Ex Parte Wang et al

Patent Trial and Appeal Board

Oct 16, 2017

12428625 (P.T.A.B. Oct. 16, 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.
12/428,625 04/23/2009 Yeqing Wang BCS04666 9311
43471 7590 10/18/2017
ARRTS2 F.ntp.mrisp.s T ! C
EXAMINER
Legal Dept - Docketing
101 Tournament Drive
HASAN, SYED Y
HORSHAM, PA 19044 ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
10/18/2017 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):
arris. docketing @ arris .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEQING WANG, CHRISTOPHER S. DEL SORDO,
and ERNEST G. SCHMITT
Appeal 2017-003629
Application 12/428,6251
Technology Center 2400
Before LARRY J. HUME, CARL L. SILVERMAN, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is ARRIS Enterprises.
App. Br. 3.
Appeal 2017-003629
Application 12/428,625
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to recording devices such as a digital video recorder and more
specifically to a method and apparatus in which content that is spliced from
two or more segments is to be rendered as a single program." Spec. 11
("Field of the Invention").
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to dispositive limitation):
1. A method of recording a program, comprising:
storing, in response to a user request, at least one content
file that includes first and second program segments that are
spliced to form a single program, wherein an identification of a
splice point is included in an elementary stream associated with
at least one of the first and second program segments, the splice
point denoting a transition between the first and second
program segments;
in a digital video recorder, creating and storing at least
one index file that includes program specific information
associated with the first and second program segments, wherein
the program specific information includes a program's service
number that is used to access a program map table, wherein the
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 2, 2016); Examiner's Answer ("Ans.," mailed Sept. 9, 2016); Final
Office Action ("Final Act.," mailed Aug. 21, 2015); and the original
Specification ("Spec.," filed Apr. 23, 2009). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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Appeal 2017-003629
Application 12/428,625
program map table includes packet identifiers, the index file
further including the identification of the splice point; and
in the digital video recorder, creating and storing a splice
index record that includes timing information specifying a time
at which the splice point occurs, wherein the splice index record
further includes:
one or more pre-service acquisition packet
identifiers that identify packets of a first program
transport stream for receiving the first program
segment, and
a corresponding one or more post-service
acquisition packet identifiers that identify packets
of a second program transport stream for receiving
the second program segment;
wherein, during a playback of the content file in a trick
play mode, the splice index record is available to the digital
video recorder, and the splice index record enables the
transition between the first and second program segments, such
that the digital video recorder does not need to receive the
identification of the splice point from one of the first and second
program segments during the playback of the content file in the
trick play mode.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Fox et al. ("Fox") US 6,181,383 B1
Mantchala et al. ("Mantchala") US 6,907,081 B2
Fogan et al. ("Fogan") US 2008/0092168 Al
Park et al. ("Park") US 2008/0285556 Al
Jan. 30, 2001
June 14, 2005
Apr. 17, 2008
Nov. 20, 2008
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Appeal 2017-003629
Application 12/428,625
Rejections on Appeal
Rl. Claims 1—3, 6—9, 12—15, and 18—20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Logan, Park,
and Mantchala. Ans. 3; see also Final Act. 8.
R2 Claims 4, 5, 10, 11, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Logan, Park,
Mantchala, and Fox. Ans. 13; see also Final Act. 18.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 9—13), we decide the
appeal of obviousness Rejection Rl of claims 1—3, 6—9, 12—15, and 18—20
on the basis of representative claim l.3
Remaining claims 4, 5, 10, 11, 16 and 17 in Rejections R2 and R3, not
argued separately, stand or fall with the respective independent claim from
which they depend.4
ISSUE
Appellants argue (App. Br. 9—13) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Logan,
3 Independent claims 9 and 14 recite, in commensurate form, the dispositive
limitation of claim 1 identified above.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Appeal 2017-003629
Application 12/428,625
Park, and Mantchala is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method of recording a program" wherein, inter alia,
during a playback of the content file in a trick play mode,
the splice index record is available to the digital video recorder,
and the splice index record enables the transition between the
first and second program segments, such that the digital video
recorder does not need to receive the identification of the splice
point from one of the first and second program segments during
the playback of the content file in the trick play mode.
as recited in claim 1 (emphasis added)?
ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to claims 1—20 for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellants contend the cited prior art combination does not teach or
suggest the dispositive limitation of claim 1. App. Br. 10-11. In particular,
Appellants argue:
[T]he recorder of Logan "does not need to receive the
identification of the splice points from the segments in the
[tjrick play mode"; however, Appellant respectfully points out
that this is because Logan's recorder, during the trick play mode
discussed by the Examiner, does not include any enablement
during trick mode of any transition (e.g., using a splice point)
between any first and second program segments. Logan merely
teaches the use of a circular buffer for trick play of a segment.
App. Br. 12.
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Application 12/428,625
The Examiner points to Logan paragraphs 54, 57, 85, and 149 as
teaching or suggesting the contested "wherein" clause of claim 1 discussed
above. Ans. 4. However, we have reviewed the entirety of the disclosure of
Logan, and are persuaded by Appellants' argument that the cited portion of
Logan do not teach or suggest enabling, during a trick mode, a transition
between first and second program segments.5
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the disputed limitation of claim 1, such
that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we do not sustain the Examiner's obviousness
Rejection R1 of independent claim 1, and grouped claims 2, 3, 6—9, 12—15,
and 18—20 which fall therewith. See Claim Grouping, supra.
Rejection R2 of Claims 4, 5, 10, 11, 16, and 17
In light of our reversal of the rejections of independent claims 1, 9,
and 14, supra, we also reverse obviousness Rejection R2 under § 103(a) of
5 While we agree with the Examiner's general finding (Ans. 22) that Logan's
disclosure of forward and reverse playback rates teaches or at least suggests
the claimed "trick play mode," we find no support for the Examiner's finding
that Logan or any other cited reference teaches or suggests "the splice index
record is available to the digital video recorder, and the splice index record
enables the transition between the first and second program segments, such
that the digital video recorder does not need to receive the identification of
the splice point from one of the first and second program segments during
the playback of the content file in the trick play mode," as recited in claim 1
(emphasis added). The Examiner does not specifically address this
particular portion of the limitation, and we find no discussion in Logan or
any of the other cited prior art references of inserting alternative program
content during a trick play mode of operation using a splice index.
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Application 12/428,625
claims 4, 5, 10, 11, 16, and 17, which variously and ultimately depend from
claims 1,9, and 14. On this record, the Examiner has not shown how the
additionally cited Fox reference overcome the aforementioned deficiencies
with the combination of Logan, Park, and Mantchala, as discussed above
regarding claim 1.
CONCLUSION
The Examiner erred with respect to obviousness Rejections R1 and R2
of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1—20.
REVERSED
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