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 5

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

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.

95/001,284

12/18/2009

7009655

169AA-000400US

1850

83275

7590

02/14/2011

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

02/14/2011

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)

~

DO NOT USE IN PALM PRINTER
(THIRD PARTY REQUESTERS CORRESPCX\IDENCE ADDRESS)

r·············
NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002

MAILED

FEB 1,4 2011

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination

REEXAMINATION CONTROL NUMBER 951001,284.
PATENT NUMBER 7,009,655.
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 owner's
response. This 3~-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

Patent Under Reexamination

95/001,284

(37 CFR 1.953)

7009655

Examiner

Art Unit

OVIDIO ESCALANTE
3992
•• The MAILING DATE of this communication appears on the cover sheet with the correspondence address. ••

Responsive to the communication(s) filed by:
Patent Owner on 16 July 2010
Third Party(ies) on 13 August 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 16 July 2010

o will be entered

l8J will not be entered*

*Reasons for non-entry are given in the body of this notice.
1a.l8J
1b. 0
2. 0
3. 0
4. 0
5. l8J
6. 0
7. 0
8. 0
9. 0

Claims 1-18 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 1-18 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 (t). 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. l8J Information Disclosure Citation, PTO/S8/08
3.0 _ _

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

Part of Paper No. 20110201
Right of Appeal Notice (37 CFR 1.953)

Application/Control Number: 95/001,284

Page 2

Art Unit: 3992

RIGHT OF APPEAL NOTICE
1.

This Office action addresses claims 1-18 of United States Patent No. 7,009,655 and is in

response to the Patent Owner's response filed on July 16, 2010 and the Requester's response filed
on August 13, 2010.

Status of the Claims
2.

Original claims 1-18 are rejected.

Rejections Proposed by the Requester
The following 3 issues for rejection were proposed in the Request for inter partes

3.

reexamination (95/001,284):
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.

Information Disclosure Statement
4.

With respect to the Information Disclosure Statement filed on July 19, 2010, July 26,

2010, August 30, 2010 and December 10, 2010 the information cited has been considered as
described in the MPEP. Note that MPEP 2256 and 2656 indicate that degree of consideration to
be given to such information will be normally limited by the degree to which the party filing the
information citation has explained the content and relevance of the information. Information that
does not appear to be "patents or printed publications" as identified in 35 U.S.C. 301 have been
considered to the same extent (unless otherwise noted), but have been lined through and will not

Application/Control Number: 951001,284

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Art Unit: 3992
be printed on any resulting reexamination certificate. In addition, information without a date has
likewise been lined through.

Amendment After ACP
5.

The Patent Owner's Amendment filed on July 16, 2010 is not entered. As noted by the

Requester, the amendments should not be entered because they do not comply with the "strict"
standards of37 C.F.R. 1.116 governing after final amendments. MPEP 2672. 37 C.F.R. 1.116
sets forth that amendments to the claims after an Action Closing Prosecution may only be
entered if they meet one of three criteria:

(1) An amendment may be made canceling claims or complying with any requirement ofform
expressly set forth in a previous Office action;

(2) An amendment presenting rejected claims in better form for consideration on appeal may be
admitted; or

(3) An amendment touching the merits of the application or patent under reexamination may be
admitted upon a showing of good and sufficient reasons why the amendment is necessary and
was not earlier presented.

The present amendment'does not cancel claims; does not put the claims in better
condition for consideration on appeal since it raises new issues; and does not come with a
showing of good and sufficient reasons why the amendment is necessary and was not earlier
presented.
The Examiner agrees with the Requester and thus the proposed amendment is not entered.

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Page 4

Art Unit: 3992
Claimed Invention Arguments

The Patent Owner maintains that claim 1 requires processing the elementary video stream
and audio information to form video and audio information in a "presentation format." The
Patent Owner further maintains that their definitions do not require "authoring" however, the
Patent Owner notes that the cited prior art references admit that authoring is required for .
authoring a presentation format for DVD, VCD or Super VCD. The Patent Owner emphasizes
that claim 1 does not require writing the presentation format to disk media, since dependent
claim 7 requires "writing the video and audio information in the presentation format onto a disk
media."
The Examiner first notes that the patent specification describes disk authoring as a
method which adds audio information to the elementary video stream in a multiplexing process.
The Examiner acknowledges that the specification discloses that disc authoring is "often" used to
perform the multiplexing process. In this scenario a prior art reference which discloses of
multiplexing audio and video information is maintained to support disk authoring. In view of this
embodiment, the Patent Owner's argument that the cited prior arts admit that authoring is
required for authoring a presentation format for DVD, VCD or Super VCD is not persuasive
since the Patent Owner cites to the prior art use of disk authoring for writing to disk and not to
the prior art use of disk authoring for multiplexing audio and video information.
The Examiner also notes that in light of the patent specification disk authoring is required
for a presentation format. The Patent Owner argues against the prior art since they "requires"
authoring; however, as set forth in for example, in col. 5, lines 32-34, the patent describes a step

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

Page 5

in the conventional method. This step notes that disc authoring can used to perform the
multiplexing process; i.e. adding audio information to the elementary video stream".
The specification does not disclose any other requirements for "disc authoring"; however
as known in the art disc authoring further includes (in a separate step) the writing of the encoded.
file to disc (i.e. burning). The Patent Owner's arguments are based on this step since the prior art
specifically discloses that disk authoring is needed to "create" a VCOIDVD. This step, as noted
in the previous office action, is not required by the independent claims.
As shown in claim 1, the claim requires "a code directed to processing the elementary
video stream with audio information in the desired output media format". This claim is further
narrowed by claim 9 which discloses that this is performed using a multiplexing process. It is
clear from the Patent Owner's comments that "preparation of a presentation for writing to DVD
or CD disc media for later playback on TV is part of disc authoring." (page 5 of Patent Owner's
response to the Examiner's Non-Final Rejection).
Thus, in the context of the claims and patent specification, the Examiner maintains that
"disc authoring" includes many steps include those that are part of the encoding process
(preparing the presentation format) and those that are not (writing to an actual disc).
As set forth in the rejection, Cleaner 5 allows a user to select for example a VCO present
for MPEG 1, as the presentation format. This presentation format is not written to disk during the
conversional process but is instead written to disk afterward. Indeed, Cleaner 5 makes it clear
that a separate application is used to write the files to disk.
The Examiner emphasizes that the MPEG-1 VCO file is an example of a presentation
format of Cleaner 5 and this is the file that is written. As disclosed by Cleaner 5, since the

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Art Unit: 3992

reference discloses of at least multiplexing the audio information with the elementary data
stream, then Cleaner 5 alone (i.e. without additional applications) performs disc authoring in the
same way as described in the patent specification. It is only when the presentation format file is
finished does Cleaner 5 rely upon a second application to write that file to disc.

The Patent Owner further notes that claim 1 reqllires multiple applications (for video
conversion and creating the presentation format) on a computer system; however these
applications must be integrated on the computer system to meet the requirement of claim 1. The
Patent Owner notes that preparing a file on one computer using one application and further
processing that file using another application whether on the same or a different computer does
not satisfy the claimed invention where the two applications are not integrated computer
software applications.
The Examiner notes that under the Patent Owner's definition, as set forth in the ACP an
integrated applications is "a collection of computer programs designed to work together to
handle an application either by passing data from one to another or as components of a single
system" or as "a collection of computer programs that work as a unit with a unified command
structure to handle several applications, such as work processing, spread sheets, data-base
management, graphics, and data communications."
The Examiner notes that it is still unclear what the Patent Owner means by "these
applications must be integrated on the computer system". The Patent Owner maintains that in
scenario which prepares a file on one computer using one application and further processing the
file using another application on the same computer does not satisfy the claimed invention where

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Art Unit: 3992
the two applications are not integrated computer software applications. However based on the
Patent Owner definition so long as the computer program "work as a unit" and/or "work together
to handle an application", then it meets the "integrated application" definition.
IN this case the Examiner relied upon for example, Cleaner 5 which discloses of have a
presentation format of VCD MPEG-1. Cleaner 5, in this example, is considered to be'the first
application. In a second step, Cleaner 5 discloses that if a user desire to create a Video CD they
must select a specific option. As set forth on page 209 of Cleaner 5, it is disclosed "In order for
MPEG streams to be accepted by Adaptec Toast to create a Video CD .... check the Compatible
with Toast Video CD option in the Output tab of the Advanced Settings window.
While the Examiner agrees that Adaptec Toast is a second application, both of these application
. "work as a unit" andlor "work together to handle an application". Cleaner 5 specification
integrates specific code for handling the Adaptec Toast software and thus the two different
applications are integral with each other and work together. If they did not work together,
Cleaner 5 would not have provided an option to create a disc that specifies what application
needs to be used.

Construction o/the f655 Patent Claims Argument
The Patent Owner contends their construction is based according to their ordinary
meaning and their usage in the claims and the specification. The Patent Owner further contends
that the Requester ignores the manner in which the term (e.g. "output media format" and

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Art Unit: 3992
"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 (I.) (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 '655 patent
repeatedly states "desired" or "any" output media format without any requirement that it be a
specific type offormat. For example, the '655 specification di.scloses "Preferably, the video
information can be in almost any format or any format. The output video information can also be
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 '655 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.

Construction of Output Media Format Argument
The Patent Owner contends their construction requires that an output media

forma~

is a

standard video format for optical disk. The Patent Owner maintains that their construction does

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Art Unit: 3992
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 format 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 specifi,cation:
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).
Preferably, the video information can be in almost any format or any format. The output
video information can also be in any desired format. 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 format 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.

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Art Unit: 3992

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
format. Nonetheless, as noted in the rejection of the claims, the Examiner has shown that the
prior art supports both VCD and DVD formats.

The Patent Owner maintains that the construction incorporates the plain ordinary
meaning of "output media format" as used in the context of the claims and specification, which
discloses optical disks as the only type of media format converted by the invention.
The Patent Owner contends that "only optical disk media formats are disclosed and
claimed, because the player for this media format are connected to television around the world.
The patent Owner notes that no other "type" of media format has a player connected to
televisions, nor does any other type of media format required identification of a TV standard for
playback.
The Examiner notes first notes that other types of media formats can be played on
television contrary to the Patent Owner's erred assumption. For example, 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).
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 drivers.

Application/Control Number: 95/001,284

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Art Unit: 3992
Thus, Cleaner 5 fully discloses that its MPEG-2 format for DVD is playable on DVD players
which are a format that playable on a television.

As further noted on page 209 of Cleaner, the Video CD format is a standard that plays in
most DVD players. "It requires MPEG-l video and special Video CD formatting. "

The Patent Owner discounts MPEG-l or MPEG-2 as an output media format, however,
the Examiner maintains that the prior art shows that these formats are based on either VCD or
DVD formats and in addition those formats are formatted to conform to a TV standard as set
forth in the rejection and as taught by Cleaner 5.
The Examiner further notes that the Patent Owner maintains that the Examiner's
construction that includes any media type renders the requirement for processing the video based
on the "media format" and "TV Standard" meaningless.
The Examiner first notes that as recited in the rejection, each of the formats relied upon
are disclosed to conform to a TV Standard, thus the Examiner has not relied upon a format that
did not conform to a TV Standard. In addition, with respect to the Examiner's interpretation of
the term which includes any media type, the Examiner notes that this is based on the specific
language of the specification which in addition to using optical disc formats as possible formats,
the specification leaves open the use of "any desired format". While it may be consider that the
specification is narrow in one aspect, it is clearly broad in other aspects. In this case, the
specification sets forth that "any desired format" can be used.

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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 format. depending upon the embodiment.
(col. 6, lines 18-20)

The Patent Owner further contends that a "desired" output media format requires code for
potentially receiving more than one output media format connoting a choice from a plurality of
output media formats
The Examiner first notes that the Patent Owner uses the word "potentially" for
maintaining that desired requires more than one output media format. These term clearly sets
forth that the term "desired" does not require more than one.

The Examiner agrees that the specification describes a plurality of output formats,
however, the Examiner notes that it is the claims that define the invention. In this case, the
claims simply do not require more than one format. Indeed, the Examiner notes that related U. s.
Patent 7,843,508, the Patent Owner has clearly set forth in the claims that a "desired ll output
media format is "one selected from a plurality of output media formats" (see claim 1 of the '508
patent). If the Patent Owner considered the "desired" term to be understood to have a plurality of
formats then the Patent Owner would not have specifically required the additional limitations in
the claim.
The Examiner further notes that despite the disagreement of the scope of the claimed
output media format, the Examiner has applied prior art to shows an output format ofMPEG-l

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Art Unit: 3992
for VCD or MPEG-2 for DVD. Thus, the Examiner has clearly showed that the prior art supports
both DVD and VCD formats which are optical disc formats as set forth by the Patent Owner.

The Examiner notes that the Patent Owner maintains that their construction is consistent
with the specification because it is not limited to DVD, VCD and Super VCD but also includes
other media formats such as lID DVD or Blu-rayl since these are consistent with the disclosure
of the specification for wiring to disk mead and formatting consistent with a TV standard.
The Examiner notes that the Patent Owner implies that an output media format further
requires that it be "written to disk media" and formatting consistent with a TV standard. The
Examiner maintains that the Patent Owner is clearly requiring further limitations from the
specification which are not required by the claimed "output media format". While the
specification describes various TV standards and having files written to disk, this is not a
requirement for the term "output media format".

Construction of the Presentation Format Argument
The Patent Owner contends that the Examiner's construction literally removes
"presentation" form the claim and rewrites the claim language to mean "any format based upon a
desired output media format and desired TV standard.

1 The Examiner notes that as acknowledged by the Patent Owner on page 6 of their response. HD DVD and Blu-ray
are not recited in their specification. The Examiner notes that while these are optical disk formats, they are not the
same type of format as VeD or DVD since HD-DVD and Blu-ray would not by playable on the same type of
players as a DVD player. The '655 patent specification does not provide written description support for these types
of formats. Nonetheless, these formats are not claimed and thus are not germane to any pending issue.

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Art Unit: 3992

The Examiner disagrees and maintains that the phrase "presentation" format is not read
out of the claim. Instead the presentation format is a format th~t is based upon a desired output
media format and desired TV standard. The Examiner maintains that the claim defines the
requirements for a presentation format as being based on those at least these requirements. The
Examiner disputed the Patent Owner argument that presentation format required a format for
writing video and audio information to an optical disc since the claim does not have this
requirement.
Indeed, the Patent Owner is fully aware of how to specifically claim a presentation
format that is based on an optical disk format. As noted in related U.S. Patent 7,843,508, the
Patent Owner has set forth a claim in which it was clear that the presentation format is based on a
specific format for writing video and audio information to an optical disk (see claim 1). The
current patent under reexamination does not share the same requirement and thus cannot be
interpreted as narrow but instead must be interpreted under the broadest reasonable
interpretation.

The Patent Owner contends "presentation format" is "a format in which data can be easily.
displayed on an output device ... Data stored according to a presentation format is sometimes·
referred to as presentation format."
The examiner agrees with this citation and notes that this citation says nothing about a
requirement of "optical disk" While the Examiner agrees that with certain teachings of the
specification, for example that presentation format can be played on a player for the desired
media format, the claims plainly do not have this requirement. The Patent Owner has shown that

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Art Unit: 3992
a presentation format under the broadest reasonable interpretation is defined as a format in which
data can be easily displayed on an output device. There is no other requirement under the
broadest reasonable interpretation standard.

The Patent Owner notes that dependent claim 8 requires the presentation format to be
selected from the group consisting ofVOB (video object for DVD), VCD MPEGI and Super
VCD MPEG2. The Patent Owner notes that their construction of presentation format is the same
format written to disk media in claim 7.
The Examiner agrees. Indeed, as noted in the rejection of the claim, the Examiner has
likewise shown that the prior art anticipates this limitation by showing that VCD MPEG 1 is
written to disk using disk authoring software.

The Examiner also agrees that the Patent Owner's construction of presentation format
makes logical sense, however, the Patent Owner is not considering that the claims must be
interpreted under the broadest reasonable interpretation. While the specification describes
presentation format in accordance with DVD, VCD and SVCD and the NTSC and PAP
standards, this is not a requirement in claim 1. The Examiner agrees that the dependent claims
specify these requirements and the Examiner has treated those claims accordingly, however, the
Examiner maintains that the broadest reasonable interpretation of IIpresentation format ll does not
require those formats unless they are specifically claimed.

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Art Unit: 3992

The Patent Owner argues that the presentation format for writing audio and video
prepared in a presentation format corresponds to the·.vob, .dat and .mpg files for DVD, VCD and
SVCD respectively. The Patent Owner notes that these files are written to disk media in the
appropriate directories ofDVD, VCD and SVCD and are the same files that are played back in
players for the desired media format using the desired TV standard.
The Examiner notes that the claim does not recite any requirement of a ".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.
The Examiner maintains that the proper interpretation of "presentation format" must be
considered in view of the actual claim language. As set forth above, the claim merely requires
that a presentation format be based on at least the desired output media format and TV standard.
The Patent Owner interpretation goes beyond what is claimed by reading limitations from the
specification into the claims.

Claim Rejections - 35 USC § 102
6.

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 -

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Art Unit: 3992
(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.

Issue 1 (Adopted and Maintained)
7.

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 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 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;

Application/Control Number: 95/001,284

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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).

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 (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.

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
2

uncompressed raw video format, such as yuv , (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
480 pixels is the image size associated with an MPEG 2 output media format in an NTSC

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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 of 29.97 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.
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

2

The Examiner notes that the '655 Huang Patent discloses that YUV is a known raw video information in

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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), AVI 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 AVI 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).

Regarding claim 5:
an uncompressed format, (col. 3, lines 2-5).

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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-I 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 of 5.7 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 disc media.
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).

Regarding claim 8:

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The system of claim 1 wherein the presentation format is selected from a group
consisting of: VOB(Video Object for DVD), VeD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing the video and audio information in the presentation format
onto a disc media. For example an MPEG 1 system stream for

vcn, (Cleaner 5 at p. 206).

Specifically, Cleaner 5 allows the user to "choose between creating MPEG-1 or MPEG-2
streams" when MPEG 1 is used for

vcn 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
frequen~y

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

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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 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 YCD,
(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 In/Out points selected by the user, (Cleaner 5 at p.25). Moreover,

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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 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
(i.e., 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 High/Low 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

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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.
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 (Le., 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.

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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).

Response to Arguments
The Patent Owner contends that Cleaner 5 does not disclose an integrated computer
software application for converting and processing audio and video information to form a
presentation format.
The Examiner notes that the Patent Owner disputes the teaching of Cleaner 5 because it
does not "integrate" the all of the programs, however, the Examiner notes that the CleanerS
software alone is able to take an input format and converted that format to MPEG 1 for VCD. It is
only when a user wishes to write that VCD files onto disk is a se'parate application needed. In the
context of claim 1, however, the writing of files to disk is not claimed. In addition, as set forth
above, Cleaner 5 specifically discloses of code which specifically list what application it will
work with and thus under the Patent Owner's definition of "integrated"; the Examiner maintains
that Cleaner 5 is an integrated computer software application since it has several applications (that
integrally work together to form a presentation fonnat.

A code directed to receiving a desired output media format based upon a first input
Argument

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The Patent Owner notes that the Examiner states that Cleaner 5 discloses a user "can
easily produce MPEG-I file for Video CD projects by selecting the Video CD present in the
Advanced Settings window."
The Patent Owner mai.ntains that Cleaner 5 can only receive 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-I 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 reading limitation into the claim which is not claimed. Specifically the Patent Owner
does not agree that MPEG-I or MPEG-2 is not an output media format because it is not an
optical disc format. However, this is not required by the claim language.
Nonetheless, as noted by Cleaner, a user "can easily produce MPEG-I 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 format as acknowledged by the Patent Owner.
The Examiner notes that assuming arguendo that an optical disk format 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 format. Thus, selecting MPEG-l or MPEG-2 reads on

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the Patent Owner construction of output media format. The Examiner again points out that
dependent claim 8 specifically notes that the presentation format includes MPEG-2 and MPEG1. The presentation format as claimed is based on the desired output media format. In Examiner
rejection of the claims, it was considered that MPEG-I is based on the desired output media
format ofVCD.
The Requester agrees and notes that "desired" does not connote a plurality. The
Requester notes that by definition "desire" means "yearned or wished for; coveted or deemed
correct or proper; selected;

requir~d".

In addition, the Requester maintains that even if the claim were to require that the output
media format be an optical disk, it would not require that the output media format be an optical
disk. It would only require that the output media format be a standard video format for optical
disk.
In addition, as the Examiner noted above, the Requester also notes that Cleaner 5 teaches
(page 209) that a standard video format for an optical disk can be selected and provides at least
two (a plurality) options: MPEG-I and MPEG-2. Accordingly, even if the claim were to require
that an output media format be one of a plurality of standard video formats for optical disk, the
claim cannot be considered patentable over the teachings of Cleaner 5 since Cleaner 5 teaches
that MPEG-l or MPEG-2 can be selected.

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 Argument

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Page 29

The Patent Owner maintains that this limitations is not met since MPEG-2 is not a
desired output media format and Cleaner 5 does not have code direct to resizing video based on
"a desired output media format and desired TV standard."
The Examiner disagrees and notes that MPEG-2 is a desired output media format since in
Cleaner 5 MPEG-2 is based on DVD. Indeed, even claim 8 recites that the presentation format
which is based on the output media format can be SVCD MPEG2.
In addition, the Examiner points out that MPEG-1 as disclosed by Cleaner 5 is directly
related to a VCD format (since a user can select MPEG-1 file for Video CD - page 209 of
Cleaner 5).
In addition, as per the "desired TV standard" the Examiner notes that Cleaner 5 allows a
user to select between NTSC and PAL. The Examiner finds the Patent Owner's arguments
confusing since Cleaner 5 specifically discloses of having a user make this selection.
As further noted in Cleaner 5, the reference discloses how MPEG-2 (which is the format
for DVD-Video) is stored at a resolution of 720x480 pixels (NTSC) or 720x576 (PAL), (page
204 of Cleaner). Thus, Cleaner 5 would resize the raw video into the size e.g. 720x480
associated with the desired media .output (which in this case is DVD-video) and the desired TV
standard (e.g. NTSC).
With respect to MPEG-I, as noted above, Cleaner 5 discloses that the standard MPEG-1
size image is 352x240, NTSC, (page 203). Thus, Cleaner 5 will resize the raw video into the size
of 352x240 associated with the desired media output ofVCD and the desired TV standard
NTSC.

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Likewise the Requester maintains that an MPEG file does fall within the broadest
reasonable interpretation of the term output media format. Even under a narrower interpretation
of output media wherein the output media must be an optical disk, an MPEG file is a format
associated with VCO and OVD.

Code directed to processing the elementary stream with audio information in the
desired output media format and the desired TV standard to from video and audio information
in a presentation format based upon the desired output media format and the desired TV
standard.

The Patent Owner contends that Cleaner 5 does not process audio and video information
"to form a presentation format based on a desired output media format and desired TV standard"
The Patent Owner notes that MPEG-I streams or files, even with video and audio in the size and
frame rate associated with an output media format and TV standard, are not in a "presentation
format" because they are not in the format written to disk media.
The Examiner finds this statement confusing since claim 8 states that the presentation
format is VCO MPEG-I. This format is the same format as disclosed on page 209 of Cleaner 5
which discloses that a user can select the VCO MPEG-I option to encode the input file as a VCO
files. This same file is the file that is used in conjunction with disk authoring software to write
the file to disk. The examiner has repeatedly explained that as noted in the prior art and in the
patent under reexamination that MPEG-I is the presentation format for the output media of

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VCD. The claims support the Examiner's interpretation because claim 8 recites that the
presentation format is VCD MPEG-I which is indeed based on the output media format ofVCD.

The Examiner thus finds the Patent Owner's argument to be contrary to the claims at
issue and further in contrast to their parent specification which supports MPEG-I for VCD as a
presentation format.
In addition, the Examiner notes that in the creation of the VCD file in Cleaner 5,
additional programs are not needed as asserted by the Patent Owner. Cleaner 5 is able to encode
the file as a VCD file. It is only when a user want to actually desires to write this file to disc is an
additional application needed. However, at this point the presentation format is already made by
Cleaner 5 prior to any secondary application being used.
In addition, the Requester maintains the '655 patent never defines the presentation format
as the format written to an optical disk such that an optical disk player would be able to play the
video. Rather the presentation format is based on the output media format and the desired TV
standard. Accordingly, at best, the '655 patent discloses a relationship between the output media
format and the presentation format.
In addition, Cleaner 5 discloses that it can output an MPEG-1 file modified for Video
CD. Such a modified MPEG file is the "presentation format" as interpreted by the Patent Owner
because in the instance ofVCD, the modified MPEG file is written to the VCD and is recognized
by a player.

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Regarding claim 5:
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 option would be
supported since Cleaner 5 specifically discloses that a user can have DVD projects.
In addition, 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.
The Requester likewise notes that Cleaner 5 discloses that video and audio files can be
output for use in creating DVD's as well as Video CDs. Cleaner 5 discloses that a user can select
to output an MPEG-2 file for the purpose of creating a DVD. The MPEG-2 output can further be
formatted so that it can easily be authored onto a DVD by a DVD authoring program. As claim 1
does not require authoring to a DVD, Cleaner 5 discloses selecting a output media format, either
MPEG-l specially formatted for Video CD or MPEG-2 formatted with a DVD specifically
considered. Cleaner 5 continues to anticipate even under the Patent Owner's interpretation of the
claim that improperly requires reading limitations from the specification into the claim.

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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
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-I and MPEG-2
streams.
In addition, as noted by the Requester, the claims do not specify the program must accept
a selection of a menu items 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 TV standard 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-I for VCD format to disc and specifically disclosed on page 209 of Cleaner 5.

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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 disk media such as CD-ROM or DVD-ROM,
(Cleaner 5 at p. 144). Additionally, the Cleaner 5 manual states "To author Video CDs, youlll
also need a CD- mastering application, such as Adaptec Toast or Easy-CD creator," (Cleaner 5 at
p. 209). While Cleaner 5 (the software application) alone cannot create VCDs that are playable
on a media player that reads VCD formatted optical discs, Cleaner 5 (the reference) very
clearly discloses that Cleaner 5 can write the video and audio information 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 Patent Owner notes that construing presentation format to include MPEG-l files is
unreasonable and contrary to the ordinary meaning of the term since MPEG-l file cannot be
played on a TV.
The Examiner first notes that claim 8 specifically recites that the presentation format can
be VCD MPEG-I, thus, the Patent Ownerls argument are contrary to their patent disclosure and
the current claims which note that MPEG-I for VCD can be displayed on a television.
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 format for DVD is playable on DVD
players which are a format that playable on a television. As is known, DVD players as a standard
set-top box are connected to television sets.
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-1 audio and video.
The Examiner notes that the claim does not recite any requirement of a ".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.
Likewise, the Requester emphasizes that Cleaner 5 states that one can "produce MPEG-1
files for your Video CD projects in Cleaner by selecting the Video CD preset in the Advance
Settings Window," (Cleaner 5 at p. 209). The Patent Owner argues Cleaner 5 does not cover
claim 8 because MPEG-1 streams are not presentation formats. However, as discussed with
reference to claim 1 above, the claims do not recite authoring as a requirement and thus, under
the broadest reasonable interpretation, the presentation format is not required to be in a format
for an optical disk. Further, also discussed above, MPEG-1 files modified for Video CD, as
disclosed in Cleaner 5 are the presentation format for VCD, which is a format for an optical disk,
and accordingly Cleaner 5 meets even this improper construction of the claim

Regarding claim 10:

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The Patent Owner contends that Cleaner 4 does not have code for receiving a desired
output media format.
The Examiner notes that is statement is based on the Patent Owner same flawed argument
that MPEG-l is not an output media format. However, as noted above Cleaner 5 discloses that
MPEG-l is for

vcn and specifically encodes the files to be in MPEG 1 vcn format. This is the

same format that is disclosed in the '655 patents specification and further specification claimed
in claim 8.
In addition as noted by the Requester and Cleaner 5 at pg. 95, Cleaner's audio
. optimization applies to "all the supported output formats".

Regarding claim 18:
The Patent Owner contends that Cleaner 5 does not disclose all of the elements of claim 1
in multiple integrated applications or in a single integrated application.
The Examiner disagrees and notes that Cleaner 5 shows a single integrated application
for encoding the input file in at least MPEG 1 for

vcn. Cleaner 5 only discusses using a

secondary application for writing the MPEG 1 for vcn file to disk. This step, however, is not
required in claim 1 or claim 18.
In addition, assuming arguendo that such a step was required, as set forth above, the
Examiner notes that under the Patent Owner's definition, as set forth in the ACP an integrated
applications is "a collection of computer programs designed to work together to handle an
application either by passing data from one to another or as components of a single system" or as
"a collection of computer programs that work as a unit with a unified command structure to

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handle several applications, such as work processing, spread sheets, data-base management,
graphics, and data communications."
In this case the Examiner relied upon for example, Cleaner 5 which discloses of have a
presentation format ofVCD MPEG-1. Cleaner 5, in this example, is considered to be the first
application. In a second step, Cleaner 5 discloses that if a user desire to create a Video CD they
must select a specific option. As set forth on page 209 of Cleaner 5, it is disclosed "In order for
MPEG streams to be accepted by

Ad~ptec

Toast to create a Video CD .... check the Compatible

with Toast Video CD option in the Output tab of the Advanced Settings window.
While the Examiner agrees that Adaptec Toast is a second application, both of these application
"work as a unit" and/or "work together to handle an application". Cleaner 5 specification
integrates specific code for handling the Adaptec Toast software and thus the two different

.

applications are integral with each other and work together. If they did not work together,
Cleaner 5 would not have provided an option to create a disc that specifies what application
needs to be used.

Claim Rejections - 35 USC § 103
8.

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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Issu'e 2 (Adopted)
9,

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
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-I and MPEG-2 encoding. MPEG
Charger at p. 9. Additionally, MPEG Charger explicitly discloses the ability to "tum all popular
•

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Art Unit: 3992

video, audio and animation file formats into MPEG streams for DVD, Video CD, CD-ROM,
digital broadcasting and broadband webcasting.1I 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, VeD, and Super VeD.
Cleaner 5 discloses that a user may output media in VCD format. Cleaner 5 at p.
209. Specifically,

~leaner

5 states that a user can select the IIVideo CD preset in the

Advanced Settings window II in Cleaner to lIeasily produce MPEG-l files for Video CD
projects. II 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: IIMPEG Charger is a software-only MPEG option for Cleaner 5 that gives you
comprehensive control over both MPEG-l and MPEG-2 encoding, II and reference within
Cleaner 5: "Cleaner MPEG Charger integrates seamlessly with qeaner. 1I 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.
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

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Art Unit: 3992
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 tum 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-1 or MPEG-2 streams" for VCD output, (Cleaner 5
at p. 206, 209). Furthermore, MPEG Charger discloses that the user is allowed "to tum all
popular video, audio and animation file formats into MPEG streams for DVD, Video CD, CDROM, digital broadcasting and broadband web casting, (MPEG Charger at p. 9).

Response to Arguments

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

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Art Unit: 3992

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).
In addition, as noted by the Requester citing to MPEG Charger at page. 10, MPEG
Charger discloses the ability to create MPEG-2 files which is the format used for DVD playback. .
It was noted that MPEG-2 is used for commercial DVDs (DVD-Video). In addition, MPEG-2 is

full frame rate (24-30fps) and full-screen resolution (720x480, NTSC).
In addition, it was noted that MPEG Charger discloses a variety of quality settings for
DVD.

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Art Unit: 3992

MP.EG Charge-r <>.tkrs feature enban't~1ents oot indutk.~. in Cieaner 5t'includIngsuppmt ff.\f.::
• .Both l-.p'a..,,~ and z-~~ v~r:htbk: bitrate enaxling fOf both MPRG-l. and ·MP.Efi-2•
.. Custom vk,leo buffer \-wiJie:r si.1.L'S.
.. CUs.ionl Groupo{ Pictures (GOP) ~.
.. Open or dosed ('.,ol~.

Claim 6 Arguments
The Patent Owner repeats that MPEG Charger does not provide DVD asa desired output
media format.
The Examiner disagrees and notes, as stated by the Requester, that the claims do not
specify thatthe 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

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Art Unit: 3992
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 format. and that
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
'l1le- Video CD fGlmat.is u. sian.dard that pla}'1 in mostDVD play~n. It n-qWre6 MPEG-l vidoo
and s~)(CWVidoo CD {om.l2ttlng. You can easny pl"Odw:e. MPEG-1ffies fur yeurVfdeG CD
p.roJt\."1.$ in Clea.ner. by seJoctlng the Video CD preset in tOO ..>\dvaoced S€ttlngll window.. 'Jo author
VJdt>o CDs, }'OU'1l also need a CD-mastering applicatio~such as. .A.daptec 'Ib'dSt or F.,asy-CJ.)
Crrotf1f~

Adaptec Toast support for Video CD (Mac OS only)
in order fur MPEG streams to be accepll'd by Atbpwc 'IOOst
to create a Vidro CD, ce.rtain oon-sl:aruiard information
must be added to tilt. MPEG fllf. 1b '~file:dntended tOr

ioclusl.O:fl rnl a V~) {.Dberng .-wthor.ed with 1ba.i~ ch«:k

me VtdroCD compatlbleoptionin the·output tllb of the

Making MPEG :str.QliiII'l1i for use
wltn Adaptsoc Toast.

AdvafA.ed ~tti!lg"S window and.t.ilO(llSf 1b:J.st in the pop-up
trIetlU. ~ the 1bast docunwnlaUon fur authoring instroctiom.

In addition, under the MPEG Charger Options section ofMPEG Charger, it is disclosed
I

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 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

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Art Unit: 3992
disk, then Cleaner 5 supports ".dat" files for VCD since this would have been required as noted
by the Patent Owner.

Issue 3 (Not Adopted)
10.

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 AVID Xpress in view of AVID Xpress DV is not adopted.

As set forth in the previous Non-Final Rejection and Action Closing Prosecution Office
Actions:
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 SGI, 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

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Art Unit: 3992
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. I). Additionally, as noted above, the
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. I).

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. I).

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.

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Art Unit: 3992

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
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.

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Art Unit: 3992
The Request merely shows that Avid Xpress is able to output vide.o 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
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

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Art Unit: 3992
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.

Response to Argument
No Arguments were presented thus the Examiner's position is maintained.

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

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Art Unit: 3992

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)(I).
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){l).
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 terminated, 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. govlauthenticate/authenticateuserlocalepf. html.

By Mail to:

Mail Stop Inter Partes Reexam

Application/Control Number: 951001,284

Page 50

Art Unit: 3992
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)(I)(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 proceeding, should be directed to the Central Reexamination
Unit at telephone number [phone].
IOvidio Escalantel
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
[phone]
Conferee: Ir.g.f.1

Conferee:es /(