Ex Parte Auyeung

Patent Trial and Appeal Board

Jun 27, 2013

10943295 (P.T.A.B. Jun. 27, 2013)

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.
10/943,295 09/17/2004 Cheung Auyeung SONY-28000 2761
7590 06/27/2013
Jonathan O. Owens
HAVERSTOCK & OWENS LLP
162 North Wolfe Road
Sunnyvale, CA 94086
EXAMINER
FINDLEY, CHRISTOPHER G
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
06/27/2013 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
____________________

Ex parte CHEUNG AUYEUNG
____________________

Appeal 2012-001494
Application 10/943,295
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4-23, 25-42, and 44-54. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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Application 10/943,295

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STATEMENT OF THE CASE
Appellant’s claimed invention is directed to a method and system for
video bit allocation for scene cuts and scene changes to ensure smooth
picture quality (Spec. 1:13-15).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of storing picture data corresponding to a first
picture and having a plurality of portions, the method
comprising:

a. monitoring a characteristic of one portion of the
picture data;

b. dynamically generating a storage parameter based on
the characteristic, wherein the storage parameter corresponds to
a size of a buffer; and

c. storing at least one of the portions based on the storage
parameter of the picture data by allocating the buffer with the size.

REFERENCES and REJECTIONS
The Examiner rejected claim 51 under 35 U.S.C. § 112 first paragraph
as failing to comply with the enablement requirement.
The Examiner rejected claims 1, 2, 4-23, 25-42, and 44-54 under 35
U.S.C. § 103(a) based upon the teachings of Bruder (US 5,283,646) and
Gulati (US 6,965,641).

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ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner rejected claim 51 under 35 U.S.C. § 112, first
paragraph, for the reason the limitation “the storage parameter is determined
independent of the processing of the one portion of the picture data” directly
contradicts the other language in the claim (Ans. 4-5, 18). We do not agree.
The test for compliance with the enablement requirement of 35 U.S.C. § 112
first paragraph is whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
Specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the Specification as to the scope of
enablement. If the PTO meets this burden, the burden then shifts to the
applicant to provide suitable proofs indicating that the Specification is
indeed enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). In this
instance, because the Examiner’s reasoning for rejecting this claim is the
claim language is contradictory, the Examiner has not met the burden under
35 U.S.C. § 112, first paragraph.

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Application 10/943,295

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Rejection under 35 U.S.C § 103
Appellant contends neither Bruder nor Gulati teach or suggest a
storage parameter let alone the storage parameter corresponds to a buffer
size (see, e.g., App. Br. 7, 10). We address the rejection with respect to
representative claim 1.
Appellant contends Bruder fails to disclose determining a specific
type of image and using that determination specifically to generate a storage
parameter (App. Br. 8). However, claim 1 merely recites monitoring a
characteristic of one portion of picture data. Thus, Appellant’s argument is
not commensurate with the broader scope of the claim language. Appellant
also asserts Bruder does not disclose “the presently claimed invention
monitors the [frame] type itself” (App. Br. 9). Again, this argued limitation
is not commensurate with the scope of the claim language.
Appellant then contends Gulati does not disclose a storage parameter
“based on a quantization step size wherein the storage parameter
corresponds to a size of a buffer” (App. Br. 10, 11). Again, claim 1 merely
recites storing at least one portion based on the storage parameter of the
picture data by allocating the buffer with the size. Thus, Appellant’s argued
limitation regarding quantization of step size is not commensurate with the
scope of the claim language.
We also note, with respect to Appellant’s contention regarding the
term “picture data,” this is afforded no weight as it merely describes the
content of the stored information. Since this information content does not
further limit the claimed invention either functionally or structurally, it
constitutes non-functional descriptive material. Such non-functional
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descriptive material does not patentably distinguish over prior art that
otherwise renders the claims unpatentable.1
We find the weight of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.
Therefore, on this record, we are not persuaded that the Examiner’s reading
of the claims on the cited combination of references is overly broad,
unreasonable, or inconsistent with the Specification, and sustain the
Examiner’s rejection of representative claim 1, and claims 22, 41, 51, 52, 53,
and 54, which include substantially the same limitations and where
Appellant provides substantially the same arguments.
Although Appellant addresses the Examiner’s findings with respect to
some of the dependent claims, these arguments merely state the Examiner is
incorrect in finding the references disclose the recited features, without
providing arguments as to how or why this is so (see, e.g., App. Br. 9, 11-12;
Reply Br. 5-6).

DECISION
The Examiner’s rejection of claims 1, 2, 4-23, 25-42, and 44-54 is
under 35 U.S.C. § 103 is affirmed.
The Examiner’s rejection of claim 51 under 35 U.S.C. § 112, first
paragraph is reversed.

1 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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