Ex Parte Ducharme

Board of Patent Appeals and Interferences

Oct 23, 2009

09946912 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL DUCHARME
____________

Appeal 2009-000780
Application 09/946,912
Technology Center 2400
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Decided: October 23, 2009
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-39, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
Appellant’s invention relates to a method and apparatus for processing
overlay data in a multimedia system. See Abstract.

Representative Claim
1. A server for use in a multimedia system, the server comprises:
tuning module operably coupled to select a set of channels from
a plurality of channels based on a set of channel select signals;
stream parsing module operably coupled to convert the set of
channels into streams of channel data; and
transcoding module operably coupled to packetize the streams
of channel data and overlay data into packets of channel data, wherein
the transcoding module includes:
decoding module operably coupled to decode the streams
of channel data into video frames for each channel of the set of
channels;
graphical overlay module operably coupled to generate
overlay data for at least one channel of the set of channels based
on an overlay selection input; and
encoder operably coupled to encode the overlay data with
at least a portion of each of the video frames of the at least one
channel of set of channels and to encode, contemporaneously,
the video frames of the set of channels less the at least one
channel of the set of channels to produce the packets of channel
data.

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Prior Art
Gordon U.S. 7,096,487 B1 Aug. 22, 2006

Examiner’s Rejections
Claims 1-39 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Gordon.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that claim 1 requires that the encoding of video
frames occurs only after the decoding of the frames?

FINDINGS OF FACT
1. Gordon discloses head end equipment (HEE) 202 that produces
a plurality of digital streams containing encoded information in an MPEG-2
compressed format. The streams are modulated using a technique that is
compatible with a communications channel 230 that couples the HEE 202 to
one or more local neighborhood equipment (LNE) 228. The LNE 228 may
be geographically distant from the HEE 202, or the functions of the LNE
may be incorporated into the HEE 202. The encoding method is not
constrained to the physical location of any of the components. The
subscriber equipment (SE) 206 comprises a receiver 224 and a display 226.
Upon receiving a stream, the subscriber equipment receiver 224 extracts the
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information from the received signal and decodes the stream to produce the
information on the display. Fig. 2; col. 6, ll. 9-31.
2. A video source 214 supplies the video sequence for the video
portion of an interactive program guide (IPG) to an encoding unit 216.
Guide data source 232 provides program guide data to the encoding unit
216. The encoding unit 216 compresses a given video sequence into one or
more elementary streams and the graphics produced from the guide data into
one or more elementary streams. Fig. 2; col. 6, ll. 51-64.
3. The LNE 228 receives the encoded video information and the
encoded guide data grid information, and uses slice combiner 502 to
combine the video and guide data in an order in which the decoder at the
receiver side can easily decode without further slice re-organization. Col. 9,
ll. 1-10.

PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Amer. Acad. of Sci. Tech
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “An essential
purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” Zletz,
893 F.2d at 322. “Construing claims broadly during prosecution is not
unfair to the applicant . . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.” Amer. Acad., 367
F.3d at 1364.

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Appellant acknowledges that Gordon teaches encoding, graphical
overlay, and decoding (App. Br. 7). Appellant contends, however, that
claim 1 requires the encoding to occur after the decoding and after the
graphical overlay (id. at 6). Appellant argues that Gordon does not teach an
ordering that places encoding after decoding (id. at 7).
Claim 1 recites a server that includes a decoding module, a graphical
overlay module, and an encoder. The claim does not recite that the decoding
module, graphical overlay module, and encoder are coupled to each other or,
for that matter, to anything else in the server. Claim 1 recites that the
decoding module is “operably coupled” to decode the streams of channel
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data into video frames, which appears to represent a mere intended use of
“decoding.” The graphical overlay module and encoder are, similarly,
“operably coupled” to do functions that are not positively recited as being
performed. Claim 1 thus sets forth an apparatus that includes a decoding
module, a graphical overlay module, and an encoder, none of which are
necessarily connected to each other, and none of which are required to
perform the intended use functions.
Gordon discloses a decoding module, a graphical overlay module, and
an encoder (FF 1-3). Although Appellant argues that claim 1 requires
encoding to occur after the decoding and the graphical overlay, we find that
the argued order is not required by the claim.
Furthermore, even if the functions of decoding, graphical overlay, and
encoding were somehow performed by the apparatus of claim 1, the claim
does not require that these functions be performed in the particular order
argued by Appellant. Appellant contends that “the encoder operates on the
overlay data from the graphical overlay module and at least a portion of the
video frames from the decoding module” (App. Br. 6). However, this
language is not found in claim 1 and we find no basis for reading this
language into claim 1.
With respect to what is actually recited in claim 1, there is no reason
why the function of “decode the streams of channel data into video frames”
must occur before the function of “encode the overlay data with at least a
portion of each of the video frames.” Logically, the overlay data and the
video frames could be encoded before being decoded into video frames. For
example, in the Specification, the encoded overlay data and video frames are
decoded into overlaid video frames (Spec. 4:28 to 5:7). The claim recitation
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of “decode the streams of channel data into video frames,” when read in
light of Appellant’s Specification, does not distinguish over decoding
streams of channel data into video frames that have been encoded with
overlay data.
In the Reply Brief (at 5), Appellant contends that Gordon only
discloses decoding after encoding, but does not disclose decoding prior to
encoding. However, Appellant has not cited any language in claim 1 or the
Specification requiring that “decoding must occur prior to encoding” (id.).
We are thus not persuaded that Gordon fails to disclose decoding,
graphical overlay, and encoding (FF 1-3) within the meaning of claim 1.
Appellant further argues that Gordon’s encoder does not encode the
overlay data with at least a portion of each of the video frames (App. Br. 7).
The Examiner finds that the functions of the LNE, which include combining
the encoded video and encoded overlay data, can be included in the HEE
(Ans. 13; see FF 1, 3). Appellant has failed to persuasively rebut the
Examiner’s finding. Further, while we can presume that “Gordon does not
teach an ordering that places encoding after the decoding occurs” as alleged
by Appellant (App. Br. 7), Appellant has not demonstrated that such a
requirement is “set forth in claim 1” (id.).
Appellant alleges that each of independent claims 12, 19, 26, 30, 33,
and 37 recites or includes numbered or ordered steps. Appellant alleges
error in the rejections, however, by repeating the arguments that Gordon
does not teach an ordering that places encoding after decoding and that
Gordon’s encoder does not encode the overlay data with at least a portion of
each of the video frames. To the extent that Appellant’s remarks might be
considered to rise to the level of separate arguments for patentability (cf. 37
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C.F.R. § 41.37(c)(1)(vii)), Appellant has not explained why any of the
claims require steps in the order that is argued by Appellant. We are
therefore not persuaded of error in the § 102(e) rejection over Gordon.

CONCLUSION OF LAW
Appellant has not shown that claim 1 requires that the encoding of
video frames occurs only after the decoding of the frames.

DECISION
The Examiner’s rejection of claims 1-39 under 35 U.S.C. § 102(e) as
being anticipated by Gordon 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

msc

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