Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardMay 4, 201813553617 (P.T.A.B. May. 4, 2018) Copy Citation 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 Appeal2017-007003 Application 13/553,617 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 2 Appeal2017-007003 Application 13/553,617 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. 3 Appeal2017-007003 Application 13/553,617 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."' 4 Appeal2017-007003 Application 13/553,617 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 5 Appeal2017-007003 Application 13/553,617 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 6 Appeal2017-007003 Application 13/553,617 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 7 Appeal2017-007003 Application 13/553,617 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. 8 Appeal2017-007003 Application 13/553,617 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 9 Appeal2017-007003 Application 13/553,617 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 10 Appeal2017-007003 Application 13/553,617 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. 11 Appeal2017-007003 Application 13/553,617 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 12 Appeal2017-007003 Application 13/553,617 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 13 Appeal2017-007003 Application 13/553,617 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 14 Appeal2017-007003 Application 13/553,617 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. 15 Appeal2017-007003 Application 13/553,617 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 16 Appeal2017-007003 Application 13/553,617 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) 17 Copy with citationCopy as parenthetical citation