Ex Parte Demas et al

Patent Trial and Appeal Board

May 16, 2013

11671759 (P.T.A.B. May. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JASON DEMAS, MARCUS KELLERMAN,
FRANCIS CHEUNG, and SHERMAN (XUEMIN) CHEN
_____________

Appeal 2010-008856
Application 11/671,759
Technology Center 2400
______________

Before DAVID M. KOHUT, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008856
Application 11/671,759

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method for switching between a live
digital television decoding and a personal video recorder playback. Spec.
¶ [02]. Claim 1 is representative of the invention and is reproduced below
with disputed language emphasized:
1. A method of switching between a live video decoding
and a recorded playback in a digital video and recording
system, comprising:
(a) receiving a stream of digital video data;
(b) transmitting the received video data stream to a video
decoder without first looping the video data stream through a
playback buffer;
(c) decoding the video data with the video decoder;
(d) if a command is received that requires the video data
stream to be looped through a playback buffer prior to
decoding, performing steps of:
(e) transmitting the video data stream to a first-in
first-out playback buffer and storing the video data in the
buffer;
(f) marking a data element of the video data
stream that was last transmitted to the video decoder
without first looping through the playback buffer;
(g) if a command requiring decoding of the video
data stream to resume is received, performing steps of:
(h) transmitting the video data stored in the
playback buffer to the video decoder; and
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Application 11/671,759

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(i) decoding the video data received from
the playback buffer starting at one of the data
element marked in marking step (f) and a point
immediately after the data element marked in
marking step (f).

REJECTIONS AT ISSUE1
The Examiner rejected claims 1-5, 9-11, 13-18, 22, and 23 under 35
U.S.C. § 102(a) as being anticipated by Bodkin (WO 01/11865 A1, Feb. 15,
2001). Ans. 3-9.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Bodkin and Brown (US 6,868,225 B1, Mar. 15, 2005).
Ans. 9.
The Examiner rejected claims 6-8 and 19-21 under 35 U.S.C. § 103(a)
as being unpatentable over Bodkin and Levesque (US 2003/0170003 A1,
Sep. 11, 2003). Ans. 10-11.

Appellants’ Contentions
Appellants argue that Bodkin does not support a finding of
anticipation. App. Br. 4-8; Reply Br. 2. Appellants contend that page 22 of
Bodkin does not disclose “without first looping through the playback buffer”
limitation as recited in step (f) of claim 1. App. Br. 5-6. In particular,
Appellants’ sole contention is that page 22 of Bodkin (hereinafter “page

1 Throughout this opinion, we refer to the Appeal Brief (“App. Br.”) filed
January 15, 2010, the Reply Brief (“Reply Br.”) filed May 17, 2010, the
Examiner’s Answer (“Ans.”) mailed March 15, 2010, and the Examiner’s
Communication in response to Appellants’ Reply Brief mailed on June 9,
2010, for the respective positions of Appellants and the Examiner.
Appeal 2010-008856
Application 11/671,759

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number typo”) does not disclose displaying a television program without
recording it on a disk or a playback mode. Reply Br. 2.2

Issue on Appeal
The sole issue raised by the Appellants is whether the Examiner erred
in finding that Bodkin discloses “marking a data element of the video data
stream that was last transmitted to the video decoder without first looping
through the playback buffer,” as recited in claim 1.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief, and (3) the
reasons set forth by the Examiner in the Examiner’s Communication in
response to Appellants’ Reply Brief.
We concur with the Examiner’s anticipation finding. We highlight
the following arguments for emphasis.
Appellants’ sole argument (Reply Br. 2) relates to the page number
typo. Appellants are correct that Bodkin’s page 22 does not teach or suggest
a playback mode or displaying a television program without recording it on
a disk (Reply Br. 2). However, the Examiner inadvertently refers to page 22

2 An analogous contention that also relies on the “page number typo” is
separately presented for claim 13. App. Br. 7-8. Separate patentability is not
argued for dependent claims 2-12 or 14-23. App. Br. 4-9.
Appeal 2010-008856
Application 11/671,759

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(see Ans. 12, 13), when page 24 of Bodkin explicitly discloses these features
of providing a playback mode or displaying a television program without
recording it on a disk. Ans. 3, 4, and 6. We find that this is harmless error,
because the Examiner correctly refers to page 24 of Bodkin as disclosing
these features at pages 3, 4, and 6 of the Answer, and in the Examiner’s
Communication mailed after Appellants’ Reply Brief. 3
Regarding claim 13, while Appellants raised additional arguments for
patentability of the cited claim (App. Br. 7-8), we find that the Examiner has
rebutted in the Answer each and every one of those arguments supported by
sufficient evidence. Ans. 13-14. Therefore, we adopt the Examiner’s
findings and underlying reasoning, which are incorporated herein by
reference. Accordingly, we sustain the Examiner’s rejections of claims 1
and 13. We also sustain the rejection of dependent claims 2-12 and 14-23
because claims 2-12 and 14-23 are not argued separately and fall together
with claims 1 and 13, respectively, for the same reasons discussed above.
See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, we find no error in the
Examiner’s rejections of claims 1-23.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-5, 9-11, 13-18, 22, and
23 under 35 U.S.C. § 102(a) as being anticipated by Bodkin.

3 The Examiner finds that on page 24, Bodkin discloses “a first ‘mode’, [in
which] the television program is displayed ‘directly’ without being recorded
on the hard disk 13, and that the ‘playback mode’ is referenced as a ‘first
mode’” (Ans. 3-4; Examiner’s Communication, page 1; see also Bodkin,
Figure 2), which is not rebutted by Appellants in the Reply Brief (Reply Br.
2-3).
Appeal 2010-008856
Application 11/671,759

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The Examiner did not err in rejecting claim 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Bodkin and Brown.
The Examiner did not err in rejecting claims 6-8 and 19-21 under 35
U.S.C. § 103(a) as being unpatentable over Bodkin and Levesque.

DECISION
The Examiner’s decision to reject claims 1-23 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).
AFFIRMED

msc