MedioStream Inc v. Microsoft Corporation

Filing 609

Declaration of Scott Schrader in Support of Renewed Motion to Stay the Case Pending Completion of Inter Partes Reexamination Pending Before the Patent and Trademark Office re 608 filed on behalf of Acer America Corp., Apple Inc., ASUS Computer International, Cyberli nk.com Corp., Dell, Inc., Gateway, Inc., Microsoft Corporation, Nero AG, Nero, Inc., Sonic Solutions, Sony Corporation and Sony Electronics Inc. filed byMicrosoft Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16) (Schrader, Scott) (Filed on 6/22/2011) Modified on 6/23/2011 (bw, COURT STAFF). (Entered: 06/22/2011)

EXHIBIT 13

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,

95/001,283

03/23/2010

7283172

169AA-000300US

1757

83275

7590

01128/2011

AMPACC Law Group, PLLC
6100 219th Street SW, Suite 580
Mountlake Terrace, W A 98043 '

EXAMINER
ESCALANTE. OVIDIO
ART UNIT

PAPER NUMBER

3992

MAIL DATE

DELIVERY MODE

01/28/2011

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)

Commissioner for Patents
United States Patent and Trademark Office
P.O. 80)(1450
Alexandria, VA 22313-1450

WWN",prO.gov

DO NOT USE IN PALM PRINTER
:

............. .

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
..•.•.••.•.•..•.•.• j

:

!

NOVAK, DRUCE, & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA AVE., 53RD FLOOR
HOUSTON, TX 77002

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination

REEXAMINATION CONTROL NUMBER 951001,283.
PATENT NUMBER 7,283,172.
TECHNOLOGY CENTER 3900.
ART UNIT 3992.

Enclosed is a copy of the latest communication from the United States Patent and
Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
. Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
communication, the third party requester of the inter partes reexamination may once file
written comments within a period of 30 days from the date of service of the patent owners
response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
be extended. See also 37 CFR 1.947.
If an ex parte reexamination has been merged with the inter partes reexamination, no
responsive submission by any ex parte third party requester is permitted.
All correspondence relating to this inter partes reexamination proceeding should be
directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses
given at the end of the communication enclosed with this transmittal.

PTOL-2070 (Rev.07-04)

Control No.

Right of Appeal Notice
(37 CFR 1.953)

Patent Under Reexamination

95/001,283

7283172

Examiner

Art Unit

OVIDIO ESCALANTE
3992
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --

Responsive to the communication(s) filed by:
Patent Owner on 20 September 2010
Third Party(ies) on 20 October 2010
Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
with payment of the fee set forth in 37 CFR 41.20(b)( 1) within one-month or thirty-days (whichever is
longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
41.20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
MPEP 2672.

All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
accordance with this Office action.
The proposed amendment filed 20 September 201 0 ~ will be entered

0 will not be entered*

*Reasons for non-entry are given in the body of this notice.
1a. ~
1b. 0
2. 0
3. 0
4. 0
5. ~
6. 0
7. 0
8. 0
9. 0

Claims 1-19 are subject to reexamination.
Claims
are not subject to reexamination.
Claims
have been cancelled.
Claims
are confirmed. [Unamended patent claims].
Claims
are patentable. [Amended or new claims].
Claims 1-19 are rejected.
Claims
are objected to.
The drawings filed on
0 are acceptable.
0 are not acceptable.
The drawing correction request filed on _ _ is 0 approved. 0 disapproved.
Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
has:
been received.
0 not been received.
0 been filed in Application/Control No. _ _ .
10.00ther _ _

o

Attachments
1. 0 Notice of References Cited by Examiner, PTO-892
2. ~ Information Disclosure Citation, PTO/SS/08
3.0 _ _

U.s. Patent and Trademark Office
PTOL-2066 (08-06)

.

Right of Appeal Notice (37 CFR 1.953)

Part of Paper No.

20101217

Application/Control Number: 95/001,283

Page 2

Art Unit: 3992

RIGHT OF APPEAL NOTICE
1.

This Office action addresses claims 1-19 of United States Patent No.7 ,283,172 and is in

response to the Patent Owner response field on September 20,2010 and the Requester's response
filed on October 20,2010.

Status of the Claims
2.

Original claims 1-15 and 19 are rejected.
Original claims 16-18 are canceled by the Patent Owner's Amendment.

Information Disclosure Statement
3.

The Information Disclosure Statement filed on August 30, 2010 and December 10, 2010

have been 90nsidered by the examiner. [Documents which fail to constitute patents or printed
publications have been lined through on the submitted form so as to not be published on the
reexamination certificate, but have been considered by the examiner to the extent noted below.]
Consideration by the examiner of the information submitted in an IDS means that the
examiner will consider the documents in the same manner the party filing the information
citation has explained the content and relevance of the information. Information which complies
with information disclosure requirements of 37 C.F .R. § 1.98 but which is in a non-English
language will be considered in view of the concise explanation submitted (see MPEP §
609.04(a), subsection, III.) and insofar as it is understood on its face, e.g., drawings, chemical
formulas, in the same manner that non-English language information in Office search files is
considered by examiners in conducting searches. The initials ofthe examiner placed adjacent to
the citations on the submitted form, without an indication to the contrary in the record, mean that

Application/Control Number: 951001,283

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Art Unit: 3992
the information has been considered by the examiner to the extent noted above. See MPEP §§
609.05(b), 2256 and 2656.

Response to Amendment
4.

The amendment submitted on September 20, 2010 is entered.

Response to Arguments
Construction o!the t172 Patent Claims Argument
The Patent Owner contends their construction is based on the "broadest reasonable
interpretation" standard according to their ordinary meaning and their usage in the claims and the
speciflcation. The Patent Owner further contends that the Requester ignores the manner in
which the term (e.g. "output media format" and "presentation format") are used in the
specification and simply reduce both terms to "any format" under the pretext of given them their
broadest reasonable construction.
The Examiner maintains that as cited in MPEP § 2258 (1.) (G.) (During reexamination,
claims are given the broadest reasonable interpretation consistent with the specification and
limitations in the specification are not read into the claims (In re Yamamoto, 740 F.2d 1569,222
USPQ 934 (Fed. Cir. 1984».
As will be further described below, the Examiner maintains that the' 172 patent
repeatedly states "desired" or "any" output media format without any requirement that it be a
specific type of format. For example, the' 172 specification discloses "Preferably, the video
information can be in almost any format or any format. The output video information can also be

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Art Unit: 3992
in any desired format." (col. 6, lines 18-20). This citation does not specify that it must be an
optical disc format but instead that the output video information can also be "in any desired
format".
In addition, the '172 specification, when referencing CD or DVD, states that these
formats are "examples" and never discloses that output media format must or is required to be an
optical disc format.

In re Suitco Surface

The Patent Owner cites to In re Suitco Surface for support of the "broadest reasonable
interpretation" standard. The Examiner disagrees with the Patent Owner's citat~on to In re Suitco
Surface since the merits of the current proceeding do not relate to the merits of In re Suitco
Sll1face.

In the court proceeding, the Examiner notes that the claim specifically recited "material
for finishing the top surface of the floor". The issue was not whether "clear plastic material be
the uppennost top layer but rather that the claimed material must.be the finishing layer. The
Examiner agrees with the analysis with the Federal Circuit, however, the Examiner notes that the
Patent Owner has not explained how this relates to the claims at issue since the Examiner has
treated the claim language exactly how it is claimed.
Indeed, as correctly noted by the Requester, In re Suitco Surface, Inc. merely restates a
well-accepted standard already recited by the MPEP. Furthermore, the Court in In re Suitco
Surface, Inc. does not contradict the requirement that limitations in the specifications should not

be read into the claims, (page 3 of Requester's response).

Application/Control Number: 95/001,283

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Art Unit: 3992
As will be further noted below the claims and the specification do not require "output
media format" to be a specific type of media rather it merely cites examples.

In addition, as will be further discussed, the Examiner has cited prior art which reads on
the specific examples cited in the specification. In this case, the Cleaner 5 prior art specifically
teaches of using VCD as one of the output formats that can be selected by the user.

Construction of the term "continuous pass conversion process free from one or more
intermediary files"

As noted by the Patent Owner the Examiner maintained that the preamble (with respect to
continuous pass conversion process free from one or more intennediary files) is not limiting
since the body of the claims does not further recite any limitation related to this aspect ofthe
preamble.
The Patent Owner maintains that the body of the claim ~irrors the preamble and recites,
"directly converting... ; directly resizing ... ; directly adjusting ... ; directly processing the
uncompressed format; and directly processing the elementary video stream ... " The Patent Owner
asserts the tenn "directly" is used in front of the verbs "converting," "resizing," "adjusting," and
"processing" to emphasize that these steps are performed as part of "a continuous pass
conversion process free from one or more intermediary files," recited in the preamble.
The Examiner first notes that for purposes of prior art rejection, the Examiner has
considered the preamble of the claim and has shown how the preamble reads on the prior art, as
noted in the rejection. That is, as shown by at least Cleaner 5, Cleaner 5 discloses a process

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Art Unit: 3992
which continues non-stop to output of a presentation fonnat without writing to disc. The
Examiner notes that Cleaner 5 discloses that a user makes various selections including data rate,
frame rates, frame size and display size among other selections. The Examiner maintains that
Cleaner 5 at least continues non-stop from video input to video output (e.g. MPEG encoded
output fonnat) since Cleaner 5 discloses for example in pages 75-76 that a user has the option to
"preview" the movie during the encoding process. This option can be deselected and thus will
allow the encoding to occur in a continuous manner without user intervention and until it is
completed. The continuous non-stop method of Cleaner 5 is also explained in the Architectures
and Fonnats MPEG section (pages 203-214 of Cleaner 5). This section discusses that a user
selects the MPEG o~tput setting arid can modify various tabs which will control how the video
would be encoded. These include, choosing the output fonnat of MPEG-l or MPEG-2, Stream
type, Image type (e.g. NTSC or PAL), display ratio, encoding speed, data rate and other types of
inputs that a user can select. Once a user selects their options, then they can select to start
encoding their video and the method of Cleaner 5 continues non-stop until an encoded MPEG-l
or MPEG-2 file is created with the user's desired selections which were made on the output tab.
This same section in Cleaner 5 also states that using the same Advanced Setting Window
(that is the same Window that the user inputs all of their specifications for encoding the video
file), the user has the further option to select the Video CD present (page 209) in the Output tab.
Thus, in this case assuming arguendo that an optical CD fonnat is required, Cleaner 5 clearly
discloses of continuing non-stop from an input of video to an output fonnat.
As noted above, the Patent Owner maintains that the encoded MPEG file in Cleaner is an
intennediary file. The Examiner notes that MPEG as set forth in Cleaner can be a fonnat ofVCD

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Art Unit: 3992
(MPEG 1) or a format for DVD (MPEG2). Thus, the encoded MPEG format of Cleaner 5 is an
output media format because it is the same file that is used to write to disc. The Examiner notes
that the user has a further option to specify for example, that they want to have a VCD MPEG 1
file.
With respect to whether the preamble is limiting, the Examiner notes that the Patent
Owner now contends that the claim requires "a process that continues non:..stop to output of a
presentation format without writing video to disk while processing the input video into the
presentation format." (The previous construction (in their response to the Non-Final rejection)
interpreted the term as "a process that continues non-stop to output a presentation fonnat without
writing any intermediary file to storage during the process")
The issue pertains to whether the term "directly" requires a reading of being a continuous
pass which continues non-stop to output of a presentation format.

The Examiner notes that the' 172 patent discloses "the invention provides a method for
converting video information (e.g., captured, streaming, file) from an incoming format to an
outgoing format using a single pass conversion process (e.g. continuous) free from one or more
intennediary files," (see col. 2, lines 63-67).
With respect to "free from one or more intennediary files", the Examiner notes that the
'172 patent describes that with respect to "conventional" methods the steps requires the use of
intennediary files which are often stored in memory. ("As shown, the method begins with start,
step 101, which carries out more than one process often requiring the use of intennediary files,
which are often stored in memory") The specification discloses that intennediary files are

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Art Unit: 3992
"often" used and are "often" stored in memory thus clearly setting forth that intermediary files
are not always used and not always stored in memory using the conventional process. As noted
in the specification intermediary files are output and are often stored. In addition, if the files are
not stored (as when it is other than "often") then there appears to not be any intermediary files to
store or use.
In light of the teachings of the specification and when the "often" is considered, if it is
considered that intennediary files are stored then the conventional process will "often" store files
during the steps of the method.
Thus, it is considered that "free from one or more intermediary files" describes a process
in which a stored intermediary file is not used during the conversion process.

In accordance with the claim language and the patent specification "a continuous pass
conversion process free from one or more intermediary files" only requires a single pass
conversion process which moves from one step to the next without using any stored intermediary
files.
With respect to "directly" the Examiner finds that the term does not entail or exempt the
use of intennediary files as claimed. Based on this reason, the Examiner finds that the body of
the claim does not necessarily require a conversion process which moves from one step to
another "non-stop" as argued by the Patent Owner.

Nonetheless, as shown above and as will be further shown below each of the prior art
references disclose a process that continues non-stop to output of a presentation fonnat without

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Art Unit: 3992
writing video to disc while processing the input video into the presentation format. The
Examiner considered the output format to read on for example MPEG-l or MPEG-2 and in
addition, as set forth in for example Cleaner 5, MPEG-l can be formatted specifically for VCD.
This step is selected by the user in the Advanced Settings Window when the user is controlling
how their video is to be encoded.

Construction of the term "output media format"
The Patent Owner contends their construction requires that. ail output media format is a
standard video format for optical disk. The Patent Owner maintains that their construction does
not incorporate limitations from the claims but instead is the broadest reasonable construction
that includes other optical disk formats.
The Examiner maintains that the Patent Owner reads limitations from the specification
into the claims. The specification never defines output media fom1at as being an optical disc
format. As can be seen from the below citations from the patent specification each recitation of
DVD, VCD or SuperVCD was only cited as being exemplary.
The Examiner's interpretation of "output media format" is not limited to optical disc
formats because the patent specification imposes no such limit.
As noted in the patent specification:
Many different types of video outputs also exist. Such video output types include DVD,
VCD, SuperVCD, and others. (col. 2, lines 24-38).
In other embodiments, the invention allows a user to take any video information in any
format and convert such video information into an outgoing format for writing onto a
disk media, e.g., CD, DVD. (emphasis added), (col. 4, lines 14-18).

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Art Unit: 3992
Preferably, the video information can be in almost any format or any format. The output
video information can also be in any desired fonnat, depending upon the embodiment.
(col. 6, lines 18-20)
The encoding process can form a desired output such as DVD, VCD, and others.
(emphasis added) (col. 6, lines 59-60).
As can be seen, the media fonnat can be DVD, VCD, or Super VCD, among others. (col.
8, lines 49-50).
The Examiner notes that the specification uses terms such as "among others", "desired",
such as, and for example when used in conjunction with DVD, VCD or Super VCD. The
specification, contrary to the Patent Owner's assertion does not define nor show that output
media format must be narrowly constructed to only include optical disc formats unless such a
requirement is specifically claimed.
These statements clearly show that the optical disc formats are exemplary only and are
not limited. In addition, the specification and claims broadly recite "desired" output media
fonnat. Nonetheless, as noted in the rejection of the claims, the Examiner has shown that the
prior art supports both VCD and DVD formats.

Construction of the term ''presentation format" argument
I

The Patent Owner contends "presentation fonnat" is "the playback fonnat for
video and audio information for the desired standard video fonnat for optical disk using the
desired video presentation standard.

The Patent Owner contends the construction of the term "presentation forinat" includes
the ordinary meaning of the tenn, which is known to those skilled in the art. Microsoft's

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Art Unit: 3992

definition of the tenn "presentation fonnat" in the prior art is simple: "A presentation fonnat is a
fonnat in which the data can be easily displayed on an output device ... Data stored according to a
presentation fonnat is sometimes referred to as presentation data."
The DVD standard was designed for display on a television as the output device. The
requirement to identify the desired TV standard (or video presentation standard) in the
specification and every claim is consistent with output to a television. A presentation fonnat
based upon a desired TV standard/video presentation standard is one for display or presentation
of the video and audio on a TV using that desired standard, and not some other standard. A
presentation fonnat based upon a desired output media fonnat is a presentation fonnat for
playback on a player for the desired media fonnat

As noted by the Requester on page 9 of their response, the specification of the '172 patent
refers to the presentation fonnat in two different ways: (1) "to form video and audio infonnation
in a presentation fonnat based upon the desired output media fonnat and the desired TV
standard" (the '172 patent at column 3, lines 19-22); and (2) "where an incoming video
infonnation is converted to an outgoing presentation fonnat, which is different from the
incoming video infonnation" (the '172 patent at col. 6, lines 33-35). Neither of these
descriptions requires that the presentation fonnat is the playback fonnat for video and
audio infonnation for the desired standard video fonnat for optical disc using the desired
video presentation standard.

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Art Unit: 3992
The Examiner agrees with the presentation format as used in the specification, however,
the Examiner disagrees that a video format "for optical disk" is required for the claimed
presentation format.
Nonetheless, as noted in the rejection of the claims, the Examiner relied upon at least the
VCD optical disc fonnat as the presentation format.

Construction of "directly processing the elementary video stream with audio
information in the desired output media format and the desired video presentation standard to
form video and audio information in a presentation format based upon the desired output
media format and the desired video presentation standard" Argument

The Patent Owner contends the term "directly" makes it clear that the presentation format
is output in a continuous pass without saving an intennediary file to disk or using another
application. Accordingly, when read in the context of the claims, the specification and the file
history, one of ordinary skill in the art would understand the phrase "directly processing the
elementary video stream with audio information in the desired output media format and the
desired video presentation standard to form video and audio information in a presentation format
based upon the desired output media format and the desired video presentation standard" to
require authoring the "presentation format" in a continuous pass free from one or more
intermediary files.

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Art Unit: 3992
The Examiner notes that the Patent Owner maintains that this limitations requires inter
alia "authoring" the presentation format, however, the independent claim does not require

authoring. Thus, the Patent Owner is reading limitations into the claim which are not recited. As
noted above, the term "directly" does not in itself require a reading of a continuous pass free
from one or more intermediary files.
In addition, with respect to the Patent Owner's argument that "the term "directly" makes
it clear that the presentation fonnat is output in a continuous pass without saving an intennediary
file to disk or using another application", the Examiner points out that the Patent Owner is
referencing the issue that Cleaner 5 uses a separate CD-mastering application to author VCDs.
While the Examiner agrees with the Patent Owner as to the citations in Cleaner 5, the Examiner
maintains that this separate application is used after the file is encoded for VCD. That is, the
Examiner maintains that in light of the specification and the Patent Owner's argument, the
continuous non-stop method ends before the data is written. Thus, even if Cleaner 5 uses a
second application for writing to disc, this step occurs after the continuous non-stop method has
finished. Furthermore, claim 7 which actually recites writing the information to disk is not part
of the claimed continuous process since the Patent Owner has explicitly maintained that data is
not written to disc during the continuous process and thus a CD-mastering application such as in
Cleaner 5 can be a separate application and still adhere to the claimed requirements.

Construction of the phrase 'tree from one or more intermediary files" Argument

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Art Unit: 3992
The Patent Owner contends that the proper construction of "free from one or more
intermediary files" is "without writing video to disk while processing the input video into the
presentation format"

As noted above, the Examiner noted that the' 172 patent discloses "the invention
provides a method for converting video information (e.g., captured, streaming, file) from an
incoming format to an outgoing format using a single pass conversion process (e.g. continuous)
free from one or more intermediary files," (see col. 2, lines 63-67).
With respect to "free from one or more intermediary files", the Examiner notes that the
'172 patent describes that with respect to "conventional" methods the steps requires the use of
intermediary files which are often stored in memory. The specification discloses that
intermediary files are "often" stored in memory thus clearly setting forth that intermediary files
are not always stored in memory using conventional methods. As noted in the specification
intermediary files are output and are often stored.
In light of the teachings of the specification, if. it is considered that intermediary files are
stored then the conventional process will store files after each step of the method ..
Thus, it is considered that "free from one or more intermediary files" describes a process
in which an intermediary file, which is. stored, is not used during the encoding process. This step
however, ends after encoding has been completed and does not include the actual writing of this
file to disk.

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Art Unit: 3992

Rejections Proposed by the Requester
5.

The following 4 issues for rejection were proposed in the Request for inter partes

reexamination (95/001,283):
Issue 1:

Cleaner 5 User Manual is asserted as rendering claims 1-19 anticipated.

Issue 2:

Cleaner 5 User Manual in view of Cleaner MPEG Charger is asserted as
rendering claims 5, 6 and 8 obvious.

Issue 3:

Avid Xpress in view of Avid Xpress DV and further in view ofMPEG standard is
asserted as rendering claims 1-3, 5, 7, 9 and 13-19 obvious,

Issue 4:

Washino is asserted as rendering claims 1-12, 15 and 19 anticipated.

Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found
in a prior Office action.

Issue 1 (Adopted)
6.

Claims 1-19 rejected under 35 U.S.C. 102(b) as being anticipated by Cleaner 5 User

Manual.

Regarding claim 1:
A method for converting video information from an incoming format to an
outgoing format using a continuous pass conversion process free from one or more
intermediary fIles, the method comprising:
Cleaner 5 discloses a system for converting incoming DV to an outgoing MPEG-l
or MPEG-2 stream, (Cleaner 5 at pp. 141,206), Additionally, Cleaner 5 uses a continuous

I

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Art Unit: 3992
pass (e.g., single pass) conversion process to encode movies free from intennediary files
into a single file, (Cleaner 5 at pp. 64, 206).

inputting video information in a first format;
Cleaner 5 discloses a capture code directed to receiving source material in DV fonnat
(i.e., video infonnation in a first fom1at) from a DV camera, (Cleaner 5 at pp. Capturing Video
pg. 5; Capturing with MotoDV pg. 8 and 141).
I

_

directly converting the video information in the first format to raw video
information in an uncompressed format;
Cleaner 5- decodes and converts the DV stream fonnat video infonnation to an
uncompressed raw video fonnat, such as YUV, (Cleaner 5 at p. 138).

inputting a desired output media format based upon a first input;
Cleaner 5 discloses allowing a user to select a different output media fom1at based
upon a first input. For example, the user "can easily produce MPEG-1 files for Video CD
projects by selecting the Video CD preset in the Advanced Settings window," (Cleaner 5
at p. 209). Cleaner 5 also supports MPEG-2 files for the DVD output media fonnat, (Cleaner 5
at p. 62).

inputting a desired video presentation standard based upon a second input;
Cleaner 5 discloses that a user may choose between NTSC or PAL (i.e., desired video
presentation) based upon the preset (i.e., second input) the user selects, (Cleaner 5 at pp. 204 and
205). In addition, as stated on page 206, while pertaining to images, Cleaner clearly discloses
that "You can choose whether you want to make an NTSC-compatible or a PAL-compatible

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stream". Thus, Cleaner 5 discloses that a user can be an input (second input) to select a destined
TV standard.

directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard;
Cleaner 5 discloses converting the uncompressed raw video information to the
selected image size through a resizing operation, (Cleaner 5 at p. 204). In Cleaner 5, 720 x
480 pixels is the image size associated with an MPEG 2 output media format in an NTSC
TV standard; (Cleaner 5 at p. 204). Additionally, 720 x 576 pixels is the image size
associated with an MPEG 2 output media format in a PALTV standard, (Cleaner 5 at p.
204). The Examiner notes that by selecting the desired output format the raw video information
would be resized in accordance with the selected desired output format.

directly adjusting the uncompressed format in the size associated with the desired
output media format and the desired video presentation standard to a frame rate
associated with the desired video presentation standard;
Cleaner 5 discloses a flame rate of29.97 frames per second is associated with MPEG 1
and MPEG 2 output media fonnats for the NTSC TV standard and a flame rate of25 frames per
second is associated with MPEG 1 and MPEG 2 output media formats for the PAL TV standard,
(Cleaner 5 at p. 207).

directly processing the uncompressed format in the size and the frame rate into an
elementary video stream; and

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Art Unit: 3992
Cleaner 5 discloses that a user can select to process the video into an elementary video
stream when outputting MPEG 1 and MPEG 2 files, (Cleaner 5 at p. 206 • Stream Type).

directly processing the elementary video stream with audio information in the
desired output media format and the desired video presentation standard to form
video and audio information in a presentation format based upon the desired output
media format and the desired video presentation standard.
Cleaner 5 discloses that when an MPEG 1 system stream is selected, the elementary
video stream is processed or multiplexed with the audio stream to form a single multiplexed
stream of audio and video information in the desired NTSC or PAL TV standard based on the
desired MPEG 1 or VCO output media fonnat, (Cleaner 5 at p. 7,206).

Regarding claim 2:

The method of claim 1 wherein the first format is selected from a digital file, a
digital captured video stream, an analog captured video stream, and an internet
video stream..
Cleaner 5 discloses reading an input format (i.e., first format) in a number of formats,
including digital video (OV), AVI files, MPEGI and MPEG2, (Cleaner 5 at p. 141). Page 141
lists the supported formats.

Regarding claim 3:

The method of claim 2 wherein the digital file is selected from an AVI format, an
MPEG format, a DV format, a QuickTime format, Real Video format, Windows
Media Player format.

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Cleaner 5 discloses selecting from an AVI fonnat, an MPEG fom1at, a DV [onnat, a
QuickTime fonnat, and other multimedia fonnats, (Cleaner 5 at p. 141).

Regarding claim 4:

The method of claim 1 wherein the uncompressed format is selected from RGB,
and YUV.
Cleaner 5 decodes and converts the DV stream fonnat video infonnation to an
uncompressed [onnat, such as YUV, (Cleaner 5 at p. 138).

Regarding claim 5:

The method of claim 1 wherein the desired output media format is selected from
either DVD, VCD, and Super vcn.
Cleaner 5 discloses that a user may output media in VCD fonnat, (Cleaner 5 at p. 209).
Specifically, Cleaner 5 states that a user can select the "Video CD preset in the Advanced
Settings window" in Cleaner to "easily produce MPEG-l files for Video CD project,"(Cleaner 5
at p. 209).

Regarding claim 6:

The method of claim 5 further comprising inputting a quality setting based upon
a third input when the desired output media format is DVD.
Cleaner 5 discloses that a user may select a third input for specifying quality settings
based on a variety of parameters, (Cleaner 5 at p. 59). For example, Cleaner 5 discloses quality
settings such as data rate, and frame rate, (Cleaner 5 at pp. 59, 62, 64-65). Furthennore, Cleaner
5 discloses that when the output fonnat is DVD, a data rate acceptable to DVD fonnats are
required and Cleaner 5 uses a data rate of 5.7 Mbits/sec which is used by Cleaner's default
MPEG-2 setting, (Cleaner 5 at p. 62).

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Regarding claim 7:

The method of claim 1 further comprising writing the video and audio
information in the presentation format onto a disk media.
Cleaner 5 discloses writing the video and audio infonnation in the presentation fonnat
onto a disc media such as CD-ROM or DVD-ROM, (Cleaner 5 at p. 144).

Regarding claim 8:

The method of claim 1 wherein the presentation format is selected from
VOB(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing the video and audio infonnation in the presentation format
onto a disc media. For example an MPEG 1 system stream for VCD, (Cleaner 5 at p. 206).
Specifically, Cleaner 5 allows the user to "choose between creating MPEG-l or MPEG-2
streams" when MPEG 1 is used for VCD output, (Cleaner 5 at p. 206 and 209).

Regarding claim 9:

The method of claim 1 wherein the processing of the elementary video stream
with audio information comprises a multiplexing process.
Cleaner 5 discloses a co~e directed to processing an elementary video stream with
audio infonnation, for example, Cleaner 5 lets the "[user] select between System or Elementary
streams for MPEG-1 files and Program or Elementary streams for MPEG-2," (Cleaner 5 at p.
206). Additionally, the user will "output to System (MPEG-l) or Program (MPEG-2) streams, in
which both the video and audio are muxed (multiplexed) into a single file," (Cleaner 5 at p. 206).

Regarding claim 10:

The method of claim 1 wherein the audio information is tuned to a desired
. frequency based upon the desired output media format.

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Cleaner 5 discloses audio information is tuned to a desired frequency based upon the
desired output media format, (Cleaner 5 at p. 212). In Cleaner 5, a user may use MP3 audio files
and "the MP3 default sample rate is 44.1 kHz, which is also the sample rate of audio CDs,"
(Cleaner 5 at p. 212).

Regarding claim 11:

The method of claim 10 wherein the desired frequency is selected from 48 kHz
for DVD, 44.1 kHz for VCD and SVCD.
Cleaner 5 discloses various desired frequencies including 44.1 kHz for use with VCD,
(Cleaner 5 at pp. 212-213,209).

Regarding claim 12:

The method of claim 1 wherein the directing converting, directly resizing, and
directly adjusting, and directly processing are performed free from one or more
intermediary files.
Cleaner 5 discloses direct converting, direct adjusting and directly processing are
performed free from one or more intennediary files, (Cleaner 5 at p. 206). Specifically,
the user will "output to System (MPEG-I) or Program (MPEG-2) streams, in which both
the video and audio are muxed (multiplexed) into a single file," (Cleaner 5 at p. 206).

Regarding claim 13:

The method of claim 1 further comprising processing the raw video information
based upon video editing information based upon a fourth input.
Cleaner 5 is directed to processing raw video information based upon video editing
information from a user, which is a fourth input. For example, Cleaner 5 is a software application
for cropping or trimming video based on InIOut points selected by the user, (Cleaner 5 at p. 25).

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Moreover, cropping allows the user to specify the part of the image they want to keep and
trimming allows the user to set in and out points, designating the points to start and end, (Cleaner

5 at p. 25).
Regarding claim 14:·

The method of claim 1 further comprising processing the audio information
based upon audio editing information based upon a fifth input.
Cleaner 5 can be directed to processing audio information based upon Noise Removal
(i.e., audio editing information) after the user selects the clean-up filter, which constitutes a fifth
input, (Cleaner 5 at p. 95). Specifically, "Cleaner offers professional- quality resampling, as well
as a range of clean-up filters, such as Noise Removal, Noise Gate and High/Low Pass, to
optimize your audio," (Cleaner 5 at p. 95).

Regarding claim 15:

,The method of claim 1 wherein the processing for converting into the elementary
video stream is provided in an encoding process and the converting to the raw video
information is provided in a decoding process.
Cleaner 5 is directed to converting raw video information to the elementary video stream
is performed through encoding, (Cleaner 5 at p. 206). Additionally, Cleaner 5 discloses
converting to YUV raw video information is performed through decoding, (Cleaner at p. 138).
SpeCifically, "Cleaner 5 decodes files significantly faster by using a combination of native YUV
processing and Digital Origin's DV codec. Cleaner also offers several decoding options through
the

P~eferences

dialog that allow you to choose between higher quality or faster decoding,"

(Cleaner 5 at p. 138).

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Regarding claim 16:
A system for converting video information from an incoming format to an
outgoing format using an integrated computer software application; the integrated
computer softw.are application being provided on one or more memories, the one or
more memories including:

Cleaner 5 discloses a system for converting incoming DV (Digital Video) to an outgoing
MPEG-l or MPEG-2 stream, (Cleaner 5 at pp. 141,206). As shown on page 141, Cleaner 5 lists
the supported formats that can be read and written. Page 206 discloses how one would select the
outgoing format using a software based pop-up menu.
Cleaner 5 is an application that is run on a computer running Windows or Mac as, which
includes one or more memories, (Cleaner 5 at p. 2). Since programs running in a Windows or
Mac as enviromnent are always run from one or more memories, Cleaner 5 too, is provided on
one or more of those memories, (Cleaner 5 at p. 141).
a code directed to receiving video information in a first format;

Cleaner 5 discloses a capture code directed to receiving source material in DV format
(i.e., video information in a first format) from a DV camera, (Cleaner 5 at pp. Capturing Video
pg. 5; Capturing with MotoDV pg. 8 and 141).
a code directed to receiving a desired output media format based upon a first input;

Cleaner 5 discloses allowing a user to select a different output media format based
upon a first input. For example, the user "can easily produce MPEG-l files for Video CD
projects by selecting the Video CD preset in the Advanced Settings window," (Cleaner 5
at p. 209).

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Art Unit: 3992

a code directed to receiving a desired video presentation standard based upon a
second input;
Cleaner 5 discloses that a user may choose between NTSC or PAL (i.e., desired video
presentation) based upon the preset (i.e., second input) the user selects, (Cleaner 5. at pp. 204 and
205). In addition, as stated on page 206, while pertaining to images, Cleaner clearly discloses
that "You can choose whether you want to make an NTSC-compatible or a PAL-compatible
stream". Thus, Cleaner 5 discloses that a user can be an input (second input) to select a destined
TV standard.

a code directed to converting the video information in the first format to raw video
information [in] an uncompressed format using a decoding process;
Cleaner 5 decodes and converts the DV stream format video information to an
uncompressed raw video format, such as YUV, (Cleaner 5 at p. 138).

a code directed to resizing the raw video information in the uncompressed format
into a size associated with the desired output media format and the desired video
presentation standard;
Cleaner 5 discloses converting the uncompressed raw video information to the
selected image size through a resizing operation, (Cleaner 5 at p. 204). In Cleaner 5, 720 x
480 pixels is the image size associated with an MPEG 2 output media format in an NTSC
TV standard, (Cleaner 5 at p. 204). Additionally, 720 x 576 pixels is the image size
associated with an MPEG 2 output media format in a PAL TV standard, (Cleaner 5 at p.
204). The Examiner notes that by selecting the desired output fonnat the raw video information
would be resized in accordance with the selected desired output format.

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a code directed to adjusting the uncompressed format in the size associated with the
desired output media format and the desired video presentation standard to a frame
rate associated with the desired video presentation standard;
Cleaner 5 discloses a flame rate of29.97 frames per second is associated with MPEG 1
and MPEG 2 output media formats for the NTSC TV standard and a flame rate of 25 frames per
second is associated with MPEG 1 and MPEG 2 output media formats for the PAL TV standard,
(Cleaner 5 at p. 207).

a code directed to processing the uncompressed format in the size and the frame
rate into an elementary video stream;
Cleaner 5 discloses that a user can select to process the video into an elementary video
stream when output!ing MPEG 1 and MPEG 2 files, (Cleaner 5 at p. 206 • Stream Type).

a code directed to processing the elementary video stream with audio information in
the desired output media format and the desired video presentation standard to
form video and audio information in a presentation format based upon the desired
output media format and the desired video presentation standard; and
Cleaner 5 discloses that when an MPEG 1 system stream is selected, the elementary
video stream is processed or multiplexed with the audio stream to form a single multiplexed
stream of audio and video information in the desired NTSC or PAL TV standard based on the
desired MPEG 1 output media format, (Cleaner 5 at p. 7, 206).

a code directed to receiving video editing information based upon a third input.

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Cleaner 5 discloses that a user may select a third input for specifying quality settings
based on a variety of parameters, (Cleaner 5 at p. 59). For example, Cleaner 5 discloses quality
settings for video editing such as data rate, and frame rate, (Cleaner 5 at pp. 59,62,64-65).

Regarding claim 17:

The system of claim 16 further comprising a code directed to receiving audio
editing information based upon a fourth input.
(

Cleaner 5 discloses receiving audio information that can be edited using a number of
different filters (i.e., fourth input). Cleaner 5 at p. 95. For example, these filters include noise
removal filters, noise gate filters, high/low pass filters, dynamic range compression filters and
reverb filters, (Cleaner 5 at p. 95).

Regarding claim 18:

The system of claim 16 wherein the integrated computer software application is
a single integrated application.
Cleaner 5 is a single integrated computer software application which "offers a complete
camera-to-web solution that makes it easy to put video and audio on your site,': (Cleaner 5 at p.

1).
Regarding claim 19:

A method for converting video information from an incoming format to an
outgoing format using a process free from one or more intermediary files, the
method comprising:
Cleaner 5 discloses a software application for converting video information from an
incoming format, such as a DV stream or QuickTime file to an outgoing format, such as MPEG
1 or MPEG 2, free from intermediary files, (Cleaner 5 at pp. 141,206).

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Art Unit: 3992

receiving video information in a first format;
Cleaner 5 discloses receiving source material (i.e., video information in a first
fonnat) shot with a DV camera, (Cleaner 5 at p. 5).

receiving a desired output media format based upon a first input and a desired
video presentation standard based upon a second input;
Cleaner 5 discloses allowing a user to select an output media format, such as MPEG-1,
based upon an input, such as the Video CD preset, (Cleaner 5 at pp. 141,209). Specifically, a
user "can easily produce MPEG-1 file for [their] Video CD projects .. , by selecting the Video CD
preset in the Advanced Settings window," (Cleaner 5 at p. 209). Cleaner 5 also supports MPEG2 files for the DVD output media format, (Cleaner 5 at p. 62).

decoding the video information in the first format to raw video information in an
uncompressed format;
Cleaner 5 decodes and converts the DV stream format video information to an
uncompressed format, such as YUV, (Cleaner 5 at p. 138).

, directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard and adjusting the un compressed format in the size associated with the
desired output media format and the desired video presentation standard to a frame
rate associated with the desired video presentation standard;
Cleaner 5 discloses converting the uncompressed raw video information into a resolution
size of 720x480 pixels which is associated with the DVD media format and the NTSC video
presentation standard, (Cleaner 5 at p. 62, 204,209). Moreover, Cleaner 5 discloses using the

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Art Unit: 3992
pop-up menu to adjust the frame rate of the uncompressed format to 29.97 frames per second
(fps) which is associated with the NTSC video presentation standard, (Cleaner 5 at p. 207).
Moreover, a user may "choose a frame rate between 23.967 - 60 frames per second,"(Cleaner 5 at
p.207).

encoding the uncompressed format in the size and the frame rate into an elementary
video stream; and
Cleaner 5 discloses encoding the YUV uncompressed format, (Cleaner 5 atp. 138).
Additionally, Cleaner 5 discloses "[t]he Stream Type pop-up menu lets you select between
System or Elementary streams for MPEG-l files and Program or Elementary streams for MPEG2," (Cleaner at p. 206). Thus, the YUV uncompressed format is encoded to a size and frame rate
of an MPEG-l elementary stream, (Cleaner 5 at pp. 138,206).

multiplexing the elementary video stream with audio information in the desired
output media format and the desired video presentation standard to form video and
audio information in a presentation format based upon the desired output media
format and the desired video presentation standard.
Cleaner 5 discloses that when an MPEG 1 system stream is selected, the elementary
video stream is processed or multiplexed with the audio stream to fonn a single multiplexed
stream of audio and video information in the desired NTSC or PAL TV standard based on the
desired VCD output media format, (Cleaner 5 at p. 7 and p. 206).

Claim Rejections - 35 USC § 103
7.

The following is a quotation of35 U.S.C. 103(a) which fonns the basis for all

obviousness rejections set forth in this Office action:

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Art Unit: 3992
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

Issue 2 (Adopted)
8.

Claims 5, 6 and 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Cleaner

5 in view ofMPEG Charger.
The Examiner notes that this rejection was proposed in addition to the rejection to claims
5, 6 and 8 to Cleaner 5 alone.
The Examiner acknowledges that as per MPEP 2660, III, "it is to be noted that the
examiner is not to refuse to adopt a rejection properly proposed by the requester as being
cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to
preserve parties' appeal rights as to such proposed rejections."
The Examiner maintains that Cleaner 5 anticipates the claims, however in addition, the
Examiner acknowledges the below teachings with respect to MPEG Charger. As noted in the
Request, MPEG Charger is a software application for converting a video file into a MPEG video
file based on certain parameters, (MPEG Charger at pp. 9, 14). MPEG Charger is explicitly
configured to work with Cleaner 5 in the process of converting video files for recording onto a
disc. Specifically, MPEG Charger can produce MPEG-1 files for Video CD projects and
MPEG-2 files for "producing high-data rate, full broadcast-quality files that require DVD, fast
CD-ROM or hard drives for playback." MPEG Charger at p. 10. Importantly, MPEG Charger
perfonns the method entirely using software run from a disc.

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Art Unit: 3992

The Examiner notes MPEG Charger is a software application for explicit use with
Cleaner 5 and provides additional functionality in MPEG-l and MPEG-2 encoding. MPEG
Charger at p. 9. Additionally, MPEG Charger explicitly discloses the ability to "turn all popular
video, audio and animation file formats into MPEG streams for DVD, Video CD, CD-ROM,
digital broadcasting and broadband webcasting." MPEG Charger at p. 9.

Regarding claim 5:

The method of claim 1 wherein the desired output media format is selected from
either DVD, VCD, and Super VCD.
Cleaner 5 discloses that a user may output media in VCD fonnat. Cleaner 5 at p.
209. Specifically, Cleaner 5 states that a user can select the "Video CD preset in the
Advanced Settings window" in Cleaner to "easily produce MPEG-I files for Video CD
projects." Cleaner 5 at p. 209. Additionally, MPEG Charger discloses DVD output media
formats. MPEG Charger at p. 9.
A person of ordinary skill in the art would have been motivated to combine Cleaner 5
with MPEG Charger in view of the explicit motivation found within the MPEG Charger
Reference: "MPEG Charger is a software-only MPEG option for Cleaner 5 that gives you
comprehensive

co~trol

over both MPEG-l and MPEG-2 encoding," and reference within

Cleaner 5: "Cleaner MPEG Charger integrates seamlessly with Cleaner." MPEG Charger at p. 9;
Cleaner 5 at p. 209.

Regarding claim 6:

The method of claim 5 further comprising inputting a quality setting based upon
a third input when the desired output media format is DVD.

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Cleaner 5 discloses that a user may,select a third input for specifying quality settings
based on a variety of parameters. Cleaner 5 at p. 59. For example, Cleaner 5 discloses quality
settings such as data rate, and frame rate. Cleaner 5 at pp. 59,62,64-65. Furthennore, Cleaner 5
discloses that when the output fonnat is DVD a data rate acceptable to DVD fonnats are required
and Cleaner 5 uses a data rate of 5.7 Mbits/sec and is used by Cleaner's default MPEG-2 setting.
Cleaner 5 at p. 62. Moreover, MPEG Charger discloses that the user is allowed "to turn all
popular video, audio and animation file fonnats into MPEG streams for DVD, Video CD, CDROM, digital broadcasting and broadband webcasting." MPEG Charger at p. 9. Thus, the user
may input a higher data rate to create an MPEG stream suitable for a DVD.

Regarding claim 8:

The method of claim 1 wherein the presentation format is selected from VOB
(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing the video and audio infonnation in the presentation fonnat
such as an MPEG 1 system stream for VCD, (Cleaner 5 at p. 206). Specifically, Cleaner 5 allow~
the user to "choose between creating MPEG-l or MPEG-2 streams" for VCD output, (Cleaner 5
at p. 206, and 209). Furthennore, MPEG Charger discloses that the user is allowed "to tum all
popular video, audio and animation file fonnats into MPEG streams for DVD, Video CD, CDROM, digital broadcasting and broadband web casting, (MPEG Charger at p. 9).

Issue 3 (Not Adopted)

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Art Unit: 3992
9.

The rejection of claims 1-3, 5, 7, 9 and 13-19 as being rejected under 35 U.S.C. 103 (a) as

being unpatentable over A vrD Xpress in view of AVID Xpress DV and further in view of
MPEG standard is not adopted.

As stat~d on page 34 of the Request, Avid Xpress is an advertising document promoting
a software application for converting and editing video and audio files based on user input
parameters, (Avid Xpress at p. 1). The Avid Xpress system can receive video in many different
input formats including popular animation file formats on Windows, Macintosh and SOl,
including QuickTime formats, (Avid Xpress at pp. 1,3). The Avid Xpress software is designed
to accept these file types (and more) for editing and output. Among Avid Xpress' output features
are the ability to output to files into NTSC and PAL TV formats and further outputting video in
compliance with the ITU R-601 standard fOil broadcast television, (Avid Xpress at p. 3).
In addition, as stated on page 35 of the Request, Avid Xpress DV discloses a software
system that is related to Avid Xpress, which includes additional capabilities such as supporting
MPEG output formats and writing outputs to DVD. Avid Xpress DV at 1.
The Examiner maintains that while Avid Xpress discloses of providing software for
converting and editing video and audio files, Avid Xpress does not disclose in detail any of the
method or code for performing at least the recited converting steps. Thus, neither Avid Xpress
nor Avid Express DV either alone or in combination meet all of the claimed limitations.

The Examiner agrees that Avid Xpress is a software system for converting and editing
video and multimedia content quickly, (Avid Xpress at p. 1). Additionally, as noted above, the

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Art Unit: 3992
Examiner agrees that Avid Xpress DV is a software product that is related to Avid Xpress that
has a variety of exporting options including MPEG output abilities, (Avid Xpress DV Features at
p. 1).

The Examiner agrees that both references disclose of code to receive video in many
different formats and for outputting video into broadcast digital formats, (Avid Xpress at p. 1).

The Examiner notes that the Request fails to specifically point out where in the references
does it show that the video information in the first format is digitally converted to "raw video
infonnation in an uncompressed format".
The Request merely states:
The Avid Xpress software includes code for converting video infonnation into
uncompressed video using its uncompressed video option. Avid Xpress at pp. 1-2.

There is no support for converting the video information to raw video information.

The Examiner acknowledges that the Request further points to the following in Avid
Xpress:

"Truest Online Image Quality Avid Xpress supports ITU R-601 broadcast industry

standards for the truest online image quality. For the first time in its category, uncompressed
video is available as an option for Avid Xpress Del\lxe and Elite systems for the best possible
video quality. All Avid Xpress systems using Avid's state-of-the-art Meridien video subsystem
deliver broadcast quality 2: 1 image compression, as well as a range of other resolutions in either

Page 34

Application/Control Number: 95/001,283
Art Unit: 3992
4:3 or 16:9 wide screen. No other digital

vid~o

system in its class combines unmatched speed

and productivity features with the highest image standards. " Avid Xpress at p. 1.
"Single-Stream Uncompressed Video Option (Deluxe and Elite Bundle only) A
single stream of uncompressed video allows the best possible image quality for high-end
projects." Avid Xpress at p. 2.

The Examiner acknowledges that Avid Xpress uses uncompressed video, however no
relationship between this uncompressed video and the received video information has been
made. The claim requires directly converting the video information in the first format to raw
video information in an uncompressed format.
Another limitation pertains to directly resizing the raw video information (i.e. the raw
video information that resulted from the previous converting step) into a size associated with the
desired output media format and the desired video presentation standard;
The Request merely shows that Avid Xpress is able to output video with various sizes,
however, the Request's statements are conclusory and are not specific as to how Avid Xpress
resizes or converts the received data.
The claim also outlines specific step that recites code for resizing the raw information in
the uncompressed format into a size associated with the desired output media format and the
desire video presentation standard.
The Examiner agrees that Avid Xpress discloses of various video presentation standards
(e.g. TV Standards) and different output media with various 'sizes', however, the Avid Xpress
reference does not disclose what video is being outP"lJt or whether wha~ is being output was a

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Art Unit: 3992
result of a converting step which converted video information in a first format to raw video
information in an uncompressed format.

The claims further recited limitations directed to directly processing the uncompressed
fonnat into "an elementary video stream". The Request discloses that since Avid Xpress DV
includes code directed to exporting files in the MPEG format, then Avid Xpress DV processes
the uncompressed format into an elementary stream".
The Request relies upon MPEG Standard to support the processing of video into

a~

elementary video stream; however, the Examiner first notes that the Request does not show how
Avid Xpress discloses of creating the uncompressed video stream from the received video
information and while elementary stream were known in the art, the Request did not point out
how MPEG Standard contemplates the converting of video information to raw video information
in an uncompressed format and the processing of that same video information in the raw
uncompressed format into an elementary video stream.

The Examiner does not agree that Avid Xpress in view of Avid Xpress DV and MPEG
standard renders obvious any of the claims under reexamination and thus the proposed rejection
will not be adopted by the Examiner.

Issue 4
10.

Claims 1-12, 15 and 19 are rejected under 35 U.S.C. 102(e) as being anticipated by

Washino U.S. Patent 6,370,198.

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Regarding claim 1:

A method for converting video information from an incoming format to an
outgoing format using a continuous pass conversion process free from one or more
intermediary files, the method comprising:
Washino discloses a multi-format digital video production system that enables a user to
process an input video program to produce an output version of the program in a final format,
(Abstract, lines 1-3).

inputting video information in a first format;
Washino discloses inputting video infomlation in a first fomlat, (collI,
lines 51-54), ("graphics processor 82 ... process the input video signals 84 ... ").

directly converting the video information in the first format to raw video
information in an uncompressed format;
Washino discloses converting the inputted video information in the first format to
an uncompressed format, such as RGB or YUV, (Col 11, lines 54-63).

inputting a desired output,media format based upon a first input;
Washino discloses that outputs can be configured to RGB format or other output
media formats, (collI, lines 51-54).

inputting a desired video presentation standard based upon a second input;
Washino discloses that the video data stream may undergo a number of
modifications based on the desired output format such as NTSCIPAL or HDTV, (col. 21, line 56
to col. 22, line 11; col 11, lines 54-63).

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directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard;
Washino discloses that images are re-sized horizontally and vertically by pixel
interpolation and frame rates are adapted by inter-frame interpolation, abstract; col. 18, lines 5063).
directly adjusting the uncompressed format in the size associated with the desired
output media format and the desired video presentation standard to a frame rate
associated with the desired video presentation standard;
Washino discloses adjusting the frame rate of the uncompressed format to the
desired frame rate of the video presentation standard, (Abstract; Col. 18, lines
53-63).
directly processing the uncompressed format in the size and the frame rate into an
elementary video stream; and
Washino discloses processing the uncompressed format in any selected size and
frame rate into an elementary video stream, (col. 18, lines 50-63; col. 20, lines
6-10).
directly processing the elementary video stream with audio information in the
desired output media format and the desired video presentation standard to form
video and audio information in a presentation format based upon the desired output
media format and the desired video presentation standard.

.

\

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Washino discloses processing the video fonnat with audio infonnation in the
desired output media format. Specifically, Washino discloses adjusting the pitch of the
audio based on the frame rate of the video which is related to the desired video standard, (col. 21,
lines 45 to col. 22, lines 15; col. 22, lines 49-53).

Regarding claim 2:

The method of claim 1 wherein the first format is selected from a digital file, a
digital captured video stream, an analog captured video stream, and an internet
video stream.
Washino discloses the first fonnat including a digital file, captured video stream,
and analog captured video stream, (col. 15, lines 1-5). Specifically, Washino
discloses that the input format can be either an analog signal, which will be processed
into a digital file or a digital file, (collI, lines 51-54; col. 15, lines 1-5).

Regarding claim 3:

The method of claim 2 wherein the digital file is selected from an AVI format, an
MPEG format, a DV format, a QuickTime format, Real Video format, Windows
Media Player format.
Washino discloses that the digital file can be in MPEG format, (col. 11,
lines 63-65; col. 15, lines 1-5).

Regarding claim 4:

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The method of claim 1 wherein the uncompressed format is selected from RGB,
and YUV.
Washino discloses selecting an uncompressed format of ROB or YUV, (col 11, lines 5463).

Regarding claim 5:

The method of claim 1 wherein the desired output media format is selected from
either DVO, VeD, and Super veo.
Washino discloses selecting a media format such as DVD. Washino, Col. 6, lines 48-60.

Regarding claim 6:

The method of claim 5 further comprising inputting a quality setting based upon
a third input when the desired output media format is DVD.
Washino discloses quality editing for multi-format video production. Washino,
Col. 1, lines 14-21. Specifically Washino disclose that if DVD type storage is selected a
higher data compression can be used to fit an entire program of 120 minutes onto the
storage media. Washino, Col. 17, lines 52-62.

Regarding claim 7:

The method of claim 1 further comprising writing the video and audio
information in the presentation format onto a disk media.
Washino discloses writing or recording the video and audio information onto a
disc media, such as DVD. Washino, Col. 6, lines 48-60.

Regarding claim 8:

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The method of claim 1 wherein the presentation format is selected from
VOB(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.

Washino discloses wherein the digital file can be distributed in MPEG-2 format
and recorded onto DVD, (col. 5, lines 19-34).

Regarding claim 9:
The method of claim 1 wherein the processing of the elementary video stream
with audio information comprises a multiplexing process.

Washino discloses that audio signals can be included within the digital stream and
that the audio can be integrated by available methods such as A VI, (col. 12, lines 1-7).
Regarding claim 10:
The method of claim 1 wherein the audio information is tuned to a desired
frequency based upon the desired output media format.

Washino discloses adjusting the audio data in accordance with the video output.
Washino, Col. 22, lines 43-57.
Regarding claim 11:
The method of claim 10 wherein the desired frequency is selected from 48 kHz
for DVD, 44.1 kHz for

vcn and SVCD.

Washino discloses writing audio-video to DVD, which inherently requires an
audio frequency of at least 48 kHz! , (col 5, lines 19-34).

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Regarding claim 12:

The method of claim 1 wherein the directing converting, directly resizing, and
directly adjusting, and directly processing are performed free from one or more
intermediary files.
Washino discloses that in some embodiments only one conversion step is required.
Washino, (col. 18, lines 50-63).

Regarding claim 15:

The method of claim 1 wherein the processing for converting into the elementary
video stream is provided in an encoding process and the converting to the raw video
information is provided in a decoding process.
Washino discloses encoding the uncompressed format to preserve the full bandwidth of
the high-resolution signal, (col. 7, lines 39-43).

Regarding claim 19:

A method for converting video information from an incoming format to an
outgoing format using a process free from one or more intermediary files, the
method comprising:
Washino discloses a multi-format digital video production system that enables a
user to process an input video program to produce an output version of the program in a
final format, (abstract).

receiving video information in a first format;

1 See LaBarge, DVD Authoring, p. 41 (Audio written in DVD-Video fonnat requires a frequency of at least
'
48kHz) filed March 23, 2010.

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Washino discloses receiving video infonnation in a first fonnat, (col
11, lines 51-54).

receiving a desired output media format based upon a first input and a desired
video presentation standard based upon a second input;
Washino discloses that outputs can be configured to ROB fonnat or other output
media fonnats, (collI, lines 51-54). Further, Washino discloses that the video
data stream may undergo a number of modifications based on the desired output fonnat
such as NTSC/PAL or HDTV, (col. 21, line 56 to col. 22, line 11; collI, lines 54-63).

decoding the video information in: the first format to raw video information in an
uncompressed format;
Washino discloses converting the inputted video infonnation in the first fonnat to
an uncompressed fonnat, such as YUV, (collI, lines 54-63).

directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard and adjusting the uncompressed format in the size associated with the desired
output media format and the desired video presentation standard to a frame
rate associated with the desired video presentation standard;
Washino discloses that images are re-sized horizontally and vertically by pixel
interpolation and frame rates are adapted by inter-frame interpolation, (abstract; Col. 18, lines
50-63). Additionally, Washino discloses adjusting the frame rate of the uncompressed fonnat to
the desired frame rate of the video presentation standard, (abstract; Col. 18, lines 50-63).

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encoding the uncompressed format in the size and the frame rate into an elementary
video stream; and
Washino discloses processing and encoding the uncompressed format in any selected size
and frame rate into an elementary video stream, (col. 7, lines 39-43; col. 18, lines 50-63; col. 20,
lines 6-10).

multiplexing the elementary video stream with audio information in the desired
output media format and the desired video presentation standard to form video and
audio information in a presentation format based upon the desired output media
format and the desired video presentation standard.
Washino discloses processing the video format with audio information in the
desired output media format. Specifically, Washino discloses adjusting the pitch of the
audio based on the frame rate of the video which is related to the desired video standard, (col. 21,
lines 45-55; col. 22, lines 49-53).

Response to Arguments
Preamble A rgllmen ts (Pages 21-22 of the Patent Owner's Response)
The Patent Owner maintains their argument that the preamble is a limitation set forth in
. the claim.
The Examiner notes that the current claim rejection addresses the preamble of the claim
despite the fact that the body of the claim does not necessarily require the use of the preamble.
In considering the Patent Owner's construction, the Patent Owner maintains that "Cleaner

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5 does not disclose a method for converting audio and video information to fom1 a presentation
format."
As noted on page 22, ofth~ Patent Owner's response, the Patent Owner acknowledges
that Cleaner 5 discloses "a method for converting a video file"; however, the Patent Owner notes
that Cleaner 5 does not ,"disclose a method that integrates all the steps recited in the claim. The
Examiner notes that the claim does not require a method that "integrates" all of the steps in the
claim and thus the Patent Owner is arguing limitations which are not claimed. Indeed original
claims 16-18 make it clear that the broadest reasonable interpretation requires a reading that the
claims do not require any "integration" unless it is specifically claimed.
The Examiner notes that the Patent Owner acknowledges that Cleaner 5 discloses of a
CD mastering application. This CD mastering application is used by Cleaner 5 to write the
presentation format to disc. This is not required by the Patent Owner's construction since the
Patent Owner construction specifically states "without writing video to disk", Since Cleaner 5 is
at least able to provide a single pass and continues non-stop to at least the step prior to writing to
disc, ,then Cleaner 5 anticipates the claims. The Patent Owner's argument falls because the
Pat~nt

Owner states that Cleaner 5 does not meet the claim because a "CD-mastering application

is a separate application"; and yet the CD mastering application is used for writing the
presentation format of Cleaner 5 do a VCD disc. This step is not required in the claim since the _,
Patent Owner maintained that the claimed pass conversion process does not write to disk.
In addition, as pointed out by the Requester, Cleaner 5 discloses a process that continues
non-stop to output a presentation format without writing video to disc while processing the input
video into the presentation format. The Requester points to' pages 64 and 209 of Cleaner 5.

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In addition, the Examiner notes Cleaner 5 discloses that a user makes various selections
including data rate, frame rates, frame size and display size among other selections. The
Examiner maintains that Cleaner 5 at least continues non-stop from video input to video output
(e.g. MPEG encoded output format for VCD) since Cleaner 5 discloses for example in pages 7576 that a user has the option to "preview" the movie during the encoding process. This option
can be deselected and thus will allow the encoding to occur in a continuous manner without user
intervention and until it is completed. The continuous non-stop method of Cleaner 5 is also
explained in the Architectures and Formats MPEG section (pages 203-214 of Cleaner 5). This
section discusses that a user selects the MPEG output setting and can modifY various tabs which
will control how the video would be encoded. These include, choosing the output format of
MPEG-l or MPEG-2, Stream type, Image type (e.g. NTSC or PAL), display ratio, encoding
speed, data rate and other types of inputs that a user can select. Once a user selects their options,
then they can select to start encoding their video and the method of Cleaner 5 continues non-stop
until an encoded MPEG-I or MPEG-2 file is created with the user's desired specifications. The
encoded MPEG-l file in this case is a VCD MPEG-l file.
This section also states that using the same Advanced Setting Window (that is the same
Window that the user inputs all of their specifications for encoding the video file), the user has
the further option to select the Video CD present (page 209). Thus, in this case assuming

arguendo that an optical CD format is required, Cleaner 5 clearly discloses of continuing nonstop from an input of video to an output format.
The Requester further maintains that even if the claim were to require authoring to an
optical disc, Cleaner 5 discloses that a Video CD can be authored using a CD-mastering

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application. The Requester points out that the mastering application can be integrated with
Cleaner 5 and that a reference is prior art for all that it teaches thus Cleaner 5 teaches the
authoring of a file to an optical disc since Cleaner 5 specifically discloses of how the system
would accept an input from the user to create a VCD MPEG-l file for writing to a VCD optical
disc.

Inputting a Desired Output Media Format Based Upon a First Input Argument (Pg. 22
of pO's Response)
The Patent Owner notes that the Examiner states that Cleaner 5 discloses a user "can
easily produce MPEG-l file for Video CD projects by selecting the Video CD present in the
Advanced Settings window." In addition, the Patent Owner notes that the Examiner noted that
Cleaner 5 also supports MPEG-2 files for the DVD output media format.
The Patent Owner maintains that Cleaner 5 can only input one output media format at
best, which can't be a "desired" output media format since it is required as the only available
output media format Cleaner 5 could possible input.
The Examiner first notes that the term "desired" does not require more than one choice
since a user's desire may be limited to only one choice.
The Patent Owner further contends that an MPEG-l or MPEG-2 file is not a "desired'
output media format".
The Examiner notes that this argument is based on the fact that the Patent Owner is
improperly re~ding limitation into the claim which is not claimed. Specifically the Patent Owner

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does not agree that MPEG-l or MPEG-2 is not an output media fonnat because it-is not an
optical disc fonnat. However, this is not required by the claim language.
Nonetheless, as noted by Cleaner, a user "can easily produce MPEG-l files for Video CD
projects by selecting the Video CD preset in the Advanced Settings window." In addition,
Cleaner 5 also discloses that MPEG-2 files are for the DVD output media format.
Cleaner 5 discloses that a user can select at least the VCD option. The VCD format is an
optical disc fonnat as acknowledged by the Patent Owner.
The Requester in their response likewise noted that Cleaner 5 discloses the user can select
"the Video CD preset", thus, Cleaner 5 discloses of selecting an optical disc format for the output
media fonnat.
The Examiner notes that assuming arguendo that an optical disk fom1at must be selected,
the Examiner has shown that Cleaner 5 allows a user to select MPEG-l for VCD. In addition, as
disclosed by Cleaner MPEG-2 is for DVD fonnat. Thus, selecting MPEG-l or MPEG-2 reads on
the Patent Owner construction of output media format.

Directly resizing tlte raw video information in tlte uncompressed format into a size
associated with the desired output media format and the desired video presentations standard
Arguments (Page 23 of the Patent Owner's response)
The Patent Owner's argument is based on their argument that MPEG-2 is not a "desired
output media fonnat" since the construction of "output media format" requires a standard video
fonnat for optical disk.

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The Examiner disagrees and notes that the claim simply does not require an output fonnat
for optical disc. Nonetheless, the Examiner points out that MPEG-l as disclosed by Cleaner 5 is
directly related to a YCD fonnat (since a user can select MPEG-l file for Video CD - page 209
of Cleaner 5) and MPEG -2 is the fonnat for DYD.
As noted by the Requester the '172 patent teaches that the output media fonnat can be
fonnats other than YCD, Super-YCD, and DYD. See the '172 patent at col. 8, lines 49-50 ("As
can be seen, the media fonnat can be DYD, YCD, or Super YCD, among others". This is
consistent with the rest of the specification and the claims, which allow the file to be converted
into its presentation fonnat without being written onto an optical disk. Notably, the system
illustrated in Figure 8 for carrying out the method does not include an optical disk drive.
Additionally, none of the claims require authoring the file onto an optical disk. At best
claim 7 requires that the video and audio infonnation is written onto a disk media, but
there is no requirement that the disk media be an optical disk.

directly processing the elementary video stream with audio information in the desired
output media format and the desired video presentation stal1dard to from video and audio
informatiol1 il1 a presentatiol1 format based upon the desired output media format and the
desired video presentation standard argument (Page 23 of Patent Owner's response)
The Patent Owner contends "a presentation fonnat is a fonnat for displaying (presenting)
video and audio based on the output media fonnat and video presentation standard. The Patent
Owner contends that MPEG-l streams or files are not in a "presentation fonnat" because they

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were not in the format written to disk media as required by claim 7 nor are they in the format
displayed.
The Examiner first notes that the Patent Owner is contradicting their claims. MPEG 1 is a
presentation format since dependent claim 8 specifically relies on VCD MPEG-l as one of the
possible presentation formats that can be selected. In addition, Cleaner 5 likewise uses VCD
MPEG-l as a presentation format that a user can select for the eventual writing of the files to
disc. Cleaner 5 specifically discloses that a CD-mastering application will use the MPEG-l VCD
formatted file for writing onto disc.
The Patent Owner further contends that a presentation format based on a desired video
presentation standard is in a fonnat for display on a television using the desired video
presentation standard.
The Examiner again notes that Cleaner 5 specifically discloses that a user can select
MPEG-l for VCD. The Patent Owner has not explained which this iS,not a format for display on
a television. The Examiner additionally notes that "television" is not recited in the claims and
thus the Patent Owner's arguments are again directed to limitations which are not claimed.
In addition, the Examiner notes that on page 205 of Cleaner 5, it is discloses of playing a
DVD title based on the MPEG-2 format. In addition, Cleaner 5 discloses several options in
which a user can select-including options for a CD or DVD (see pages 207-208).
In addition, the Examiner notes that as set forth on page 62 of Cleaner 5, it is discloses
that "Cleaner 5 now encodes MPEG-2, which is the format used for DVD-Video. The discs can
be played back on standard set-top and portable DVD players or on computers with DVD-ROM

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drivers. Thus, Cleaner 5 fully discloses that its MPEG-2 fonnat for DVD is playable on DVD
players which are a fonnat that playable on a television.

As further noted on page 209 of Cleaner, the Video CD fonnat is a standard that plays in
most DVD players. "It requires MPEG-l video and special Video CD fonnatting." Indeed, claim
8 specifically recites that the presentation fonnat can be VCD MPEG 1 and SuperVCD MPEG2.
Thus, the presentations fonnat of the '172 patent is based on the MPEG1 or MPEG2
fonnat standards.

As noted by the Requester the '172 patent never defines.the presentation fonnat as the
fonnat written to an optical disk such that an optical disk player would be able to play the video.
Rather the presentation fonnat is based on the output media fonnat and the desired video
presentation standard. Cleaner 5 discloses an MPEG file can be output and the MPEG fonnat
can additionally be fonnatted according to a desired video presentation standard. Such an
MPEG file is in a presentation fonnat.
The Patent Owner argues that selecting an MPEG file as the output media fonnat
means that an MPEG file calIDot also be the presentation fonnat. However, the output
media fonnat, in the context of the claims, is a fonnat that is selected by the user. The
presentation fonnat is based upon the output media fonnat and it is further fonnatted
according to a desired video presentation standard. Such a conclusion is not-illogical as
the Patent Owner argues, but rather the conclusion follows logically from the claim
language.

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Claim 5 Arguments:
The Patent Owner contends that VCD is the only alleged preset, and therefore cannot be a.
"desired output media format" since "desired" requires a plurality of media formats.
The Examiner disagrees and notes that Cleaner 5 disclose of by VCD and DVD formats.
While DVD is not described with respect to the preset option, the DVD

op~ion

would be

supported since Cleaner 5 specifically discloses that a user can have DVD projects.
Likewise, the Requester notes that "desired" does not require a plurality. The Requester
maintained is defined as either 1) yearned or wished for; coveted or 2) deemed correct or proper;
selected; required.
Nonetheless, even considering only the VCD preset option, the Examiner maintains that
"desired" does not entail a plurality of media formats since a user may have only one desire.
There is no requirement for multiple desires in the independent claim.
The Examiner maintains that Cleaner 5 discloses at least DVD and VCD output media
formats that may be pre-selected.. In addition, the Examiner, as noted below and in the rejection,
as provided an alternative rejection in which including additional output media was known in the
art.

Claim 6 Arguments
The Patent Owner contends the Examiner has not pointed out a DVD output media
format. The Examiner disagrees.
Cleaner 5 specifically discloses that a user can create DVD projects. For example, on
page 205, Cleaner 5 discloses of using the MPEG-2 format for DVD for playing a movie. In

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addition, as further disclosed on page 205 of Cleaner, a user can choose an MPEG setting and
can specifically use the Output tab which allows a user to select between MPEG-1 and MPEG-2
streams.
In addition, as noted by the Requester, the claims do not specify that the program must
accept a selection of a menu item specifically reciting "DVD." Rather the claim language will
allow for selection of an MPEG-2 output, which is related to DVD, and accordingly the output
media format could be DVD.

Claim 7 Arguments:
The Patent Owner contends the Examiner does not point to any disclosure showing
Cleaner 5 can write the format for VCD or any other format for presenting video and audio based
on a desired output media format or video presentation standard.
The Examiner notes that the Patent Owner contradicts themselves since the Patent Owner
acknowledges that Cleaner 5 discloses a CD-mastering application (page 22 of the Patent
Owner's response).
The Examiner further maintains that the Cleaner 5 reference specifically discloses of
writing the MPEG-l for VCD format to disc and specifically disclosed on page 209 of Cleaner 5.
Cleaner 5 discloses that the MPEG-l for VCD files can be authored (i.e. written) onto disc using
the Easy-CD Creator or Adaptec Toast application.
In addition, as noted by the Requester, Cleaner 5 discloses writing the video and audio
information in the presentation format onto a disc media such as CD-ROM or DVD-ROM,
(Cleaner 5 at p. 144). Additionally, the Cleaner 5 manual states "To author Video CDs, you'll
also need a CD- mastering application, such as Adaptec Toast or Easy-CD creator," (Cleaner 5 at

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p. 209). While Cleaner 5 (the software application) alone cannot create VCDs that are playable
on a media player that reads VCD fonnatted optical discs, Cleaner 5 (the reference) very
clearly discloses that Cleaner 5 can write the video and audio infonnation to a disc media
or Cleaner 5 can be used in conjunction with another program to write the information to
an optical disc playable by a media player.

Claim 8 Arguments:
The Examiner notes that construing presentation fonnat to include MPEG-l files is
unreasonable and contrary to the ordinary meaning of the tenn since MPEG-l file cannot be
played on a TV.
The Examiner first notes that files being played on a TV is not a requirement in the
claims. Thus, the Patent Owner is arguing limitations which are not claimed. In addition, claim 8
specifically recites that the presentation fonnat can be VCD MPEG-l, thus, the Patent Owner's
argument are contrary to their patent disclosure.
In addition, the Examiner notes that as set forth on page 62 of Cleaner ~, it is discloses
that "Cleaner 5 now encodes MPEG-2, which is the fonnat used for DVD-Video. The discs can
be played back on standard set-top and portable DVD players or on computers with DVD-ROM
drivers. Thus, Cleaner 5 fully discloses that its MPEG-2 fonnat for DVD is playable on DVD
players which are a fonnat that playable on a television. As is known, DVD players as a standard
set-top box are connected to television sets.

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In addition, as noted by the Requester the claims do not recite authoring as a requirement
and thus the presentation format is not required to be in a fonnat for an optical disk. Further, also
discussed above, MPEG-l files modified for Video CD, as disclosed in Cleaner 5 are the
presentation fonnat for VCD and accordingly Cleaner 5 meets even this improper construction of
the claim.
The Patent Owner argues that the presentation format for writing audio and video
presentation data to a VCD is described as a ".dat" file that contains MPEG-l audio and video.
The Examiner notes that the claim does not recite any requirement of a II .dat" file. Nonetheless,
assuming arguendo that ".dat" files, ".vob" files and ".mpg" files are the formats for VCD, DVD
and SVCD respectively, the Examiner notes that since this is the known standard then since
Cleaner 5 discloses of at least VCD and DVD standards and the using a CD-mastering
application to at least write VCDs to disc, then Cleaner 5 supports ".dat" files for VCD since this
would have been required as noted by the Patent Owner.

Claim 10 Arguments:
The Patent Owner has not provided any substantive arguments other than to state that
Cleaner 5 does not disclose receiving a desired output media format.
For the reasons noted above, Cleaner 5 fully discloses of receiving a desired output media
format of at least MPEG-l for VCD.

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Claim 19 Arguments:
The Patent Owner contends that Cleaner 5 discloses outputting MPEG-l or MPEG-2 as
intermediary files.
The Examiner disagrees since the point in which MPEG-l or MPEG-2 is output right
(

before the files are ready to be written onto disc using a CO mastering application. The Patent
Owner has not shown that Cleaner 5 uses intermediary files during the process from input of
video to output of video without writing onto disk. As noted above, the presentation format as
claimed includes at least MPEG-l for VCO (claim 8 of the' 172 patent). Thus, if Cleaner 5 uses
intennediary files, then the' 172 patent likewise uses intermediary files since the' 172 shows that
the presentation format could be VCO MPEGI.
The Patent Owner further argues the multiplexing limitations, however the Patent Owner
ahs not explained why they do not believe this limitations is not taught by the prior art.
Nonetheless, the Examiner notes that under the broadest reasonable interpretation of the
claim and as shown in the rejection of the claim, Cleaner 5 fully anticipates the multiplexing
limitations as well as showing a selection of a desired output media format and desired video
presentation standard as claimed.

Issue 2 Arguments
Claim 5 Arguments

The Patent Owner contends MPEG Charger does not disclose a OVD output media
format. The Patent Owner notes that the only preset cited by Examiner is for VCO and MPEG
Charger does not disclose what Cleaner 5 is missing.

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The Examiner first notes that MPEG Charger (like Cleaner 5) specifically discloses of
DVD as an output. As noted under the MPEG Charger section (under Overview), MPEG
Charger "gives you comprehensive control over both MPEG-1 and MPEG-2 encoding. Because
it integrates seamlessly with Cleaner 5, you can easily customize your MPEG settings".
In addition, the Examiner acknowledges that Cleaner 5 only specifically discloses a
preset for VCD; however, as explained above, Cleaner. 5 also discloses that a user can create
DVD movies that are playable on a player, thus, Cleaner 5 supports a preset for DVD. MPEG
Charger supplements Cleaner 5 since MPEG Charger provides further support for DVD. IN
addition, as noted by MPEG Charger, Cleaner 5 allows a user to select the VCD format and the
conversion process would provided "special Video CD formatting" so that the MPEG file can be
written to disk (page 12 ofMPEG Charger).
As noted by the Requester, MPEG Charger is a companion application specifically for
use with Cleaner 5. MPEG Charger discloses the ability to create MPEG-2 files, which is the
format used for DVD playback and accordingly, selecting MPEG-2 output meets the claim
limitations related to DVD. See MPEG Charger at p. 10.

MP,BG-2, p.rodua~ h'igh-ttlUl.rmepfuU broadatst.~ruit'Y'.flk~ tnatretluJr~ UV.{)~.fastCD-ROM or
hard drhres ror. playback.. Ml)EG·2 playba.ck also re.quires: a fast computer and vldt.'lO eanl or a
har"hv~lre ~aWr card. MPEG-2 is USt'd for commerdal DVl)s(OVD-Vidt~) and many
nome satellite dish ~ems. .Shl.ooaro MP£G-2 i~ full fniw.& nde:{2.4-30fVs) a.nd.fuU-St,.-uX3.Jl
resolution (72Ox<kqol ~"'SC).
In addition, it was noted that MPEG Charger discloses a variety of quality settings for
DVD.

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MPEn Ch~r otTers feat;ureenhanc~nts not i.m.:luded In Cleaner 5, indudingsuppol't fur:

• .Buth .f.-.p.a..~ and 2-p~~ vadable bitrats eocoding forooth.MPEG-l. andl\.1P.EG-2.
"CUstom vkioo buffer 'wH1~ sizes:.
... CUstonl Groop of Plcturos (GOP) s~.

.. Open or dCtSed GO'ills.
«

An standard MPEG fr-Jm~ siz.es:a:nd ff<lme rates

Claim 6 Arguments
The Patent Owner repeats that MPEG Charger does not provide DVD as a desired output
media format.
The Examiner disagrees and notes, as stated by the Requester, that the claims do not
specify that .the program must accept a selection of a menu item specifically reciting "DVD."
Rather the claim language will allow for selection of an MPEG-2 output, which is related to
DVD, and accordingly the output media format could be DVD.
Additionally, the Cleaner 5 reference specifically states that MPEG Charger can
be combined with Cleaner 5, rendering this claim obvious. MPEG Charger is a companion
application specifically for use with Cleaner 5. MPEG Charger discloses the ability to create
MPEG-2 files, which is the format used for DVD playback and accordingly, selecting MPEG-2
output meets the claim limitations related to DVD. See MPEG Charger at p. 10.
Claim 8 Arguments
The Patent Owner contends that Cleaner 5 with MPEG Charger still can't process video
and audio information to form video and audio information in a presentation fonnat. and that

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Art Unit: 3992
MPEG Charger does not disclose preparing a .vob files, .dat files or .mpg file as specified by the
DVD, VCD and SVCD standards.
The Examiner disagrees and notes that MPEG Charger is a companion application
specifically for use with Cleaner 5. MPEG Charger provides additional disclosure regarding the
use of the Adaptec Toast Application, which is 'used to author video CDs:

Making Video CDs
The Vidro CD format is ast.uldard that plal's in mostDVD players.. It.I't."'qUires MPEG-l \1doo
and sped.d,\.'idoo CD format~ You can eas.fly prod,uce MPEG-l Jiles ror your \!ideo: CD
P~'iects in Ck>arn.'>t byseiectlng the Vldro CD preseti.n tim Mivanred Settings window. To author
ViOC>O (,1)51 }1Xm aoon&.."'i1 a CO-mastering application, such asAda.pt~ '!bast or F...asy-CD
C.ft!atnr~

Adaptec Toast support for Video CD (Mac OS only)
In order for ,MPRG streams to be 3ta!pted by Adaptec loot
to create aVidoo C~ certain non-sl'3.ndard infor.m:ilion
mUll; he added,ttl ~ MPEG ffk!,.1b mak:e ti.kts intended IDe
loclusiofl nn a Vi,tiro (.J}belng atltoo'!(!d, wlth1bast,ch.ock
Making, MPEG rue;mu f01:' IMI
the VtdroCD comp~option in the OUtput tab of'~
wIth Adaptec Toast.
At:I\'anCild Settings 'window and choose '.R.last in th€ pop-up
mentL ~ tnt Toost doctm1f!ntation fur authodnginstructinns.

In addition, under the MPEG Charger Options section of MPEG Charger, it is disclosed
that MPEG files usually use a file suffix of".mpg". thus, Cleaner 5 along with MPEG Charger
meet the claim language. As noted above, The Examiner notes that assuming arguendo that
".dat" files, ".vob" files and ".mpg" files are the formats for YCD, DVD and SVCD respectively,
the Examiner notes that since this is the known standard then since Cleaner 5 discloses of at least
YCO and DVD standards and the using a CD-mastering application to at least write VCDs to
disk, then Cleaner 5 supports ".dat" files for VCD since this would have been required as noted
by the Patent Owner.

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Issue 4

The Patent Owner contends Washino teaches using an intermediary storage format for
converting an input video format to an output video format and that Washino does not disclose
disk authoring of the converted video file and outputting of a presentation format.
The Examiner disagrees and maintains that Washino does not use an intermediary file
since the file that is argued by the Patent Owner and stored is the file that when through the
conversion process. As noted by the Patent Owner "free from one or more intem1ediary files" is
a file that is output after the continuous pass conversion process without writing onto disk. The
Patent Owner has not explained how Washino uses an intermediary file during the conversion
process since even if the file is stored, the stored file is after the conversion process but before
writing the file to disk.
As noted in the Rejection, Washino is directed to enabling a user to edit and manipulate
an input video program and produce an output version of the program in a final format which
may have different frame rate, pixel dimensions etc. The converted file (i.e. output format file) is
recorded onto either storage devices or disk drives such as DVD-R or DVD RAN type drives,
(col. 6, lines 48-50).
The Examiner notes that the Patent Owner argues that Washino fails to disclose CDROM media at all and further does not disclose Video CD or Super Video CD output media
formats for writing video to a CD optical disk. The Examiner notes that the claims that recite this
requirement are claims 5, and 8. These claims require a "selection" of a format from a group
which includes DVD, VCD and Super VCD. The Examiner agrees that this group includes both

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DVD and CD based formats; however the claim merely requires a selection of one of the three
listed elements. The claim does not require that all three be selected ..
The Patent Owner contends that Washino does not disclose disk authoring of the
converted video file and outputting of a presentation format.
The Examiner disagrees, and notes that Washino specifically discloses, "Images are
recorded by writing the digital data to storage devices employing intemal or removable hard-disk
drives, disk drives with removable media, optical or magneto-optical based drives, DVD-R or
DVD-RAN type drives, tape-based drives, or semiconductor-based memory devices, preferably
in compressed-data form." (col. 6, lines 54-60).
In addition, the Patent Owner contends Washino fails to disclose any output media
formats (DVD, VCD and SVCD) for writing to an optical disk based on a standard.
As noted above, the Examiner maintains that Washino discloses at least outputting based
on the DVD standard .. The Patent Owner does not disclose which claim they are specifically
referencing with this argument.

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Application/Control Number: 95/001,283
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Conclusion

This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 2674. The
decision in this Office action as to the patentability or unpatentability of any original patent
claim, any proposed amended claim and any new claim in this proceeding is a FINAL
DECISION.
No amendment can be made in response to the Right of Appeal Notice in an inter partes
reexamination. 37 CFR 1.953(c). Further, no affidavit or other evidence can be submitted in an

inter partes reexamination proceeding after the right of appeal notice, except as provided in 37
CFR 1.981 or as permitted by 37 CFR 41.77(b)(1). 37 CFR 1.116(f).
Each party has a thirty-day or one-month time period, whichever is longer, to file a notice of
appeal. The patent owner may appeal to the Board of Patent Appeals and Interferences with
respect to any decision adverse to the patentability of any original or proposed amended or new
claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR
41.20(b)(1). The third party requester may appeal to the Board of Patent Appeals and
Interferences with respect to any decision favorable to the patentability of any original or
proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set
forth in 37 CFR 41.20(b)(1).
In addition, a patent owner who has not filed a notice of appeal may file a notice of cross
appeal within fourteen days of service of a third party requester's timely filed notice of appeal
. and pay the fee set forth in 37 CFR 41.20(b)(1). A third party requester who has not filed a
notice of appeal may file a notice of cross appeal within fourteen days of service of a patent
,
owner's timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1).

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Art Unit: 3992
Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by
the patent owner (for a patent owner appeal) or the third party requester (for a third party
requester appeal), or their duly authorized attorney or agent.
Any party that does not file a timely notice of appeal or a timely notice of cross appeal
will lose the right to appeal from any decision adverse to that party, but will not lose the right to
file a respondent brief and fee where it is appropriate for that party to do so. If no party files a
timely appeal, the reexamination prosecution will be tenninated, and the Director will proceed to
issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.
11.

All correspondence relating to this inter partes reexamination proceeding should be

directed:
By EFS:

Registered users may submit via the electronic filing system EFS-Web, at
https:llsportal.uspto.gov/authenti catelauthenticateuserlocal epf.html.

By Mail to:

Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

Customer Service Window
Attn: Central Reexamination Unit
Randolph Building, Lobby Level
401 Dulany Street
Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence
(except for a request for reexamination and a corrected or replacement request for
reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic
filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission

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Application/Control Number: 95/001,283
Art Unit: 3992

for each piece of correspondence stating the data of transmission, which is prior to the expiration
of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the
examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
Unit at telephone number [phone].
/Ovidio Escalante/
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
[phone]
Conferee: ES J('

Conferee:

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