Ex Parte Kim et al

Patent Trial and Appeal Board

Mar 25, 2014

11297112 (P.T.A.B. Mar. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/297,112 12/08/2005 Jinha Kim 70086-00014 2027
58688 7590 03/25/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P.O. BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
03/25/2014 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 JINHA KIM, LEO RIOS, and JAMIL KHAN TAJIK
____________________

Appeal 2011-007721
Application 11/297,112
Technology Center 2400
____________________

Before CARLA M. KRIVAK, DEBRA K. STEPHENS, and
LARRY J. HUME, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007721
Application 11/297,112

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 32-51. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-31
were cancelled by Appellants.
We REVERSE.

Introduction
According to Appellants, the claims are directed to a video application
to prompt the display of images on screen for viewing by a user (Abstract).

Exemplary Claim
Claim 32, reproduced below, is illustrative of the claimed subject
matter:
32. A system comprising:
a video player;
a memory operably associated with the video player in
which DVD-Video data is encoded, wherein the DVD-Video data,
when played by the video player, causes the video player to
simulate output of multiple simultaneous separately selectable
video streams using
a single video display layer,
a single picture-mask layer, and
a single highlight layer defined by the DVD-Video data, by
(i) decoding the display layer to provide a first video stream
including video data for displaying a representation of a video
stream image and a representation of a sub-stream image on a
display device, each representation simulating a respective one of
separate moving image video streams for simultaneous display in
distinct screen areas of the display device, and by (ii) selectively
Appeal 2011-007721
Application 11/297,112

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masking and unmasking at least the representation of the sub-
stream image as defined by the picture mask layer, in response to
input received by the video player from a user input device, while
revealing the representation of the video stream image.

REFERENCES
Hemstreet US 2005/0075166 A1 Apr. 7, 2005
Martin US 7,174,512 B2 Feb. 6, 2007

(filed Nov, 28, 2001)

REJECTION
The Examiner rejects claims 32-51 under 35 U.S.C. § 103(a) as being
unpatentable over Hemstreet and Martin.

ISSUE
35 U.S.C. § 103(a): Claims 32-51
Appellants argue their invention is not obvious over Hemstreet and
Martin because under 35 U.S.C. § 103(c)(1), Hemstreet cannot preclude
patentability (App. Br. 6-8). Specifically, Appellants state the subject matter
disclosed by Hemstreet and the invention defined by claims 32-51 were, at
the time the invention was made, owned by the same person or subject to
obligation of assignment to the same person (App. Br. 6 (citing Statement of
Common Ownership filed August 12, 2010)). Further, Appellants maintain,
absent evidence of material doubt as to the accuracy of the Statement of
Common Ownership, additional evidence should not be required (App. Br. 8
(citing MPEP § 706.02(I)(2))). Thus, Appellants assert the Examiner erred
in finding evidence of material doubt as to the accuracy of the Statement of
Common Ownership.
Appeal 2011-007721
Application 11/297,112

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Thus, the issue presented by this argument is:
Issue: Has the Examiner erred in finding the Statement of Common
Ownership to be insufficient to preclude Hemstreet from barring
patentability under 35 U.S.C. § 103(c)(1)?

ANALYSIS
We are persuaded by Appellants’ arguments. Under MPEP
§ 706.02(l)(2), “if the applicant(s) or an attorney or agent of record makes a
statement to the effect that the application and the reference were, at the time
the invention was made, owned by, or subject to an obligation of assignment
to, the same person,” then the statement is deemed sufficient to preclude the
reference from barring patentability. Here, Appellants have made such a
statement (Remarks, § Statement of Common Ownership filed August 12,
2010). Thus, the Examiner must consider the present application and the
Hemstreet reference to be owned by, or subject to an obligation of
assignment to Warner Bros. Entertainment Inc.
In rare instances, the Examiner may have independent
evidence that raises a material doubt as to the accuracy of
applicant’s representation of either (1) the common
ownership of, or (2) the existence of an obligation to
commonly assign, the application being examined and
the applied U.S. patent or U.S. patent application
publication reference.”

(MPEP § 706.02(I)(2))

In such cases, the Examiner may explain why the
accuracy of the representation is doubted, and require
objective evidence of common ownership of, or the
existence of an obligation to assign, the application being
Appeal 2011-007721
Application 11/297,112

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examined and the applied reference as of the date of
invention of the application being examined.

(Id.).

In the present Appeal, the Examiner found recordation of the
Assignment 18 months after the filing of the application cast material doubt
on the Statement of Common Ownership thereby requiring objective
evidence of common ownership (Ans. 9-10). We find, however, the
recordation of the Assignment 18 months after the filing of the application
does not cast material doubt on the Statement of Common Ownership
because the recordation is “merely a ministerial act; it is not an Office
determination of the validity of the assignment document nor the effect of
the assignment document on the ownership . . .” (see MPEP § 301(V)).1
Accordingly, we are persuaded the Examiner erred in finding the
Statement of Common Ownership to be insufficient to preclude Hemstreet
from barring patentability under 35 U.S.C. § 103(c)(1). Since Hemstreet has
been precluded from barring patentability, we cannot sustain the rejection of
claims 32-51 under 35 U.S.C. § 103(a) for obviousness over Hemstreet and
Martin.

1 Further, we note Warner Bros. Entertainment Inc. was identified as the
assignee at the time the application was filed (Application Data Sheet filed
December 8, 2005 at 5).
Appeal 2011-007721
Application 11/297,112

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DECISION
The Examiner’s rejection of claims 32-51 under 35 U.S.C. § 103(a) as
being unpatentable over Hemstreet and Martin is reversed.

REVERSED

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