Ex Parte Johnson et al

Patent Trial and Appeal Board

Mar 7, 2016

14155969 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/155,969 01115/2014
24498 7590 03/09/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Mark Rogers JOHNSON
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.
PU050063US-CONTINUATION 5672
2
EXAMINER
DANG,HUNGQ
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ROGERS JOHNSON, RALF OSTERMANN, and
JOSEPH SANDERSON RICE
Appeal2016-002360
Application 14/155,969
Technology Center 2400
Before ALLEN R. MacDONALD, BRUCE R. WINSOR, and
JOHN A. HUDALLA, Administrative Patent Judges.
TT TT-.i. TC"I,,........,. T""ti. ' 1 • • , , • T'lo , , T 1 w 11'\J ~UK, Aamznzsrranve rarem Juage.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claim 11, which is the only claim pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-10 are
cancelled. (App. Br. 3.)
We affirm.
1 The real parties in interest identified by Appellants are Thompson
Licensing and Jeffrey Braun. (App. Br. 3.)
Appeal 2016-002360
Application 14/155,969
RELATED PROCEEDfNGS
Appellants identify Appeal 2013-003163 (Notice of Appeal filed Sept.
14, 2012; Decision mailed June 25, 2015 (hereinafter the"' 163 Dec'n"))
pertaining to Application 11/918,511, now U.S. Patent 9,167,220, from
which the instant application claims priority, as related to the instant appeal.
(App. Br. 3.) In addition, we note that Appeal 2016-002417 (Notice of
Appeal filed July 26, 2015; co-pending herewith) (hereinafter the '417
Appeal) pertains to Application 14/155,956, which also claims priority to
Application 11/918,511 (see '417 Appeal Brief 3; see also Final Act. 9--11).
Accordingly Appeal 2016-002417 is related to the instant appeal.
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "Digital Versatile Discs,
previously known as Digital Video Discs (DVDs), High Definition Digital
Versatile Discs (HD DVD), and Blu-Ray Disc (BD), and more particularly
to ... facilitating synchronization among the sub-streams of different
audio/visual (A/V) streams embedded on a DVD, HD DVD, or BD." (Spec.
1: 10-14.) Claim 11 reads as follows:
11. A method for arranging audio frames into audio
packets where audio frame segmentation across audio packets
can occur, compnsmg:
packing an audio frame header into an audio packet at an
angle change point in a Transport Stream (TS) so that audio
frame segmentation does not exist across an angle change point;
packing a last audio packet of an audio frame
immediately prior to another angle change point in the TS, so as
to conclude with a complete audio frame; and
packing a subtitle packet to start with an Epoch start
header.
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Appeal 2016-002360
Application 14/155,969
Claim 11 stands provisionally rejected for non-statutory double
patenting over claim 6 of Application 11/918,511, now U.S. Patent
9,167,220, and McCrossan (WO 2005/004478 Al; Jan. 13, 2005). (See
Final Act. 8-9.)
Claim 11 stands provisionally rejected for non-statutory double
patenting over claim 11 of Application 14/155,956 and McCrossan. (See
Final Act. 9-11.)
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamane (US 5,784,528; July 21, 1998), Miwa (US 6,285,825 Bl; Sept.
4, 2001), and McCrossan. (See Final Act. 11-13.) Although not relied upon
as prior art in rejecting claim 11, the Examiner relies on Fukuda (US
2002/0122658 Al; Sept. 5, 2002) as evidence of how one of ordinary skill in
the art would have understood the teachings of Yamane. (See Advisory
Action 2 (July 22, 2015); Ans. 10.).
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed July 27, 2015; "Reply Br." filed Dec. 16, 2015) and the
Specification ("Spec." filed Jan. 15, 2014 for the positions of Appellants and
the Final Office Action ("Final Act." mailed May 27, 2015) and Answer
("Ans." mailed Nov. 19, 2015) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv)(2015).
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Application 14/155,969
ISSUES
The salient issues presented by Appellants' arguments are as follows:
Issue 1 - Does the combination of Yamane and Miwa teach or
suggest:
packing an audio frame header into an audio packet at an
angle change point in a Transport Stream (TS) so that audio
frame segmentation does not exist across an angle change point;
[and]
packing a last audio packet of an audio frame
immediately prior to another angle change point in the TS, so as
to conclude with a complete audio frame;
as recited in claim 11?
Issue 2 - Does McCrossan, when combined with Yamane and Miwa,
teach or suggest "packing a subtitle packet to start with an Epoch start
header," as recited in claim 11?
Issue 3 - Did the Examiner err in combining Yamane, Miwa, and
McCrossan?
ANALYSIS
NON-STATUTORY DOUBLE PATENTING REJECTIONS
On March 2, 2015, Appellants filed terminal disclaimers intended to
overcome the Examiner's non-statutory double patenting rejection. (App.
Br. 8.) Appellants contend "that they have complied with the necessary
formalities for consideration of the terminal disclaimers, which should
obviate the outstanding double patenting rejection, thereby rendering this
rejection moot." (Id.; see also Reply Br. 4) Appellants do not otherwise
traverse the non-statutory double patenting rejections.
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Application 14/155,969
The Examiner explains "since the terminal disclaimers have not been
approved yet, the double patenting rejections stands [sic] and will be
withdrawn later when the terminal disclaimers are approved." (Ans. 9; see
also Final Act. 7.) Our review of the record does not indicate that the
terminal disclaimers submitted March 2, 2015 have been approved.
Accordingly, we summarily and proforma sustain the rejections of claim 11
for non-statutory double patenting. We note that our decision to sustain the
rejections is without prejudice to Appellants' ability to overcome the
rejections by filing acceptable terminal disclaimers. 2
REJECTIONUNDER35 U.S.C. § 103(A)
'163 Decision
Appellants assert that in the prior ' 163 Decision the "Board
recognized the need for the secondary reference to teach angle switching to
constitute a proper combination with Yamane et al." (App. Br. 11.)
Appellants' arguments mischaracterize the '163 Decision. In that decision
we reversed the Examiner's rejection of all pending claims (' 163 Dec 'n 5)
because, on a preponderance of the evidence on that record, the Examiner
erred by failing to demonstrate that independent claim 6 would have been
obvious over the combination of Yamane with Okada (US 6,122,436; Sept.
19, 2000) and Nitta (US 6,363,208 B2; Mar. 26, 2002). Although the
opinion considered the fact that neither Okada nor Nitta teaches an angle
change point (' 163 Dec 'n 4--5), our decision was also based on the fact
2 The timeliness of the Examiner's action regarding the terminal disclaimers
is a matter that is addressable, if at all, by petition to the Director of the
USPTO or her delegates, rather than on appeal to this Board. See 37 C.F.R
§ 1.181; see also MPEP § 1201 ("The Board will not ordinarily hear a
question that should be decided by the Director on petition .... ").
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Appeal 2016-002360
Application 14/155,969
finding that "f tj he Examiner maf de} no findings that explain how Nitta
teaches or suggests that that first VOBU of a cell, video object (VOB), or
YOBS is at an 'angle change point.'" (Id. at 5 (emphasis added).) Therefore,
we did not find or conclude that in order to be combinable with Yamane a
reference must teach angle switching, we merely concluded that on the record
presented the Examiner had not demonstrated obviousness. We consider the
instant appeal based on the record presented in this appeal, not the record that
resulted in the '163 Decision.
Issue 1
As an initial matter, we note that to the extent Appellants' arguments
relate to whether Yamane teaches repetition of audio program content
among various entities (packets, frames, VOBs, 3 VOBUs, 4 ILVUs, 5 TSs, 6
etc.), whether before or after and angle change point, we find those
arguments to be unhelpful to our analyses because they are not
commensurate with the scope of claim 11. Claim 11 includes no recitations
limiting the audio program content of the recited transport streams. Rather,
claim 11 recites, in essence, that the first audio packet in the portion of a TS
between two angle switching points includes an audio frame header, and the
last audio packet of the portion of the TS includes the end of an audio frame,
such that no audio frame is fragmented across an angle change point. We
note that for the audio packets to include the audio frame header and the end
of an audio frame, the packets were, at some point, necessarily "pack[ ed]"
with the corresponding data.
3 Video Objects. (Reply Br. 5; Yamane col. 8, 11. 11-12.)
4 Video Object Units. (Spec. 2:31.)
5 Interleaved Video Units. (Spec. 3: 1.)
6 Transport Streams. (Spec. 2:27-28.)
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The Examiner finds, and we agree, that one of ordinary skill in the art
would have understood Miwa's "audio frame information" (see, e.g., Miwa
col. 11, 11. 3-32, Fig. 7 A) to teach an audio frame header. (See Final Act, 12
(citing Miwa col. 11, 11. 3-32, 38---60, Figs. 7 A, 7B, 7D).) Implicit in this
finding is the observation that Miwa's "audio frame information" is placed
before the data in the audio frame, i.e., that Miwa teaches that an audio
frame begins with an audio frame header. (See Miwa Figs. 7 A, 7B, and 7D.)
The Examiner finds, and we agree, that one of ordinary skill in the art
would have understood Yamane to teach or suggest that a data stream, which
the Examiner analogizes to a TS, between two angle change points
comprises an ILVU. (Final Act. 11-12 (citing Yamane col. 50, 1. 38---col 51,
1. 51, col. 52, 1. 24---col. 53, 1. 26, col. 57, 11. 50-56, Figs. 18, 42, 45, 48, 79,
and 80).) Appellants equate an IL VU to a VOB. (Reply Br. 5, accord
Yamane col. 49, 11. 24--38, Figs. 24, 76.) The Examiner explains that
Fukuda evidences that "[a] ccording to the DVD video specifications, it is
required that audio frames should be completed in one VOB, while it is
unnecessary that audio frames should be completed in one VOBU, and
coded data of audio frames may be divided by boundaries of VOBUs"
(Fukuda i-f 17). (Ans. 10 (citing Fukuda i-f 17, Fig. 4; Yamane Fig. 76).)7 In
other words, in order for an audio frame to be completed in one VOB, as
required by the DVD specification, for each audio frame included within the
VOB both the beginning of the included audio frame and the end of the
audio frame must be packed into packets within the same VOB. It logically
follows that the first audio packet of the VOB is packed with the beginning
of the first audio frame in the VOB, i.e., a frame header as taught by Miwa
7 We note that Fukuda was not before us when we decided the ' 163 Appeal.
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Application 14/155,969
(Miwa Figs. 7 A, 7B, and 7D), and the last audio packet of the VOB is
packed with last data of the last audio frame in the VOB so as to "conclude
with a complete audio frame," as recited in claim 11. Thus, one of ordinary
skill in the art would have understood that although so-called "pudding data"
may be added after the end of the last audio frame in the VOB to fill out an
audio packet (Fukuda i-f 17), no audio frame would be fragmented at an angle
change point. (Contra App. Br. 13.)
Therefore, we agree with the Examiner that one of ordinary skill in
the DVD art, who would be familiar with the DVD specifications, as
described by Fukuda (i-f 17), would have understood Yamane to teach or
suggest
packing an audio frame [beginning] ... into an audio
packet at an angle change point in a Transport Stream (TS) so
that audio frame segmentation does not exist across an angle
change point; [and]
packing a last audio packet of an audio frame
immediately prior to another angle change point in the TS, so as
to conclude with a complete audio frame,
as recited in claim 11. We further agree that Miwa teaches that the "audio
frame [beginning]" is an "audio frame header," as recited in claim 11.
Issue 2
The Examiner finds McCrossan teaches "packing a subtitle packet to
start with an Epoch start header," as recited in claim 11, and that it would
have been obvious to combine the teachings of McCrossan into the
combination of Yamane and Miwa "to provide the presentation with
subtitles therefore enhancing the presentation interface .... " (Final Act. 13
(citingMcCrossan 16:24--29, 17:22-18:10, 21:9-14, Figs. 4A, 5, 32, 34).)
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Application 14/155,969
Appellants contend "McCrossan et al. does not use the wor[ d] packing
anywhere in their disclosure, so applicants question how the examiner can
assert that McCrossan et al. performs applicants' step of packing a subtitle
packet to start with an Epoch start header." (App. Br. 11.) However, the
interpretation of prior art references does not require the application of an
ipsissimis verbis test. Cf In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)
(citing Akzo N. V. v. US. Int 'l Trade Comm 'n, 808 F .2d 14 71, 14 79 & n.11
(Fed. Cir. 1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953
F.2d 1360, 1369 (Fed. Cir. 1991) ("[a] reference ... need not duplicate word
for word what is in the claims"). (See Ans. 13 ("There is no need to use the
term 'packing' to make McCrossan read on the claimed feature.").) Similar
to what we concluded above, for McCrossan's subtitle graphics packets to
include subtitle data (see McCrossan 1 :21-24 ), the subtitle packets were, at
some point, necessarily "pack[ ed]" with the corresponding data. Therefore
we agree with the Examiner that "[ m ]aking an 'Epoch start header' inserted
in the stream as shown is 'packing'." (Ans. 13.)
Appellants contend "the failure of the secondary reference to describe
angle switching is fatal to the Examiner's primafacie case of obviousness
because the Examiner has not shown that resultant combination with
Yamane et [al.] would have yielded results predictable to one of ordinary
skill in the art." (App. Br. 12.) Appellants' arguments are not
commensurate with the scope of claim 11. As pointed out by the Examiner,
"the claim does not recite any relationship between the feature of 'packing a
subtitle packet to start with an Epoch start header' and an angle change point
at all. Rather, this is only a feature of a content stream in general." (App.
Br. 13.)
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Appellants contend, for the first time in the Reply Brief~
After careful review, applicants submit that McCrossan et al., at
Col. 12, lines 47-57[ 8], describe the desirability of providing a
Window Definition Segment (WDS) in the Epoch start header
(DS 1 ). The WDS of McCrossan et al. specifies a window in
which subtitles undergo display. However, applicants do not
consider the specification of a window in the Epoch start header
the equivalent of packing a subtitle to start with an Epoch start
header, as recited in applicants' claim 11. While McCrossan et
al. admittedly contains numerous references to subtitles,
including the above described reference to providing the Epoch
Start Header with a WDS for subtitle display, McCrossan et al.
does not disclose or suggest anything regarding packing a
subtitle packet to start with an Epoch start header.
(Reply Br. 6.) Appellants conclusory argument, which does not
address the specific passages of McCrossan relied upon by the Examiner, is
untimely and waived. Appellants do not respond to any particular position
taken in the Answer that varied from the Final Office Action. Appellants
offer no reason, and we see none, why Appellants could not have performed
their "careful review" prior to filing the Appeal Brief, and included the
argument in the Appeal Brief. See 37 C.F .R. § 41.41 (b )(2); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief, will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief); see also Ex parte Borden, 93 USPQ2d 14 73, 14 77 (BP AI
2010) (informative) ("Properly interpreted, the Rules do not require the
Board to take up a belated argument that has not been addressed by the
8 We are unable to locate the cited passage of McCrossan. The McCrossan
reference relied upon by the Examiner is not formatted in columns, and page
12 of the reference only has 25 lines.
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Application 14/155,969
Examiner, absent a showing of good cause."). Were we to automatically
consider such newly raised arguments, "[ r ]ather than reviewing a record for
error, the Board would be considering, in the first instance, findings of fact
proposed by the Appellants, but not weighed by the Examiner [in the
Examiner's Answer] against the other evidence of record." Borden, 93
USPQ2d at 1475.
Therefore, we agree with the Examiner that McCrossan, when
combined with Yamane and Miwa, teaches or suggests "packing a subtitle
packet to start with an Epoch start header," as recited in claim 11.
Issue 3
Appellants contend "the examiner has not shown why it would
necessarily [have] been obvious to a person of ordinary skill in the art to
combine McCrossan et al. and Miwa et al. with Yamane et al. to provide a
method of producing a storage medium that avoids audio fragmentation at an
angle change point." (App. Br. 12.) Appellants further contend "the
Examiner has not shown the necessary predictability of success of this
combination of references as required by KSR." (App. Br. 12.) We
disagree. The Examiner provides "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness" KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). More particularly, the Examiner finds that
incorporating Miwa's audio frame information, i.e., audio frame headers into
Yamane' s audio frames would "facilitate management of [Yamane' s] audio
frame data." (Final Act. 12.) The Examiner further finds adding
McCrossan's subtitles to the method taught by Yamane and Miwa would
"enhance[e] the presentation interface." (Final Act 13.) We agree with the
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Examiner's rationale and Appellants have not set forth any reason why
adding an audio frame header at the beginning of an audio frame and adding
subtitles would not yield the predictable results articulated by the Examiner.
Indeed, we conclude the combination articulated by the Examiner are no
more than "[ t ]he combination of familiar elements according to known
methods [that] is likely to be obvious when it does no more than yield
predictable results," KSR, 550 U.S. at 416, that can be implemented by a
person of ordinary skill in the art, id. at 417.
Appellants also argue as follows:
Yamane et al. alone teaches a method of producing a DVD that
avoids audio fragmentation, albeit differently than applicants'
claim 11 so applicants question why a skilled artisan would be
motivated to modify Yamane et al. by adding Miwa et al. and
McCrossan to solve the same problem Yamane et al. solves by
itself.
(App. Br. 12.) Appellants' argument does not identify error because the
Examiner has identified problems that would be solved by the articulated
combinations and "[ u ]nder the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed."
KSR, 550 U.S. at 420.
Finally, Appellants contend "modifying Yamane et al. to include
Miwa et al. and McCrossan et al[.] would certainly change the operation of
Yamane et al., thereby violating the provisions ofMPEP 2143.01 that the
proposed modification cannot change the principle of operation of a
reference." (App. Br. 12.) However, Appellants do not identify in what way
adding audio frame headers as taught by Miwa or subtitles as taught by
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McCrossan would change Yamame's principle of operation, i.e., would
change the "laws or facts of nature underlying the operation," Merriam-
Webster's Collegiate Dictionary 927 (def. 1 c) (10th ed, 1999).
Accordingly, on this record we find no error in the Examiner's
combination of Yamane, Miwa, and McCrossan.
Summary
We have considered the Examiner's findings and conclusions in light
of Appellants' arguments. On this record we find no error in the rejection of
claim 11.
DECISION
The decision of the Examiner to reject claim 11 for non-statutory
double patenting is summarily and proforma affirmed.
The decision of the Examiner to reject claim 11 under 35 U.S.C.
§ 103(a) 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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