Ex Parte Hsiao

Patent Trial and Appeal Board

Nov 4, 2016

13687375 (P.T.A.B. Nov. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/687,375 11128/2012 Eric Hsiao
36738 7590 11/08/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SA120143-US-NP 6378
EXAMINER
LEE, MICHAEL
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
11/08/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC HSIAO
Appeal2015-003691
Application 13/687,375
Technology Center 2400
Before NABEEL U. KHAN, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1and3-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Sony Corp. App. Br. 2.
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Application 13/687,375
TI'-JVENTION
Appellant's invention relates generally to using extra space on ultra
high definition (UHD) displays when the UHD displays present high
definition (HD) video. Spec. 1.
Exemplary independent claim 1 is reproduced below.
1. Assembly comprising;
ultra high definition (CHD) display configured for
presenting video in 2160 pixel lines or 4320 pixel lines;
processor configured for controlling the UHD display; and
computer readable storage medium bearing instructions
executable by the processor to;
present high definition (HD) video on the UHD display
using at least 1440 of the pixel lines and no more than 1920 of
the pixel lines, wherein portions of the display do not present HD
video when HD video is being presented elsewhere on the
display; and
present ancillary information in the portions of the display
that do not present HD video, the ancillary information being
receivable from a source of TV signals or from the Internet in
real time with the HD video.
App. Br. 14 (Claims App'x).
REFERENCES and REJECTIONS
1. Claims 1 and 3-7 stand rejected under 35 U.S.C. § l 12(a) as
failing to comply with the written description requirement. Ans. 5. 2
2. Claims 1 and 3-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Urabe (US 2008/0143877 Al, June 19, 2008) and Onoda
(US 2011/0187925 Al, Aug. 4, 2011). Final Act. 2-3.
2 Throughout this Decision, "Answer" and "Ans." refers to the 2nd or
Subsequent Examiner's Answer mailed February 17, 2015.
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ANALYSIS
I. Rejection of Claims 1 and 3-7 for Failing the Written Description
Requirement
The Examiner finds the Specification fails to describe subject matter
supporting the limitation "no more than 1920 of the pixel lines" in such a
way as to reasonably convey to one of skill in the art that the inventor had
possession of this subject matter as recited in claim 1. Ans. 5.
Appellant argues the Specification discloses that HD could be
presented using at least 1440 pixel lines, and that HD could be presented
using at least 1920 pixel lines. Reply Br. 6. Because "at least 1920"
encompasses exactly 1920, Appellant argues the Specification informs one
of skill in the art that the Appellant possessed, at the time of filing, the
concept that HD video could be presented in a range of 1440-1920 pixel
lines, manifestly supporting a claim reciting "no more than" 1920 pixel lines
for HD. See id at 6-7.
A written "description must 'clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed."' Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (quoting Vas-Cath v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991) ). "In other words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date." Id. (citing Vas-Cath, 935 F.2d at 1563). "Although [the applicant]
does not have to describe exactly the subject matter claimed ... the
description must clearly allow persons of ordinary skill in the art to
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recognize that [he or she] invented what is claimed." Vas-Cath, 935 F.2d at
1563 (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)).
We are persuaded by Appellant's arguments. Claim 1 recites
"instructions ... to: present high definition (HD) video on the UHD display
using at least 1440 of the pixel lines and no more than 1920 of the pixel
lines." App. Br. 14 (Claims App'x). Thus, claim 1 requires that HD video
be presented in the range of 1440 to 1920 pixel lines. The Specification
describes that "[t]he assembly also includes a computer readable storage
medium bearing instructions executable by the processor to: present high
definition (HD) video on the UHD display using at least 1440 of the pixel
lines .... " Spec. 1-2. The Specification further explains "[t]he processor
when executing the instructions presents the HD video may use at least 1920
lines of the UHD display." Spec. 2. We agree with Appellant that these
portions of the Specification describe that HD video could be presented in
the claimed range between 1440-1920 pixel lines and that one of skill in the
art would have understood the inventor to have had possession of the
claimed invention as of the filing date of the application.
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 3-7 for failing to satisfy the written description requirement.
II. Rejection of Claims 1 and 3-20 as Obvious
A. Claim 1
The Examiner finds Urabe teaches or suggests "present[ing] high
definition (HD) video on the UHD display using at least 1440 of the pixel
lines and no more than 1920 of the pixel lines, wherein portions of the
display do not present HD video when HD video is being presented
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elsewhere on the display," as recited in claim 1. Specifically, the Examiner
finds Urabe discloses presenting video on a UHD display "from SD
(standard definition) to higher definition (see Figures 6 and 7) and to present
an ancillary information on a different portion of the UHD display (113 or
operation guide in Figure 12)." Final Act. 2.
Appellant argues the Examiner errs because:
This allegation either ignores or misunderstands what these
figures are showing. As shown in figure 6 and explained at
paragraph 56, when Standard Definition (SD) video at less than
4 mbps is received, Urabe will not magnify it by more than two
times; if the SD is received at 8mbps, Urabe will magnify by up
to three times. HD video, however, is presented "FULL
SCREEN" as clearly indicated in figure 6. Figure 7 shows the
same concept as figure 6, except additionally accounting for
format in determining maximum magnification.
App. Br. 6
We are unpersuaded of Examiner error. The Examiner's findings
show Urabe teaches that the video image size can be arbitrarily adjusted
including in the range of 1440 to 1920 pixel lines. Ans. 6 (citing Urabe
Figs. 6-7, i-f 75). Urabe also shows that at certain resolutions the video
signal will be presented only on a portion of the display. See Urabe Figs.
3A, 3B. Although Figures 6 and 7 of Urabe show that when the input
resolution is at 720p or higher the video signal will be presented full screen
on the display, we agree with the Examiner the teaching that a video signal
is displayed only on a portion of a display when that signal is at a lower
resolution (such as an SD video signal) than the native resolution of the
display (such as an HD or UHD display) teaches or suggests the disputed
limitation. Additionally, Appellant has not presented evidence sufficient to
show that presenting HD video on a portion of a UHD screen was "uniquely
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challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over" presenting SD video on a portion of an HD or UHD
screen, as Urabe teaches. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418-19 (2007)).
Accordingly, we sustain the Examiner's rejection of claim 1. We also
sustain the Examiner's rejection of claim 7, which contains substantially the
same limitations and for which Appellant makes substantially the same
arguments for patentability. See App. Br. 10-11.
B. Claim 3
Claim 3 recites "the ancillary information is received from the source
of TV signals along with the HD video in a common channel with the HD
video." App. Br. 14 (Claims App'x). The Examiner finds the HD signals in
Urabe "inherently include subtitles and closed captions" which would be
received along with the HD video in a common channel. Final Act. 3.
Appellant argues the Examiner has not demonstrated that subtitles
would necessarily be included with the HD video signals and, thus, the
Examiner's finding that Urabe inherently teaches this limitation is
erroneous. App. Br. 7. Appellant further argues that even if it is assumed
that subtitles and closed captions are included in the HD video, Urabe does
not teach that these subtitles and closed captions would be presented in a
region of the display separate from where the HD video is displayed. Id.
We agree with Appellant and are persuaded of Examiner error.
"[T]he examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
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Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990). We agree with
Appellant the Examiner has not demonstrated that even if subtitles were
necessarily included in the HD video signals, the subtitles would be
presented on a separate region of the display rather than being overlaid onto
the video as is typically the case.
Accordingly, we do not sustain the Examiner's rejection of claim 3.
We also do not sustain the Examiner's rejection of claim 10, which contains
the same limitation and was rejected on the substantially the same basis.
C. Claims 4 and 11
Appellant does not present any arguments for separate patentability
for claims 4 and 11. Therefore, we summarily sustain the Examiner's
rejection of these claims.
D. Claims 5 and 12
Claim 5 recites "first and second user commands ... the first user
command being to present the HD video on the entire UHD display ... the
second user command being to present the HD video on a portion of the
UHD display and to present on the UHD display the ancillary information
along with the HD video." App. Br. 15 (Claims App'x). The Examiner
finds Urabe teaches a GUI that allows the user to choose between
automatically adjusting the video signal, manually adjusting the video
signal, or setting the video signal to display on the full screen. Final Act. 3
(citing Urabe i-fi-188-89, Fig. 13).
Appellant argues the Examiner errs by finding "[p]aragraphs 88 and
89 address selecting between magnifying the video to fill the entire screen,
or automatically adjusting the size of the area in which the video is presented
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to something less than full screen. There is no discussion in the relied-upon
subject matter concerning ancillary information." App. Br. 8.
We are not persuaded by Appellant's argument because it attacks
Urabe individually and does not address the Examiner's findings regarding
Onoda. "[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner
relies on Urabe' s user interface depicted in Figure 13 as teaching a first user
command to present the HD video on the entire UHD display and a second
user command to present the HD video on a portion of the UHD display.
However, the Examiner relies on Onoda as teaching displaying ancillary
information along with a video signal. Ans. 7.
Accordingly, we sustain the Examiner's rejection of claim 5. We also
sustain the Examiner's rejection of claim 12 which was argued together with
claim 5. See App. Br. 7-8.
E. Claim 6
Claim 6 recites "the ancillary information is configured for being
ignored by non-UHD assemblies." App. Br. 15 (Claims App'x). The
Examiner finds "[i]n view of broadly claimed invention, there are at least
one non-UHD assemblies ignores the ancillary information. For instance,
elements 103 and 104 do not associate with the ancillary information." Final
Act. 7. The Examiner's findings are based on interpreting "non-UHD
assemblies" as "a broad claim term which can be met by anything that is not
part of the UHD assembly." Ans. 9. Appellant argues "[t]he term
'assembly' in Claims 1 -6 refers to the overall structure being claimed, which
includes a UHD display. In contrast, the elements 103 and 104 of Urabe are,
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respectively, a decoder unit and a scalar unit that are only portions of a
display assembly." App. Br. 9.
We agree with Appellant that the Examiner's interpretation of the
term "assembly" as including only components of a display is inconsistent
with the Specification, which uses the term "assembly" to refer to the entire
display device. See Spec. 1 ("An assembly includes an ultra high definition
(UHD) display configured for presenting video in 2160 pixel lines or 4320
pixel lines and a processor configured for controlling the UHD display.");
see also Spec. 2 ("The ancillary information can be configured for being
ignored by non-UHD assemblies."). Thus, we disagree with the Examiner
that elements 103 (decoder unit) and 104 (scaler unit) depicted in Figure 1 of
Urabe teach "non-UHD assemblies."
Accordingly, we do not sustain the Examiner's rejection of claim 6.
We also do not sustain the Examiner's rejection of claim 13, which contains
substantially the same limitation and was rejected on the same basis.
F. Claims 8 and 9
Claim 8 depends from claim 7 and recites "the UHD display presents
video in 2160 pixel lines or 4320 pixel lines and the HD video uses at least
1440 of the pixel lines on the UHD display." App. Br. 16 (Claims App'x).
Claim 9 recites "the HD video uses at least 1920 lines of the UHD display."
Id. Appellant argues "these features appear nowhere in the references or in
the rejection." App. Br. 11. These limitations, however, are similar to those
included in claim 1. The Examiner finds Urabe teaches UHD displays and
displaying HD video using at least 1920 lines. Final Act. 2 (citing Urabe
i-f 4, Figs. 6-7). We agree with the Examiner that Urabe teaches UHD
displays having 2160 pixel lines (see Urabe i-f 4) and input HD video signals
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with at least 1920 pixel lines (see Urabe Figs. 6 & 7). Further, we agree that
Urabe's general teachings of displaying lower resolution video on less than
the entire screen of a higher resolution display applies to UHD displays, as
recited in claim 8, and HD video at 1920 pixel lines, as recited in claim 9.
Accordingly, we sustain the Examiner's rejection of claims 8 and 9.
G. Claim 14
Independent claim 14 recites limitations similar to those found in
independent claims 1 and 7, but adds:
[R]eceiving a header indicating ancillary information may be
presented along with the non-UHD video ... responsive to ...
the header, presenting ... an interface allowing a user to select
between presenting the non-UHD video full screen and
presenting the non-UHD video partial screen along with the
ancillary information.
App. Br. 17 (Claims App'x).
The Examiner finds "Urabe inherently includes closed captioning
data, which also means inherently including a header for indicating the
closed captioning data." Ans. 10-11 (citing Urabe Fig. 2). We find the
Examiner has not provided enough evidence or reasoning demonstrating that
the video in Urabe necessarily includes a header indicating ancillary
information is present, as is required to establish inherency. See Ex parte
Levy, 17 USPQ2d at 1464.
Accordingly, we do not sustain the Examiner's rejection of claim 14.
For the same reasons, we also do not sustain the Examiner's rejection of
claims 15-18, which depend from claim 14.
H. Claim 19
Claim 19 depends from claim 7 and recites:
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[U]pscaling the HD video at least in part by interpolating
first and second adjacent pixels having respective first and
second pixel values in the HD video and inserting an extra pixel
between the first and second pixels, the extra pixel having a
value interpolated between the first and second pixel values.
App. Br. 18 (Claims App'x).
The Examiner finds "[t]he techniques for magnifying an image are
clearly disclosed in paragraphs 0006 and 0007. Thus, the scaler unit 104
meets the upscaling step as claimed." Final Act. 9. The Examiner further
finds "[t]he pixel interpolation method as claimed is a well known
conventional image enlarging or magnifying method. In fact, all image
enlarging or magnifying methods use an extra new pixel or pixels inserted in
between two original pixels to form a larger image, which is also known as
pixel interpolation." Ans. 11.
Appellant argues that although paragraphs 6 and 7 of Urabe, which
the Examiner relies upon, mention magnifying video, they do not explain
how such magnification takes place. See App. Br. 13. Appellant further
argues that the Examiner has not provided evidence establishing that pixel
interpolation, as claimed, was "well known." Reply Br. 5.
We agree with Appellant. Although Urabe teaches magnifying video,
it does not explicitly disclose pixel interpolation as the technique used for
such magnification. And although pixel interpolation may be a well-known
and conventional image enlarging method, the Examiner has not provided
evidentiary support for such a finding.
Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection of claim 19.
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I. Claim 20
Claim 20 depends from claim 7 and recites "receiving a user
command to downscale HD video into an area of the UHD display that is
less than an entire available display area of the UHD display." App. Br. 18
(Claims App 'x). The Examiner finds Urabe teaches downscaling in step
S504 of Figure 11 of Urabe. Final Act. 3. Appellant does not present any
arguments rebutting the Examiner's specific findings with respect to this
claim, other than to group claim 20 with other claims and argue generally
that the Examiner's findings are based on inherency without the requisite
showing that the features are necessarily present in the prior art.
We do not agree the Examiner has relied on inherency for the
rejection of claim 20. Instead, the Examiner makes a finding that Urabe
affirmatively teaches the limitation. Final Act. 3 (citing Urabe, Fig. 11 step
s504). Because such a finding is not rebutted, we sustain the Examiner's
rejection of claim 20.
DECISION
The Examiner's rejections of claims 1, 4, 5, 7-9, 11, 12, and 20 are
affinned.
The Examiner's rejections of claims 3, 6, 10, and 13-19 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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