Ex Parte O

Patent Trial and Appeal Board

Jan 30, 2017

12294722 (P.T.A.B. Jan. 30, 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.
12/294,722 06/29/2010 Christopher J. O'BRIEN 82275602 2452
22879
HP Tnr
7590 02/01/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
BELOUSOV, ANDREY
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. O’BRIEN
Appeal 2016-000276
Application 12/294,7221
Technology Center 2100
Before ROBERT E. NAPPI, JOYCE CRAIG, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21—40, which constitute all claims pending in
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Hewlett-Packard Development Company, LP and
Hewlett-Packard Company as the real parties in interest. App. Br. 3.
Appeal 2016-000276
Application 12/294,722
STATEMENT OF THE CASE
Appellant’s invention relates to editing of multimedia files, and
particularly, time-based editing of “digitally encoded video with
synchronized audio” (or, “DEVSA”). Abstract; Spec. 3^4. Claim 21 is
representative of the invention and the subject matter of the appeal, and
reads as follows (with the disputed limitations in italics):
21. A method of processing digitally encoded video with
synchronized audio (DEVSA), comprising:
receiving native-format DEVSA that defines a time-
sequence rendering of the video and audio during playback;
encoding the received DEVSA into at least one standard-
format DEVSA;
storing the encoded DEVSA in a DEVSA file;
consequent to the receiving, encoding, and storing,
creating from the DEVSA metadata usable to render the encoded
DEVSA, the metadata stored in a metadata file separate from the
at least one DEVSA file; and
modifying the metadata file to define a different rendering
of the encoded DEVSA during playback without modifying the
DEVSA file, the different rendering specifying for playback at
least one time segment of the time-sequence rendering.
App. Br. 16 (Claims App.).
Claims 21—40 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Butt et al. (US 2006/0129909 Al; publ. June 15,
2006) (“Butt”). Final Act. 2-7.
ANALYSIS
We have reviewed the Examiner’s rejection in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner’s rejection.
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Appeal 2016-000276
Application 12/294,722
Claim 21
Appellant argues the Examiner erred in finding Butt teaches the
following three limitations of claim 21: “creating from the DEVS A metadata
usable to render the encoded DEVS A;” the metadata stored in a metadata
file “separate from the at least one DEVS A file;” and modifying the
metadata file “without modifying the DEVS A file.” App. Br. 7—11.
Appellant also argues the Examiner erred in finding a rationale for one of
ordinary skill to modify Butt in order to find the teachings cited. App. Br.
11—12. We are persuaded by Appellant’s argument that the record does not
support the finding that Butt teaches “creating from the DEVS A metadata
usable to render the encoded DEVSA.” We do not reach the remaining
arguments.
The Examiner finds Butt teaches “metadata that points to locations
and describes the DEVSA, [and] feeds it to a display control which renders
the described portion / information from the metadata.” Ans. 5. The
Examiner, however, does not identify where in Butt this teaching is found,
and it is not apparent on the record before us. The Examiner cites Butt
paragraph 503 as teaching metadata that points to “a location within video”
or “how to best locate it and search it,” Ans. 5 (citing Butt | 503), and
further cites paragraph 501 as teaching metadata “located elsewhere within
other files,” Ans. 5 (citing Butt 1 501). Neither of the foregoing teachings,
however, addresses the disputed claim limitation’s requirements that the
metadata be “creat[ed] from the DEVSA” and is “usable to render the
encoded DEVSA.”
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Appeal 2016-000276
Application 12/294,722
Accordingly, on the record before us, we cannot sustain the
Examiner’s rejection of independent claim 21 as unpatentable over Butt.
Remaining Claims
Claims 22—30 depend from claim 21 and, therefore, we do not sustain
the rejection of those claims for the reasons set forth above.
Appellant argues the Examiner erred in rejecting claims 31—40 for the
same reasons as claim 21. App. Br. 13—14. Claims 31—40 were rejected on
the same basis as claim 21, Final Act. 2-4, and the Examiner does not
respond separately regarding these claims in the Answer. Ans. 2—8. On the
record before us, Appellant’s argument persuades us of error.
Claim 31, like claim 21, recites modifying metadata to produce a
different rendering of the DEVS A “without modifying the encoded DEVS A
file.” App. Br. 18 (Claims App.). As Appellant argues, the passages of Butt
cited by the Examiner suggest the opposite, i.e., that the DEVS A file is
modified. See, e.g., Butt 1116 (“multimedia files . . . continuously modified
and updated”), 1117 (“add and remove different ‘meta data’ fields stored
within the file”). In the Answer, the Examiner cites Butt’s teaching that
“[additional information can be obtained if the device reviewing the file is
capable of accessing via a network other devices containing ‘meta data’
referenced from within the file.” Ans. 7 (citing Butt 1116). The Examiner
does not explain, however, and we cannot discern from the record, how one
of ordinary skill would understand the foregoing statement (or the other
paragraphs of Butt cited in the Final Office Action) as teaching or
suggesting “without modifying the encoded DEVSA file.” See Reply Br. 3;
see also Final Act. 3^4 (citing Butt H 123, 189, 209, 503).
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Appeal 2016-000276
Application 12/294,722
Accordingly, we do not sustain the rejection of independent claim 31,
and dependent claims 32 40, as unpatentable over Butt.
DECISION
We REVERSE the Examiner’s rejection of claims 21—40.
REVERSED
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