Ex Parte Islam et al

Patent Trial and Appeal Board

Jul 8, 2013

10798824 (P.T.A.B. Jul. 8, 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.
10/798,824 03/10/2004 Asad Islam 990-001.128 5034
20413 7590 07/08/2013
CORE WIRELESS LICENSING S.a.r.l.
c/o WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING FIVE
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
DANG, HUNG Q
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
07/08/2013 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 APPEAL BOARD
____________
Ex parte ASAD ISLAM and FEHMI CHEBIL
____________
Appeal 2011-001795
Application 10/798,824
Technology Center 2400
____________

Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/798,824

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 3-6, 10, 11, 15-17, 19-35, 40, 41, 43, 44, 49, 50, and 53-
58. App. Br. 2;1 Reply Br. 2. Claims 1, 2, 7-9, 12-14, 18, 36-39, 42, 45-48,
51, and 52 were cancelled. Reply Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method, apparatus, and computer readable
storage medium for editing a media file comprising input video frames.
Abstract. The disclosed invention includes a frame analyzer that determines
whether the input video frames have frame characteristics suitable from
compressed domain editing or spatial domain editing. Id. For those video
frames suitable for compressed domain editing, the frame analyzer provides
frame data to a compressed domain processor so that the video frame data
may be modified in the compressed domain. Id. For those video frames
suitable for spatial domain editing, the frame analyzer provides frame data to
a decoder and then to a spatial domain processor for frame data
modification. Id. The disclosed invention combines the modified data from
the different domains and uses a file format composer to convert the data to
a file format. Id.
Illustrative Claim
Claims 3, 16, 26, 35, 43, and 49 are independent claims. Independent
claim 3, which is illustrative of the disclosed invention, is reproduced below:

1 All references to the Appeal Brief are to the Appeal Brief filed March 2,
2010.
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3. A method, comprising:

determining in an editing apparatus, among a plurality of
input video frames in a bitstream, at least one video frame for
video editing to achieve a video effect, wherein the input video
frames comprise frame characteristics, the frame characteristics
comprising at least a first characteristic and a second
characteristic, and wherein the input video frames comprise one
or more preceding video frames preceding said one video
frame;

identifying the frame characteristic of said at least one
input video frame;

modifying the bitstream in the compressed domain based
on specified editing parameters for providing a modified
bitstream indicative of edited video frames if the frame
characteristic of said at least one video frame is the first
characteristic, and wherein if the frame characteristic of said at
least one video frame is the second characteristic, decoding said
at least one video frame for providing only one decoded video
frame and changing said only one_decoded [sic] video frame to
achieve the video effect.

Prior Art Relied Upon
Naimpally US 5,477,397 Dec. 19, 1995
Wee US 6,104,441 Aug. 15, 2000
Hamada US 2002/0135608 A1 Sept. 26, 2002
Ikonen US 2003/0005329 A1 Jan. 2, 2003
Abe US 6,618,491 B1 Sept. 9, 2003

Rejections on Appeal
Claims 3, 16, 17, 19-22, 26-32, and 53-56 were rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Wee and
Hamada. Ans. 4-11.
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Claims 4-6, 10, 11, 15, 35, 40, 41, 43, 44, 49, 50, 57, and 58 were
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Wee, Hamada, and Naimpally. Id. at 11-15.
Claims 23-25 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wee, Hamada, and Abe. Id. at 15-16.
Claims 33 and 34 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wee, Hamada, and Ikonen. Id. at 16-
17.
Examiner’s Findings and Conclusions
The Examiner finds that Wee teaches all the claim features recited in
independent claim 3 except “providing only one decoded video frame and
changing said only one decoded video frame to achieve the video effect.”
Ans. 4. The Examiner finds that Hamada teaches these claim features. Id. at
5.
Appellants’ Contentions
Appellants contend that the combination of Wee and Hamada does not
collectively teach if the frame characteristic is the second characteristic,
decoding at least one video frame for providing only one decoded video
frame and changing only one decoded video frame to achieve the video
effect, as is required by independent claim 3. App. Br. 11-13; Reply Br. 11-
12. In particular, Appellants argue that Hamada does not teach decoding the
picture that is selected as the thumbnail picture. App Br. 12; Reply Br. 12,
14. Appellants also argue that Hamada does not teach using the selected
thumbnail picture to achieve a video effect of the recorded picture data.
App. Br. 12; Reply Br. 15-16.
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Appellants rely upon the same arguments presented against the
obviousness rejection of independent claim 3 to rebut the obviousness
rejections of independent claims 16 and 26. App. Br. 13-14; Reply Br. 16.

II. ISSUE
Has the Examiner erred in determining that the combination of Wee
and Hamada collectively teaches “if the frame characteristic of said at least
one video frame is the second characteristic, decoding said at least one video
frame for providing only one decoded video frame and changing said only
one decoded video frame to achieve the video effect,” as recited in
independent claim 3, and similarly recited in independent claims 16 and 26?

III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Wee and Hamada

Claims 3, 16, and 26
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of independent claim 3, which recites,
inter alia, “if the frame characteristic of said at least one video frame is the
second characteristic, decoding said at least one video frame for providing
only one decoded video frame and changing said only one decoded video
frame to achieve the video effect.” We also do not discern error in the
Examiner’s obviousness rejection of independent claims 16 and 26, which
recite similar claim limitations.
We begin our analysis by noting that because this dispute turns on the
Examiner’s factual findings with respect to Hamada, we confine our
discussion to that reference. The Examiner takes the position that Hamada
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discloses generating a thumbnail picture using a scene image originally
encoded using Moving Picture Experts Group (“MPEG”) standards. Ans. 18
(citing to Hamada, ¶ [0097]). The Examiner finds that Hamada discloses
generating a mark thumbnail from a scene during a playback or pause
operation. Id. (citing to Hamada, ¶¶ [0142-44]). The Examiner finds that in
order to generate the mark thumbnail, the scene image associated with the
thumbnail must be decoded first because it was originally encoded using
MPEG standards. Id. We agree with the Examiner.
The background section of Hamada indicates that recording a digital
video signal encompasses first decoding the requested MPEG video signal
and, subsequently, re-encoding the signal based on the encoding system
associated with the applicable recording apparatus. Hamada, ¶ [0003].
Therefore, contrary to Appellants’ argument that Hamada does not disclose
decoding the picture that is selected as the thumbnail picture (App Br. 12;
Reply Br. 12, 14), Hamada provides sufficient background information to
support the Examiner’s position. That is, one with ordinary skill in the art
would have understood that generating Hamada’s mark thumbnail picture
from a scene (Hamada, ¶¶ [0142-44]) encompasses decoding the
corresponding MPEG video signal prior to marking a scene image and, then,
re-encoding the marked scene image based on the encoding system
associated with the applicable recording apparatus (Hamada, ¶ [0003]).
We are not persuaded by Appellants’ argument that Hamada’s
thumbnail picture must be an I-picture and, therefore, the Examiner reliance
upon Hamada only accounts for decoding a video frame having the claimed
“first characteristic”—not the claimed “second characteristic.” Reply Br.
14. The claim language of independent claim 3 requires identifying a “first
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characteristic” or a “second characteristic” of a video frame. While
Appellants’ specification discloses that identifying a frame characteristic
may include indicating whether the video frame is an I-frame or a P-frame
(Spec. 11:19-33), these frame characteristics are not recited in the
independent claim 3. Nor are we inclined to read these frame characteristics
into independent claim 3. See Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”) It is the Appellants’ burden to precisely
define the invention, not the Patent and Trademark Office’s (“PTO”). In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants always have the
opportunity to amend the claims during prosecution, and broad interpretation
by the Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004) (“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.”). A video frame
has a variety of frame characteristics; however, it is not necessarily implicit
in the claim language that such characteristics are limited to identifying
whether the video frame is an I-frame or a P-frame.
We also are not persuaded by Appellants’ argument that Hamada does
not disclose using the selected thumbnail picture to achieve a video effect of
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the recorded picture data. App. Br. 12; Reply Br. 15-16. The Examiner
takes the position that affixing a mark thumbnail to a scene provides a
prospective viewer with a visually different presentation than a scene that
does not include a mark thumbnail. See Ans. 19. We agree with the
Examiner. One with ordinary skill in the art would have recognized that
affixing Hamada’s mark thumbnail to a scene (Hamada, ¶¶ [0115-17])
amounts to changing a video frame in the scene to achieve a video effect.
As such, Appellants have not shown why the Examiner’s reliance on
Hamada fails to teach the disputed claim limitation. It follows that the
Examiner has not erred in determining that the combination of Wee and
Hamada renders independent claims 3, 16, and 26 unpatentable.
Claims 17, 19-22, 27-32, and 53-56
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 17, 19-22, 27-32, and 53-56.
Therefore, we group these dependent claims with their underlying base
claim. See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, dependent claims
17, 19-22, 27-32, and 53-56 fall with independent claims 3, 16, and 26.
Remaining 35 U.S.C. § 103(a) Rejections
Claims 4-6, 10, 11, 15, 23-25, 33-35, 40, 41, 43, 44, 49, 50, 57, and 58
Appellants rely upon the same arguments presented against the
obviousness rejection of independent claim 3 to rebut the obviousness
rejections of independent claims 35, 43, and 49, and dependent claims 4-6,
10, 11, 15, 23-25, 33, 34, 40, 41, 44, 50, 57, and 58. App. Br. 14; Reply Br.
16-17. As discussed above, those arguments were not persuasive. It follows
that the Examiner has not erred in concluding that: (1) the combination of
Wee, Hamada, and Naimpally renders claims 4-6, 10, 11, 15, 35, 40, 41, 43,
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44, 49, 50, 57, and 58 unpatentable; (2) the combination of Wee, Hamada,
and Abe renders claims 23-25 unpatentable; and (3) the combination of
Wee, Hamada, and Ikonen renders claims 33 and 34 unpatentable.

IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 3-6, 10, 11, 15-17, 19-35, 40, 41, 43, 44, 49, 50, and 53-58 as being
unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 3-6, 10, 11, 15-17,
19-35, 40, 41, 43, 44, 49, 50, and 53-58.
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

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