Samsung Electronics Co., Ltd.

Patent Trials and Appeals BoardAug 27, 2021

2019006664 (P.T.A.B. Aug. 27, 2021)

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. 14/592,640 01/08/2015 Imed Bouazizi 2014.01.012.SR0 7343 106809 7590 08/27/2021 Docket Clerk - SAMS P.O. Drawer 800889 Dallas, TX 75380 EXAMINER DOAN, HIEN VAN ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 08/27/2021 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): munckwilson@gmail.com patent.srad@samsung.com patents@munckwilson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IMED BOUAZIZI and YOUNGKWON LIM ___________ Appeal 2019-006664 Application 14/592,640 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and JAMES B. ARPIN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 has filed a Request for Rehearing under 37 C.F.R. § 41.52 on June 1, 2021 (“Request”), from our Decision on Appeal mailed April 1, 2021 (“Decision”), wherein we affirmed the obviousness rejection of claims 1, 4–11 and 14–20. See Decision 7. Claims 2, 3, 12 and 13 are cancelled. See Claim Appendix. Claims 21–24 were included with the original rejected claims on form PTOL-2297 (“Notice of Panel Decision from Pre-Appeal Brief Review”) mailed February 15, 2019, however, claims 21–24 are not 1 Appellant refers to “applicant” as defined in 37 C.F.R. 1.42(a). (“The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.”). Appellant identifies Samsung Electronics Co., Ltd. as the real party in interest. Appeal Brief 1. Appeal 2019-006664 Application 14/592,640 2 rejected in the Final Action. See Final Action 25, 35; Answer 5–7; see also Appeal Brief 29. Accordingly, claims 21–24 are not before us in this Request for Rehearing. See 37 C.F.R. § 41.31(a)(1) (“Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.”). We have reviewed Appellant’s Request, and Appellant’s arguments that we misapprehended an issue are persuasive. Therefore, we reverse the obviousness rejection of claims 1, 4–11 and 14–20 for the reasons stated below. Appellant contends, “the Board misapprehended or overlooked the following points: (I) that because the rejection fails to establish prima facie obviousness, the rejection must be reversed—not sustained, and (II) that the Decision fails to explain the factual basis for the rejection.” Request 2. In the Decision, we determine: The Examiner relied upon the combination of Gilli[e]s, Nagaraj, Zhu and Thang to reject claim 1, as well as, independent claim 11, as obvious. See Final Rejection 25. However, Appellant proffers no arguments addressing the merits of the Zhu reference in regard to the obviousness rejection. See Appeal Brief 26–29; Reply Brief 2–5. Decision 6–7. Appellant contends, “[t]he final rejection does not cite any other reference for the claim limitation ‘identify[ing] a segment index box in the un-segmented media data.’ Specifically, the final rejection does not cite any teaching in Zhu as disclosing that limitation.” Request 6; see Appeal Brief A-1 (Claims Appendix) (claim 1). The Examiner finds, “Zhu teaches the Appeal 2019-006664 Application 14/592,640 3 segment index box indicating a segment boundary [0022] ‘generate the segmentation index information based on segment boundary information.’ [0024] ‘the segmentation boundary markers are based on the segmentation index data (which is based on random access point in the video stream)’).” Final Action 27. Nevertheless, the Examiner relies upon Nagaraj, not Zhu, to teach claim 1’s disputed limitation, “identify a segment index box in the un- segmented media data.” Final Action 26 (citing Nagaraj ¶¶ 24, 141, Figure 4). Appellant argued that, “[i]n Nagaraj, the data is segmented prior to streaming. Therefore, Nagaraj cannot disclose or suggest identify a segment index box in the un-segmented media data, where the un-segmented data was comprised in a data stream received over a network.” Appeal Brief 27– 28. Appellant’s arguments are persuasive of Examiner error for several reasons. See Decision 3–6. It is Appellant’s position that: Appellant is not required to address unstated, possible factual bases for a rejection—such as whether Zhu discloses the limitation not taught by the remaining three cited references. Because no factually supported prima facie case of obviousness of the entirety of the claim exists, reversal of the obviousness rejection is required. Request 8. Upon further review of the obviousness rejection of claim 1, we agree with Appellant that the Examiner errs in relying upon Nagaraj to teach “identify[ing] a segment index box in the un-segmented media data,” and that the Examiner does not find that Zhu teaches the disputed limitation. See Final Action 26–27; Decision 3–7. Accordingly, we reverse the Examiner’s Appeal 2019-006664 Application 14/592,640 4 obviousness rejection of claim 1, as well as, of independent claim 11 commensurate in scope, and of dependent claims 4–10 and 14–20. DECISION Accordingly, for the reasons stated above, Appellant’s Request for Rehearing is granted. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 4–11, 14–20 103 Gillies, Nagaraj, Zhu, Thang 1, 4–11, 14–20 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–11, 14–20 103 Gillies, Nagaraj, Zhu, Thang 1, 4–11, 14–20 REQUEST FOR REHEARING GRANTED