Ex Parte Zhang et al

Patent Trial and Appeal Board

Aug 29, 2013

11655566 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONG ZHANG, PENG WU, and SAM LIU
__________

Appeal 2011-007697
Application 11/655,566
Technology Center 2100
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Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims to a system and
method for web-based video browsing. The Examiner entered rejections for
lack of written description, anticipation, and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejection for lack of written description, but reverse the
anticipation and obviousness rejections.

1 Appellants identify Hewlett-Packard Development Company, L.P., as the
real party in interest (App. Br. 1).
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STATEMENT OF THE CASE
Claims 1-20 stand rejected and appealed (App. Br. 3). Claims 1 and
11, the independent claims, illustrate the appealed subject matter and read as
follows:
1. A system for web-based video browsing, comprising:
a web server;
a web client; and
a video coordinator that cooperatively provides a set of video
browsing functions to both said web server and said web client that
enables a user of the web client to browse a source video and select a
video frame from the source video, said video coordinator configured
to dynamically adjust and balance loads on each said web browser and
said web server according to a connection bandwidth coupling said
web server and said web client and according to resources available at
said web server and said web client.

11. A method for web-based video browsing, comprising:
accessing a web server over a communication pathway;
accessing a web client over said communication pathway;
determining a bandwidth associated with said connection
pathway;
determining resource availability at said web client and at said
web server;
and
distributing a set of video browsing functions among said web
server and said web client according to said bandwidth between said
web server and said web client and according to resources available at
said web server and said web client such that the video browsing
functions enable a user of the web client to browse a source video and
select a video frame from the source video.

The following rejections are before us for review:
(1) Claim 1, under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (Ans. 3-4);
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(2) Claims 1-5, 8, 9, 11-15, 18, and 19, under 35 U.S.C. § 102(b) as
anticipated by Purnaveja2 (Ans. 4-9);
(3) Claims 6, 7, 16, and 17, under 35 U.S.C. § 103(a) as obvious
over Purnaveja and Markel3 (Ans. 10-13); and
(4) Claims 10 and 20, under 35 U.S.C. § 103(a) as obvious over
Purnaveja and Uchihachi4 (Ans. 13-15).
WRITTEN DESCRIPTION
The Examiner found that the “video coordinator” feature of the
system recited in claim 1 lacks adequate descriptive support in the
Specification (see Ans. 4).
Appellants contend that the claimed video coordinator finds support in
the Specification at page 5, line 19, to page 6, line 6, and also at page 7, line
25, to page 8 line 3, “among other places” (App. Br. 8). Appellants also
contend that support may be found at page 5, lines 7-11 of the Specification
(Reply Br. 1).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In this instance, we find that the preponderance of the evidence
supports the Examiner’s position.

2 U.S. Patent No. 6,230,172 B1 (issued May 8, 2001).
3 U.S. Patent No. 6,791,579 B2 (issued Sep. 14, 2004).
4 U.S. Patent No. 6,535,639 B1 (issued Mar. 18, 2003).
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As stated in TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001):
The written description requirement and its corollary, the new
matter prohibition of 35 U.S.C. § 132, both serve to ensure that
the patent applicant was in full possession of the claimed
subject matter on the application filing date. When the applicant
adds a claim or otherwise amends his specification after the
original filing date . . ., the new claims or other added material
must find support in the original specification.

However, “[i]t is not necessary that the application describe the claim
limitations exactly, but only so clearly that persons of ordinary skill in the
art will recognize from the disclosure that appellants invented processes
including those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA
1976) (citation omitted); see also Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”).
On the other hand, “[e]ntitlement to a filing date does not extend to
subject matter which is not disclosed, but would be obvious over what is
expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1571-72 (Fed. Cir. 1997). Rather, “[o]ne shows that one is ‘in possession’
of the invention by describing the invention, with all its claimed limitations,
not that which makes it obvious.” Id. at 1572.
Claim 1 recites a system that includes a video coordinator that
cooperatively provides a set of video browsing functions to both a web
server and a web client, the video coordinator enabling a user of the web
client to browse a source video and select a video frame from the source
video. Claim 1 requires the video coordinator to be configured to
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dynamically adjust and balance loads on both the web browser and web
server according to the connection bandwidth coupling the web server and
web client, and according to resources available at the web server and web
client.
Appellants do not dispute the Examiner’s finding that the term “video
coordinator” does not appear in the Specification.
We acknowledge the Specification’s description of a system for web-
based video browsing that includes a web server and a web client that
“cooperatively provide a set of video browsing functions” (Spec. 3:5-6).
Thus, as shown in Appellants’ Figure 1, “[t]he web server 10 and the web
client 12 cooperatively provide a set of video browsing functions 18 that
enable a user of the web client 12 to browse a source video 22 and select a
video frame 30 from the source video 22” (id. at 5:7-11).
The Specification explains that, as shown in Figure 1, the video
browsing functions can be distributed to either the web server or web client
depending on the bandwidth of the connection between the two:
The video browsing functions 18 are distributed among
the web server 10 and the web client 12. The distribution of the
video browsing functions 18 is adapted to the characteristics of
a communication link 16 used by the web client 12 to reach the
communicate network 14. The distribution may be selected to
enhance the experience of a user of the web client 12. For
example, if the communication link 16 has a relatively limited
bandwidth then the video browsing functions 18 are distributed
among the web server 10 and the web client 12 to minimize
bandwidth utilization on the communication link 16. On the
other hand, if the communication link 16 has a relatively high
bandwidth then the video browsing functions 18 are distributed
among the web server 10 and the web client 12 to take full
advantage of the available bandwidth of the communication
link 16.
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(Id. at 5:19 through 6:6.)
Thus, in the embodiment shown in Appellants’ Figure 2, the “video
browsing functions 18 in this example distribution include a video browser
300 located in the web client 12 and a frame enhancer 302 located in the
web server 10” (id. at 6:11-14). In other embodiments, video browsing
functions, including a video browser, frame extractor, compressor, and
frame enhancer, can be allocated to either the web server or web client (see
id. at 7:2-6 and 7:22-26; also id. at 8:22-25; also 9:9-12 and 9:18-19).
The Specification explains the compressor’s function:
[A] compressor 306 located in the web server 10 . . . generates a
compressed video 24 and the web client 12 downloads the
compressed video 24 from the web server 10. The compressed
video 24 is a down-sample of the source video 22. The
compressed video 24 may be a down-sample of the source
video 22 in frame rate or in frame size.

(Id. at 7:25 through 8:3.)
Thus, we agree that the Specification describes distinct embodiments
in which video browsing functions, such as video browsers, frame
extractors, compressors, and frame enhancers, can be allocated or distributed
to either the web server or web client depending on the situation. However,
given the cited disclosures, we are not persuaded that the Specification
describes a discrete software or hardware element which performs that task,
or which is configured to dynamically adjust and balance loads based on
connection bandwidth and available resources, in the manner required by
claim 1.
We acknowledge Appellants’ argument that, based on the description
at page 5, lines 7-11 of the Specification, “any one of ordinary skill in the art
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would understand how to implement a video coordinator as recited” (Reply
Br. 1). As noted above, however, “[o]ne shows that one is ‘in possession’ of
the invention by describing the invention, with all its claimed limitations, not
that which makes it obvious.” Lockwood v. American Airlines, 107 F.3d at
1572.
As Appellants’ arguments do not persuade us, for the reasons
discussed, that the Examiner erred in maintaining the rejection of claim 1 for
lack of written description, we affirm that rejection.
ANTICIPATION5
Appellants contend that the evidence does not support the Examiner’s
finding that Purnaveja describes a system that includes a video coordinator
as recited in claim 1, or a process that includes a step of distributing a set of
video browsing functions among a web server and a web client according to
the bandwidth between the web server and web client, and according to
resources available at the web server and web client, as recited in claim 11
(see App. Br. 10).
In this instance we agree with Appellants that the preponderance of
the evidence does not support the Examiner’s finding of anticipation.
Purnaveja discloses, essentially, a system and associated method that
allow a designer to annotate video streams before the streams are accessed
by a client user, thereby allowing the client to view presentations of textual
and graphical information alongside the video as the video progresses (see

5 Even though we have found claim 1 unsupported by the disclosure,
because claim 1 has been searched in order to avoid piecemeal prosecution
consistent with MPEP 704.01 and 904.03, we also review the anticipation
rejection before us.
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Purnaveja, col. 5, ll. 43-49 (“LiveScreen 245 display provides a graphical
user interface (GUI) with multiple windows for synchronously displaying a
video stream from stream server 220 and at least one displayable event
stream. Examples of displayable events include textual/graphical
information such as HTML-scripted web page(s) from web server 230.”);
See also id. at Fig. 2; see also id. at Fig. 6 (showing multi-window
presentation)).
The Examiner found that Purnaveja’s webserver 230 corresponds to
the web server of claims 1 and 11 (see Ans. 4). As to the video coordinator
of claim 1, the Examiner found that “browser plug-in module 952 as shown
in Fig. 9 illustrates an interface between a client 960 and web servers 220
and 230; column 6, lines 8-14; column 8, lines 1-10” (id. at 5). As to claim
11’s distribution step, the Examiner similarly pointed to column
6, lines 8-21, column 8, lines 1-10 and lines 54-67 and column 9, line 15
(see id. at 7-8).
However, as seen in Figure 9, browser plug-in module 952 is part of
the client computer 240, and the plug-in module 952 interfaces between a
web browser in the client computer, and a client module also in the client
computer, to load applets that allow the supplemental material added to the
video stream to play alongside the video (see Purnaveja, col. 8, ll. 1-53).
Thus, it may be true that the supplemental content added to the video
stream is obtained from web server 230 and then is ultimately displayed by
client computer 240. It is not, however, apparent from these disclosures that
the plug-in module 952 allocates, that is distributes, browser functions such
as a video browser, frame extractor, compressor, or frame enhancer, to web
server 230, as the Examiner alleges, and as claims 1 and 11 require. Nor has
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the Examiner clearly explained how or why these disclosures inherently
describe the distribution of browser functions to web server 230.
We also note, as the Examiner found, that Purnaveja describes a
capture module that “compresses the digitized video stream using a suitable
compression technique . . . depending on the bandwidth capacity of the
connection provided by network 290 between stream server 220 and client
computer 240” (Purnaveja, col. 6, ll. 8-12). As seen in Figure 3, the capture
module is 317 is part of the video producer 215 (see id. at col. 5, ll. 50-51).
We agree that such a compressor can be considered a browsing
function (see Spec. 6:11-14). Nonetheless, it is not evident how, and the
Examiner has not adequately explained why, Purnaveja’s disclosure of a
capture module, as an element of the video producer, describes allocating or
distributing the compressor web browsing function to the web server and
web client in the manner required by claims 1 and 11.
The Examiner argues that Purnaveja’s producer 215 also corresponds
to claim 1’s video coordinator:
The video coordinator, i.e., producer, uses production station
210 to produce video streams 220 which are cooperatively
provided to web server(s) 230 and client computer(s) 240.
Purnaveja clearly describes browsing functions such as
annotation streams and flipper streams which are distributed to
a [sic] both a web server and a client computer (column 7, lines
53-59).

(Ans. 16.)
However, rather than distributing the annotated video streams to web
server 230 as the Examiner finds, the annotated streams are distributed to
stream server 220 for ultimate playback (see Purnaveja, col. 5, ll. 43-49
(“LiveScreen 245 display provides a graphical user interface (GUI) with
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multiple windows for synchronously displaying a video stream from stream
server 220 and at least one displayable event stream.”).
Thus, while we agree that Purnaveja’s system retrieves HTML pages
from web server 230 (see id. at col. 9, ll. 40-54), we are not persuaded that
Purnaveja describes distributing a browsing function, such as a video
browser, frame extractor, compressor, or frame enhancer, to the web server
and web client in the manner required by claims 1 and 11.
In sum, as we are not persuaded, for the reasons discussed, that the
Examiner has adequately explained how or why Purnaveja describes, within
the meaning of 35 U.S.C. § 102, a video coordinator having the features
required by claim 1, or the distributing step required by claim 11, we reverse
the Examiner’s anticipation rejection of those claims, and their dependents,
over Purnaveja.
OBVIOUSNESS
In rejecting claims 6, 7, 16, and 17 as obvious over Purnaveja and
Markel, the Examiner cited Markel as evidence that features recited in those
claims, but not described in Purnaveja, would have been obvious additions
to Purnaveja’s system and process (see Ans. 10-13). However, as the
Examiner pointed to no teaching in Markel that addresses the deficiencies
discussed above of Purnaveja with respect to claims 1 and 11, from which
claims 6, 7, 16, and 17 depend, we reverse this rejection as well.
In rejecting claims 10 and 20 as obvious over Purnaveja and
Uchihachi, the Examiner cited Uchihachi as evidence that features recited in
those claims, but not described in Purnaveja, would have been obvious
additions to Purnaveja’s system and process (see Ans. 13-15). Again,
however, as the Examiner pointed to no teaching in Uchihachi that addresses
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the deficiencies discussed above of Purnaveja with respect to claims 1 and
11, from which claims 10 and 20 depend, we reverse this rejection as well.
SUMMARY
We affirm the Examiner’s rejection of claim 1, under 35 U.S.C. § 112,
first paragraph, as lacking written description.
However, we reverse the Examiner’s anticipation rejection of claims
1-5, 8, 9, 11-15, 18, and 19 over Purnaveja.
We also reverse the Examiner’s rejection of claims 6, 7, 16, and 17,
under 35 U.S.C. § 103(a) as obvious over Purnaveja and Markel.
We also reverse the Examiner’s rejection of claims 10 and 20 as
obvious over Purnaveja and Uchihachi.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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