Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardOct 16, 201712428625 (P.T.A.B. Oct. 16, 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. 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. 2 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 3 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). 4 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. 5 Appeal 2017-003629 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. 6 Appeal 2017-003629 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 7 Copy with citationCopy as parenthetical citation