Ex Parte 7,043,087 et al

Patent Trial and Appeal Board

Jul 27, 2015

95000584 (P.T.A.B. Jul. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,584 11/05/2010 7,043,087 381711US 2651
22850 7590 07/27/2015
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
TRAN, HENRY N
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/27/2015 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
APPLE INC.
Requester

v.

S3 GRAPHICS CO. LTD.
Patent Owner and Appellant
____________________

Appeal 2015-004346
Reexamination Control 95/000,584
Patent US 7,043,087 B2
Technology Center 3900

____________

Before JAMES T. MOORE, BRADLEY W. BAUMEISTER, and
ANDREW J.DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This proceeding arose from a request by Apple Inc. for an inter partes
reexamination of United States Patent No. 7,043,087 B2, entitled “IMAGE
PROCESSING SYSTEM” (issued to Zhou Hong et al. on May 9, 2006 from
Application 10/893,084, filed Jul. 16, 2004 (“the ’087 Patent”). We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
The ’087 Patent describes the invention as follows:
An image processing system including an image encoder
and image decoding system is provided. The image encoder
system includes an image decomposer, a block encoder, and an
encoded image composer. The image decomposer decomposes
the image into blocks. The block encoder[,] which includes a
selection module, a codeword generation module and a
construction module, processes the blocks. Specifically, the
selection module computes a set of parameters from image data
values of a set of image elements in the image block. The
codeword generation module generates codewords which the
construction module uses to derive a set of quantized image
data values. The construction module then maps each of the
image element’s original image data values to an index to one
of the derived image data values. The image decoding system
reverses this process to reorder decompressed image blocks in
an output data file.
Abstract.
Patent Owner, S3 Graphics Co. Ltd. (“Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s decision to reject
claims 1, 6, and 7 over the prior art, and claims 9-18 as enlarging the scope
of the claims of the patent being reexamined. See PO App. Br. 10.1

1 Throughout this opinion, we refer to (1) the Request for Inter Partes
Reexamination filed November 5, 2010 (“Request”); (2) the Action Closing
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The ’087 Patent was also involved in litigation before the
U.S. International Trade Commission, styled as In the Matter of Certain
Electronic Devices with Image Processing Systems, Components
Thereof, and Associated Software, Investigation No. 337-TA-724.
Patent infringement litigation involving Owner, Requester, and the
’087 Patent in the Northern District of California has been closed. PO App.
Br. 1.
Oral argument was held before a panel of the Board on July 22, 2015.
A transcript of the argument (“the ’7751 Tr.”) will be included in the record.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).

We affirm-in-part.

THE INDEPENDENT CLAIMS
The two independent claims – claims 1 and 9 – are illustrative of the
claimed invention:

Prosecution mailed September 13, 2012 (“ACP”); (3) Right of Appeal
Notice mailed May 22, 2013 (“RAN”); (4) Patent Owner’s Appeal Brief
filed September 9, 2013 (“PO App. Br.”); (5) the Declaration of Dr. Maja E.
Bystrom under 37 C.F.R. §1.132 (“the Bystrom Decl.”); and, (6) the
Examiner’s Answer mailed July, 2, 2014 (incorporating portions of the RAN
by reference) (“RAN”).
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1. An image decoder engine for decoding an encoded image
data file, comprising:
an encoded image decomposer for decomposing the
encoded image data file into a modified header and at least one
compressed image block, each image block having at least one
associated codeword and a plurality of image elements
associated with an index value; and
at least one block decoder coupled to the encoded image
decomposer for decompressing the at least one compressed
image block into at least one decompressed image block by
generating a set of quantized image data values and mapping
the index value to a quantized image data value from the set of
quantized image data values, the at least one block decoder
further comprising, at least one decoder configured for
decompressing each of the at least one compressed image block
to generate colors for each of the at least one compressed image
block.
9. An image decoder engine for decoding an encoded image
data file, comprising:
an encoded image decomposer for decomposing the
encoded image data file into a modified header and at least one
compressed image block, each image block having at least one
associated codeword and a plurality of image elements associated
with an index value; and
at least one block decoder coupled to the encoded image
decomposer for decompressing the at least one compressed image
block into at least one decompressed image block by generating a
set of quantized image data values and mapping the index value to
a quantized image data value from the set of quantized image data
values,
wherein the at least one block decoder decodes the at least
one compressed image block to specify one of a first block type
and a second block type, each of the first block type and the
second block type being 64-bits.

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STATEMENT OF THE REJECTIONS
Claims 1, 6, 7, and 9–18 are subject to reexamination and stand rejected.
RAN 3.
Owner appeals the following Bases of Invalidity (“BI”) of claims 1, 6, 7,
and 9–18, which the Examiner of the reexamination proceeding (“the
Examiner”) adopted (see PO App. Br. 10–38):
BI-1. Claims 1, 6, and 7 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hoffert (U.S. Patent No. 5,046,119; issued Sept. 3,
1991) in view of the Knowledge of One of Ordinary Skill in the Art
(“KOOSA”) as evidenced by Graphics Interchange Format, Version 89a
(“GIF89a”) and CL550 JPEG Image Compressor Processor, Preliminary
Data Book (“JPEG”).
BI-2. Claims 1, 6, and 7 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hoffert in view Normile (U.S. Patent No. 5,822,465;
Oct. 13, 1998).
BI-3. Claims 9–18 are rejected under 35 U.S.C. §314(a) as
impermissibly broadening the scope of the patent claims.

CLAIMS 6, 7, AND 9–18
Patent Owner argues that the Examiner erred in the interpretation of the
phrase “block type” in claims 6, 7, and 9–18. Owner argues that the broadest
reasonable interpretation of “block type” necessarily requires that the block
type indicate whether or not the block contains a transparent pixel. PO App.
Br. 11.
In support of this position, Owner argues that “block type” is not a term
of art having “an accepted plain and ordinary meaning,” urging that a reference
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to different kinds of “blocks” does not mean that those types of blocks can be
construed as the claimed “block types.” Id. at 12.
Owner points out that the ’087 Patent describes only two kinds of “block
types,” a four-color block type or a three-color plus transparency block type:
In select block type 632, the quantizer 402 uses the block type
module 406 (FIG. 4) to select a first block type for the image
block 320 that is being processed. For example, a selected block
type may be a four-color or a three-color plus transparency block
type, where the colors within the particular block type have
equidistant spacing in a color space.
’087 Patent, col. 8, ll. 23–28.
Owner further asserts that transparency is an important feature of the
claimed invention, citing the ’087 Patent at column 11, lines 38–41, which
states “the exemplary embodiment beneficially addresses transparency issues
by allowing codewords to be used with a transparency identifier.” Id. at 14.
Owner’s interpretation of “block type” is supported by the Declaration of
Dr. Maja E. Bystrom who declares that “block type” has no plain and ordinary
meaning, but may have any number of meanings “depending upon the given
application.” Bystrom Decl. ¶17.
Dr. Bystrom concludes that the proper meaning of “block type,” as
described by the ’417 Patent, is “an indication of whether a block can include a
transparent pixel or not.” Id.
Dr. Bystrom notes the factual basis for her opinion is that the ’417 Patent
explains that a problem with prior art compression is the inability to adequately
account for color keying in which certain pixels are transparent. Id. at ¶21.
The Examiner first finds that Owner’s assertion that “block type”
requires an indication of whether or not the block contains a transparent pixel is
not expressly recited within claims 6, 7, or 9–18, noting that although the
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claims are interpreted in light of the specification, limitations from the
specification are not read into the claims, citing In re Van Geuns, 988 F.2d
1181 (Fed Cir. 1993). Ans. 6–7.
Secondly, the Examiner notes that the Specification of the ’087 Patent
describes different embodiments that each utilize different block types. The
Examiner cites the ’087 Patent, at column 8, lines 25–34, which indicates the
use of two image block types, a single block type, or any other block type (i.e.
“. . . selecting a block type for each image is not intended to be limited in any
way.”). Id.
In light of the foregoing, the Examiner concludes that it would be
improper to limit the term “block type” to the narrow definition proposed by
Owner and finds that the broadest reasonable interpretation of that term is not
limited to providing an indication of whether or not the block contains a
transparent pixel. Id.
Although an inventor is free to define the specific terms used to
describe the invention, “this must be done with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
To act as its own lexicographer, a patentee must “clearly set
forth a definition of the disputed claim term” other than its plain
and ordinary meaning. It is not enough for a patentee to simply
disclose a single embodiment or use a word in the same manner
in all embodiments, the patentee must “clearly express an
intent” to redefine the term.
Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012) (citations omitted).
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Absent a clear definition in the disclosure that the claimed “block
type” requires a distinction between blocks that include a transparent pixel
and those that do not, and absent reference to or provision of sufficient
evidence that indicates that one of ordinary skill in the art would have
understood the term to inherently require such a distinction, we are not
persuaded that the broadest reasonable interpretation of the term requires a
distinction between blocks that include a transparent pixel and those that do
not.
We therefore agree with the Examiner that the presumption that the
term “block type” is to be interpreted in accordance with its plain meaning
has not been overcome in this case.
Further, we note that the description of the embodiment within the
Specification of the ’087 Patent, which is relied upon by Owner, employs
terminology that conversely indicates the meaning of “block type” should not
be interpreted as narrowly as urged by Owner, i.e. “may be a four color,” “is
not intended to be limited.” Col. 8, ll. 25-34. (emphasis added).
Consequently, we find the Examiner did not err in either basis of
unpatentability by opting to interpret “block type” as broader than only
meaning providing an indication of whether or not the block contains a
transparent pixel.

CLAIMS 1, 6, AND 7
Patent Owner also asserts that the Examiner erred in the rejection of
claims 1, 6, and 7 under 35 U.S.C. §103(a) as being unpatentable over Hoffert
(U.S. Patent No. 5,046,119; issued Sept. 3, 1991) in view of the Knowledge of
One of Ordinary Skill in the Art (“KOOSA”) as evidenced by Graphics
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Interchange Format, Version 89a (“GIF89a”) and CL550 JPEG Image
Compressor Processor, Preliminary Data Book (“JPEG”). Initially, Owner
asserts error based upon the failure of Hoffert to teach “block types” which
indicate transparency. PO App. Br. 17.
For the reasons we set forth above, we find no error in the Examiner’s
interpretation of “block type.”
Secondarily, Owner asserts that Hoffert fails to describe or require
“headers” and that the Examiner has failed to provide a rationale to modify
Hoffert to add “headers.” PO App. Br. 19.
The Examiner finds that the use of “headers,” separating a “header” from
and a compressed image file, and modifying a “header” when a file is
converted from one format to another was well known to those of ordinary skill
in the art at the time of Owner’s invention. ACP 13.
Owner argues that the Examiner has engaged in “mere conclusory
statements” and failed to provide a rational underpinning to support the legal
conclusion of obviousness. Owner also points out that it does not claim to have
“invented headers or converting headers when converting between standard file
types.” PO App. Br. 19–20.
Owner’s positions are contradictory. On the one hand, Owner
acknowledges that the use of headers, or the conversion of headers, when
converting between standard file types, was well known at the time of the
invention. On the other hand, Owner also urges that it is improper for the
Examiner to conclude that the use of headers within Hoffert would have been
well-known to those of ordinary skill in the art at the time of the invention.
Regardless, we accept Owner’s acknowledgement, and agree with the
finding that the use and conversion of headers was well known at the time of
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the invention. Moreover, Owner’s claims do not recite any particular function
or special application for the claimed “header” or “modified header” within the
appealed claims, further supporting that the claimed “header” or “modified
header” within the appealed claims was conventional use of a known
technology.
Consequently, we find the Examiner did not err in rejecting claims 1, 6,
and 7 under 35 U.S.C. §103(a) as being unpatentable over Hoffert in view of
the Knowledge of One of Ordinary Skill in the Art as evidenced by GIF89a and
JPEG.
Owner urges similar arguments against the Examiner’s rejection of
claims 1, 6, and 7 under 35 U.S.C. §103(a) as being unpatentable over Hoffert
in view Normile. That is, Owner once again urges the Examiner erred in view
of the failure of Hoffert to teach “block types” that indicate transparency.
PO App. Br. 21.
For the reasons we set forth above, we find no error in the Examiner’s
interpretation of “block type.”
Owner also urges the Examiner failed to express a proper motivation to
combine the teaching of “headers” by Normile with the teachings of Hoffert.
PO App. Br. 21–23.
In justifying the combination of Hoffert and Normile, the Examiner
notes the Commission Opinion of the United States International Trade
Commission with respect to claims 1 and 6 of the ‘087 Patent finds those
claims invalid and/or unpatentable under 35 U.S.C. §103(a) over Hoffert and
Normile. The Commission Opinion stated
Normile discloses the use of multiple types of headers. Normile
at 20:35-23:23 (describing, e.g., sequence headers, chunk headers,
frame headers, and block headers). Further, the face of the
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Normile patent specifically lists Hoffert as a cited reference.
Thus, a person of ordinary skill in the art at the time of the
invention would be aware that the teachings in Normile are related
to the teachings in Hoffert. As described above, at the time of the
invention there was a known problem in the field of image
compression (how to convey information about the image files to
be compressed and decompressed) and a known solution (using
headers). Accordingly, it would have been obvious to a person of
ordinary skill in the art at the time of the invention to use the
headers disclosed in Normile to convey information about the
files to be compressed and decompressed in the Hoffert invention.
Commission Opinion Inv. No. 337-TA-724.
The Examiner finds
it would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the teachings of
Hoffert and the header of an encoded image file as taught by
Normile for making the functions of the encoders and decoders
more efficient; and such a motivation is inherently obvious2 to one
of ordinary skill in the computer signal/image processing art.
Ans. 17.
As we note above, we are unpersuaded by Owner’s arguments that the
Examiner has failed to provide a proper motivation to combine these
references. Our conclusion concerning the existence of adequate motivation to
combine is reinforced by Owner’s admission that the use of headers, or the
conversion of headers, when converting between standard file types, was well
known at the time of the invention, as well as the absence of any particular
function or special application for the claimed “header” or “modified header”
in the appealed claims.

2 We note that the Examiner used the expression “inherently obvious.”
These two words have specific legal meanings in the context of patent law.
In this instance, we understand the Examiner to be intending to say
alternatively that the motivation is manifestly obvious.
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We therefore find that the Examiner did not err in failing to provide a
proper motivation to combine these references in the rejection of claims 1, 6,
and 7 under 35 U.S.C. §103(a) as being unpatentable over Hoffert in view
Normile.

SECONDARY CONSIDERATIONS
Patent Owner argues that “secondary considerations” of satisfying a
long-felt need, industry acceptance, and subsequent commercial success weigh
in favor of nonobviousness. PO App. Br. 29-38. The Examiner disagrees.
Answer 26–37.
Secondary considerations, including satisfaction of a long-felt need and
commercial success can have a significant impact on an obviousness analysis.
See, e.g., The Barbed Wire Patent, 143 U.S. 275, 282 (1892); In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation,
676 F.3d 1063, 1075-1080 (Fed. Cir. 2012) (long-felt need and commercial
success should be considered before ultimate decision made on obviousness);
In re Tiffin, 443 F.2d 394 (CCPA 1971), modified on reh’g, 448 F.2d 791
(CCPA 1971); Ex parte Artsana USA, Inc., 2014 WL 4090808 (PTAB Aug. 18,
2014) (finding commercial success to be entitled to considerable weight);
Murata Mfg. Co., Ltd. v. Synqor, Inc., 2014 WL 1397381 *11–14 (PTAB Apr.
10, 2014) (same).
In the case before us, the Examiner declined to give controlling weight
to Owner’s evidence of long-felt want and commercial success. Answer 17.
The nexus evidence submitted by Owner is based on the Declaration of
Mr. Ken Weng (PO App. Br. Ex. C), the CEO of S3 Graphics Co. Ltd (Patent
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Owner) in which Mr. Weng describes various publications that review the
texture compression scheme employed by Owner’s products.
One such publication, Texture Compression using Low-Frequency
Signal Modulation, Graphics Hardware (2003), describes the S3 compression
system:
Their system, known in the industry as S3TC™ (or DXTC™
within Microsoft's DirectX 3D interface), also uses 4x4 pixel
blocks. As with BTC, each block is completely independent of
every other block. Each pixel in the 64-bit block is encoded with
two bits, which selects one of four colours. Two of these colours
are stored in the block as 16-bit RGB values while the remaining
pair are derived directly from the stored colours. These additional
colours are usually 1:2 and 2:1 linear blends of the main
representatives but, in some blocks, one of the indices can be used
to indicate a fully transparent, black pixel for so called ‘punch-
through’ textures.
PO App. Br., Ex. C, ¶ 5.
Similarly, White Paper: S3TC Compression Technology (Oct. 25, 1999)
explains that
[t]he order of the two explicitly encoded colours determines
whether the block is completely opaque or whether it has
transparent pixels. When the block is determined to be one that
has transparent pixels, the fourth bit encoding (11) indicates a
transparent pixel, while the other derived value is just the average
of the two encoded colour values.
Id.
MPEP 716.03(a)(I) requires that
[o]bjective evidence of nonobviousness including commercial
success must be commensurate in scope with the claims. In re
Tiffin, 448 F.2d 791, 171 USPQ 294 (CCPA 1971) (evidence
showing commercial success of thermoplastic foam “cups” used
in vending machines was not commensurate in scope with claims
directed to thermoplastic foam “containers” broadly). In order to
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be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed
features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225,
229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff'd, 959 F.2d 226,
228, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992) (Features
responsible for commercial success were recited only in allowed
dependent claims, and therefore the evidence of commercial
success was not commensurate in scope with the broad claims at
issue.).
An affidavit or declaration attributing commercial success to a
product or process “constructed according to the disclosure and
claims of [the] patent application” or other equivalent language
does not establish a nexus between the claimed invention and the
commercial success because there is no evidence that the product
or process which has been sold corresponds to the claimed
invention, or that whatever commercial success may have
occurred is attributable to the product or process defined by the
claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App.
& Inter. 1988).
Owner also argues industry acceptance, commercial success, long-felt
need, initial skepticism in order to demonstrate nonobviousness. However, the
Examiner finds the lack of demonstrated nexus discussed above is fatal to such
allegations. Ans. 17.
Evidence pertaining to secondary considerations must be taken into
account whenever present. However, it does not necessarily control the
obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed. Cir. 2007) (“the record establish[ed] such a strong case of
obviousness” that allegedly unexpectedly superior results were ultimately
insufficient to overcome obviousness conclusion); Leapfrog Enterprises Inc.
v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) (“given the strength of
the prima facie obviousness showing, the evidence on secondary
considerations was inadequate to overcome a final conclusion” of
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obviousness); and Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed.
Cir. 1988).
We concur with the Examiner. Although there is some evidence of
Owner’s commercial products having commercial success, we are unable to
link them adequately to the claimed subject matter. In view of the broad, but
reasonable interpretation of “block type” discussed above, we agree with the
Examiner that Owner has failed to demonstrate the required nexus between the
claimed invention and the allegations of commercial success, long-felt need
and industry acceptance.

CLAIMS 9–18
Patent Owner argues the Examiner erred in rejecting claims 9–18 as
impermissibly broadening the issued claims of the ‘087 Patent. Specifically,
Owner argues that although claim 9 fails to recite the phrase “to generate
colors.” as recited in claim 1, that feature is inherently met by the inclusion
of “block type” as recited in claim 1. PO App. Br. 37–38.
The Examiner finds that the limitation “to generate colors” requires a
particular operation, as described in the ‘087 Patent. Specifically, the
Examiner notes that decoder units 712 are utilized to decompress or decode
each encode image block to generate colors. The Examiner notes that the
term “block type” is a structural feature which is incapable of carrying out a
decompression or decoding process “to generate colors.” Ans. 18.
The Federal Circuit’s oft-quoted standard for broadening is as
follows:
A claim of a reissue application is broader in scope than
the original claims if it contains within its scope any
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conceivable apparatus or process which would not have
infringed the original patent. In re Self, 671 F.2d 1344, 213
USPQ 1 (CCPA 1982); In re Ruth, 278 F.2d 729, 47 CCPA
1014; 126 USPQ 155 (1960). A reissue claim that is broader in
any respect is considered to be broader than the original claims
even though it may be narrower in other respects. In re
Bennett, 766 F.2d 524, 226 USPQ 413 (Fed.Cir.1985); Ball
Corp. v. United States, 729 F.2d 1429, 221 USPQ 289
(Fed.Cir.1984).
The same broadening test is applied to claims in reexamination.
Anderson v. International Eng’g & Mfg., 160 F.3d at 1349, 48
U.S.P.Q. 2d at 1634.
We find that an image decoder engine as set forth within claim
9 of the present application would cover an engine that produces a
non-color image, that is, does not generate colors. Consequently, we
concur with the Examiner’s position that claim 9, and various claims
that depend therefrom, are impermissibly broadened. We therefore
find that the Examiner did not err in rejecting claim 9 as
impermissibly broadening.
Owner argues that certain dependent claims of clam 9 expressly
recite the provision of color, and consequently are not impermissibly
broadening. PO App. Brief 37-38. Specifically, Owner urges that
claims 10–14, 16 and 17 recite the provision of color. Id. We concur
with Owner with respect to claims 11–14, 16, and 17. However, we
find that claim 10 recites the provision of “transparent color,” which
we find necessarily lacks any provision of “color” as one of ordinary
skill in the art would understand that term. Consequently, we find the
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Examiner did not err in the rejection of claims 10, 15, and 18 as
impermissibly broadened.

DECISION
The Examiner’s decision adverse to the patentability of claims 1, 6, 7,
and 9, 10, 15, and 18 is affirmed. The Examiner’s decision adverse to the
patentability of claims 11–14, 16 and 17 is reversed.
Requests for extensions of time in this proceeding are governed by
37 C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED-IN-PART

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Patent Owner:

Oblon, Spivak, McClelland, Maier & Neustadt, LLP
1940 Duke Street
Alexandria, VA 22314

Third Party Requester:

Novak Druce & Quigg
(NDQ Reexamination Group)
1000 Louisiana Street
53rd Floor
Houston, TX 77002