Ex Parte Liu et al

Patent Trial and Appeal Board

Jun 22, 2016

12608068 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/608,068 10/29/2009 Dong Liu
46304 7590 06/24/2016
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
805183 5796
EXAMINER
DASGUPTA, SHOURJO
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
nyoffice@rml-law.com
jbr@rml-law.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG LIU and QIRU ZHOU
Appeal2014-005260
Application 12/608,068
Technology Center 2100
Before JOHN P. PINKERTON, JEFFREY A. STEPHENS, and
CARLL. SILVERMAN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-25, which
are all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Alea tel Lucent. (App. Br. 1.)
Appeal2014-005260
Application 12/608,068
Claimed Subject Matter
The claimed invention generally relates to network-based collaborated
telestration2 on video, images, or other shared visual content. (Title.) Claim
1, reproduced below, is illustrative:
1. An apparatus comprising:
a telestration server comprising a processor coupled to a
memory, the telestration server being configured to
communicate with a plurality of telestration clients over a
network;
the telestration server being further configured to receive
telestration input signals from respective ones of the clients and
to send telestration output signals to the respective clients, with
the telestration output signal sent to a given one of the clients
comprising telestration information derived from the telestration
input signal received from at least one other one of the clients,
such that each of the clients with support of the telestration server
can generate a combined telestration overlay for presentation
with associated visual content shared between the clients;
wherein the shared visual content comprises a video signal
having a plurality of frames; and
wherein the telestration server sends the telestration output
signal to the given client in a format that permits combination in
the given client of the combined telestration overlay with the
video signal on a frame-by-frame basis, the given client thereby
combining frames of the video signal with respective frames of
the combined telestration overlay.
2 The Specification provides that "[ c ]onventional telestration techniques
include various arrangements in which a freehand sketch drawn by a
broadcast television operator is superimposed over live video in a broadcast
video signal." (Spec. 1: 10-12.)
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Rejections
Claims 14 and 23 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. (Final Act. 2-3.)
Claims 1-9, 12-16, 18-20, and 22-25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Parmer et al. (WO 03/041033 Al, published
May 15, 2003) and Hartung et al. (US 2011/0314511 Al, published Dec. 22,
2011). (Final Act. 4--27.)
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Parmer, Hartung, and Melamed et al. (US 2010/0257282 Al, published
Oct. 7, 2010). (Final Act. 28-29.)
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Parmer, Hartung, and Ruths et al. (US 2003/0009603 Al, published
Jan. 9, 2003). (Final Act. 29-31.)
Claims 17 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parmer, Hartung, and Tomlinson et al. (US 2005/0179702
Al, published Aug. 18, 2005). (Final Act. 31-34.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner erred (App. Br. 7-19; Reply Br. 2-7). We are not
persuaded by Appellants' arguments. We adopt as our own the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and set forth in the Answer (see Ans. 2-9). We highlight and address
specific arguments and findings for emphasis as follows.
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Section 101 Re} ection
Claims 14 and 23 are directed to "[a] computer-readable storage
medium" with executable program code that causes a telestration server to
perform the steps of method claims 12 and 19, respectively. Appellants
argue the Specification does not recite that computer-readable storage media
may include transitory signals, and instead describes computer-readable
media as being various articles of manufacture such as storage disks and
devices, optical media, or magnetic media. (App. Br. 7-8 (citing Spec.
14:11-16).) We agree with the Examiner, however, that the Specification's
reference to "other types of magnetic or optical media" (Spec. 14: 16) "may
be broadly but reasonably construed to read upon signals, i.e. non-statutory
embodiments" (Ans. 3). The Specification provides that disks are an
example of computer-readable storage media, but does not describe the
"other types" of media as limited to articles of manufacture such as disks.
In addition, the Board has held that "those of ordinary skill in the art
would understand the claim term 'machine-readable storage medium' would
include signals per se." Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential in relevant part). Because neither the
Specification nor the claims have been amended to exclude non-transitory
embodiments of such media, we are bound by Mewherter to sustain the
Examiner's rejection of claims 14 and 23 under 35 U.S.C. § 101.
Section 103 Rejections
Claims 1-8 and 12-25
Appellants argue "[ t ]he Examiner has provided no evidence or
support for the assertion that the final content in the shared video space in
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Application 12/608,068
Parmer is 'rendered in per-frame basis"' or "that 'all display devices perform
their display feature in such a way."' (App. Br. 10 (quoting Final Act. 5).)
In the Answer, however, the Examiner further explains:
To elaborate, the examiner believes the essential nature of
any kind of video data or signal is that video constitutes a
collection of image frames such that the image frames are shown
in succession to create the effect of a moving image. It then
logically follows that to modify a video, one must necessarily
alter the video's essential components, i.e. the frames. For
example, one could not change the color of a brick wall without
affecting the color of all or at least some of the bricks that make
up that brick wall. In that same way, one cannot discernibly
introduce a new visual quality to a video (e.g., an overlaid image,
a timestamp, etc.) without essentially introducing that same
visual quality into all or at least some of the image frames that
when animated produce the video product. Accordingly, video
modification necessarily and therefore inherently requires the
modification of image frames that together comprise a video.
(Ans. 4; see also Ans. 3-5.) We find the Examiner's explanation
sufficiently provides a basis in fact and/or technical reasoning to reasonably
support the determination that the frame-by-frame basis limitation of claim 1
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by Parmer and Hartung.
In the Reply Brief, Appellants again assert "[t]he Examiner has not
provided sufficient evidence that the combination of Parmer and Hartung
unavoidably teaches these features" (Reply Br. 2-3), but Appellants do not
challenge the Examiner's findings directly or persuasively explain any error
therein. Accordingly, we are not persuaded the Examiner erred in finding
the combined teachings of Parmer and Hartung teach the telestration server
sends the telestration output signal in a format that permits combination with
the video signal on aframe-by-frame basis, as recited in claim 1.
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Appellants next contend Parmer teaches away from combining
telestration output with a video signal on a frame-by-frame basis. (App. Br.
11-12; Reply Br. 3--4.) In particular, Appellants emphasize portions of
Parmer that indicate delays in some circumstances between when freeform
drawings or text are input to annotate content and when the annotations
appear on other client devices. (See App. Br. 11-12 (citing Parmer 30:14--
23, 31: 16-20, 32:3-10).) Appellants do not persuasively explain why such a
delay indicates that combination of the telestration overlay with the video
signal would not be on a frame-by-frame basis when combined. To the
extent Appellants contend a frame-by-frame basis, as recited in claim 1,
imposes a requirement that the telestration overlay be combined with the
video signal frame-by-frame in real time, Appellants' argument is not
commensurate with the broadest reasonable scope of claim 1, which does
not impose a real-time requirement.
Appellants also argue Hartung is non-analogous art. (App. Br. 13-
14.) In particular, Appellants contend Hartung is not in the same field of
endeavor as the claimed invention because claim 1 is directed to an
apparatus comprising a telestration server configured for receiving
telestration input signals and sending telestration output signals, while
Hartung does not disclose telestration. (App. Br. 13.) Appellants also assert
Hartung is not reasonably pertinent to the problem with which claim 1 is
involved. Appellants state the claimed invention's problem to be solved is
to "provide 'a telestration system that facilitates collaboration on shared
visual content between an arbitrary number of participants connected via a
network such as the Internet, without requiring dedicated special-purpose
hardware at each site."' (App. Br. 13-14 (quoting Spec. 2:7-10).)
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Appellants state that Hartung is unrelated because it "appears to describe
techniques for watermarking content to be distributed to a plurality of end
user devices wherein 'each marked digital signal forms a unique version of
the digital signal."' (App. Br. 14 (quoting Hartung i-f 10).)
We agree with the Examiner that Hartung is analogous art to the
claimed invention. (See Ans. 6-7.) Appellants over-emphasize the
importance of relating specifically to "telestration" or use of that term. We
agree with the Examiner that Hartung teaches a network that allows the
sharing of video content with a remotely-situated user, and that a client or
near-client device receiving the video signal may combine the video signal
with another input signal to create a composite video product. (Ans. 6
(citing Hartung i-fi-12-5, 11, 16).) Based on these teachings, we agree
Hartung is at least reasonably pertinent to the problem addressed by the
present application. An inventor considering how to facilitate collaboration
on shared visual content for a number of participants connected via a
network such as the Internet, without requiring dedicated special-purpose
hardware at each site, would naturally look to Hartung' s teachings directed
to using a device close to an end user device to receive digital content and
combine that content signal with another signal to present to a user on a
standard computer (see Hartung i-fi-1 3, 11 ). Therefore, Appellants' arguments
have not persuaded us that Hartung is not analogous art.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) as unpatentable over Parmer and Hartung. Thus, we
sustain the rejection of claim 1, and, for the same reasons, the rejection of
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claims 2-8, 12-16, 18-20, and 22-25, which are not argued separately (App.
Br. 14).
Appellants do not present additional argument in support of claims 1 7
and 21. Thus, for the same reasons as claim 1, we sustain the rejection of
claims 17 and 21under35 U.S.C. § 103(a) as unpatentable over Parmer,
Hartung, and Tomlinson.
Claim 9
Claim 9 depends from claim 1 and recites that the telestration server is
configured to receive from a source of the shared visual content at least one
synchronization signal that is utilized by the telestration server in generating
the telestration output signals sent to the respective clients. Appellants
argue Parmer's synchronization tool merely allows a teacher to direct a
student's attention to particular information by repositioning the student's
whiteboard to match the location in the content scrolled to by the teacher,
but argue the teacher is not a source of the shared visual content as recited in
the claim. (App. Br. 14--15.) The antecedent basis for the shared visual
content in claim 9 is associated visual content shared between the clients, as
recited in claim 1. Appellants do not persuasively explain why the teacher
device in Parmer is not a source of content shared between the clients. The
cited portion of Parmer indicates the teacher and student are viewing the
same content, and the teacher's device is the source of any annotations
added by the teacher. (See, e.g., Parmer 32:3-10; Final Act. 10.)
Accordingly, for the reasons discussed above and by the Examiner
(Final Act. 10-11; Ans. 7), we are not persuaded the Examiner erred in
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rejecting claim 9 under 35 U.S.C. § 103(a) as unpatentable over Parmer and
Hartung. Thus, we sustain the rejection of claim 9.
Claim 10
Claim 10 depends from claim 1 and recites that a first one of the
telestration output signals sent to a first one of the clients comprises
telestration information derived from the telestration input signal received
from at least a second one of the clients but no telestration information
derived from the telestration input signal received from the first client. As
Appellants point out (App. Br. 16), claim 10 is directed to the instance
where the telestration signal sent to the first client does not include its own
telestration information because "such local drawing and text commands are
supplied directly to the video renderer 322 from the associated drawing
client 324" (App. Br. 17 (quoting Spec. 9:4--8)).
Appellants argue Melamed "has nothing to do with telestration," and,
therefore, cannot teach the limitations of claim 10 relating to telestration and
is non-analogous art. (App. Br. 16-17; Reply Br. 5---6.) The Examiner
clarifies that Parmer and Hartung, relied on to reject underlying claim 1, are
relied on for specific aspects related to telestration, and that Melamed was
cited relevant to selective communication between nodes in a network.
(Ans. 8.) Appellants do not persuasively explain why these teachings in
Melamed would not logically commend themselves to an inventor
considering how best to share information among multiple clients in a
network. In particular, the Examiner finds Melamed teaches excluding
particular clients from broadcast messages, and that this optimization
requires fewer messages. (Final Act. 28-29 (citing Melamed i-fi-1 43, 49).)
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We agree with the Examiner that, in view of these teachings, one of ordinary
skill in the art would have had reason to modify the combination of Parmer
and Hartung to exclude from the telestration output signal sent to a particular
client information received from that client. (See Final Act. 28-29.)
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 10 under
35 U.S.C. § 103(a) as unpatentable over Parmer, Hartung, and Melamed.
Thus, we sustain the rejection of claim 10.
Claim 11
Claim 11 depends from claim 1 and recites that a first one of the
telestration output signals sent to a first one of the clients comprises
telestration information derived from the telestration input signal received
from at least a second one of the clients in addition to telestration
information derived from the telestration input signal received from the first
client. Appellants argue Ruths, relied on in rejecting claim 11, is unrelated
to telestration and, therefore, cannot teach the limitations of claim 11
relating to telestration and is non-analogous art. (App. Br. 18; Reply Br. 6.)
As discussed above, we are not persuaded that failure to recite the term
"telestration" renders a reference non-analogous, and the Examiner clarifies
in the Answer that Ruths is not relied on for limitations specific to
telestration. (See Ans. 8-9.)
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 11 under
35 U.S.C. § 103(a) as unpatentable over Parmer, Hartung, and Ruths. Thus,
we sustain the rejection of claim 11.
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CONCLUSION
We affirm the Examiner's decision to reject:
(!)claims 14 and 23 under 35 U.S.C. § 101 as directed to non-
statutory subject matter;
(2)claims 1-9, 12-16, 18-20, and 22-25 under 35 U.S.C. § 103(a) as
unpatentable over Parmer and Hartung;
(3)claim 10 under 35 U.S.C. § 103(a) as unpatentable over Parmer,
Hartung, and Melamed;
(4)claim 11under35 U.S.C. § 103(a) as unpatentable over Parmer,
Hartung, and Ruths;
(5)claims 17 and 21under35 U.S.C. § 103(a) as unpatentable over
Parmer, Hartung, and Tomlinson.
DECISION
We affirm the Examiner's decision to reject claims 1-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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