Ex Parte Adolph et al

Patent Trial and Appeal Board

Sep 9, 2013

10499868 (P.T.A.B. Sep. 9, 2013)

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.
10/499,868 06/23/2004 Dirk Adolph PD010087 7140
7590 09/10/2013
Joseph S Tripoli
Thomson Multimedia Licensing Inc
Patent Operations CN 5312
Princeton, NJ 08543-0028
EXAMINER
CZEKAJ, DAVID J
ART UNIT PAPER NUMBER
2487
MAIL DATE DELIVERY MODE
09/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEALS BOARD
____________________
Ex parte DIRK ADOLPH and RALF OSTERMANN
____________________

Appeal 2011-004365
Application 10/499,868
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004365
Application 10/499,868

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Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ claimed invention “relates to a device and method for
processing picture data signals including a video bitstream and a sub-picture
bitstream. Particularly, the present invention relates to transcoding of a
[Digital Versatile Disc (DVD)] transport stream into a digital broadcasting
transport stream.” (Spec. 1.)
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. Method for merging encoded video picture data from a
picture data signal including a video bitstream and a DVD sub-
picture bitstream, the method comprising, digitally decoding
said DVD sub-picture bitstream into a DVD sub-picture signal,
extracting from the DVD sub-picture signal a mask information
of the video picture area that will be affected by the DVD sub-
picture, generating newly encoded video data from the DVD
subpicture signal and the video bitstream, and generating a
merged bitstream including unaltered encoded video data from
the video bitstream in the area that remains unaffected by the
DVD subpicture and including the newly encoded video data in
the area where the DVD sub-picture affects the video content in
the picture.

(Emphasis added to disputed limitation).

REJECTIONS
1. The Examiner rejected claims 1-5 and 8-13 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and suggestions
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Application 10/499,868

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of Birks (US Patent 6,373,530 B1) and of Wu (US Patent 6,437,787 B1).
2. The Examiner rejected claims 6, 7, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and suggestions
of Birks, Wu, and Na (US Patent 6,504,996 B1).

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the
obviousness rejections on the basis of representative claims 1, 8, 6, and 14.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1

CONTENTIONS

Appellants summarize their contentions:

Birks and Wu, taken alone or in combination with one
another, neither teaches nor suggests "extracting from the DVD
sub-picture signal a mask information of the video picture area
that will be affected by the DVD sub-picture" as recited in
claim 1 of the present arrangement. As claims 2-5 are
dependent on claim 1, these claims are allowable over Birks
and Wu, taken alone or in combination with one another.

Birks and Wu, taken alone or in combination with one
another, neither teaches nor suggests "a controller for
generating a new video bitstream ... in response to mask
information derived from the decoded DVD sub-picture
bitstream" as recited in claim 8 of the present arrangement. As

1 See also MPEP Rev. 8, July 2010. Note: In the instant appeal, Appellants
filed a Notice of Appeal on April 7, 2010. The date of filing of the Notice of
Appeal determines which set of rules applies to an Ex Parte appeal. If a
notice of appeal is filed prior to January 23, 2012, then the 2004 version of
the Board Rules last published in the 2011 edition of Title 37 of the Code of
Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal.

Appeal 2011-004365
Application 10/499,868

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claims 9-13 are dependent on claim 8, these claims are
allowable over Birks and Wu, taken alone or in combination
with one another.

Birks, Wu and Na, taken alone or in combination with
one another, neither teaches nor suggests that "the transport
packets are delivered in bus packets over a bus connection of a
home network to a device being equipped with MPEG decoder"
as recited in claim 6 of the present arrangement. As claim 7 is
dependent on claim 6, claim 7 is allowable over Birks, Wu and
Na, taken alone or in combination with one another, for the
reasons presented above regarding claim 6. In addition, as
claims 6 and 7 are dependent on claim 1, these claims are
allowable over Birks, Wu and Na, taken alone or in
combination with one another, for the reasons presented above
regarding claim 1.

Birks, Wu and Na, taken alone or in combination with
one another, neither teaches nor suggests "means for sorting the
MPEG2 transport packets in bus packets for a bus connection
of a home network" as recited in claim 14 of the present
arrangement. As claim 15 is dependent on claim 14, claim 15 is
allowable over Birks, Wu and Na, taken alone or in
combination with one another, for the reasons presented above
regarding claim 14. In addition, as claims 14 and 15 are
dependent on claim 8, these claims are allowable over Birks,
Wu and Na, taken alone or in combination with one another.,
for the reasons presented above regarding claim 8[.]

(App. Br. 24).

Independent Claim 1
Regarding the disputed limitation of “extracting from the DVD sub-
picture signal a mask information of the video picture area that will be
affected by the DVD sub-picture” (claim 1), we note the Examiner
principally relies on Wu as teaching or suggesting this limitation. (Ans. 4).
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Regarding the subpicture and associated On Screen Display (OSD)
masks of Wu (col. 7:6-23; col. 8:8-25; col. 9, l. 23; col. 13:14-20), we
particularly note the Examiner’s finding of inherency: “The examiner notes
that this mask must be extracted from the subpicture data since it's the
subpicture data that is being rendered.” (Ans. 7) (emphasis added).2 Our
reviewing court guides that “after the PTO establishes a prima facie case . . .
based on inherency, the burden shifts to appellant to ‘prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.’” In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re
Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). See also MPEP §§ 2112
(IV-V).3
Here, Appellants have not met the requisite burden. We observe
Appellants have not filed a Reply Brief to further rebut the Examiner’s
findings. Moreover, we agree with the Examiner that Birk’s teaching of
efficient logo insertion into a video data stream without requiring a complete
decode/re-encode of the video program content portion, when combined
with the subpicture and associated mask teachings of Wu (col. 7:8-25; col.
8:8-25; col. 9, l. 23; col. 13: 14-20), would have taught or at least suggested
the disputed limitation of “extracting from the DVD sub-picture signal a
mask information of the video picture area that will be affected by the DVD
sub-picture.” (Claim 1). (See Ans. 4, 7).4

2 “The inherent teaching of a prior art reference, a question of fact, arises
both in the context of anticipation and obviousness.” In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in part
on inherent disclosure in one of the references)(citation omitted).
3 See n.1. supra.
4 See Birks, e.g., col. 3:15-20: “If only the portion of the bitstream
corresponding to the logo-insertion region is processed, then the entire
Appeal 2011-004365
Application 10/499,868

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Independent Claim 8
Regarding the disputed limitations of “a controller for generating a
new video bitstream . . . in response to mask information derived from the
decoded DVD sub-picture bitstream” (claim 8), we observe that Wu teaches
a controller (blender/video encoder 112) for encoding and generating a new
video bitstream, using mask information. (Fig. 3, col. 8:9-25; see also Wu’s
discussion of subpictures and masks: col. 7:8-25; col. 8:8-25; col. 9, l. 23;
col. 13: 14-20). We further observe that Birks figure 1 teaches a logo
inserter 108 and a 110 video encoder 110 (i.e., controller). Therefore, for
these reasons, and for the reasons discussed above regarding claim 1, we are
not persuaded of Examiner error regarding the Examiner’s legal conclusion
of obviousness.

Dependent Claims 6 and 14
Regarding the disputed limitation of “the transport packets are
delivered in bus packets over a bus connection of a home network to a
device being equipped with MPEG2 decoder” (claim 6), we agree with the
Examiner’s underlying factual finding of inherency and legal conclusion of
obviousness regarding Na (Fig. 3, col. 3:1-15): “Na discloses in figure 3,
and column 3, lines 1-15, receiving over a 1394 bus interface, MPEG-2
transport packets. Since the packets are received at a receiver, the packets
must be decoded before being displayed at the receiver.” (Ans. 7-8)
(emphasis added). See n.2. supra.
Likewise, regarding dependent claim 14, we agree with the
Examiner’s underlying factual finding of inherency and legal

bitstream does not have to be completely decoded and then re-encoded, and
less expensive equipment may be able to be used.”
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conclusion of obviousness regarding the disputed limitation of “means
for sorting the MPEG2 transport packets in bus packets for a bus
connection of a home network:”
Since the transport stream packets are transmitted via a
bus connection (the 1394 bus interface), the transport packets
must be delivered in bus packets and then sorted in order to
properly be transmitted over the bus interface and displayed at
the home network. Na further discloses in column 4, lines 43-
51 and column 5, lines 24-52, the use of a navigation pack and
program specific information (PSI) to extract and sort the
transmitted bus packets. Hence, Na discloses sorting the
MPEG-2 transport packets in bus packets for a bus connection
of a home network.

(Ans. 8) (emphasis added). See n.2. supra.
Appellants have not filed a Reply Brief to further rebut and show error
in the Examiner’s findings. Therefore, on this record we are not persuaded
of error regarding the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for all claims argued on appeal. All claims
not argued separately fall with respective base claims 1 or 8.

DECISION
We affirm the Examiner’s decision rejecting claims 1-15 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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