Ex Parte Abrams

Patent Trial and Appeal Board

Apr 28, 2017

11688807 (P.T.A.B. Apr. 28, 2017)

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.
11/688,807 03/20/2007 Thomas Algie Abrams JR. MS1-1081USC1 1726
142810 7590
Newport IP, LLC
1400 112th AveSE
Suite 100
Bellevue, WA 98004
05/02/2017 EXAMINER
VO, TUNG T
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
eofficeaction @ appcoll.com
scott @ newportip. com
docketing @ newportip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ALGIE ABRAMS, JR.
Appeal 2016-006762
Application 11/688,807
Technology Center 2400
Before CARLA M. KRIVAK, MICHAEL M. BARRY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3, 6, 8, 9, 11, 13—18, and 20-25. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies the real party in interest as Microsoft Technologies
Licensing, LLC. App. Br. 3.
Appeal 2016-006762
Application 11/688,807
Introduction
Appellant’s claimed invention relates to video processing. Abstract.
Appellant states “a need exists for cameras and/or converters for cameras
that allow for greater flexibility and control of video output.” Spec. 1—2.
Claim 1 is illustrative:
1. A display device for displaying video, the device
comprising:
a serial digital interface to receive digital video data;
a video board to convert and output decompressed digital
video to the LCD display,2 wherein converting the
decompressed digital video comprises converting decompressed
digital video data to a format suitable for use with the LCD
display in accordance with one or more control command
parameters;
a processor, configured to facilitate processing the digital
video data according to the one or more control command
parameters;
memory;
browser software for execution in conjunction with the
processor and the memory, wherein the browser software
provides for operations comprising:
requesting the one or more control command parameters
from a controller device configured to communicate
compressed digital video data to the display device;
locating, over a network, the controller device configured
to communicate compressed digital video data to the display
device;
decompression software for execution in conjunction
with the processor and the memory to decompress the
compressed digital video data received over a network from the
controller device located via the browser software;
2 The antecedent basis for “the LCD display” appears infra in the claim.
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an interface to receive the compressed digital video data
and to receive code wherein the code comprises the one or more
control command parameters relating to the digital video data;
an Internet protocol address; and
framework capabilities that comprise:
a runtime engine for execution of the code comprising
the one or more control command parameters received by the
interface;
associated classes organized in class libraries, wherein
the classes comprise one or more classes that enable XML data
manipulation; and
a LCD display for display of the decompressed digital
video data in the format obtained from the conversion.
App. Br. 32 (App’x of Appealed Claims) (underscores in original replaced
with spaces).
Rejections
Claims 1—3, 6, 8, 9, 11, 13—18, and 20-25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Burke (US 6,665,687 Bl; Dec. 16,
2003) and Uchida et al. (US 6,930,661 B2; Aug. 16, 2005). Final Act. 2—8.
ISSUES PRESENTED
Based on Appellant’s arguments, the issues presented are whether the
Examiner errs in rejecting independent claims 1 (App. Br. 11—193) and 20
{id. at 20-25) and dependent claim 6 (id. at 25—264), and whether there was
a violation of the Administrative Procedures Act (“APA”) during
prosecution prior to this appeal (App. Br. 26—30).
3 Appellant argues claim 18, an independent method claim with limitations
that correspond to the disputed limitations of claim 1, based solely on the
arguments for claim 1.
4 Appellant argues the other dependent claims 2, 3, 5, 8, 9, 11, 13—17 and
21—25 based solely on dependency from independent claims 1, 18, or 20.
3
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Application 11/688,807
ANALYSIS
Claim 1
In rejecting claim 1, the Examiner finds Burke teaches all limitations
except for the requirement that the recited display is an LCD display, which
the Examiner finds Burke teaches. See Final Act. 2—6. Appellant argues the
Examiner errs because
neither Burke nor Uchida, whether taken alone or in
combination, teaches or suggests “browser software [that]
provides for operations comprising: requesting one or more
control command parameters from a controller device
configured to communicate compressed digital video data to the
display device; [and] locating, over a network, the controller
device configured to communicate compressed digital video
data to the display device,” as claim 1 recites. . . .
[T]he Office erroneously cites the same element “controller 30”
embedded in the Burke user terminal, as allegedly disclosing
the two distinct elements of “the controller device,” and “the
processor”. . .
App. Br. 12—13 (brackets in quoted claim language in original).
Regarding Appellant’s contention of erroneous mapping of Burke’s
controller to both the recited controller and processor, the Examiner answers
by clarifying the rejection maps Burke’s controller 30 to the recited
controller and maps decoder 17 to the recited processor. Ans. 26; see also
Final Act. 3 (parenthetically identifying both Burke’s controller and decoder
for claim l’s processor, stating “the decoder 17 of figure 1 receives the
command parameters from the controller 30 of figure 1 to perform the
process of decoding the digital video data”). We also note, as discussed
4
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Application 11/688,807
infra, the Examiner additionally and alternatively finds that Burke’s server
37 or remote terminal 39 maps to the recited controller.5
Regarding the browser software requirements, Appellant specifically
contends that “[t]he Burke controller does not respond to a browser software
request for ‘control command parameters,’ nor does any other element of
Burke request the ‘control command parameters’ claim 1 recites.” App.
Br. 14. Appellant further contends “Burke does not disclose, teach or
suggest a controller located over a network that is ‘configured to
communicate compressed digital video data to the display device’. . . .” Id.
Appellant does not persuade us. For our discussion, we refer to
Burke’s Figure 1, reproduced here, with annotations added:
ff&]
imuirnmn.
Burke’s Fig. 1 shows a user terminal 10 incorporating a multimedia decoder
17 coupled through a server 39 to a remote terminal 47 over a network.
5 See infra footnote 9.
5
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Application 11/688,807
As the Examiner finds, and we agree, Burke’s HTML processor 75
and sub-picture processor 80, along with the related teachings of Burke’s
Figures 3 and 4, teach browser software for execution in conjunction with
the processor (decoder 17), as recited. See Final Act. 3—5; Ans. 13—16, 26—
31.6 Specifically, the Examiner finds that Burke teaches retrieval of Web
pages and video such as MPEG via controller 30, that alternatively server 39
and remote terminal 47 include controller devices involved in retrieving the
Web pages and video from the remote terminal 47, and that such retrieval
includes obtaining “command parameters such a motion vector, macroblock
header, slice header, [and] start code” information associated with the video.
Ans. 27.
We agree with the Examiner that controller requests for MPEG video
in a Web page via controller 30 (and/or via a controller in server 39 or
remote terminal 47) include requesting command parameters for processing
video.7 Thus, we agree Burke teaches “requesting the one or more control
command parameters from a controller device configured to communicate
compressed digital video data to the display device,” as recited.
Regarding “locating, over a network, the controller device configured
to communicate compressed digital video data to the display device,” we
6 We note the Examiner’s Answer also provides new findings for how
Uchida teaches aspects of claim 1 ’s browser software, see Ans. 16, 34, to
which Appellant offers no rebuttal.
7 We note Appellant’s Specification as filed describes exemplary command
parameters specifying receiving, converting, structuring, compressing,
decompressing, storing and communicating digital video data. See Spec. 20:
2—8 and claim 1 as filed. We agree with the Examiner that requesting a Web
page with MPEG video includes obtaining such parameter information that
is necessary for processing the video.
6
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Application 11/688,807
agree with the Examiner that Burke teaches this. Appellant does not define
“network” in the Specification in such a way to exclude Burke’s controller
30 from being considered located over a network vis-a-vis browser software
executed by decoder 17.8 The Examiner alternatively finds that server 39
and remote terminal 47, which each include a controller, teach “locating,
over a network, the controller device.” See App. Br. 19—21. Appellant does
not explain why the Examiner’s alternative finding does not show that Burke
teaches this requirement. Both server 39 and remote terminal 47 are in the
path of communication of Web page and video information from remote
terminal 47 to the HTML processor (“browser software”) in decoder 17, and
both are coupled to user terminal 10 via Internet link 37. Thus, we agree
with the Examiner that an ordinarily skilled artisan would understand Burke
to teach claim 1 ’s “locating, over a network, the controller device,” as
recited.
Appellant also argues the Examiner errs in finding Burke’s controller
30 teaches the processor of claim 1, further contending that none of the
processors described in Burke “work in conjunction with browser software
to ‘facilitate processing the digital video data according to one or more
control command parameters,’ which are requested from a controller device
by the browser software, as claim 1 recites.” App. Br. 16. We find this
unpersuasive in view of the Examiner’s mapping of decoder 17 to the recited
processor which, as discussed supra, provides the recited functionality.
8 For example, further in support of the Examiner’s findings, we note bus
connection C is a type of internal network connection within user terminal
10.
7
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Accordingly, we sustain the rejection of claim 1. In doing so, we
adopt the relevant findings and reasons of the Examiner from the Final
Rejection, as explicated in the Answer. See Final Act. 2—6, Ans. 26—35.
Claim 20
Claim 20 recites “[a] computer-readable medi[um]” to perform
operations including the following steps:
requesting one or more control command parameters
from a controller device configured to communicate
compressed digital video data to the device wherein:
the requesting is performed via execution of browser
software on memory of the display device by one or more
processors of the display device,
wherein the requesting comprises requesting via the
browser software over a network, and
the one or more control command parameters requested
relate to digital video data; [and]
in response to the request, receiving code comprising the
one or more control command parameters relating to the digital
video data over the network via a network interface from the
controller device configured to communicate compressed
digital video data located via the browser software[.]
App. Br. 37 (Claims App’x).
The Examiner rejects claim 20 for the same reasons as claim 1. See
Final Act. 2—6. Appellant argues “[t]he Burke controller does not respond to
a browser software request for ‘one or more control command parameters,’
nor does any other element of Burke request the ‘control command
parameters,’ as claim 20 recites.” App. Br. 22. Appellant contends that
Burke’s controller is “based upon user input[, which] is inapposite to
browser software ‘requesting one or more control command parameters
from the controller device . . . wherein the requesting comprises requesting
8
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via the browser software over a networkId. at 22—23. These arguments
are substantially the same as arguments for claim 1, discussed supra, and we
disagree with them for the same reasons.
Appellant also argues that because “[a] 11 elements of the user interface
in Burke, from the keyboard and mouse to the controller, are clearly located
at the user terminal,” Burke fails to teach or suggest claim 20 ’s recited
requirement for “in response to the request, receiving code comprising the
one or more control command parameters relating to the digital video data
over the network via a network interface from the controller device
configured to communicate compressed digital video data located via the
browser software.” App. Br. 23—24. We find this unpersuasive because, as
discussed supra, the Examiner alternatively finds there are controller devices
in Burke’s server 39 and remote terminal 47, which send control command
parameters over a network as necessary for processing video data such as
MPEG in Web pages retrieved by HTML processor 75 (browser software).
Appellant further argues the Examiner errs in rejecting claim 20
because the alternative citation to Burke’s server 39 or remote terminal 47
for the recited controller device of claim 20 “is erroneous and is evidence in
and of itself that the ‘controller 30’ described in Burke does not teach or
suggest at least ‘in response to the request, receiving code comprising the
one or more control command parameters . . . ,’”9 App. Br. 24—25. This
9 We note Appellant similarly argues in the discussion of claim 1, with
reference to claim 20, that the Examiner’s citation to alternative controllers
in server 39 and remote terminal 47 “is de facto evidence” that Burke does
not teach the “requesting one or more control command parameters
limitation” for claim 1. See App. Br. 14—15. To the extent Appellant
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does not persuade us. As the Examiner finds, and we agree, these alternative
controllers send control command parameters, as discussed supra, over
network link 37 to controller 30 of user terminal 10. See Ans. 42-43. The
language of claim 20 does not preclude such a bifurcated or composite
controller arrangement. Further in support of the Examiner’s rejection, we
also note either of these alternative controllers from server 39 or remote
terminal 47 alone may provide the functionality of the “controller device”
recited in claim 20.
Accordingly, we sustain the rejection of claim 20. In doing so, we
adopt the relevant findings and reasons of the Examiner from the Final
Rejection, as explicated in the Answer. See Final Act. 2—6, Ans. 35 44.
Claim 6
Claim 6 recites “[t]he display device of claim 1 wherein the browser
software provides for locating a network address of the controller device.”
App. Br. 34 (Claims App’x). The Examiner finds that a controller obviously
has a network address, and gives the examples of www.c.com, www.e.com,
A@B.com as network addresses for Burke’s remote terminal 47. Final
Act. 6—7; see also Ans. 44 (reiterating findings from rejection). Appellant
argues the Examiner errs by mapping network addresses from a Web
browser navigation or search history to the controller device address. App.
Br. 26. We agree with Appellant. We also note that while we agree a
controller device obviously has an address, by itself this is insufficient to
render obvious the recited requirement for browser software to locate the
device address. Accordingly, we do not sustain the rejection of claim 6.
intended that to be a separate argument for claim 1, we find it unpersuasive
for the same reasons discussed here for claim 20.
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Administrative Procedures Act (“APA ”)
Appellant argues that, during earlier prosecution, the Examiner
engaged in arbitrary and capricious decision making in violation of the APA
by suggesting that certain claims would be allowable if the remaining claims
were cancelled. Appellant chose not to follow the specific suggestion but
instead sought allowance of a larger set of claims that Appellant contends
were based on independent claims amended to include the substantive
subject matter that had been indicated as allowable. The Examiner
proceeded to perform a new search and newly reject all amended claims.
See App. Br. 27—29. Appellant also argues that because the Pre-Appeal
Brief Conference Decision lists the Examiner as the sole attendant of the
Pre-Appeal Brief Conference, the conference was apparently conducted in
an improper manner in violation of the APA. Id. at 29—30.
The Board, however, does not exercise supervisory authority over the
examining corps. Appellant’s remedy, not elected, was to file a petition to
the Director under 37 C.F.R. § 1.181. Regardless, we note the Examiner’s
Answer persuasively explains why there was no violation of APA in the two
issues argued by Appellants. See Ans. 8—9, 45.
DECISION
For the above reasons, we affirm the rejection of claims 1—3, 8, 9, 11,
13—18, and 20-25, and we reverse the rejection of claim 6. No time period
for taking any subsequent action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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