Ex Parte Abbate

Patent Trial and Appeal Board

Feb 26, 2013

10856285 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY A. ABBATE
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Appeal 2010-002720
Application 10/856,285
Technology Center 2100
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
STANLEY M. WEINBERG, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/856,285

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellant’s claimed invention is directed to a Media Editing Device
(MED) 110 which creates an Edit Decision List (EDL) while performing
offline editing and subsequently transmits the EDL to a Media Processing
Device (MPD) 104. See Spec. ¶¶ [0036]-[0037], [0040]; Fig. 1.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A system, comprising:
a media source;
a media processing device to connect to said media source, said media
processing device having a first transceiver to receive a media file from said
media source, a media recording module to record said media file, and a first
media editing module to edit said media file using an edit decision list; and
a media editing device to connect to said media processing device,
said media editing device having a second media editing module to create
said edit decision list while performing offline editing operations for said
media file, and a second transceiver to transmit said edit decision list to said
media processing device.

REFERENCES and REJECTIONS
The Examiner rejected claims 1-11 and 18 under 35 U.S.C. § 102(b)
as being anticipated by Kawahara (US 2003/0026592 A1; Feb. 6, 2003).1

1 The TOMLINSON HOLMAN, SOUND FOR FILM AND TELEVISION 189 (2d ed.
2002) reference is not part of the stated anticipation rejection, but rather is
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The Examiner rejected claims 12-16 and 19-22 under 35 U.S.C. §
103(a) as being unpatentable over Kawahara.
The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Kawahara and Earnshaw (US 7,296,217 B1; Nov. 13,
2007).

ISSUE
The issue is whether the Examiner erred in finding that Kawahara
teaches the limitation of a “media editing device having a second media
editing module to create said edit decision list while performing offline
editing operations for said media file” as recited in claim 1 (emphasis
added).

PRINCIPLES OF LAW
Our reviewing court states that “the words of a claim ‘are generally
given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). The
description in the Specification can limit the apparent breadth of a claim in
two instances: (1) where the Specification reveals a special definition given
to a claim term by the patentee that differs from the meaning it would
otherwise possess; and (2) where the Specification reveals an intentional
disclaimer, or disavowal, of claim scope by the inventor. Id. at 1316.
The claims, of course, do not stand alone. Rather, they
are part of “a fully integrated written instrument” consisting
principally of a specification that concludes with the claims.

cited as evidence in support of the Examiner’s interpretation of the term
“off-line.”
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For that reason, claims “must be read in view of the
specification, of which they are a part.” . . . [T]he specification
“is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”
Id. at 1315 (citations omitted).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may
anticipate if that element is “inherent” in its disclosure. To
establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” “Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).

ANALYSIS
Claims 1-11 and 18
Appellant argues that Kawahara does not teach that a user can create
an EDL while offline (Br. 9).
We do not agree. The term “offline” appears only once in Appellant’s
Specification, in paragraph [0036], which states that “[a] user may then use
MED 110 to reproduce the downloaded media file to view while performing
‘offline’ editing.” The Specification does not define the term “offline.”
Accordingly, we agree with the Examiner’s interpretation of the term
“offline” based on its ordinary and customary meaning. See Phillips, 415
F.3d at 1312. We agree with the Examiner that offline editing is when
editing operations for media are input, and the result is an EDL, which is a
list of the edits that can be applied to the media or another representation of
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a media (Ans. 9 (citing TOMLINSON HOLMAN, SOUND FOR FILM AND
TELEVISION 189 (2d ed. 2002))). The reference provides the customary
definition of offline edits by stating that “[t]he output of the off-line edit is
an edit decision list (EDL)” (Holman 189 (emphasis omitted)).
Accordingly, since Kawahara teaches the creation of an EDL (or an Edit
Procedure List (EPL)) by editing terminals 15, 16, and 17 (¶¶ [0091]-
[0092]), then Kawahara necessarily teaches offline editing which creates the
EDL. See Robertson, 169 F.3d at 745.
Appellant further argues that the Examiner failed to provide a factual
basis that proves the only way to create an EDL is to include a second media
editing module within editing terminal 15 (Br. 9). Appellant asserts that it is
also possible for editing terminal 15 to access a remote media editing
module (id.). At the outset we note that the claim language of a “media
editing device having a second media editing module to create said edit
decision list” does not preclude a remote module because the claim language
does not specify where the module is located. In other words, the media
editing module could “have” an editing module create the EDL which is
located at a remote processor.
Nonetheless, the Specification is the single best guide to the meaning
of a disputed term. Phillips, 415 F.3d at 1315. Appellant’s Specification
describes the term “module” to refer “to one or more circuits, components,
registers, processors, software subroutines, or any combination thereof” (¶
[0021] (emphases added)). Accordingly, the module in Kawahara could be
located at a separate processor than in the editing terminal 15 and still satisfy
the claim language in interpreting the term “module” in view of Appellant’s
Specification.
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Accordingly, we affirm the Examiner’s rejection of claim 1 and for
the same reasons the rejections of claims 2-11 and 18.
Claims 12-17 and 19-22
We also affirm the Examiner’s rejections of claims 12-17 and 19-22
because Appellant did not present any additional arguments of patentability.

CONCLUSION
The Examiner did not err in finding that Kawahara teaches the
limitation of a “media editing device having a second media editing module
to create said edit decision list while performing offline editing operations
for said media file” as recited in claim 1.

DECISION
The Examiner’s decision rejecting claims 1-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

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