Ex Parte Shetty et alDownload PDFPatent Trial and Appeal BoardJan 25, 201713408431 (P.T.A.B. Jan. 25, 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. 5159-00200 3682 EXAMINER JEBARI, MOHAMMED ART UNIT PAPER NUMBER 2482 MAIL DATE DELIVERY MODE 13/408,431 02/29/2012 35617 7590 01/25/2017 DAFFER MCDANIEL, LLP P.O. BOX 164345 AUSTIN, TX 78716 Santosh Shetty 01/25/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SANTOSH SHETTY and SHIH-CHUNG CHAO Appeal 2016-004997 Application 13/408,431 Technology Center 2400 Before THU A. DANG, ERIC S. FRAHM, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-004997 Application 13/408,431 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—20. We reverse. The Examiner has rejected: (i) claims 1, 13, 15, and 19 under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention (Final Act. 2—3; see also Ans. 31); (ii) claims 1, 4—6, 8—13, 15—17, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ishii (US 2004/0101051 Al; published May 27, 2004) and Sako (US 6,256,420 Bl; issued July 3, 2001) (Final Act. 3—9; Ans. 4—9 and 10-16); and (iii) claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ishii, Sako, and Kawashima (US 2009/0168878 Al; published July 2, 2009) (Final Act. 9-10; Ans. 9-10 and 16—17). 1 Although the Examiner stated in the Advisory Action mailed May 18, 2015 (p. 2) that “[t]he rejection will be withdrawn in the next office action” (emphasis added), the indefmiteness rejection has not in fact been withdrawn. This is because page 3 of the Answer clearly states the every ground of rejection (including the indefmiteness rejection of claims 1,13, 15, and 19 made at pages 2—3 of the Final Rejection) is maintained, except for any grounds specifically listed in the Answer under the subheading “WITHDRAWN REJECTIONS” - of which there is none. See generally Ans. 3—17. Therefore, the indefmiteness rejection stands and is before use on appeal. 2 Appeal 2016-004997 Application 13/408,431 We have reviewed Appellants’ arguments in the Briefs (App. Br. 4—28 and Reply Br. 1—4), the Examiner’s rejection (Final Act. 2—10; Ans. 3—10), and the Examiner’s response (Ans. 10—17) to Appellants’ arguments. We concur with Appellants that the Examiner erred in determining claims 1, 13, 15, and 19 to be indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. We agree with Appellants’ arguments (App. Br. 4 referring to the arguments presented at pages 2—5 of the response filed April 30, 2015) that the term “substantially” has sufficient meaning such that one of ordinary skill in the art would understand what this term means in light of the Specification.2 The use of this term does not render the rejected claims indefinite, and we do not sustain the Examiner’s indefmiteness rejection of claims 1, 13, 15, and 19. We also concur with Appellants’ arguments (App. Br. 8—19; Reply Br. 2—4) that the Examiner erred in finding that Sako teaches or suggests (i) “detecting a still picture condition” as recited independent claim 1, and as 2 The Court of Appeals for the Federal Circuit has repeatedly reaffirmed that the term “substantial” implies “approximate.” Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1329 (Fed. Cir. 2006). See also Playtext Products, Inc. v. Procter & Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005) (“The term ‘substantial’ is a meaningful modifier implying ‘approximate,’ rather than ‘perfect.’”), citing Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1368 (Fed. Cir. 2004). In Wilson Sporting Goods, the Court determined that a claimed “insert having a substantially circular crosssection” did not need to be perfectly circular [emphasis added]. Wilson Sporting Goods, 442 F.3d at 1328-29. Similarly, in Playtext Products, the Court determined that the claimed “substantially flattened surfaces” did not require a perfectly flat surface. Playtext Products, 400 F.3d at 907. 3 Appeal 2016-004997 Application 13/408,431 similarly recited in dependent claims 4—12; and (ii) “a still-picture detection circuit” as recited in remaining independent claims 13 and 17, as well as respective dependent claims 15, 16, 19, and 20. Although Sako discloses storing transmission data SI and S2 in digital memories 7 and 8 (see col. 5, 11. 9-33; Fig. 1), we agree with Appellants that the mere disclosure of storing transmission data does not teach or suggest detecting a still picture condition based on differences in peak buffer occupancy of different frames of video data, as recited in independent claims 1,13, and 17. Accordingly, we do not sustain the Examiner’s obviousness rejection of independent claims 1, 13, and 17, as well as dependent claims 4—6, 8—12, 15, 16, 19, and 20 depending respectively therefrom. For similar reasons, we also do not sustain the Examiner’s obviousness rejection of claim 7, which relies on the same base combination of Ishii and Sako discussed supra with respect claim 1, and depends ultimately from claim 1. CONCLUSION Appellants have persuaded us of error in the Examiner’s decision to reject claims 1, 4—13, 15—17, 19, and 20. DECISION The decision of the Examiner to reject claims 1, 4—13, 15—17, 19, and 20 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation