Ex Parte Kessler et al

Board of Patent Appeals and Interferences

Jul 9, 2012

09841140 (B.P.A.I. Jul. 9, 2012)

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.
09/841,140 04/24/2001 Damien Kessler PU010005 6046
7590 07/10/2012
JOSEPH S. TRIPOLI
THOMSON MULTIMEDIA LICENSING INC.
2 INDEPENDENCE WAY
P.O. BOX 5312
PRINCETON, NJ 08543-5312
EXAMINER
CZEKAJ, DAVID J
ART UNIT PAPER NUMBER
2487
MAIL DATE DELIVERY MODE
07/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAMIEN KESSLER, LIGANG LU, and
BILLY WESLEY BEYERS, JR.
____________
Appeal 2010-002479
Application 09/841,140
Technology Center 2400
____________

Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-18. Claims 19 and 20 have been cancelled. Br.
2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method directed to a digital video decoder that
simultaneously receives two encoded video streams with different
resolutions and, during decoding, switches from one video resolution to
another. According to Appellants, the claimed invention stores video data
from each stream in a buffer, thereby allowing the digital video decoder to
switch between each video stream seamlessly—provided the buffer holds
and outputs video data to match the time it takes to switch video streams.
See Spec. 1: 8-11 and 6: 9-13.
Illustrative Claims
1. A method for processing packetized video data,
comprising the stops of:
receiving a first video stream comprising encoded data
representing a first video program having a first display
resolution;
simultaneously receiving a second video stream
comprising encoded data representing a second video program
of a second display resolution lower than said first display
resolution;
processing transmission identification information for
signaling a transition from said first display resolution program
to said second display resolution program;
seamlessly incorporating said first video program
encoded data and said second video program data and said
identification information into packetized data; and
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providing said packetized data for output in a seamless
stream for output to a transmission channel.

9. A method for decoding image representative input
data representing a video program of a first display resolution
and incorporating video segments of a lower second display
resolution, comprising the steps of:
identifying a first video stream of encoded data
representing a video program of a first display resolution;
identifying a second simultaneous stream of encoded data
representing a video segment of a second display resolution
lower than said first display resolution for insertion within said
video program;
acquiring identification information for signaling a
transition from said first display resolution to said second
display resolution; and
decoding said video program encoded data and said
video segment encoded data simultaneously to provide a
decoded first resolution data output and a decoded second
resolution data output respectively using said identification
information; and
seamlessly formatting said first and second resolution
decoded data outputs for display.

Prior Art Relied Upon
Chen US 5,917,830 June 29, 1999
Sakamoto US 6,026,164 Feb. 15, 2000
Desai US 6,034,746 Mar. 7, 2000

Rejections on Appeal
Claims 1, 2, 4-8, and 11-15stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Desai and Chen. 1 Ans. 3-5.2

1 The Examiner appears to have rejected dependent claims 11-15 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Desai and
Chen. Ans. 4-5. However, we note that independent claim 9, from which
claims 11-15 depend, stands rejected under 35 U.S.C. § 103(a) as being
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Claims 3, 9, 10, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Desai, Chen, and Sakamoto.
Ans. 5-6.
Examiner’s Findings and Conclusions
1. The Examiner finds that Chen’s Figure 4 simultaneously
receives a main stream and an insertion stream. Ans. 6. The Examiner also
finds that Chen discloses inserting the insertion stream into different main
streams at the same time, and performing the processing steps pertaining to
Figure 4 concurrently. Id. (citing col. 4, ll. 57-62 and col. 12, ll. 30-35).
Based on these cited disclosures, the Examiner finds that Chen teaches or
suggests simultaneously receiving a first and second video stream, as
required by independent claim 1. Ans. 4 and 6. Further, the Examiner finds
that Chen discloses inserting commercials into streams requires a number of
time-consuming steps that must be implemented with additional hardware.
Ans. 6. The Examiner finds that since Chen’s apparatus helps reduce the
number of steps and the associated hardware, a sufficient rationale exists to
combine Desai and Chen. Ans. 4 and 6-7.
Moreover, the Examiner finds that since all the elements of the
claimed invention are known in the prior art, are capable of being combined
without any change to their respective functions, and would yield predictable

unpatentable over the combination of Desai, Chen, and Sakamoto. Ans. 5.
Therefore, since Sakamoto is part of the rejection of independent claim 9,
we will treat dependent claims 11-15 as being rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Desai, Chen, and
Sakamoto. Appellants failed to separately argue this on appeal. Therefore,
Appellants have waived any such arguments. See In re Watts, 354 F.3d
1362, 1367 (Fed. Cir. 2004).
2 All references to the Examiner’s Answer refer to the Answer mailed
September 17, 2009, which replaced the Answer mailed January 25, 2008.
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results, the proffered combination is a simply modification of equivalent
parts, not a teaching away. Ans. 7
2. In addition to relying upon the rejection of independent claim 1,
the Examiner finds that Sakamoto’s disclosure of decoding the video
program to provide a decoded first resolution and a decoded second
resolution teaches or suggests the “decoding” method step recited in
independent claim 15. Ans. 5 (citing to Figure 9 which illustrates that the
first resolution data is High Definition television data and the second
resolution data is Standard Definition television data). In particular, the
Examiner finds that Sakamoto’s Figure 5 illustrates three decoders that
operate in parallel and, therefore, decode data simultaneously. Ans. 7
Appellants’ Contentions
1. Appellants contend that since Chen discloses halting the main
program before accessing the ad insertion stream from storage, Chen
produces the first and second data streams sequentially, not simultaneously.
See Br. 10-12. Therefore, Appellants assert that Chen and Desai fail to teach
or suggest simultaneously receiving a first and second video stream, as
required by independent claim 1. See id. Further, Appellants argue that the
Examiner does not provide a sufficient rationale to combine Desai and Chen.
Br. 13. In addition, Appellants allege that Chen’s disclosure of providing
MPEG-2 data to both the television program video and the inserted
advertising video teaches away from Desai’s disclosure of combining higher
and lower resolution data segments in a single data stream. Br. 13-14.
2. Appellants rely upon the same arguments presented for the
obviousness rejection of independent claim 1 to rebut the obviousness
rejection of independent claim 9. Br. 16. In addition, Appellants generally
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allege that Desai, Chen, and Sakamoto fail to teach or suggest
“simultaneously” decoding a first resolution data output and a second lower
resolution data output, as required by independent claim 9. Id.

II. ISSUES
1. Did the Examiner err in concluding that the combination of
Desai and Chen renders independent claim 1 unpatentable? In particular, the
issue turns on whether:
(a) the proffered combination teaches or suggests “receiving a first
video stream [. . .][,]” as recited in independent claim 1;
(b) the proffered combination teaches or suggests “simultaneously
receiving a second video stream [. . .][,]” as recited in independent claim 1;
(c) the Examiner provides an articulated reason with some rational
underpinning to combine Desai and Chen; and
(d) Chen teaches away from the claimed invention.
2. Did the Examiner err in finding that the combination of Desai,
Chen, and Sakamoto teaches or suggests the following claim limitations
recited in independent claim 9:
(a) “identifying a first video stream of encoded data [. . .];”
(b) “identifying a second simultaneous stream of encoded data [. .
.];” and
(c) “decoding said video program encoded data and said video
segment encoded data simultaneously [. . .][.]”

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III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Desai and Chen
Claim 1
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of independent claim 1, which recites, inter alia: 1)
“receiving a first video stream [. . .];” and 2) “simultaneously receiving a
second video stream [. . .][.]”
At the outset, we note that Chen’s Figure 4 illustrates an Insertion
Processing Unit (“IPU”) of a Digital Ad Insertion module that receives both
a main stream and an insertion stream. Col. 5, ll. 62-66. In particular,
Chen’s Figure 5 illustrates the processing steps of the IPU, and explicitly
discloses that such steps may occur concurrently. Col. 12, ll. 28-32.
Therefore, since Chen discloses that the IPU may receive both the main
stream and the insertion stream concurrently, we agree with the Examiner
that Chen sufficiently describes simultaneously receiving a first and second
video stream. See Ans. 6. As such, we find that Chen teaches or suggests
“receiving a first video stream [. . .];” and 2) “simultaneously receiving a
second video stream [. . .][,]” as recited in independent claim 1.
Rationale to Combine
We are not persuaded by Appellants’ argument that the Examiner
does not provide any motivation for an ordinarily skilled artisan to combine
Desai and Chen. See Br. 13. The U.S. Supreme Court has held that while
the requirement for a teaching, suggestion, or motivation (“the TSM test”) to
combine known elements in order to show that the combination would have
been obvious may be “a helpful insight,” it cannot be used as a rigid and
mandatory formula. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19
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(2007). The Court instructs that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 416. The Court further instructs that:
“[[r]]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”… however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 418 (citation omitted).
Upon reviewing the record before us, we find that the Examiner’s
suggestion for the proposed modification in the prior art suffices as an
articulated reason with some rational underpinning to establish the prima
facie case of obviousness. That is, we find that an ordinarily skilled artisan
in the art of video processing, at the time of the claimed invention, would
have combined Desai’s disclosure of inserting commercials into a video data
stream (col. 4, ll. 2-6), with Chen’s disclosure of the IPU receiving both the
main stream and the insertion stream concurrently (col. 5, ll. 62-66 and col.
12, ll. 28-32). This combination of familiar elements according to known
methods would predictably result in an apparatus that operates more
efficiently by reducing the time needed to insert commercials into a video
data stream. See Ans. 4 and 6-7 (citing Chen at col. 1, ll. 40-50).
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Teaching Away
We are not persuaded by Appellants’ argument that Chen teaches
away from the claimed invention. See Br. 13-14. Appellants’ assertion that
Chen never discloses dealing with low and high definition data streams (Br.
13) does not indicate that Chen is incapable of combining higher and lower
resolution data streams into a single data stream. While Appellants point out
an example in Chen that provides MPEG-2 data to both the television
program video and the inserted advertising video (Br. 14), this disclosure in
no way discourages or precludes Chen from combining two streams of video
having different resolutions (i.e., high and low). See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994). Moreover, Appellants have not pointed to an
explicit disclosure within Chen that acts to “criticize, discredit, or otherwise
discourage” seamlessly incorporating two video streams having different
resolutions, as required by independent claim 1. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Therefore, we are not convinced that Chen
teaches away from the claimed invention. It follows that the Examiner has
not erred in concluding that the combination of Desai and Chen renders
independent claim 1 unpatentable.
Claims 2 and 4-8
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 2 and 4-8. See Br. 15.
Therefore, we accept Appellants’ grouping of these dependent claims with
their underlying base claim. Id. Consequently, dependent claims 2 and 4-8
fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
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35 U.S.C. § 103(a) Rejection—Combination of Desai, Chen, and Sakamoto
Claim 9
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of independent claim 9, which recites, inter alia: 1)
“identifying a first video stream of encoded data [. . .];” 2) “identifying a
second simultaneous stream of encoded data [. . .];” and 3) “decoding said
video program encoded data and said video segment encoded data
simultaneously[. . .][.]”
In light of our analysis with respect to independent claim 1, we find
that Chen teaches or suggests “identifying a first video stream of encoded
data [. . .][,]” and “identifying a second simultaneous stream of encoded data
[. . .][,]” as recited in independent claim 9.
With respect to the “decoding” method step, Appellants simply
reiterate this method step and generally allege that Desai, Chen, and
Sakamoto fail to teach or suggest the “simultaneous” claim feature. See Br.
16. Merely pointing out what a claim recites and nakedly asserting that
Desai, Chen, and Sakamoto fail to teach or suggest the corresponding claim
feature does not amount to a separate patentability argument. See 37 C.F.R.
§ 41.37(c)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
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detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”).
Nonetheless, we note that the Examiner’s obviousness rejection of the
“simultaneous” claim feature in the “decoding” method step is predicated on
the Examiner’s finding that Sakamoto’s Figure 5 illustrates three decoders
that operate in parallel. See Ans. 7. Therefore, absent contrary argument or
evidence, we are not persuaded of error in the Examiner’s finding that
Sakamoto’s disclosure of decoding data simultaneously teaches or suggests
the simultaneous aspect of the “decoding” method step recited in
independent claim 9. It follows that the Examiner has not erred in
concluding that the combination of Desai, Chen, and Sakamoto renders
independent claim 9 unpatentable.
Claims 3 and 10-18
Appellants contend that Sakamoto does not remedy the above-noted
deficiencies in Desai and Chen. See Br. 16. As discussed supra, there are no
such deficiencies in either Desai or Chen for Sakamoto to remedy. It
follows that the Examiner has not erred in concluding that the combination
of Desai, Chen, and Sakamoto renders dependent claims 3 and 10-18
unpatentable.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1-18 as being
unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 1-18.
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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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