Ex Parte Shetty et al

Patent Trial and Appeal Board

Jan 25, 2017

13408431 (P.T.A.B. Jan. 25, 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
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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(p. 2) that “[t]he rejection will be withdrawn in the next office action”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withdrawn.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.
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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
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