed inventions generally relate to playing a media program and providing a preview frame of the media program in response to a seek command. Spec. 5,11. 7—10.2 Claim 1 is representative and reads as follows (with the disputed limitations emphasized)'. 1. A method of playing a media program and providing a seek preview media program frame of the media program in response to a seek command, comprising: (a) transmitting, by a user device, a request for the media program to a media program provider, wherein the media program is selected from the group consisting of a streamed media program and a progressively downloaded media program; (b) receiving, by the user device, the media program through a network from a server associated with the media program provider, the media program having a plurality of media program frames stored in a first file; (c) rendering, by the user device, the media program in a video playback component of a media program player (MPP) implemented by the user device; (d) after rendering of the media program, accepting, by the user device, a seek command in the video playback component of the MPP, the seek command associated with a user-chosen arbitrary temporal location within the media 2 Our Decision refers to the Final Office Action mailed Oct. 24, 2014 (“Final Act.”), Appellants’ Appeal Brief filed Mar. 10, 2015 (“App. Br.”) and Reply Brief filed Oct. 20, 2015 (“Reply Br.”), the Examiner’s Answer mailed Aug. 27, 2015 (“Ans.”), and the substitute Specification — Clean Copy filed Nov. 29, 2011 (“Spec.”). 2 Appeal 2016-001005 Application 12/472,953 program and received concurrently with the rendering of the media program in the video playback component of the MPP; (e) generating, by the user device, a seek request from the seek command, the seek request including information identifying a single seek preview media program frame associated with the user-chosen arbitrary temporal location within the media program in a second file that is different from the first file including the media program being received by the user device, wherein a plurality of seek preview media frames in the second file are of a lower resolution than the media program and fewer in number from the plurality of media program frames from the first file\ (f) receiving, by the user device, the identified single seek preview media program frame from the server through the network, wherein the identified single seek preview media program frame is not currently being displayed by the video playback component; and (g) rendering, by the user device, the single seek preview media program frame in the video playback component of the MPP without interrupting the rendering of the media program. App. Br. 13 (Claims App’x). Rejections on Appeal Claims 1—4, 17—22, and 30-37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang (US 2007/0016611 Al, published Jan. 18, 2007) and Boreczky et al. (US 2002/0075572 Al, published June 20, 2002) (“Boreczky”). 3 Appeal 2016-001005 Application 12/472,953 Claims 5—9, 12—16, and 23—273 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang, Boreczky, and Tojo et al. (US 2004/0189692 Al, published Sept. 30, 2004) (“Tojo”). Claims 10, 11, 28, and 294 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang, Boreczky, and Gupta et al. (US 2005/0086703 Al, published Apr. 21, 2005) (“Gupta”). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Briefs (see App. Br. 10—12; Reply Br. 2—3) and are not persuaded that the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 3—12) and in the Examiner’s Answer (Ans. 2—3), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. 3 Appellants do not separately argue any of these claims. The mere reference to “Claims 1—37” in the heading of the Briefs is insufficient to raise an argument relating to the rejection of these claims because Appellants fail to explain why the Examiner erred in making this rejection with respect to any of these claims See 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, these claims will not be mentioned again herein until the Decision. 4 Appellants do not separately argue any of these claims. For the same reasons set forth in footnote 3, these claims will not be mentioned again herein until the Decision. 4 Appeal 2016-001005 Application 12/472,953 Rejection of Claim 1 under § 103(a)5 Appellants argue “Wang and Boreczky do not disclose or suggest a second file with a fewer number of frames than the first file that includes the media program.” App. Br. 11. The Examiner relies on Boreczky as teaching “a second file with a plurality of seek preview media frames that are fewer in number from the plurality of media program frames from the first file.” See Ans. 2—3 (citing Boreczky ^ 10, 11). We are not persuaded by Appellants’ arguments because, as the Examiner finds, the cited portions of Boreczky teach the “look-x points [which are look-ahead and look-behind frames of the look-x video data stream] can be 2 or 4 frames neighboring the current playback position (paragraph 11)” and “[s]ince 2 or 4 frames neighboring the current play position is fewer frames than all the frames in the video the claim language is met.” Id. at 2. Appellants also argue “the cited references do not disclose or suggest generating the seek request for a single seek preview media frame in a second file.” App. Br. 11. Similarly, Appellants argue “Boreczky and Wang do not identify a single seek preview media frame in a second file that includes fewer frames from the first file.” Id. We are not persuaded by Appellants’ arguments, but instead agree with the Examiner’s findings that Boreczky teaches or suggests identifying a single seek preview media frame: in a second file that is different from the first file including the media program being received by the user device, wherein a plurality of seek preview media frames in the second file are of a lower resolution than the media program and fewer in number from the plurality of media program frames from the first file. 5 We decide the rejection of claims 1—4, 17—22, and 30-37, which are argued together as a group, on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal 2016-001005 Application 12/472,953 Final Act. 4 (citing Boreczky Fig. 3, 22—34). In that regard, Boreczky teaches or at least suggests a “second file” created from the look-ahead and look-behind data of the video stream that is summarized, indexed, and used to display the look-ahead and look-behind points. See, e.g., Boreczky || 22, 26, 27. In the Appeal Brief, Appellants also argue Boreczky does not teach “wherein the identified seek preview media frame is not currently being displayed by the video playback component,” as recited in claim 1, because “Boreczky discloses displaying the snap images as the playback point changes.” App. Br. 11—12. We are not persuaded by Appellants’argument. Instead, we agree with the Examiner that “Wang clearly teaches this limitation since Wang discloses that while watching a video, a user can interact with a timeline in order to select a play position on the video [and] after this a frame will appear showing the frame that was selected on the timeline (paragraph 22—24)” Ans. 3; Final Act. 4. In the Reply Brief, Appellants’ argue the Examiner’s reliance on Wang is different from page 2 of the Final Action, which stated this limitation was disclosed by Boreczky. Reply Br. 2. Appellants also argue the Examiner cannot rely on Wang as teaching this limitation because the Examiner states on page 4 of the Final Action that Wang is silent about identifying a single frame. Appellants further argue: there is no motivation to combine a reference whose purpose is to display images before receiving the seek request [as in Boreczky] with a reference where the identified seek preview media frame is not currently being displayed [as in Wang], This goes against the purpose of the invention for Boreczky. Id. at 2. 6 Appeal 2016-001005 Application 12/472,953 We are not persuaded by Appellants’ arguments regarding the Examiner’s reliance on Wang. First, as indicated supra, and contrary to Appellants’ argument, the Examiner relies on Wang as teaching “wherein the identified seek preview media frame is not currently being displayed by the video playback component” in both the Final Action (see page 4) and the Answer (see page 3). Second, the reference in paragraph 2 of the Final Action to Boreczky (paragraphs 22—34) as teaching this limitation is in the Response to Arguments section, rather than the Claim Rejections section. Third, although the Examiner’s findings could have been stated more clearly, considering the rejection of claim 1 in its entirety, the Examiner relied on (a) paragraphs 22—24 of Wang as teaching or suggesting “wherein the seek preview media program frame is not currently being displayed by the video playback component (paragraph^] 22—24)” and (b) paragraphs 22—34 of Boreczky as teaching or suggesting receiving the seek preview frame “in a second file . . . wherein a plurality of seek preview media frames in the second file are . . . fewer in number from the plurality of media program frames from the first file (figures 3, paragraph[s] 22—34).” Final Act. 4. Accordingly, when considered in context, the Examiner’s statement that “Wang is silent about identifying a single frame” {id.) is clearly mistaken and, therefore, we appropriately disregard it. We are also not persuaded by Appellants’ arguments regarding the alleged lack of motivation to combine Wang and Boreczky. The Examiner finds “[t]he motivation would have been to save processing power at the receiver for the benefit of better managing] the resources and having a fast response to the user request.” Final Act. 4. Thus, we find the Examiner provides sufficient articulated reasoning having a rational underpinning, 7 Appeal 2016-001005 Application 12/472,953 such that a person of ordinary skill in the art would have been motivated to combine the teachings of Wang and Boreczky, so as to render obvious the claimed subject matter. See KSR Int’l Co. v. Teleflex Co., 550 U.S. 398, 418 (2007). We also are not persuaded by Appellants’ argument that the combination of Wang and Boreczky “goes against the purpose of the invention for Boreczky” (Reply Br. 2.) because this argument presumes a bodily incorporation of the features of Boreczky into the structure of Wang, which is not the proper standard under 35 U.S.C. § 103(a). “[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. Thus, we are not persuaded the Examiner erred in (1) finding the combined teachings of Wang and Boreczky teach or suggest the disputed limitations of claim 1, and (2) concluding that the combined teachings of Wang and Boreczky render the subject matter of claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection of claims 1—4, 17—22, and 30-37. Rejection of Claim 37 under § 103(a) Appellants contend that neither Wang nor Boreczky discloses “wherein the server stores the first file and the second file,” as recited in claim 37. App. Br. 12; Reply Br. 3. In particular, Appellants argue Wang 8 Appeal 2016-001005 Application 12/472,953 does not disclose or suggest a first and second file, or a server. Id. According to Appellants, “Wang reads from the same media source.” Reply Br. 3. Appellants also argue “Boreczky does not disclose or suggest a server stores a second file that has a fewer number of frames than the first file.” App. Br. 12. Appellants further argue Boreczky does not teach the single seek frame is received from the server because the snap images are displayed before the seek request and the identified frame “is not identified and received from the server.” Reply Br. 3. The Examiner finds that both Boreczky and Wang teach the limitation of claim 37: Appellants argue the cited references do not disclose or suggest “wherein the server stores the first file and the second file”. This is clearly taught by Boreczky. Boreczky discloses that the files are store[d] in the client device but this can be done across any device in the system (paragraph 38 and 42), meeting the claim language. Wang also discloses that the files are store[d] in a computer (server) (paragraph 21, 25—26 and 32), also meeting the claim language. Ans. 3. We agree with the Examiner that Boreczky teaches or suggests the server stores the second file because Boreczky teaches the files can be stored across any device in the system, including the client device, as taught in paragraph 38 of Boreczky, and “server device 801,” as taught in paragraph 42 of Boreczky. We are not persuaded by Appellants’ argument that Boreczky does not teach a server stores a second file that has a fewer number of frames than a first file because, as discussed supra regarding claim 1, we agree with the Examiner that paragraphs 10 and 11 of Boreczky teach or suggest “a second file [stored in server 801] wherein a plurality of 9 Appeal 2016-001005 Application 12/472,953 seek preview media frames . . . [are] fewer in number from the plurality of media program frames from the first file.” We also are not persuaded by Appellants’ argument that Boreczky does not teach the single seek frame is received from the server because the snap images are displayed before the seek request because, regardless of timing, the snap images are stored in and received from the second file in the server of Boreczky. See, e.g., Boreczky 142. Thus, on this record, the preponderance of the evidence supports the Examiner’s findings that Boreczky teaches or suggests the disputed limitation of claim 37. Accordingly, we sustain the Examiner’s rejection of claim 37. DECISION We affirm the Examiner’s decision rejecting claims 1—37 under 35 U.S.C. § 103(a). 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation