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 3

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Oflice

Address: COMMISSIONER FOR PATENTS
P.O. Bo, 1450
Alexnndria. Virginia 22313-1450
www.usplo.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMA TlON NO.

95/001,284

12/18/2009

7009655

8157.019.655

1850

7590

EXAMINER

03112/2010

KAI-CHING CHU
MEDIOSTREAM, INC.
4962 EL CAMINO REAL, SUITE 201
LOS ALTOS, CA 94022

ART UNIT

PAPER NUMBER

DATE MAILED: 03/12/2010

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Control No.

95/001,284
Examiner

Art Unit

OVIDIO ESCALANTE

OFFICE ACTION IN INTER PARTES
REEXAMINA TION

Patent Under Reexamination

3992

7009655

- 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 _ _
Third Party(ies) on 18 December 2009
RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
For Patent Owner's Response:
~ MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
GOVERNED BY 37 CFR 1.956.
For Third Party Requester's Comments on the Patent Owner Response:
30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).

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.
This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
37 CFR 1.953.

PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
1.0 Notice of References Cited by Examiner, PTO-892
2.0 Information Disclosure Citation, PTO/SB/08
3.0 _ _
PART II. SUMMARY OF ACTION:
1a.1ZI Claims 1-18 are subject to reexamination.
are not subject to reexamination.
1b. D Claims
2. D Claims
have been canceled.
3. 0 Claims _ _ are confirmed. [Unamended patent claims]
4. 0 Claims _ _ are patentable. [Amended or new claims]
5. IZI Claims 1-18 are rejected.
6. D Claims _ _ are objected to.
7. D The drawings filed on _ _
0 are acceptable
0 are not acceptable.
8. D The drawing correction request filed on _ _ is:
D approved. 0 disapproved.
9. D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
been received.
0 not been received.
0 been filed in Application/Control No 95001284.
10. D Other _ _

o

u.s. Patent and Trademark Office
PTOl-2064 (08106)

Paper No. 20100301

· Application/Control Number: 95/001,284

Page 2

Art Unit: 3992

DETAILED ACTION

1.

This Office action addresses claims 1-18 of United States Patent No. 7,009,655 for which

it has been determined in the Order Granting Inter Partes Reexa.rnination (hereafter the "Order")
that a substantial new question of patentability was raised in the request for inter partes
reexamination, filed on December 18, 2009 (hereinafter the "Request").

Status of the Claims
2.

Original claims 1-18 are rejected.

Rejections Proposed by the Requester
3.

The following 3 issues for rejection were proposed in the Request for inter partes

reexamination (95/001,124):
Issue 1:

Cleaner 5 User Manual is asserted as rendering claims 1-18 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 is asserted as rendering claims 1-3,5, 7,
9 and 13-18 obvious.

Claim Rejections - 35 USC § 102
4.

The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that form the

basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of application for patent in the United States.

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Issue 1 (Adopted)
5.

Claims 1-18 are rejected under 35 U.S.C. 102(b) as being anticipated by Cleaner 5.

Regarding claim 1,

A system for converting video information from an incoming format to an
outgoing format using an integrated computer software application, the integrated
computer software application being provided o·n 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 OS, which
includes one or more memories, (Cleaner 5 at p. 2). Since programs running in a Windows or .
Mac OS environment 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) 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).

b) a code directed to receiving a desired output media format based upon a first
input;

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

c) a code directed to receiving a desired TV standard based upon a second input;
Cleaner 5 discloses that a user may choose between NTSC or PAL (i.e., desired TV
standard) based upon the preset (Le., 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.

d) 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 fonnat, such as YUV 1, (Cleaner 5 at p. 138).

e) 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 TV
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.

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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 format the raw video information
would be resized in accordance with the selected desired output format.
f) a code directed to adjusting the uncompressed format in the size associated with

the desired output media format and the desired TV standard to a frame rate
associated with the desired TV 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).

g) a code directed to processing the uncompressed format in the size and the frame
rate into an elementary video stream; and
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).

h) a code directed to processing the elementary video stream with audio information
in the desired output media format and the desired .TV standard to form video and
audio information in a presentation format based upon the desired output media
format and the desired TV standard.

I The Examiner notes that the '655 Huang Patent discloses that YUV is a known raw video information in
an uncompressed format, (col. 3, lines 2-5).

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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 ~ 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).

Regarding claim 2:

The system of claim 1 wherein the first format is selected from a group consisting
of: 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 (DV), A VI files, MPEG 1 and MPEG2, (Cleaner 5 at p. 141). Page 141
lists the supported formats.

Regarding claim 3:

The system of claim 2 wherein the digital file is selected from a group consisting
of: an AVI format an MPEG format, a DV format, a QuickTime format, Real Video
format, Windows Media Player format.
Cleaner 5 discloses selecting from an A VI format, an MPEG format, a DV format, a
QuickTime format, and other multimedia formats, (Cleaner 5 at p. 141).

Regarding claim 4:

The system of claim 1 wherein the uncompressed format is selected from a group
consisting of: RGB, and YUV.
Cleaner 5 decodes and converts the DV stream format video information to an
uncompressed format, such as YUV, (Cleaner 5 at p. 138).

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Regarding claim 5:

The system of claim 1 wherein the desired output media format is selected from a
group consisting of: DVD, VCD, and Super VCD.
Cleaner 5 discloses that a user may output media in VCD format, (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 system of claim 5 further comprising a code directed to 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). Furthermore, Cleaner
5 discloses that when the output format is DVD, a data rate acceptable to DVD formats are
required and Cleaner 5 uses a data rate of5.7 Mbits/sec which is used by Cleaner's default
MPEG-2 setting, (Cleaner 5 at p. 62).

Regarding claim 7:

The system 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 information in the presentation format
onto a disk media such as CD-ROM or DVD-ROM, (Cleaner 5 at p. 144).

Regarding claim 8:

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Art Unit: 3992

The system of claim 1 wherein the presentation format is selected from a group
consisting of: VOB(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing the video and audio information in the presentation format
onto a disk 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-I or MPEG-2
streams" when MPEG 1 is used for VCD output, (Cleaner 5 at p. 206 and 209).

Regarding claim 9:

The system of claim 1 wherein the code directed to processing of the elementary
video stream with audio information comprises a code directed to perform a
multiplexing process.
Cleaner 5 discloses a code directed to processing an elementary video stream with
audio information, for example, Cleaner 5 lets the "[user] select between System or Elementary
streams for MPEG-l 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 system of claim 1 wherein the audio information is tuned to a desired
frequency based upon the desired output media format.
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).

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Regarding claim 11:

The system of claim 10 wherein the desired frequency is selected from a group
consisting of: 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 system of claim 1 wherein the codes directed to converting, resizing, and
adjusting, and processing are codes directed to be 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 intermediary files, (Cleaner 5 at p. 206). Specifically,
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 13:

The system of claim 1 further comprising a code directed to processing the raw
video information based upon video editing information based upon user input.
Cleaner 5 is directed at processing raw video information based upon video editing
information from a user. 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). 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:

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Art Unit: 3992

The system of claim 1 further comprising a code directed to processing the audio
information based upon audio editing information based upon user input.
Cleaner 5 can be directed to processing audio information based upon Noise Removal
(Le., audio editing information) after the user selects the clean-up filter, (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 HighILow Pass, to optimize your audio,"
(Cleaner 5 at p. 95).

Regarding claim 15:

The system of claim 1 wherein the code directed to processing into the
elementary video stream is provided in code directed to an encoding process and the
code directed to converting into the raw video information is provided in code
directed to 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 Preferences dialog that allow you to choose between higher quality or faster decoding,"
(Cleaner 5 at p. 138).

Regarding claim 16:

The system of claim 1 further comprising 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 applict!ltion 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).

Claim Rejections - 35 USC § 103
6.

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

obviousness rejections set forth in this Office action:
(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.

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Issue 2 (Adopted)
7.

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

5 in view of MPEG 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-l 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
performs the method entirely using software run from a disc.
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

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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 system of claim 1 wherein the desired output media format is selected from a
group consisting of: DVD, VCD, and Super VCD.
Cleaner 5 discloses that a user may output media in VCD format. 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
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 control 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 system of claim 5 further comprising a code directed to 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. Furthermore, Cleaner 5
discloses that when the output format is DVD a data rate acceptable to DVD formats 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 formats 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 system of claim 1 wherein the presentation format is selected from a group
consisting of: VOB(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing the video and audio information in the presentation format
such as 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" for VCD output, (Cleaner 5
at p. 206, 209). Furthermore, MPEG Charger .discloses that the user is allowed "to turn all
popular video, audio and animation file formats into MPEG streams for DVD, Video CD, CDROM, digital broadcasting and broadband webcasting, (MPEG Charger at p. 9).

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Issue 3 (Not Adopted)
8.

The rejection of claims 1-3,5,7,9 and 13-18 as being rejected under 35 U.S.C. 103(a) as

being unpatentable over A vrD Xpress in view of AVID Xpress DV is not adopted.
As stated in 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 for broadcast television, (Avid Xpress at p. 3).
In addition, as stated in 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
steps 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
Examiner agrees that Avid Xpress DV is a software product that is related to Avid Xpress that

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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 converted to "raw video information
[in] an uncompressed format using a decoding process".
The Request merely states:

The Avid Xpress software includes code for converting video information into
uncompressed video using its uncompressed video option; Avid Xpress at pp. 1-2.
Furthermore, since the Avid Xpress system receives compressed, encoded formats and
outputs uncompressed formats it inherently uses a decoding process.

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 Deluxe and Elite systems for the best possible
video quality. All Avid Xpress systems using Avid's state-of-the-art Meridien video subsystem

I

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Art Unit: 3992

deliver broadcast quality 2: 1 image compression, as well as a range of other resolutions in either
4:3 or 16:9 wide screen. No other digital video 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 a code directed to converting the video information in the first format
to a raw video information [in] an uncompressed format using a decoding process.
The next limitation pertains to 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.
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 TV standard.
The Examiner agrees that Avid Xpress discloses of various TV Standards and different
output media with various' sizes' , however, the Avid Xpress reference does not disclose what

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video is being output or whether what is being output was a 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 process the uncompressed format 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 inherently processes the
uncompressed format into an elementary stream".
The Request relies upon MPEG Standard to support the processing of video into an
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 renders
obvious any of the claims under reexamination and thus the proposed rejection will not be
adopted by the Examiner.

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Conclusion
9.

In order to ensure full consideration of any amendments, affidavits or declarations, or

other documents as evidence of patentability, such documents must be submitted in response to
this Office action. Submissions after the next Office action, which is intended to be an Action
Closing Prosecution (ACP), will be governed by 37 CFR 1.116, which will be strictly enforced.
10.

Extensions oftime under 37 CFR 1. 136(a) will not be pefI!1itted in inter partes

reexamination proceedings because the provisions of37 CFR 1.136 apply only to "an applicant"
and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c)
requires that inter partes reexamination proceedings "will be conducted with special dispatch"
(37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are
provided for in 37 CFR 1.956. Extensions of time are not available for third party requester
comments, because a comment period of30 days from service of patent owner's response is set
by statute. 35 U.S.C. 314(b)(3).
11.

The Patent Owner is reminded of the continuing responsibility under 37 CFR 1.985(a) to

apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
US Patent 7,009,655 throughout the course of this reexamination proceeding. The Third Party
Requester is also reminded of the ability to similarly apprise the Office of any such activity or
proceeding through the course of this reexamination proceeding. See MPEP § 2686 and
2686.04.
12.

All correspondence relating to this inter partes reexamination proceeding should be

directed:
ByEFS:

Registered users may submit via the electronic filing system EFS-Web, at
https://sportal.uspto.gov/authenticate/authenticateuseriocalepf.html.

Page 20

Application/Control Number: 95/001,284
Art Unit: 3992

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
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 proce~ding, should be directed to the Central Reexamination
Unit at telephone number [phone].

(}vvdtoG~
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
[phone]
Conferee:

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Conferee:

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