10854212 (B.P.A.I. May. 23, 2012)

Ex Parte Takagi et al

Board of Patent Appeals and InterferencesMay 23, 2012

10854212 (B.P.A.I. May. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TOSHIHIRO TAKAGI and KAZUHIKO TANI ____________________ Appeal 2010-002134 Application 10/854,212 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG and CAROLYN D. THOMAS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002134 Application 10/854,212 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b). We Reverse. The invention on appeal is directed to a video reproducing apparatus such that a desired video image can be properly set as a mark position by simple operation of mark position setting. (Spec. 2). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A video reproducing apparatus comprising: reading means to read video image-related data from a recording medium having the video image-related data recorded thereon; video signal generating means to generate video signals for reproduction of video images on the basis of the video image-related data read by the reading means; reproduction control means to control a process of reproducing the video images, using the reading means and the video signal generating means; operating means to perform setting operation for setting a mark position which is referenced by the reproduction control means as a starting position to start reproducing the video images; and mark position setting means to set the mark position in accordance with operation of the operating means by a user, wherein, in accordance with the setting operation for setting the mark position by the user using the operating means, the mark position setting means automatically sets, as the mark position, a position of a video image presumed as a scene change in video images nearby a position of a video image reproduced at Appeal 2010-002134 Application 10/854,212 3 the time the setting operation for setting the mark position is performed. (disputed limitations emphasized). REJECTION Claims 1-5 stand rejected under 35 U.S.C §102(e) as being anticipated by Brown (US Pat. 6,868,225 B1). Appellants’ Contentions Regarding the Examiner’s rejection of claim 1, Appellants present, inter alia, the following principal contentions: Brown does not automatically set, as the mark position, a position of a video image presumed as a scene change in the video images. Rather, it simply returns to the point at which the playback was stopped, i.e., the bookmark. That is the only automatically set bookmark taught by Brown. In other words, the only automatically set mark position in Brown is the bookmark that corresponds to the point at which the playback was stopped. Thus, Brown’s apparatus does not automatically set a position of a video image that is presumed to be a scene change as the mark position. It cannot set such a position, because it does not make any determination about (i.e., presume) where scene changes have occurred. Instead, Brown requires the user to manually identify any scene changes. The final Office Action acknowledges this point numerous times where it quotes portions of the reference in the “Response to Arguments” which indicate that the user can move through the video program. See pp. 2-4. The fact that the user can manipulate the system to move through the program material, however, merely describes that Brown’s system allows the user to manually change the point at which playback Appeal 2010-002134 Application 10/854,212 4 begins. Such disclosures do not correspond to automatically setting the mark position based on a presumed scene change. Furthermore, even if the user identifies a scene change manually, the system does not automatically set a mark position at that point. Rather, manual manipulations by the user, which occur after the bookmark has already been set, would be required to determine locations of scene changes and to set a mark position at a scene change. Therefore, claim 1 is patentable over Brown. (App. Br. 8-9, emphasis added). The Examiner disagrees: Brown discloses from col. 1, lines 52-col. 2 lines 21, col. 15 lines 30-col. 16 lines 28 that “... the invention provides a bookmark function that allows the user to bookmark a program where he left off. The invention records the frame of the program where the user stopped when the user commands the system to do.... invention automatically bookmarks the program for the user if the user exits viewing the program ... ”, “... the invention provides a bookmark function that allows the user to bookmark a program where he left off. The CPU ... records the frame of the program where the user stopped or the user commands the system to place a bookmark ... the invention automatically bookmarks the program for the user if the user exits viewing the program by going to live TV or to the menu mode ..... a bookmark is placed in the same manner by pressing the select button .... to create a bookmark .....”. Brown discloses an automatically bookmarking of a program where the user stopped or the user commands the system to place a bookmark. After user stopping a program or commanding the system to place a bookmark or pressing the select button in the remote, CPU marks the position automatically and records the frame of the program. Therefore, Brown meets the limitation of the mark position setting means automatically setting the mark position in accordance with operation of the operating means by a user through bookmark a program where the user stopped or the user commands the system to place a bookmark. (Ans. 12-13, emphasis added). Appeal 2010-002134 Application 10/854,212 5 ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal: 1. Under § 102, did the Examiner err in finding that the Brown reference discloses: “the mark position setting means automatically sets, as the mark position, a position of a video image presumed as a scene change in video images nearby a position of a video image reproduced at the time the setting operation for setting the mark position is performed,” within the meaning of independent claim 1? ANALYSIS At the outset, we observe the multiple portions of Brown that the Examiner maps to the aforementioned disputed limitation in the statement of rejection: wherein, in accordance with the setting operation for setting the mark position by the user using the operating means, the mark position setting means sets, as the mark position, a position of a video image presumed as a scene change in video images nearby a position of a video image reproduced at the time the setting operation for setting the mark position is performed (fig. 7, 15, 18, 27, col.1 lines 52-col. 2 lines 21, col. 15 lines 30- col. 16 lines 28, col. 19 lines 19-30, 48-col. 20 lines 28). (Ans. 4, emphasis added). We note that in an ex parte appeal, the Board “is basically a board of review — we review . . . rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by Appeal 2010-002134 Application 10/854,212 6 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). In reviewing the multiple portions of Brown the Examiner points to in the “Response to Arguments” section of the Answer (pp. 12-14), we find Brown expressly discloses “the invention automatically bookmarks the program for the user if the user exits viewing the program” (Col. 1, ll. 62-64) and “the invention automatically bookmarks the program for the user if the user exits viewing the program by going to live TV or to the menu mode.” (Col. 15, ll. 39-41) (emphasis added). Given this evidence, we agree with Appellants that “Brown does not automatically set, as the mark position, a position of a video image presumed as a scene change in the video images. Rather, it simply returns to the point at which the playback was stopped, i.e., the bookmark.” (App. Br. 8). Thus, we agree with Appellants that the only automatically set bookmark taught by Brown occurs when the user stops the playback by exiting viewing. (Id.). Although the Examiner additionally points to Brown’s trick play feature as purportedly disclosing an “automatic scene change” (Ans. 14), we find Brown’s “trick play bar” merely involves preexisting index or bookmark cues that may be sequentially accessed by user action. (Brown, col. 20, ll. 8-14). Brown also expressly describes that “[i]ndexes and bookmarks are easily placed or removed by the user.” (Col. 20, ll. 14-15). 1 1 See Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (To anticipate under §102 “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings Appeal 2010-002134 Application 10/854,212 7 The rejection before us on appeal is under §102. We express no opinion regarding the issue of obviousness because this issue is not before us on appeal.2 On this record, for essentially the same reasons argued by Appellants in the Brief (as further discussed above), we cannot affirm the Examiner’s anticipation rejection of independent claim 1. We reverse the rejection of independent claim 1, and for the same reasons, we also reverse the anticipation rejection of dependent claims 2-5. DECISION We reverse the Examiner’s decision rejecting claims 1-5 under §102(e). ORDER REVERSED peb that the artisan might somehow combine to achieve the claimed invention.”) (underline added). 2 But cf. In re Venner, 262 F.2d 91, 95 (CCPA 1958) (In the context of obviousness, providing an automatic way to replace a manual activity, which accomplished the same result, is not sufficient to distinguish over the prior art.)