Ex Parte Carlson

Patent Trial and Appeal Board

Jun 30, 2014

10178390 (P.T.A.B. Jun. 30, 2014)

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.
10/178,390 06/24/2002 Randolph S. Carlson 088245-9258 4507
23524 7590 06/30/2014
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
06/30/2014 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 APPEAL BOARD
_____________

Ex parte RANDOLPH S. CARLSON
_____________

Appeal 2012-000338
Application 10/178,390
Technology Center 2400
______________

Before, JEFFREY T. SMITH, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 40 through 92. Claims 1 through 39 have been canceled.
We reverse.
INVENTION
The invention is directed to a system for generating a still image from
a sequence of video frames comprises the steps of receiving a sequence of
video frames and storing a number of video frames temporally adjacent to a
user initiated capture event. See Abstract of Appellant’s Specification.
Claim 40 is illustrative of the invention and reproduced below:

Appeal 2012-00338
Application 10/178,390
2

40. An apparatus comprising:
a video viewer configured to display a first sequence of video
frames; and
a buffer configured to store a video including a temporally
adjacent sequence of video frames from the first sequence of video
frames;
wherein the video viewer, in response to a command from a
user to capture a still image from the first sequence of video frames, is
further configured to create a data structure including the video and
an editing instruction identifying a particular frame from the
temporally adjacent sequence of video frames; and
wherein the command to capture a still image corresponds to a
frame being currently displayed by the video viewer when the
command is received from the user, and wherein the temporally
adjacent sequence of video frames includes a video frame preceding
the video frame being currently displayed by the video viewer when
the command is received from the user and a video frame following
the video frame being currently displayed by the video viewer when
the command is received.

REJECTIONS AT ISSUE
The Examiner has rejected claims 40 through 43, 45 through 53, 61
through 64, 66 through 73, 81 through 88, and 90 through 92 under 35
U.S.C. § 103(a) as unpatentable over Monroe (US 7,197,228 B1; Mar. 27,
2008) and Angiulo (US 6,964,025 B2; Nov. 8, 2005). Answer 4-8
1
.
The Examiner has rejected claims 44, 65, and 89 under 35 U.S.C.
§ 103(a) as unpatentable over Monroe, Angiulo and Jones (US
2002/0118949 A1; Aug. 29, 2002). Answer 8-9.

1
Throughout this opinion we refer to the Appeal Brief dated June 3, 2011,
Reply Brief dated September 30, 2011, and the Examiner’s Answer mailed
on August 10, 2011.
Appeal 2012-00338
Application 10/178,390
3

The Examiner has rejected claims 54 through 56, and 74 through 76
under 35 U.S.C. § 103(a) as unpatentable over Monroe, Angiulo and Hoang
(US 6,023,343; Feb. 8, 2000). Answer 9-10.
The Examiner has rejected claims 57, 58, 77, and 78 under 35 U.S.C.
§ 103(a) as unpatentable over Monroe, Angiulo, Hoang, Nathanson (US
6,263,268B1; Jul. 17, 2001) and Schneier (Applied Cryptography, John
Wiley and Sons, Inc., Second Edition, 1996, Pages 518-519). Answer 10-
11.
The Examiner has rejected claims 59, 60, 79 and 80 under 35 U.S.C.
§ 103(a) as unpatentable over Monroe, Angiulo, Hoang, and Nathanson.
Answer 11-12.

ISSUES
Appellant argues, on pages 12 through 24 of the Appeal Brief, that the
Examiner’s rejection of independent claims 40, 61, and 85 is in error. These
arguments present us with the issue: Did the Examiner err in finding the
combination of Monroe and Angiulo teach capturing a sequence of frames
which includes a frame preceding the video frame being displayed when a
user command is received and the frame following the frame being
displayed when the user command is received?
Appellant’s arguments on pages 24 through 28 of the Appeal Brief
directed to the rejection of independent claim 81 present us with the same
issue.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellant’s
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Application 10/178,390
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arguments. We concur with Appellant’s conclusion that the Examiner erred
in rejection independent claims 40, 61, 81, and 85. Each of the independent
claims recites a limitation directed to capturing a sequence of video frames
in response to the user command where the sequence includes the frame
before and after the frame displayed when the user command is received.
The Examiner, in response to Appellant’s arguments cites Monroe’s
teaching of a burst mode (where a sequence of frames are captured), which
the Examiner proposes to modify such that it is manually initiated by the
user, as meeting this limitation. Answer 12-13. Appellant rebuts these
findings on pages 8 through 10 of the Reply Brief. We have reviewed the
disclosure of Monroe and concur with Appellant’s assertion that there is
insufficient evidence to support the Examiner’s findings. The Examiner has
not shown that any of the other references cited include a teaching directed
to the disputed claim limitation. Accordingly, we will not sustain the
Examiner’s rejection of independent claim 40, 61, 81, and 84, or the claims
which depend from therefrom.
DECISION
The decision of the Examiner to reject claims 40 through 92 is
reversed.

REVERSED
dw