Ex Parte Chen et al

Patent Trial and Appeal Board

May 4, 2018

13553617 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/553,617 07/19/2012
15150 7590 05/08/2018
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
FIRST NAMED INVENTOR
Ying Chen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1010-841US01/l 11677 8463
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
05/08/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
pairdocketing@ssiplaw.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YING CHEN and MARTA KARCZEWICZ
Appeal2017-007003
Application 13/553,617
Technology Center 2400
Before DENISE M. POTHIER, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-5, 7-14, 16-23, 25-32, 34--41,
43-50, and 52-54, which constitute all the claims pending in this
application. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b). We affirm-in-part and enter a new ground of rejection pursuant to
our authority under 37 C.F.R. § 41.50(b ).
CLAIMED SUBJECT MATTER
Appellants' invention generally is directed to encoding and decoding
three-dimensional (3D) video. Spec. i-f 2. In particular, Appellants'
invention reuses syntax elements from a slice header for a first component of
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a view when encoding or decoding a second component of the same view.
Spec. i1i17-10. Claims 1, 10, 19, 26, 28, 37, 46 and 53 are independent
claims. Claim 26 is illustrative and reproduced below:
26. A device for decoding video data, comprising:
means for receiving, for a particular view in a particular
access unit of a plurality of access units included in the coded
video bitstream, a texture slice for a texture view component
associated with one or more coded blocks of video data
representative of texture information, the texture slice comprising
the one or more coded blocks and a texture slice header
comprising syntax elements representative of characteristics of
the texture slice including values for syntax elements related to
reference picture list construction for the texture slice;
means for receiving, for the same particular view in the
same particular access unit of the plurality of access units
included in the coded video bitstream, a depth slice for a depth
view component associated with one or more coded blocks of
depth information corresponding to the one or more coded blocks
of video data representative of texture information, wherein the
depth slice comprises the one or more coded blocks of depth
information and a depth slice header comprising syntax elements
representative of characteristics of the depth slice;
means for decoding, based at least in part on the values of
the syntax elements related to reference picture list construction
for the texture slice included in the received texture slice header,
the texture slice;
means for receiving, in a slice header extension of the
depth slice, a reference picture prediction syntax element that
indicates whether syntax elements related to reference picture list
construction for the depth slice are predicted from the syntax
elements related to reference picture list construction for the
texture slice; and
means for decoding, where the reference picture prediction
syntax element indicates that the syntax elements related to
reference picture list construction for the depth slice are predicted
from the syntax elements related to reference picture list
construction for the texture slice, the depth slice based at least in
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part on the values of the syntax elements related to reference
picture list construction for the texture slice.
REJECTIONS 1
Claims 1-5, 7-14, 16-23, and 25-27 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and claim the subject matter the inventor(s) and, alternatively, under
35 U.S.C. § 101, as being directed to an improper definition of a process.
Final Act. 8-9. 2,3
Claims 26, 27, 53, and 54 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to disclose structure in the Specification
corresponding to the recited means sufficient to perform the recited function.
Final Act. 9-11.
1 The Office Action from which this Appeal was taken also included the two
following rejections: (1) claims 10-14, 16-18, 26, 27, 37--41, 43--45, 53,
and 54 were rejected under 35 U.S.C. § 112, first paragraph, for lack of
enablement; and (2) claims 1-5, 7-14, 16-23, 25-32, 34--41, 43-50, and
52-54 under 35 U.S.C. § 101 as being directed to ineligible subject matter.
Final Act. 5-8, 11-12. These rejections were withdrawn. See, e.g., Ans. 2.
2 The Examiner explains that these claims are rejected as indefinite because
the claims are "use" claims-i.e., the claims recite a use without setting forth
the steps delimiting how the use is practiced. Final Act. 8. Therefore, the
Examiner alternatively rejected these claims under 35 U.S.C. § 101 in
accordance with guidance in the Manual of Patent Examining Procedure
(MPEP). Final Act. 8-9; see MPEP § 2173.05(q).
3 Because we ultimately do not sustain the Examiner's rejection, we need not
address the fact that the Examiner rejected claims 1-5, 7-14, 16-23, 25-27
(the "decoding claims"), but did not reject claims 28-32, 34--41, 43-50, and
52-54 (the "encoding claims"), which recite claims very similar to the
decoding claims, except that the encoding claims are directed to encoding
data, whereas the decoding claims are directed to decoding data.
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Claims 1-5, 7-14, 16-23, and 25-27 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Amon (US 2010/0254458 Al; Oct. 7, 2010)
and Chen (WO 2010/043773 Al; Apr. 22, 2010). Final Act. 13-26.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
have not been considered and are deemed waived.
REJECTIONS UNDER 35 U.S.C. § 112
Means-Plus-Function Claims
Claims 26, 27, 53, and 54
The Examiner concludes claims 26, 27, 53, and 54 recite means-plus-
function limitations that invoke 35 U.S.C. § 112, sixth paragraph. Final
Act. 9-10. The Examiner further concludes Appellants' Specification
provides inadequate support for the corresponding structure to the recited
means and, therefore, claims 26, 27, 53, and 54 are indefinite under
35 U.S.C. § 112, second paragraph. The Examiner never withdrew this
rejection. See Ans. 2 (explicitly withdrawing the enablement rejection under
35 U.S.C. § 112, first paragraph, and the ineligible subject matter rejection
under 35 U.S.C. § 101). Furthermore, the Answer states that "[e]very
ground of rejection set forth in the Office action dated 05/25/2016 from
which the appeal is taken is being maintained by the examiner except for the
grounds of rejection (if any) listed under the subheading 'WITHDRAWN
REJECTIONS."'
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Appellants did not respond to the Examiner's rejection. See App.
Br. 10-34, Reply Br. 5-13. Appellants identify certain portions of the
Specification as relevant to each limitation of independent claims 26 and 5 3.
App. Br. 5---6, 9-10. The cited portions of the Specification, however, are
insufficient to disclose the required structure corresponding to the recited
means in claims 26 and 53. For example, with respect to the means for
decoding (claim 26) or encoding (claim 53), "based at least in part on the
values of the syntax elements related to reference picture list construction for
the texture slice included in the received texture slice header, the texture
slice" (the "coding based on syntax elements" limitations), Appellants
identify paragraphs 33, 41, 51, 54--56, 63, 74, 77, 95, 157, and 162 as well as
Figures 1, 2, 4, and 6. App. Br. 6 nn. 30 & 31, 10 nn. 68 & 70.
Describing the purpose of the sixth paragraph of 35 U.S.C. § 112, the
Federal Circuit explained:
Congress struck a balance in allowing patentees to express a
claim limitation by reciting a function to be performed rather
than by reciting structure for performing that function, while
placing specific constraints on how such a limitation is to be
construed, namely, by restricting the scope of coverage to only
the structure, materials, or acts described in the specification as
corresponding to the claimed function and equivalents thereof.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347--48 (Fed. Cir. 2015)
(en bane) (citing Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346,
1350 (Fed. Cir. 2003)).
A claim term that recites a "means" is presumed to invoke 35 U.S.C.
§ 112, sixth paragraph. That presumption may be overcome if the recited
term would be "understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure" that is capable of
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carrying out the recited functions. Williamson, 792 F.3d at 1348 (citing
Greenberg v. Ethicon Endo-Surgery, Inc., 91F.3d1580, 1584 (Fed.
Cir. 1996) ). Here, there is no modifier for any of the recited "means" and
each of the "means" limitations recites only function. Therefore, each of the
"means" limitations is a means-plus-function limitation and invokes
35 U.S.C. § 112, sixth paragraph.
Accordingly, we look to Appellants' Specification to determine
whether there is sufficient structure to support the recited functions in
independent claims 26 and 53 and, in particular, the coding based on syntax
elements limitations. The Examiner finds the Specification discloses means
can be implemented as software instructions that execute the recited
functions and concludes software instructions "do not provide requisite
structure." Final Act. 9-10 (citing Spec. i-f 18). However, the Federal
Circuit has held that corresponding structure may be sufficiently disclosed in
the form of an algorithm. WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d
1339, 1348 (Fed. Cir. 1999) ("A general purpose computer, or
microprocessor, programmed to carry out an algorithm creates 'a new
machine, because a general purpose computer in effect becomes a special
purpose computer once it is programmed to perform particular functions
pursuant to instructions from program software."' (quoting In re Alappat, 33
F.3d 1526, 1545 (Fed. Cir. 1994)). Nevertheless, Appellants have not
identified corresponding structure in the Specification sufficient to perform
at least the recited functions in the coding based on syntax elements
limitations.
Figure 1 depicts a block diagram of a system for encoding and
decoding, but provides no details on how data is coded (paragraph 29 of
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Appellants' Specification explains that "the term 'coding' may refer to either
or both of 'encoding' and decoding"'). Figures 4 and 6 provide descriptions
very similar to the recited claim language without providing sufficiently
more details. Figure 2 depicts a block diagram of an encoder, but it is
unclear which aspects of the depicted encoder provide the necessary
structure to perform the recited function of encoding the texture slice "based
at least in part on the values of the syntax elements related to reference
picture list construction for the texture slice included in the received texture
slice header," as recited in claim 53. Similarly, even if Appellants had
pointed to Figure 5, it is unclear which aspects of the depicted decoder
provide the necessary structure to perform the recited decoding functions of
claim 26.
We also reviewed Appellants' cited Specification paragraphs, and we
find insufficient disclosure to meet the corresponding structure at least for
performing the coding based on syntax element limitations' functions. Put
another way, neither Appellants' Figures nor description provide an
adequate algorithm or details regarding how these functions are performed.
Although a general purpose computer may provide sufficient structure to
perform functions that do not require special programming, the same general
purpose computer is insufficient structure for performing specific functions
that require special programming, such as the functions recited in claims 26
and 53. See In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011).
Additionally, assuming the terms "decoder" and "encoder" as
disclosed in the Specification provide some context to a person of ordinary
skill in the art regarding the general purpose of such a means, Appellants'
Specification does not provide either particular hardware or an algorithm or
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details regarding how the decoding or encoding functions are performed
"based at least in part on the values of the syntax elements related to
reference picture list construction" sufficient to describe a structure that can
achieve the recited function. See Williamson, 792 F.3d at 1352 ("Even ifthe
specification discloses corresponding structure, the disclosure must be of
'adequate' corresponding structure to achieve the claimed function."). At
least the recited coding based on syntax elements limitations' functions are
insufficiently supported by an adequate algorithm or particular physical
structure for achieving the recited functions. Claims 10 and 37 are broad
enough to cover many ways for the coders to code the texture slices and,
based on this record, the generically described encoder and decoder in the
Specification do not particularly point out or distinctly claim the
programming used to achieve the functions in the coding based on syntax
elements limitations recited in claims 10 and 37. See id; Katz, 639 F.3d at
1316.
Therefore, based on this record, we determine Appellants' claims,
"fail to fulfill the 'public notice function' of 35 U.S.C. § 112 i-f 2 by
'particularly pointing out and distinctly claiming' the invention" and
"exhibit the 'overbreadth inherent in open-ended functional claims." Katz,
639 F.3d at 1315 (citing Praxair, Inc. v. ATM!, Inc., 543F.3d1306, 1319
(Fed. Cir. 2008); quoting Halliburton Energy Servs. v. M-1 LLC, 514 F.3d
1244, 1256 n.7 (Fed. Cir. 2008)). For the above reasons, we agree with the
Examiner that claims 26, 27, 53, and 54 are indefinite under 35 U.S.C.
§ 112, second paragraph.
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New Ground of Rejection of Claims 10-14, 16-18, 37--41, and 43--45
Independent claims 10 and 3 7 are directed to "A device for decoding
[or encoding] data, comprising ... a video decoder [or encoder] configured
to" receive data (a texture slice comprising certain information, a depth slice
comprising certain information, and a certain syntax element in the depth
slice's slice header extension), and decode the texture slice "based at least in
part" on certain information received as part of the texture slice and, based
on a certain condition existing, decoding the depth slice "based at least in
part on" certain information received as part of the texture slice.
As discussed above, the ultimate question of whether 35 U.S.C. § 112,
sixth paragraph is invoked is whether the recited claim term would be
"understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure" that is capable of carrying out
the recited functions. Williamson, 792 F.3d at 1348. Although there is a
presumption that a limitation lacking the word "means" is not subject to
§ 112, sixth paragraph, that presumption is overcome when it is
"demonstrate[ d] that the claim term fails to 'recite sufficiently definite
structure' or else recites 'function without reciting sufficient structure for
performing that function."' Id. at 1349. Therefore, when construing claims
10 and 37, we look to the recited "decoder" (claim 10) or "encoder" (claim
3 7) to determine whether these terms are generic placeholders for
perfrnming the claimed function that are not modified by "sufficient
structure for performing" the recited functions. See id.
The only structure recited in claims 10 and 37 to perform the
receiving functions and the decoding/encoding functions is "a video
decoder" or "a video encoder" respectively. Although an ordinarily skilled
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artisan may have understood "a decoder" and "an encoder" to perform a
decoding or encoding function in general, we determine an ordinarily skilled
artisan would not have understood such recitations as the name for the
structure to perform the particular functions recited in claims 10 and 3 7. For
similar reasons discussed above with respect to claims 26, 27, 53, and 54,
and in light of Williamson, claims 10 and 37's recitation of a generic video
decoder or a generic video encoder, respectively, may constitute general
structure, it does not convey to a person of ordinary skill in the art a name
for structure capable of performing at least the specifically recited decoding
and encoding functions. Therefore, we construe claims 10 and 37 as
invoking 35 U.S.C. § 112, sixth paragraph.
As already discussed with respect to the functions recited in claims 26
and 53 that are commensurate in scope with the functions recited in claims
10 and 37, based on this record, we determine the Specification also fails to
provide sufficient structure for the recited functions in independent claims
10 and 37. Accordingly, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we newly reject claims 10 and 37, as well as claims 11-14,
16-18, 38--41, and 43--45, which depend therefrom, under 35 U.S.C. § 112,
second paragraph for failing to particularly point out and claim the subject
matter Appellants regard as their invention because Appellants'
Specification fails to disclose the requisite, corresponding structure for the
recited "video decoder" and "video encoder," which we determine invokes
35 U.S.C. § 112, sixth paragraph.
"Use" Claims
The Examiner finds claims 1-5, 7-14, 16-23, and 25-27 (the
"decoding claims") "provide for the use" of specific elements in a decoding
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method without "set[ting] forth any steps involved in the method/process"
and, therefore, "it is unclear what method, process, or functionally claimed
apparatus applicant is intending to encompass." Final Act. 8. The Examiner
further states claim 1 recites "no limitations on how the decoding is to be
performed or what algorithm can make decoding," as claimed. Ans. 15.
Finally, the Examiner finds claims 10 and 19 are product-by-process claims
and, therefore, are "even more indefinite" than the process claims. 4 Ans. 16.
For those reasons, the Examiner concludes the decoding claims are
indefinite and, furthermore, the decoding claims are not proper process
claims under 35 U.S.C. § 101. Final Act. 8-9.
Appellants assert the decoding claims are not "use" claims. App.
Br. 30-33; Reply Br. 10-13. Of particular note, Appellants argue claim 1
(as well as the rest of the decoding claims) "recite[] much more than a
process for using an input without setting forth any steps involved in the
process." Reply Br. 12-13. Appellants further argue "the determination of
whether or not a claim is a 'use' claim' is made at the claim level, not the
individual step/operation level." Reply Br. 12.
We agree with Appellants. The Examiner appears to be misapplying
the law regarding "use" claims. As explained by Appellants, the question of
whether a claim is indefinite because it is a "use" claim involves a
4 In the section that claims 1, 10, and 19 are "use" claims, the Examiner also
states that "these claims are rejected under 112, second paragraph in view of
invoking 112, sixth paragraph." Ans. 16. However, it appears only claims
26, 27, 53, and 54 stand rejected as indefinite in view of invoking 35 U.S.C.
§ 112, sixth paragraph. See Final Act. 9-10. We leave to the Examiner to
decide, in the first instance, whether claims 10 and 37 recite means plus
function claims, notwithstanding the lack of the term "means" in those
claims.
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determination of whether the claim, as a whole, simply recites a process for
using some input without reciting specific steps in the process. See Ex parte
Erlich, 3 USPQ2d 1011(BPAI1986) (finding a claim reciting "[a] process
for using monoclonal antibodies of claim 4 to isolate and purify human
fibroblast interferon," without reciting particular steps for using the
antibodies, to be indefinite); Exparte Dunki, 153 USPQ 678 (BPAI 1967)
(finding a claim reciting "[t]he use of a high carbon austenitic iron alloy,"
without reciting particular steps for using the alloy, to be indefinite);
Clinical Prods. Ltd. v. Brenner, 255 F. Supp. 131 (D.D.C. 1966) (finding a
claim reciting "[t]he use of a sustained release therapeutic agent," without
reciting particular steps for using the agent to be an improper process claim
under 35 U.S.C. § 101); see also MPEP § 2173.05(q) (describing "use"
claims).
For the above reasons, we do not sustain the Examiner's rejection of
claims 1-5, 7-14, 16-23, and 25-27 under 35 U.S.C. § 112, second
paragraph, as being indefinite because the claims are "use" claims. Nor do
we sustain the Examiner's alternate rejection of claims 1-5, 7-14, 16-23,
and 25-27 under 35 U.S.C. § 101 as being directed to an improper process
claim.
REJECTION UNDER 35 U.S.C. § 103(A)
The Examiner rejects claims 1-5, 7-14, 16-23, 25-32, 34--41, 43-50,
and 52-54 under 35 U.S.C. § 103(a) as obvious in view of Amon and Chen.
Final Act. 13-26. Specifically, with respect to independent claims 1, 10, 19,
26, 28, 37, 46, and 53, the Examiner finds Amon teaches every recited
limitation of each of the claims, except Amon fails to teach or suggest "that
the content of the second slice can represent 'depth,"' for which the
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Examiner relies on Chen. Final Act. 15-18 (emphasis omitted), 22-25; see
id. at 20-22 (applying the rejection of claim 1 to claims 10, 19, and 26),
25-26 (applying the rejection of claim 28 to claims 37, 46, and 53).
Of particular note, the third receiving step of claim 1 recites receiving
"a reference picture prediction syntax element that indicates whether syntax
elements ... for the depth slice are predicted from the syntax elements
related to reference picture list construction for the texture slice" (the
"indicator syntax element"). The last step of each of claims 1 and 28 recites
decoding (or encoding) the depth slice "based at least in part on the values of
the syntax elements related to reference picture list construction for the
texture slice" where or when the indicator syntax element indicates certain
information for the depth slice is predicted from the analogous information
for the texture slice. The Examiner finds certain of Amon's signaling
parameters (i.e., "num_ref_frames," "weighted_pred_flag," and
"weighted_bipred_idc") "'can be identical in the first picture parameter sets'
thus indicating if the prediction syntax elements are related as identical or
not." Final Act. 17 (citing Amon i-f 85); Ans. 10 (citing Amon i-f 85).
The Examiner further states that Chen teaches the "depth image is
simply another image" and, because Appellants' invention relates to
merging the texture and depth image signals' syntax, "Amon's merging of
the syntax of different images [is] particularly relevant." Ans. 11. The
Examiner also states the claims are "not limited to the particulars of what the
indicator is and how it is predicted." Ans. 11.
Appellants argue that Amon's cited signaling parameters do not teach
or suggest receiving the indicator syntax element. App. Br. 13-16.
Appellants argue Amon merges two coded input video streams into a single
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coded output video stream and the cited signaling parameter of the coded
output stream simply has the largest value of the corresponding signaling
parameters from the two coded input streams. App. Br. 13-14. Therefore,
Appellants contend Amon teaches always coding a single set of syntax
elements related to reference picture list construction, regardless of whether
the syntax elements from the two coded input streams are the same or
different. App. Br. 14 (citing Amon i-fi-127, 74--78, 84). Appellants also
contend Amon teaches the single coded output stream includes a full slice
header for each of the two coded input streams so that each of the slices can
be coded separately from each other. App. Br. 14--15 (citing Amon i161).
Because of the way Amon functions, Appellants argue Amon cannot teach
receiving the indicator syntax element because there is no need in Amon for
such an indicator syntax element when the coded output stream has only one
set of syntax elements. App. Br. 15.
Even assuming Chen teaches or suggests coding depth and texture
using inter-prediction and 3D video content scalability coding, Appellants
argue Amon's syntax elements cited by the Examiner fail to teach or suggest
receiving the indicator syntax element that would indicate predicting syntax
elements related to reference picture list construction for a first slice from
syntax elements related to reference picture list construction for a second
slice. Reply Br. 9.
We agree with Appellants that the Examiner has not demonstrated
Amon teaches or suggests receiving the indicator syntax element as recited.
The Examiner appears to be misconstruing the claim language. Specifically,
the Examiner finds that, because Amon's syntax elements cited by the
Examiner can be identical in picture parameter sets, the syntax elements can
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indicate "if the prediction syntax elements are related as identical or not."
Final Act. 17. However, the received indicator syntax element in the claims
does not indicate whether "prediction syntax elements are related," but,
rather, indicates whether the received syntax elements related to reference
picture list construction for one slice are predicted from the same type of
syntax elements for another slice. Moreover, although we agree with the
Examiner that Chen generally teaches relationships between depth and
texture slices and, more specifically using information from one slice to
code the other slice, the Examiner relies solely on Chen for teaching the
recited indicator syntax element. See, e.g., Chen 4:32-37 (discussing
correlations between depth and texture information), 5:6-14 ("a motion
vector for a texture video is predicted from a respective motion vector of a
depth map video or vice versa ... inter-layer motion prediction can be used
to predict motion in texture video from motion in depth map video" or vice
versa). 5
Although the rejection is based on a combination of Amon and Chen,
the Examiner relies on Amon to teach every aspect of the independent
claims, except "Amon does not teach that the content of the second slice can
represent 'depth."' Final Act. 18 (emphasis omitted). The Examiner relies
on Chen only for the general concept of "depth and texture coding in the
context of inter-prediction and scalability coding of 30 video content." Final
5 In reviewing Chen for this Appeal, we find there are many sections
relevant to the pending claims. We leave it to the Examiner to determine
whether the claims are unpatentable over these many sections of Chen and
Amon, or other prior art, either alone or in combination. Our decision not to
enter a new ground of rejection is discretionary and no inference should be
drawn from any choice on our part to exercise this discretion. See MPEP
§ 1213.02.
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Act. 18. Specifically with respect to receiving the indicator syntax element
and, when the indicator syntax element dictates, decoding a second slice
based at least on certain syntax elements being predicted from the
corresponding syntax elements for another slice, as discussed above, the
Examiner relies on three of Amon's signaling parameters as teaching the
indicator syntax limitation. See, e.g., Final Act. 17 (citing Amon i-f 85).
Constrained by this record, and for the reasons discussed above, we
are persuaded the Examiner erred in rejecting independent claims 1-5, 7-14,
16-23, 25-32, 34--41, 43-50, and 52-54. Accordingly, we do not sustain
the Examiner's rejection of claims 1-5, 7-14, 16-23, 25-32, 34--41, 43-50,
and 52-54 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision to reject claims 26, 27, 53, and 54
under 35 U.S.C. § 112, second paragraph.
We reverse the Examiner's decision to reject claims 1-5, 7-14,
16-23, 25-32, 34--41, 43-50, and 52-54 under 35 U.S.C. § 103(a).
We enter a new ground of rejection of claims 10-14, 16-18, 38--41,
and 43--45 under 35 U.S.C. § 112, second paragraph, pursuant to our
authorityunder37 C.F.R. § 41.50(b). Section41.50(b) provides:
A new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board enters such
a non-final decision, the appellant, within two months from the
date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
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matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, Appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
37 C.F.R. § 41.50(b). Further guidance on responding to a new ground of
rejection can be found in the Manual of Patent Examining Procedure
§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R § 41.50(b)
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