Ex Parte Luken et al

Board of Patent Appeals and Interferences

Jun 8, 2009

10309537 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM L. LUKEN and ETIENNE ROY
____________

Appeal 2008-002462
Application 10/309,537
Technology Center 2100
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Decided:1 June 8, 2009
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants invented a method for converting an Extensible MPEG-4
Textual (XMT) document into a binary MPEG-4 (mp4) file. Specifically, an
intermediate structured document is generated that represents the mp4 file,
and the mp4 file is created based on the intermediate document and the
associated media data files.2 Claim 1 is illustrative:
1. A method for converting an Extensible MPEG-4 Textual (XMT)
document into a binary MPEG-4 (mp4) file, the XMT document having zero
or more associated media data files, the method comprising:

generating an intermediate document representing the mp4 file,
wherein the intermediate document is a at least one structured document
representing at least the structure and organization of the mp4 file, a stream
description stream (sdsm) as represented in the mp4 file, and an object
descriptor stream (odsm) as represented in the mp4 file; and

creating the mp4 file based on the intermediate document and the
associated media data files.

The Examiner relies on the following as evidence of unpatentability:
Wan US 2004/0024898 A1 Feb. 5, 2004
(filed July 5, 2001)

Avipix.com website printout, Avipix, LLC, 2001, available at
http://web.archive.org/web/20011219115055/http://avipix.com/products.htm
l (“Avipix”).

2 See generally Spec. 2:2-28, 36:23–37:28; Fig. 22.
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The Examiner rejected claims 1-32 under 35 U.S.C. § 103(a) as
unpatentable over Avipix and Wan (Ans. 4-23).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding representative claim 1,4 the Examiner finds that Avipix
converts an Extensible MPEG-4 Textual (XMT) document into a binary
MPEG-4 (mp4) file, but does not generate an intermediate document and
create the mp4 file based on the intermediate document as claimed. The
Examiner, however, relies on Wan for this teaching in concluding the claim
would have been obvious. (Ans. 4-5.)
Appellants argue that Avipix does not convert an XMT document into
an mp4 file, but rather outputs XMT files independent of mp4 files.
According to Appellant, since Avipix produces both formats (i.e., XMT and
mp4), the reference actually teaches away from converting an XMT
document into an mp4 file. (App. Br. 6-7; Reply Br. 1; emphases added.)

3 Throughout this opinion, we refer to (1) the Appeal Brief filed February 8,
2007; (2) the Examiner’s Answer mailed June 7, 2007; and (3) the Reply
Brief filed March 23, 2006.

4 Appellants argue claims 1-8 together as a group. See App. Br. 5-9.
Accordingly, we select claim 1 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).
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Appellants further contend that the Examiner’s reliance on Wan is
misplaced since the various streams in that reference all remain as separate
entities that are not bundled together in any way, let alone into a binary mp4
file. (App. Br. 7.) Appellants add that the Examiner has not explained why
skilled artisans would have found it obvious to reconstruct Avipix to
generate intermediate documents as the Examiner proposes. (App. Br. 8-9.)
The Examiner, however, notes that Avipix teaches that mp4 files are
created from scene description information, and that XMT document
information comprises such scene description information. (Ans. 23-24.)
The Examiner also notes that Avipix’s mp4 file authoring tools include an
“XMT parser”—a tool that extracts scene and track information from the
XMT document. (Id.)
The Examiner also contends that there is ample reason to generate an
intermediate document in Avipix in view of Wan’s teaching of creating an
intermediate Dominant Object Model (DOM) representation. According to
the Examiner, such an intermediate document would enable manipulating
the document’s individual components. (Ans. 24-25.)
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, have Appellants shown that the Examiner erred in
rejecting claim 1 by finding that Avipix and Wan collectively teach or
suggest:
(a) converting an XMT document into an mp4 file;
(b) generating an intermediate document representing the mp4 file;
and
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(c) creating the mp4 file based in part on the intermediate document?

(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Avipix
1. Avipix discloses a set of tools for creating, editing, and authoring
mp4 files. (Avipix, at 1.)
2. The first page of Avipix includes a figure captioned “MP4 File
Format Editing/Playback/Capture Tools - tools for the creation and editing
[sic] of mp4 files” (Avipix, at 1.) This figure is reproduced below:

Reproduction of Figure on First Page of Avipix Captioned “MP4 File
Format Editing/Playback/Capture Tools”

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3. In this figure, “Scene Description/Track Info” is input to the box
labelled “Scene Description Exporting.” (Avipix, at 1.)
4. The “Scene Description Exporting” box in this figure has two
outputs: (1) “XMT-A, XMT-O,” and (2) “BIFS/OD Info.” (Avipix, at 1.)
5. The BIFS/OD info is input to the “MP4 File Format Library” along
with encoded audio and video (Avipix, at 1.)
6. As shown in this figure, the MP4 File Format Library includes
“Elementary Streams” including audio and video tracks, BIFS, and OD
information. (Avipix, at 1.)
7. The output of the MP4 File Format Library is an mp4 file.
(Avipix, at 1.)
8. In the “MPEG-4 Authoring Tools” section, Avipix notes that the
authoring libraries include support for MPEG-4 scene authoring including an
“XMT parser.” (Avipix, at 3.)

Wan
9. Wan discloses a technique for streaming an XML document to
permit incremental document parsing and processing as soon as a sufficient
portion of the document is received. Specifically, the system sends the
document’s tree hierarchy (e.g., its Dominant Object Model (DOM)
representation) in a breadth-first or depth-first manner. To this end, the
document’s XML (tree) structure is separated from the document’s text
components, and the tree structure is sent before the text. (Wan, ¶¶ 0038-
39.)
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10. By separating the two components, the decoder (parser) parses
the document’s structure more quickly, and ignores elements that are not
required or cannot be interpreted. (Wan, ¶ 0039.)
11. Figure 2 shows a method of streaming an XML document 20.
First, the document 20 is converted to a DOM representation 21, which is
then streamed in a depth-first fashion. The document’s structure 21a and
textual content 21b are encoded as two separate streams 22 and 23,
respectively. (Wan, ¶ 0041; Fig. 2.)
12. Figure 3 shows an arrangement 30 for streaming descriptions
together with associated content (i.e., audio and video files 31, 32). These
descriptions include (1) content descriptions 33; (2) a presentation
description 35 describing the temporal behaviour of a multimedia
presentation; and (3) a presentation description scheme 36 that defines the
hyperlinks between multimedia objects and the layout of the multimedia
presentation. (Wan, ¶ ¶0043-44; Fig. 3.)
13. Based on the presentation description scheme, an encoder 34
schedules delivery of the required components and generates elementary
data streams 37 (corresponding to audio and video content) and 38
(corresponding to the descriptions) that are transmitted. (Wan, ¶ 0045; Fig.
3.)
14. The presentation description is an XML document that uses a
Synchronized Multimedia Integration Language (SMIL)-based description
scheme. (Wan, ¶ 0044.)
15. The presentation description scheme 36 may be based on SMIL.
(Wan, ¶ 0046.)
16. SMIL presentations are XML documents. (Wan, ¶ 0042.)
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17. Wan notes that MPEG-4 presentations comprise scenes, and that
AV media objects can rely on streaming data conveyed in one or more
elementary streams (ES). Wan further notes that all streams associated to
one media object are identified by an object descriptor (OD). Moreover,
auxiliary information can be attached to an OD as “object content
information” (OCI) (Wan, ¶¶ 0047-49; Figs. 4A, 8.)

Appellants’ Specification
18. Appellants’ Specification notes that XMT and mp4 are well-
known composite multimedia presentation formats. “The XMT format is
well suited for authoring composite multimedia presentations, while the mp4
format is well suited for compact storage and transmission of composite
multimedia presentations.” (Spec. 1:23-28.)
19. The Specification refers to an “XMT-A” document and an
“MPEG-4 Textual Representation” in connection with the XMT format.
The Specification further notes that an XMT-A file is an example of an
XML file. (Spec. 11:2-29.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
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and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s
obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
“Even if a reference discloses an inoperative device, it is prior art for
all that it teaches.” Beckman Instruments v. LKB Produkter AB, 892 F.2d
1547, 1551 (Fed. Cir. 1989). Therefore, “a non-enabling reference may
qualify as prior art for the purpose of determining obviousness under 35
U.S.C. 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed.
Cir. 1991).

ANALYSIS
Claims 1-8
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 which calls for, in pertinent
part, (1) converting an XMT document into an mp4 file; (2) generating an
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intermediate document representing the mp4 file; and (3) creating the mp4
file based in part on the intermediate document.
Appellants are correct (App. Br. 6-7; Reply Br. 1) that Avipix’s
“Scene Description Exporting” function outputs an XMT document (FF 4).
But this feature by no means precludes converting such a document to a
binary mp4 file as claimed. As the Examiner indicates (Ans. 23), XMT
document information comprises scene description information—a fact all
but suggested by Avipix’s inputting “Scene Description/Track” information
to the “Scene Description Exporting” function to produce an XMT
document. See FF 3.
While Avipix is short on specifics as to how this “Scene
Description/Track” information is formatted, we nonetheless see no reason
why this descriptive information could not be in a variety of textual formats,
including XML-based formats such as XMT. See FF 19 (noting that XMT
documents are XML files). We reach this conclusion emphasizing that the
ultimate goal of Avipix is to create an mp4 file based, at least in part, on this
descriptive information. See FF 1, 2, and 7.
On the record before us, providing this descriptive information via an
XML-based textual format would hardly defeat Avipix’s mp4 authoring
capabilities and, in fact, is reasonably consistent with Avipix’s use of an
“XMT parser” as part of this capability. See FF 8. Although Avipix is short
on specifics regarding how this parser is used in the disclosed mp4 authoring
system,5 skilled artisans would nonetheless infer from the parser’s very label

5 Although Appellants argue that Avipix’s reference to an XMT parser is a
non-enabling disclosure in this respect (Reply Br. 2), Appellants raised this
issue for the first time in the Reply Brief and did not raise this issue in the
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(“XMT parser”) that it would be used to parse text from XMT documents as
part of this authoring capability. See id.
As such, we see no reason why such an XMT parser could not be used
to initially extract scene description and track information as the Examiner
suggests (Ans. 23), particularly since the XMT format is a well-known
format for authoring multimedia presentations. See FF 18. At a minimum,
providing such a parsing capability prior to the input to the “Scene
Description Exporting” function would enable users to provide scene
description and track information in the form of XMT documents along with
other textual formats. Such an enhancement is tantamount to the predictable
use of prior art elements according to their established functions—an
obvious improvement. See KSR, 550 U.S. at 417. Moreover, since this
parsed descriptive information from an XMT document would be used
(along with other data files) to generate an mp4 file (see FF 2-7), the XMT
document would effectively be converted to an mp4 file as claimed.
Notably, this input parsing functionality would not adversely affect
Avipix’s ability to output XMT documents from the “Scene Description
Exporting” function, but rather complement this functionality. Although

Appeal Brief. Accordingly, this issue is technically waived. See Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (“[A]n issue not raised by an appellant in its opening brief ... is
waived.”) (Citations and quotation marks omitted). Nevertheless, “a non-
enabling reference may qualify as prior art for the purpose of determining
obviousness under 35 U.S.C. 103.” Symbol Techs., 935 F.2d at 1578. As
such, even if we assume, without deciding, that the “XMT parser” teaching
is non-enabling, nothing precludes skilled artisans from applying that
teaching in an obviousness determination. See Beckman Instruments, 892
F.2d at 1551 (“Even if a reference discloses an inoperative device, it is prior
art for all that it teaches.”).
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XMT documents would be inputted and parsed as noted above, skilled
artisans would have recognized that Avipix’s system would still be able to
output documents with two different XMT formats: “XMT-A” and “XMT-
O.” (FF 4.) As such, not only could scene description information be
inputted in a particular XMT format for mp4 file creation, but the system
could also produce XMT documents in multiple formats (see FF 4)—a
value-added feature that would only enhance Avipix’s mp4 creation and
editing functionality.
We further see no error in the Examiner’s combining Wan’s teaching
of generating an intermediate document with Avipix. Wan teaches
streaming an XML document efficiently by permitting incremental
document parsing and processing. To this end, Wan’s system separates the
document’s tree structure from its associated text prior to streaming. See FF
9-11. By separating the two components, the decoder (parser) parses the
document’s structure more quickly, and ignores elements that are not
required or cannot be interpreted. (FF 10.)
This advantage alone would have reasonably motivated skilled
artisans to provide such a technique in conjunction with Avipix’s XMT
parsing capability noted above to, among other things, more efficiently parse
an XMT input document—an XML-based document (FF 19). That Wan
also teaches that this technique is applicable to XML-based descriptions
associated with multimedia presentations (FF 12-16) and discusses scene-
based MPEG-4 presentations (FF 17) only bolsters our conclusion. We
therefore find the Examiner’s reason to combine the teachings of Avipix and
Wan supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
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Although Appellants argue that the various streams in that reference
all remain as separate entities and are not bundled together (App. Br. 7), we
note that Wan produces elementary streams based on the multimedia content
and descriptions (FF 13)—elementary streams that are likewise produced in
Avipix’s MP4 File Format Library as a precursor to producing an mp4 file.
See FF 2 and 6. Therefore, the fact that Wan produces elementary streams
hardly precludes their ultimate conversion into an mp4 file—a fact amply
evidenced by Avipix. See id.
Lastly, Appellants argue that Figure 2 of Wan fails to disclose a
“scene description stream” (Reply Br. 3). Although this argument was
raised for the first time in the Reply Brief and is technically waived, see
Optivus, 469 F.3d at 989, it is not commensurate with the claim language in
any event. Claim 1 calls for the intermediate document to represent a
“stream description stream”—not a “scene description stream.”6
Nevertheless, we find that skilled artisans would have found representing
such a stream obvious from the collective teachings of Wan (FF 11-13 and
17) and Avipix (FF 6) which both at least suggest such a stream.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2-8 which fall with
claim 1.

6 Although an amendment was filed on March 23, 2006 (the day the Reply
Brief was filed) attempting to cure this discrepancy, the Examiner did not
enter this amendment. See Office Communication mailed Oct. 23, 2006.
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Claims 9-32
Although Appellants separately argue independent claims 9 (App. Br.
9-13) and 16 (App. Br. 13-17), these arguments essentially reiterate the same
arguments presented for independent claim 1. Accordingly, we are not
persuaded of error in the Examiner’s obviousness rejection of these claims
for the same reasons discussed previously in connection with claim 1.
We therefore sustain the Examiner’s rejection of those claims and
dependent claims 10-15 and 17-32 not separately argued.

ORDER
The Examiner’s decision rejecting claims 1-32 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).

AFFIRMED

pgc

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