11207742 - (D) (P.T.A.B. Mar. 14, 2014)

Ex Parte Kim et al

Patent Trials and Appeals BoardMar 14, 2014

11207742 - (D) (P.T.A.B. Mar. 14, 2014)

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. 11/207,742 08/22/2005 Kang-Wook Kim 48807 1582 1609 7590 03/17/2014 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER DIEP, NHON THANH ART UNIT PAPER NUMBER 2487 MAIL DATE DELIVERY MODE 03/17/2014 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 KANG-WOOK KIM and JAE-GON SON ____________________ Appeal 2011-012705 Application 11/207,742 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012705 Application 11/207,742 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-6 (App. Br. 4). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellants’ invention is directed to a method for transmitting moving pictures in a mobile communication terminal that includes determining if the size of an original moving picture to be transmitted exceeds preset maximum transmission capacity; wherein, when the size exceeds the maximum transmission capacity, the system seeks user approval to edit the size (Abstract). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method for transmitting a moving picture in a mobile communication terminal, the method comprising the steps of: determining if a size of an original moving picture to be transmitted exceeds a preset maximum transmission capacity when a user requests transmission of a moving picture; requesting approval from a user for editing the moving picture upon determining that the picture exceeds the capacity; generating, upon determining user's approval for editing the moving picture, a plurality of edited moving pictures by editing the original moving picture when the size of the original moving picture exceeds the preset maximum transmission capacity; and transmitting the edited moving pictures. Appeal 2011-012705 Application 11/207,742 3 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Vasudevan US 2002/0131496 A1 Sept. 19, 2002 Shanahan US 6,496,692 B1 Dec. 17, 2002 Lin US 6,711, 212 B1 Mar. 23, 2004 Lu US 7,330,509 B2 Feb. 12, 2008 Claims 1-3 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vasudevan in view of Shanahan. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vasudevan in view of Shanahan, Lu, and Lin. II. ISSUE The dispositive issue before us is whether the Examiner has erred in finding the combination of Vasudevan and Shanahan teaches or would have suggested “requesting approval from a user for editing the moving picture upon determining that the picture exceeds the capacity;” (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Vasudevan 1. Vasudevan discloses a system that dynamically adjusts the video stream bit rate with respect to the available bandwidth; wherein, when the available bandwidth of the network and/or client device is not large Appeal 2011-012705 Application 11/207,742 4 enough to handle a desired rate or delivery cost specified by the user (e.g., in times of heavy network traffic), the system adjusts the bit rate (¶ [0030]). 2. When the user’s requested bit rate exceeds the bandwidth capability, the system either notifies the client that there is insufficient bandwidth capacity and/or transmits the data stream at a maximum compatible bit rate (¶ [0047]). Shanahan 3. Shanahan discloses a system that prompts a user for confirmation and approval of conversion of selected files to a system compatible format (col. 1, ll. 6-10). IV. ANALYSIS Claim 1-3 and 6 Appellants contend although “Vasudevan discloses receiving a desired bit-rate or cost from the user prior to determining whether the size of the video stream exceeds the bandwidth,” “[t]his is different from the claimed invention which discloses determining if a size of an original moving picture exceeds a transmission capacity and then requesting approval from a user for editing the moving picture upon determining that the picture exceeds the capacity” (App. Br. 9). Appellants argue that “Vasudevan fails to disclose or suggest requesting approval from a user after determining that the picture exceeds the capacity” (App. Br. 10). Appellants finally contend, although “Shanahan discloses converting a selected file to a format compatible with a device,” “Shanahan’s disclosure of converting file formats if the formats are not compatible does not disclose [Appellants’] claimed features relating to editing moving pictures when the size of the Appeal 2011-012705 Application 11/207,742 5 picture exceeds the maximum capacity, upon a user’s approval” (App. Br. 11). However, the Examiner finds that “Vasudevan discloses the system and a method of adaptively transcode predictive coded video data and associated audio data such that the data may be transmitted at a bit rate that matches a bit rate or delivery cost requested by a client” (Ans. 14) and Shanahan “teaches the steps of requesting and receiving confirmation from the client before converting (editing) files” (Ans. 14-15). The Examiner notes that he “acknowledges that Vasudevan fails to disclose requesting approval from a user for editing the moving picture . . . and relies on Shanahan to make up for the Vasudevan’s deficiencies” (Ans. 11). We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We note claim 1 recites the “requesting approval from a user” step is performed “if” a condition occurs, such as if it is determined that the size “exceeds a preset maximum transmission capacity.” That is, if the condition does not occur, i.e., if the size is not determined to exceed the capacity, then there is no step of “requesting approval” from a user being done, and thus the steps of “generating” and “transmitting” of edited moving pictures upon the user’s approval also do not occur. Accordingly, in claim 1, the requesting approval, generating and transmitting of edited moving pictures are not positively recited as being carried out because of the recited predicate “determining” condition (“determining if a size of an original moving picture to be transmitted exceeds a preset maximum transmission capacity;” (Claim 1, emphasis added). Cf. In re Johnston, 435 F.3d. 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim Appeal 2011-012705 Application 11/207,742 6 because they can always be omitted.”). Based on such interpretation, the Examiner is not required to find the disclosure of the steps of requesting approval, generating and transmitting edited moving pictures in the prior art. See Ex Parte Gary M. Katz, 2011 WL 514314, *4 (BPAI 2011). Nevertheless, we agree with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Vasudevan is directed to a system that dynamically adjusts the video stream bit rate with respect to the available bandwidth; wherein, when the user’s requested bit rate exceeds the bandwidth capability, the system either notifies the client that there is insufficient bandwidth capacity and/or transmits the data stream at a maximum compatible bit rate (FF 1 and 2). We agree with the Examiner’s finding that Vasudevan discloses “determining whether the size of the video stream exceeds the bandwidth” (Ans. 10) and teaches a method of transmission of data “at a bit rate that matches a bit rate or delivery cost requested by a client” (Ans. 14, emphasis omitted). In addition, Shanahan is directed to a system that prompts a user for confirmation and approval of conversion of selected files to a system compatible format (FF 3). We agree with the Examiner’s finding that Shanahan “teaches the steps of requesting and receiving confirmation from the client before converting (editing) files” (Ans. 14-15). Accordingly, we find no error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) over Vasudevan in view of Shanahan. Further, claims 2, 3, and 6 (depending from claim 1), which have not been argued separately, fall with claim 1. Appeal 2011-012705 Application 11/207,742 7 Claims 4 and 5 Appellants merely allege the claim limitations of claims 4 and 5 are “not disclosed or suggested by Vasudevan and Shanahan, when applied individually or in any combination” (App. Br. 13). A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(vii). Moreover, mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf. Appellants’ arguments fail to comply with 37 CFR 1.111 (b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the reference. We therefore affirm the Examiner’s rejection of claims 4 and 5 under 35 U.S.C. § 103 over Vasudevan in view of Shanahan, Lu, and Lin. V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-6 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)(1)(iv). Appeal 2011-012705 Application 11/207,742 8 AFFIRMED ke