Ex Parte COULTER

Patent Trials and Appeals Board

Jan 25, 2019

15131076 - (D) (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/131,076 04/18/2016
47795 7590 01/29/2019
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2620
FIRST NAMED INVENTOR
MICHAEL L. COULTER
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.
ITL.2319ClUS (P34528C) 7399
EXAMINER
DULEY, JANESE
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. COULTER 1
Appeal2018-006575
Application 15/131,07 6
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies the Real Party in Interest as Intel Corp. App. Br. 3.
Appeal2018-006575
Application 15/131,07 6
STATEMENT OF THE CASE
Introduction
Appellant's invention relates generally to "Reformatting Data To
Decrease Bandwidth Between A Video Encoder And A Buffer." Title.
Exemplary Claim
1. A method comprising:
bursting only one macroblock per request from a video encoder
to a buff er whose minimum burst length is greater than 16
bytes.
(Emphasis added regarding contested limitation).
Rejections
RI. Claims 1--4, 8-12, 16, and 17 are rejected under pre-AIA
35 U.S.C. § I03(a), as being obvious over the combined teachings and
suggestions of Thomas et al. (US Pub. No. 2011/0286528 Al, published
Nov. 24, 2011) ("Thomas") and Patel (US 6,957,308 Bl, issued Oct. 18,
2005). Final Act. 4.
R2. Claims 5-7, 13-15, and 18-20 are rejected under pre-AIA
35 U.S.C. § I03(a), as being obvious over the combined teachings and
suggestions of Thomas, Patel, and Masterson et al. (US 8,179,964 B 1, issued
May 15, 2012) ("Masterson"). Final Act. 7.
Issue on Appeal
Did the Examiner err in rejecting independent claims 1, 9, and 16 as
being obvious over the cited combination of references under
35 U.S.C. § I03(a), because the limitation "bursting only one macroblock
2
Appeal2018-006575
Application 15/131,07 6
per request" is not specifically taught or suggested, within the meaning of
representative independent claim 1 ?2 (Emphasis added).
Rejection of Independent Claim 1 under§ 103 (a)
ANALYSIS
Appellant contests the Examiner's findings regarding the limitation
"bursting only one macroblock per request" of claim 1, contending, inter
alia, that although the Examiner relies on Patel for teaching this limitation
"nothing in Patel says that you can burst less than two macroblocks at a
time." App. Br. 8.
The Examiner finds:
Thomas fails to explicitly disclose bursting only one macroblock
per request. However, in the same field of memory access Patel
discloses variable access to match burst size: .. . only one
macro block per request . .. (Patel, Figure 1 and 4, c2, [lines]
3 4-4 3, c8, 119-21, depending on the memory access request, the
bridge 402, of Figure 4 which can contain memory controller
100, will adjust coding for bursting only one macro block size).
Final Act. 4.
Based upon our review of the record, we find the Examiner does not
explain in sufficient detail how the cited prior art combination teaches or
suggests the contested claimed "bursting only one macroblock per request"
limitation. In setting forth the rejection of claim 1, we find the Examiner
paints with a broad brush. Final Act. 4. On this record, we find the
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
3
Appeal2018-006575
Application 15/131,07 6
Examiner's proffered mapping of the disputed claim limitations to the
corresponding specific features found in each of the cited references is
imprecise, and thus would require us to engage in some degree of
speculation. 3
Although the Examiner finds Patel teaches "only one macroblock per
request," we do not see the Examiner's selected sections of Patel as teaching
or suggesting "only one macroblock per request." Id. In fact, Patel is silent
regarding any mention of a "macroblock."
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant's contentions that "[ n ]othing in Patel says that
you can burst less than two macroblocks at a time." App. Br. 8.
Because the Examiner has not fully developed the record to establish
how Patel and Thomas teach or suggest the disputed limitation, we find
speculation would be required to affirm the Examiner on this record. We
decline to engage in speculation. "A rejection ... must rest on a factual
basis .... " In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not ... resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis." Id.
Therefore, we are constrained by the record before us to find the
Examiner erred in concluding that the cited combination of Thomas and
Patel renders obvious Appellant's independent claim 1.
3 See 37 C.F.R. § 1.104(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.") ( emphasis added).
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Appeal2018-006575
Application 15/131,07 6
Accordingly, we reverse the Examiner's§ I03(a) rejection RI of
independent claim 1, and for the same reasons, we also reverse rejection RI
of remaining independent claims 9 and 16, which recite the contested
limitation using similar language of commensurate scope. Because we have
reversed the rejection of all independent claims on appeal, for the same
reasons, we reverse the Examiner's§ I03(a) rejection of all dependent
claims 2--4, 8, 10-12, and 1 7, also rejected under Rejection R 1.
Regarding the remaining dependent claims 5-7, 13-15, and 18-20,
rejected under§ I03(a) Rejection R2, the Examiner has cited one additional
reference, Masterson, in addition to the same two base references cited as
evidence in support of Rejection RI. On this record, we find the Examiner
has not shown how Masterson overcomes the deficiencies of the Thomas
and Patel combination, as discussed above regarding Rejection RI of
independent claims 1, 9, and 16. Therefore, we are constrained on this
record to also reverse§ I03(a) Rejection R2 of remaining dependent claims
5-7, 13-15, and 18-20.
CONCLUSION
The Examiner erred in rejecting claims 1-20 as being obvious over
the cited combinations of references under 35 U.S.C. § I03(a).
DECISION
We reverse the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § I03(a).
REVERSED
5