Ex Parte Lin et al

Patent Trial and Appeal Board

Jan 11, 2017

12472953 (P.T.A.B. Jan. 11, 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.
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.”).
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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”).
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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.
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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).
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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.
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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,
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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
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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
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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
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