Ex Parte Lin

Board of Patent Appeals and Interferences

Jul 19, 2012

09968687 (B.P.A.I. Jul. 19, 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.
09/968,687 10/01/2001 Shu Lin PU010212 8049
7590 07/19/2012
THOMSON multimedia Licensing Inc.
Patent Operations
Two Independence Way
P.O. Box 5312
Princeton, NJ 08543-5312
EXAMINER
SHIBRU, HELEN
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
07/19/2012 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 LIN SHU
_____________

Appeal 2010-005954
Application 09/968,687
Technology Center 2600
______________

Before ROBERT E. NAPPI, DAVID M. KOHUT, and
TREVOR JEFFERSON, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005954
Application 09/968,687

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1 through 10, 13 through 19, 21 and 22.

We reverse.
INVENTION
The invention is directed a method of identifying video data on a
storage medium by automatically selecting at least one picture from the
work where the picture is a suitable identifier of the work. See 2 of
Appellant’s Specification. Claim 1 is representative of the invention and
reproduced below:
1. A method for identifying video data for storage on a
storage medium, comprising the steps of:
automatically selecting at least one intra picture from the
video data; and
verifying that the selected intra picture is suitable for use
as an identifier for the video data by counting a number of bytes
in the selected intra picture and comparing the number of bytes
in the selected intra picture to a predetermined threshold.

REFERNCES
TANIGUCHI US 6,192,183 B1 Feb. 20, 2001
BRECHNER US 6,970,859 B1 Nov. 29, 2005

Appeal 2010-005954
Application 09/968,687

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 7, 9, 14 through 19 and
21 under 35 U.S.C. § 103(a) as unpatentable over Appellant’s Admitted
Prior Art (AAPA) in view of Brechner. Answer 3-5.
1

The Examiner has rejected claims 1 through 10, 13 through 19, 21 and
22 under 35 U.S.C. § 103(a) as unpatentable over Taniguchi in view of
Brechner. Answer 6-10.
ISSUES
Rejection based upon AAPA and Brechner
Appellant argues on pages 19 through 26 and 33 of the Brief
2
that the
Examiner’s rejection of independent claims 1 and 13 based upon AAPA and
Brechner is in error. Appellant’s arguments present us with the issue: did
the Examiner error in finding the combination of AAPA and Brechner
teaches verifying an intra picture selected from video data is suitable for use
as identifier based upon a comparison of the number of bytes in the picture
with a threshold?
3

Rejection based upon Taniguchi and Brechner
Appellant argues on pages 40 through 42 and 49 of the Brief that the
Examiner’s rejection of independent claims 1 and 13 based upon Taniguchi
and Brechner is in error for reasons similar to those discussed with respect to

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
December 9, 2009.
2
Throughout this opinion we refer to Appellant’s Appeal Brief dated June
13, 2008.
3
We note Appellant’s arguments present additional issues but we do not
reach them as this issue is dispositive of the Appeal.
Appeal 2010-005954
Application 09/968,687

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the Rejection based upon AAPA and Brechner. Thus, Appellant’s
arguments present us with the issue: did the Examiner error in finding the
combination of Taniguchi and Brechner teaches verifying an intra picture
selected from video data is suitable for use as identifier based upon a
comparison of the number of bytes in the picture with a threshold?
ANALYSIS
Rejection based upon AAPA in view of Brechner
We have reviewed Appellant’s arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to the Appellant’s arguments. We
concur with Appellant’s conclusion, that the Examiner erred in finding the
combination of AAPA and Brechner teaches verifying an intra picture
selected from video data is suitable for use as identifier based upon a
comparison of the number of bytes in the picture with a threshold. The
Examiner responds to Appellant’s arguments by finding that AAPA teaches
automatically selecting a picture from video data and that Brechner teaches
thumbnail icons corresponding to featured clips are displayed to a user with
associated size of the clip for download. Answer 11-12. Based upon these
findings, the Examiner concludes that the combination teaches the claim.
While we agree with the Examiner’s findings regarding AAPA and that
Brechner teaches displaying icons with thumbnail images representative of
images that can be download, along with an indication of the size of the
image, we disagree that these teachings would suggest the claimed
invention. The thumbnails discussed in Brechner are not pictures selected
from video data and, while there is a discussion of the thumbnails being used
to determine the suitability of the image to be downloaded, the teaching does
not address the use of the image size to be used for this suitability
Appeal 2010-005954
Application 09/968,687

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determination. Accordingly, Appellant’s arguments have persuaded us of
error in the Examiner’s rejection of independent claims 1, 13 based upon
AAPA and Brechner. Thus, we will not sustain the Examiner’s rejection of
and dependent claims 1 through 7, 9, 14 through 19 and 21 based upon the
teachings of AAPA and Brechner.

Rejection based upon Taniguchi and Brechner
The Examiner’s response to Appellant’s arguments directed to this
rejection are similar to those discussed above with respect to the rejection
based upon AAPA and Brechner. We note that the disclosure of Tanaguchi
differs from that of AAPA in that Tanaguchi teaches that the automatically
selected pictures are analyzed, for example, to determine whether they
contain a dissolve image (two overlapping images, col. 6, ll. 36-44), or
whether they contain captions (col. 9, ll. 1-6). Nonetheless, Tanaguchi does
not teach analyzing the number of bytes in the selected pictures, and the
Examiner relies upon Brechner to teach this limitation. Answer 13-14. As
discussed supra, with respect to the rejection based upon the AAPA and
Brechner, we do not find that the thumbnails discussed in Brechner are
pictures selected from video data or that the size of the pictures is used to
determine the suitability. Accordingly, we will not sustain the Examiner’s
rejection of claims 1 through 10, 13 through 19, 21 and 22 based upon
Taniguchi in view of Brechner.

ORDER
The decision of the Examiner to reject claims 1 through 10, 13
through 19, 21 and 22 is reversed.
Appeal 2010-005954
Application 09/968,687

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REVERSED

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