10757626 (B.P.A.I. Sep. 23, 2010)

Ex Parte Lee

Board of Patent Appeals and InterferencesSep 23, 2010

10757626 (B.P.A.I. Sep. 23, 2010)

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. 10/757,626 01/14/2004 Janghwan Lee PU030211 4858 24498 7590 09/24/2010 Robert D. Shedd, Patent Operations THOMSON Licensing LLC P.O. Box 5312 Princeton, NJ 08543-5312 EXAMINER SHIBRU, HELEN ART UNIT PAPER NUMBER 2621 MAIL DATE DELIVERY MODE 09/24/2010 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 JANGHWAN LEE _____________ Appeal 2009-008044 Application 10/757,626 Technology Center 2600 ____________ Before ROBERT E. NAPPI, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008044 Application 10/757,626 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s non-final rejection of claims 21-23, 28-33, and 37-40. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION Appellant’s claimed invention is directed to communicating stop and pause commands for controlling viewing of moving pictures (Spec. 1:6-8). Particularly, in response to a stop command, a processor ensures a trick mode flag in at least one of the packets retrieved from memory is cleared and forwards the packets to a receiver (Spec. 15:25-28). If the processor determines the command issued by a user is a pause command, the processor encodes the pause command in a retrieved packet by setting a trick mode flag of a retrieved packet to 1, thus ensuring the trick mode field is set to indicate a freeze mode (Spec. 16:3-8). Claim 21, reproduced below, is representative of the subject matter on appeal: 21. A method for communicating stop and pause commands in a video recording and playback system, comprising the steps of: in response to a pause command, setting a trick mode indicator of a last frame of video data to be displayed to indicate a freeze trick mode; and in response to a stop command, clearing a trick mode indicator of a last frame of video data to be displayed. Appeal 2009-008044 Application 10/757,626 3 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Aotake US 5,732,067 Mar. 24, 1998 The following rejection is before us for review: The Examiner rejected claims 21-23, 28-33, and 37-40 under 35 U.S.C. § 102(b) as anticipated by Aotake. ISSUE The pivotal issue is whether Aotake teaches the limitations of: “setting a trick mode indicator of a last frame of video data to be displayed to indicate a freeze trick mode” in response to a pause command and “clearing a trick mode indicator of a last frame of video data to be displayed” in response to a stop command as recited in independent claim 21. PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). ANALYSIS Appellant argues (Br. 11), inter alia, the Examiner’s cited passage in Aotake (col. 28, ll. 39-44) merely describes the pause function and is silent Appeal 2009-008044 Application 10/757,626 4 as to “setting a trick mode indicator,” let alone “setting a trick mode indicator of a last frame of video data to be displayed to indicate a freeze trick mode.” Appellant assets (Br. 11) that even if the picture becomes still in response to a pause command, thereby referring to a freeze trick command, it still does not meet the limitation of “setting a trick mode indicator of a last frame of video data to be displayed.” Appellant further argues (Br. 13) that Aotake does not teach clearing a trick mode indicator since Aotake does not teach setting a trick mode indicator in the first place. We agree with Appellant. Because Aotake does not teach setting a trick mode indicator, let alone clearing a trick mode indicator, Aotake does not teach every element of Appellant’s claimed invention. Thus, we will reverse the Examiner’s rejection of claim 21 and for similar reasons the rejections of claims 22, 23, 28-33, and 37-40. CONCLUSION Aotake does not teach the limitations of: “setting a trick mode indicator of a last frame of video data to be displayed to indicate a freeze trick mode” in response to a pause command and “clearing a trick mode indicator of a last frame of video data to be displayed” in response to a stop command. ORDER The decision of the Examiner to reject claims 21-23, 28-33, and 37-40 is reversed. Appeal 2009-008044 Application 10/757,626 5 REVERSED babc Robert D. Shedd, Patent Operations THOMSON Licensing LLC P.O. Box 5312 Princeton, NJ 08543-5312