Ex Parte Comer et al

Board of Patent Appeals and Interferences

Sep 16, 2010

10479537 (B.P.A.I. Sep. 16, 2010)

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.
10/479,537 12/03/2003 Mary Lafuze Comer PU010128 1718
7590 09/16/2010
Joseph S Tripoli
Thomson Multimedia Licensing
P O Box 5312
Princeton, NJ 08543-5312
EXAMINER
HOLDER, ANNER N
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
09/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARY L. COMER and IZZAT H. IZZAT
____________________

Appeal 2009-006782
Application 10/479,5371
Technology Center 2600
____________________

Before MARC S. HOFF, CAROLYN D. THOMAS,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Thomson Licensing S.A.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006782
Application 10/479,537

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (a) from a Final Rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention relates to a video data coder-decoder
(“CODEC”) that employs discrete cosine transform ("DCT") based
manipulation of video data that is organized as macro blocks. Moving
Picture Experts Group’s (MPEG) standard, MPEG-4, for streaming video
includes fine-grain scalability ("FGS") that uses a minimum-bitrate previous
frame for motion compensation. In alignment with this standard, the
encoder chooses between the minimum-bitrate previous frame and a higher-
bitrate previous frame for each macroblock. The encoder tracks the
accumulated prediction drift at each frame. For a given macroblock, if using
the higher-bitrate previous frame for motion compensation results in a
prediction drift energy above a maximum limit, the encoder chooses the
minimum-bitrate previous frame to predict that macroblock. Otherwise, the
encoder chooses the higher-bitrate previous frame to predict the macroblock.
The encoder sets a bit (flag) in the coded macroblock to convey to the
decoder which version of the previous frame was used for the prediction
(Abstract; Spec. 2:23-3:4)
Claim 6 is exemplary:
6. A fine-grain scalable video data apparatus for receiving encoded
video macroblock data wherein each macroblock is capable of being
represented by DCT coefficients representing a minimum bitrate version of
the macroblock data and DCT coefficients representing an intermediate
bitrate version of the macroblock data, the apparatus comprising a decoder
for decoding one of the intermediate and minimum bitrate encode DCT data
for each macroblock received from an encoder to produce reconstructed
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macroblock data responsive to a predicted energy of an accumulated
predicted drift error frame.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Radha US 6,292,512 B1 Sep. 18, 2001
Watanabe US 6,668,071 B1 Dec. 23, 2003
Wu US 2002/0150158A1 Oct. 17, 2002

Shipeng, Experimental Results with Progressive Fine Granularity Scalable
(PFGS) Coding, International Organisation For Standardisation Organisation
Internationalede Normalisation, ISO/IEC JTC1/SC29/WG11, Coding of
Moving Pictures and Audio, March 2000, pp. 14-27

Claims 12-16 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 6, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu in view of Radha.
Claims 1-4, 7-9, 12-14, and 17-19, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wu in view of Radha.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu in view of Radha and Watanabe.
Claims 10, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wu in view of Radha and Li.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed Apr. 3, 2008), the Reply Brief
(filed Aug. 21, 2008), and the Examiner’s Answer (mailed July 15, 2008) for
their respective details.

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ISSUES
Appellants contend that the claims include descriptive material that is
recorded on a computer readable medium (App. Br. 16). Appellants assert
that the Specification discloses that the application program is tangibly
embodied on a program storage unit, wherein the program may be uploaded
to, and executed by, a machine comprising any suitable architecture having a
computer platform that includes hardware such as one or more central
processing units ("CPU"), a random access memory ("RAM"), and
input/output ("I/On) interfaces (App. Br. 17).
Appellants argue further that, although Wu discloses “‘drifting
errors,’” Wu does not even remotely mention "‘predicted energy;’” nor
"‘predicted energy of an accumulated predicted drift error frame,’" as recited
in the claims (App. Br. 22).
Appellants’ contentions present us with the following two dispositive
issues:
1. Whether a claim reciting “program storage device readable by
machine” defines a computer-readable medium or computer-readable
memory that becomes functional descriptive material when software is
tangibly embodied upon it and, thereby, represents statutory subject matter?
2. Do the references disclose producing “a reconstructed macroblock
data responsive to a predicted energy of an accumulated predicted drift error
frame”?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. An adaptive motion compensation method may be implemented
as software tangibly embodied on a program storage unit. The software
application may be uploaded and executed by a machine which is
implemented on a computer platform having a CPU, RAM, I/O interfaces,
an operating system, and microinstruction code (Spec. 7:25-35).
2. "Accumulated predicted drift error frame energy" as a measure
of accumulated error of prediction between an encoder and decoder in a
frame due to a mismatch between the reference picture used in the encoder
and decoder for FGS enhancement layer coding (Spec. 1:22-26; 6:13-17; and
6:28-7:12).
Wu
3. Wu discloses a motion-compensated video encoding scheme
that employs progressive fine-granularity layered coding to encode
macroblocks of video data into frames having multiple layers including a
base layer and enhancement layers. Drifting errors are estimated during the
encoding and chooses a coding mode for each macroblock in the
enhancement layer to maximize high coding efficiency while minimizing
drifting errors (Abstract).

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PRINCIPLES OF LAW
Patentability
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits
“within one or more of the statutory categories, it may not be patent
eligible.” In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W.
3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964); see also Gottschalk v.
Benson, 409 U.S. 63, 70 (1972).
“[A] machine is a ‘concrete thing, consisting of parts, or of certain
devices and combination of devices.’ This ‘includes every mechanical
device or combination of mechanical powers and devices to perform some
function and produce a certain effect or result.’” Ferguson, 558 F.3d at
1364 (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g
denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct.
70 (2008)).
Obviousness
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.

ANALYSIS
§ 101 Rejection of Claims 12-16
We select claim 12 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 12 recites “[a] program storage device readable
by machine, tangibly embodying a program of instructions executable by the
machine to perform steps for performing fine-grain scalable video data
operations.”
We consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, we do not agree with the Examiner’s finding
that the claim does not define a computer-readable medium or computer-
readable memory and is thus non-statutory for that reason (Ans. 3).
The issue thus turns on whether the Examiner properly determined
that “[a] program storage device readable by machine” as it is recited in
claim 12 is not the same as including “recorded on a computer-readable
medium” in the preamble of the claim.
Computer programs and data structures are deemed “functional
descriptive material,” which impart functionality when employed as a
computer component. When functional descriptive material is recorded on
some computer-readable medium, it becomes structurally and functionally
interrelated to the medium and will be statutory in most cases since use of
technology permits the function of the descriptive material to be realized.
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Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (claim to data
structure stored on a computer readable medium that increases computer
efficiency held statutory) with In re Warmerdam, 33 F.3d 1354, 1361-62
(Fed. Cir. 1994) (claim to computer having a specific data structure stored in
memory held statutory product-by-process claim but claim to a data
structure that referred to ideas reflected in nonstatutory process rather than
referring to a physical arrangement of the contents of a memory held
nonstatutory).
The Specification discloses that a software application may be
tangibly embodied on a program storage unit and that the application may be
uploaded and executed by a machine (FF 1). The Specification provides that
the machine is implemented on a computer platform having a CPU, RAM,
I/O interfaces, an operating system, and microinstruction code (FF 1).
Hence, we find that the “program storage device readable by machine” as
disclosed in the Specification is equivalent to a computer-readable medium.
We, therefore, find that the Examiner has not met the burden of proof
to prove that claim 12 is directed to nonstatutory subject matter, since the
claim and Specification disclose the computer program recorded on a
computer-readable medium (FF 1). Thus, we reverse the Examiner’s
rejection of claims 12-16 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.

103 Rejection of Claims 1-4, 6-9, 11-14, 16-19, and 21
Independent claims 1, 7, 12, and 17 recite predicting “whether a
decoded version of the intermediate bitrate macroblock data has an
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accumulated predicted drift error frame energy exceeding a maximum
threshold.”
Independent claim 6 recites producing “reconstructed macroblock
data responsive to a predicted energy of an accumulated predicted drift error
frame.” Independent claims 11 and 16 recite a similar claim limitation.
We consider Appellants’ arguments summarized supra to be
persuasive to show Examiner error. Specifically, we do not agree with the
Examiner’s finding that “[e]nergy is the computation of prediction error,
which Wu teaches in the use of layers where such computation takes place”
(Ans. 15). The Specification discloses that "accumulated predicted drift
error frame energy" is a measure of accumulated error of prediction between
an encoder and decoder in a frame due to a mismatch between the reference
picture used in the encoder and decoder for FGS enhancement layer coding
(FF 2). Wu discloses a video encoding scheme that estimates drifting errors
during the encoding and chooses a coding mode for each macroblock in the
enhancement layer to maximize high coding efficiency while minimizing
drifting errors (FF 3). Although Wu discloses minimizing drifting errors,
Wu and Radha are silent as to producing “reconstructed macroblock data
responsive to a predicted energy of an accumulated predicted drift error
frame” (emphasis added). Further, Wu and Radha are silent as to predicting
“whether a decoded version of the intermediate bitrate macroblock data has
an accumulated predicted drift error frame energy exceeding a maximum
threshold” (emphasis added).
Therefore, we find that the Examiner has not established the prima
facie obviousness of the claims, because the combination of Wu and Radha
does not disclose a decoder that produces “reconstructed macroblock data
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responsive to a predicted energy of an accumulated predicted drift error
frame.” As a result, we will not sustain the Examiner’s § 103 rejection of
independent claims 1, 6, 7, 11, 12, 16, and 17, nor that of dependent claims
2-4, 8-9, 13-14, 18-19, and 21.

103 Rejection of Claims 5, 10, 15, and 20
As noted supra, we reversed the rejection of claim 1, 7, 12, and 17
from which claims 5, 10, 15, and 20 respectively depend.
If an independent claim is nonobvious under 35 U.S.C. 103, then any
claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988).
We therefore reverse the Examiner’s rejections of claims 5, 10, 15,
and 20 under 35 U.S.C. § 103, for the same reasons expressed with respect
to the § 103 rejection of parent claims 1, 7, 12, and 17, supra.

CONCLUSION
A claim reciting “program storage device readable by machine”
defines a computer-readable medium which becomes functional descriptive
material when software is tangibly embodied upon and, therefore, is directed
to statutory subject matter.
The references do not disclose producing “a reconstructed macroblock
data responsive to a predicted energy of an accumulated predicted drift error
frame.”

Appeal 2009-006782
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11
ORDER
The Examiner’s rejection of claims 1-21 is reversed.

REVERSED

KIS

Joseph S Tripoli
Thomson Multimedia Licensing
P. O. Box 5312
Princeton, NJ 08543-5312