Ex Parte Hagendorf et al

Patent Trial and Appeal Board

Jun 25, 2018

12761885 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121761,885 04/16/2010
93379 7590
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
06/27/2018
FIRST NAMED INVENTOR
Pierre Hagendorf
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
648.0160CIP 2183
EXAMINER
TRAN, THINHD
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
sarah@setterroche.com
pair_avaya@firsttofile.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE HAGENDORF and SAGEE BEN-ZEDEFF
Appeal 2018-001193
Application 12/761,885
Technology Center 2400
Before CARLA M. KRIVAK, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2018-001193
Application 12/761,885
STATEMENT OF THE CASE
Appellants' invention is directed to systems, methods, and media for
providing interactive video using scalable video coding. Spec. i-f 2. Claim 1,
reproduced below with the disputed limitations in italics, is representative of
the claimed subject matter:
1. A system for providing interactive video using scalable video
coding, comprising:
at least one microprocessor programmed to at least:
provide at least one scalable video coding capable encoder that
at least:
receives at least a base content sequence and a plurality of
mutually exclusive added content sequences that have different
content from the base content sequence;
produces a first scalable video coding compliant stream that
includes at least a basic layer, that corresponds to the base content
sequence, and a first mutually exclusive enhancement layer, that
corresponds to content in a first of the plurality of mutually exclusive
added content sequences; and
produces at least a second mutually exclusive enhancement
layer, that corresponds to content in a second of the plurality of
mutually exclusive added content sequences;
provide a separate control signal for interactively selecting, by a
user of an endpoint, a subset of said mutually exclusive enhancement
layers are presented to an end point; and
perform multiplexing of the first scalable video coding
compliant stream and the second mutually exclusive enhancement
layer to provide a second stream, wherein the second stream is non-
scalable video coding compliant.
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Application 12/761,885
App. Br., Claims Appendix, 10.
REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hannuksela et al., (US 2008/0095228
Al; published April 24, 2008) ("Hannuksela '228"); Yin et al., (US
2010/0165077 Al; published July 1, 2010) ("Yin"); Hannuksela et al., (US
2010/0049865 Al; published Feb. 25, 2010) ("Hannuksela '865"); and
Gordon et al., (US 8,594,191 B2; issued Nov. 26, 2013) ("Gordon"). Final
Act. 3-8.
ANALYSIS
Issue: Did the Examiner err in finding the combination of Hannuksela
'228, Yin, Hannuksela '865, and Gordon teaches or suggests "wherein the
second stream is non-scalable video coding compliant," as recited in
independent claim 1 and commensurately recited in independent claim 8?
The Examiner relies on paragraph 25 of Hannuksela '865 to teach or
suggest the disputed limitation. Final Act. 5---6; Ans. 2. Appellants argue
"Hannuksela '865 warns that a stream with additional NAL [network
abstraction layer] units may not be SVC [scalable video coding] conforming,
which implies that the insertion ofNAL units may not result in a non-
conforming stream," which is in contrast to claim l's requirement that the
second stream be non-SVC compliant. App. Br. 7; see also Reply Br. 2.
Appellants' argument is not persuasive. Paragraph 25 of Hannuksela
'865 describes "additional NAL units may make a received bitstream non-
conforming to the SVC coding specification because of conflicts in
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Application 12/761,885
buffering-hence, they should be removed from the bitstream passed to the
decoder." Even if, as Appellants' acknowledge, the cited prior art does not
always meet the claim requirement, "combinations of prior art that
sometimes meet the claim elements are sufficient to show obviousness."
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016);
accord Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed.
Cir. 2003) ("[A] prior art product that sometimes, but not always, embodies
a claimed method nonetheless teaches that aspect of the invention.")
Appellants further argue "Hannuksela '865 does not teach that a non-
compliant SVC stream would be produced in the manner required by claim
1" because "the stream of Hannuksela '865 is made non-SVC compliant by
the addition ofNAL units to the stream." App. Br. 7 (emphasis omitted).
Appellants argue "Hannuksela '865 does not disclose that the teachings of
Hannuksela '228, which are equated to the multiplexing of claim 1, could
provide a non-SVC compliant stream." App. Br. 7.
We are not persuaded and agree with the Examiner's findings and
conclusions. See Final Act. 5---6, Ans. 2--4. The Examiner relies on
Hannuksela '228 to teach or suggest "perform multiplexing of the first
scalable video coding compliant stream and the second mutually exclusive
enhancement layer to provide a second stream," and Hannuksela '865 to
teach or suggest "wherein the second stream is non-scalable video coding
compliant." Final Act. 4--5, Ans. 2--4. As the Examiner has relied upon the
combination of the two references to teach the limitation, Appellants'
arguments against the references individually are not persuasive. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, the
Examiner has provided detailed factual findings pertaining to the
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Application 12/761,885
combination and the rationale for combining the references (see Ans. 2--4;
Final Act. 5-6), which Appellants have not persuasively rebutted.
Finally, Appellants argue Hannuksela '865 explicitly teaches away
from the claimed invention:
Additionally, the above discussed teachings of Hannuksela '865
are found in a paragraph explaining the constraints of
conventional solutions to having non-access unit (AU) aligned
network abstraction layer (NAL) units (see Id.). The particular
constraint in this case being that the additional NAL units need
to be removed before being passed to a decoder. While the
final Office action uses the disclosed solution as a motivation to
combine Hannuksela '865 with the teachings of the other prior
art references, Hannuksela '865 explicitly teaches away from
using that solution due to its constraints. As such, one having
ordinary skill in the art would be motivated by Hannuksela '865
to use a solution (if a solution is even needed) other than the
above discussed addition ofNAL units and does not provide a
motivation to combine those teachings with Hannuksela '228.
App. Br. 8; see also Reply Br. 2-3.
We are not persuaded. "A reference may be said to teach away when
a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). But the "prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives" if "such disclosure does not criticize.
~ ~
discredit, or otherwise discourage the solution claimed." In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Our reviewing court has further explained
that just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.
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Application 12/761,885
at 553; see also Fulton, 391 F.3d at 1200 ("our case law does not require that
a particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide motivation for the
current invention").
We agree with the Examiner the disclosure in Hannuksela '865
describes an alternative way to address the problem of non-AU (access unit)
aligned access units. See Ans. 4. Although Hannuksela '865 acknowledges
that in this approach "[d]elays can also become an issue," we do not find this
rises to the level of a teaching away, but rather describes this alternative as
possibly not the most desirable alternative.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claims 1 and 8 under 35 U.S.C. § 103(a) and we, therefore,
sustain those rejections. For the same reasons, we sustain the Examiner's
rejection of independent claim 15 and dependent claims 2-7, 9-14, and 16-
21 which Appellants do not argue separately.
DECISION
The Examiner's 35 U.S.C. § 103(a) rejection of claims 1-21 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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