Ex Parte Dane et al

Patent Trial and Appeal Board

Feb 18, 2016

12311668 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/311,668 04/08/2009
24498 7590 02/22/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Gokce Dane
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.
PU060204 4975
EXAMINER
TORRENTE, RICHARDT
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GOKCE DANE, XIAOAN LU, and
CRISTINA GOMILA
Appeal2014-003327
Application 12/311,668 1
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-3, 5, 6, 8, 11-14, 16, 17, 19, 22, and 26-35.
Appellants have previously canceled claims 4, 7, 9, 10, 15, 18, 20, 21,
and 23-25. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Thomson Licensing.
App. Br. 3.
Appeal2014-003327
Application 12/311,668
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates "generally to
video encoding and, more particularly, to methods and apparatus for
efficient first-pass encoding in a multipass encoder." Spec. 1:10-12
("Technical Field").
Exemplary Claims
Claims 1, 26, and 27, reproduced below, are representative of the
subject matter on appeal (emphases, labeling, and formatting added to
contested limitations):
1. An apparatus, comprising:
a multi-pass video encoder for performing a first-pass
encoding of input image data for at least one picture by sub-
sampling at least a portion of the input image data prior to the
first-pass encoding,
wherein the sub-sampling is at least one of spatial sub-
sampling and temporal subsampling,
[L 1] wherein said multi-pass video encoder performs a
sub-sampling analysis of information from the first-pass
encoding prior to a complexity analysis of the information,
[L2] the information for use in a subsequent-pass
encoding and being analyzed in the sub-sampling analysis and
the complexity analysis independent of the first-pass encoding
and the subsequent encoding.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 1, 2013); Reply Brief ("Reply Br.," filed Jan. 20, 2014); Examiner's
Answer ("Ans.," mailed Nov. 18, 2013); Non-Final Office Action ("Non-
Final Act.," mailed July 26, 2013); and the original Specification ("Spec.,"
filed Apr. 8, 2009).
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26. The apparatus of claim 1, the sub-sampling
analysis and the complexity analysis are performed
intermediately with respect to the first-pass encoding and the
subsequent encoding.
27. The apparatus of claim 1, wherein weighting
coefficients for various sub-sampling parameters analyzed by
the sub-sampling analysis are determined by performing off-
line simulations using training data comprising various set of
pictures lengths and various sets of pictures structures.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Wu et al. ("Wu") US 2003/0235247 Al Dec. 25, 2003
Rejection on Appeal
Claims 1-3, 5, 6, 8, 11-14, 16, 17, 19, 22, and 26-35 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Wu. Ans. 2.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 6-16), we decide the
appealoftheanticipationrejectionofclaims 1-3, 5, 6, 8, 11-14, 16, 17, 19,
22, 30, and 35 on the basis of representative claim 1; and we decide the
appeal of the anticipation rejection of claims 26 and 31 on the basis of
representative claim 26.
We separately address the appeal of the anticipation rejection of
claims 27-29 and 32-34, infra.
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and any
such arguments are deemed waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with Appellants' arguments with respect to claims 27-29
and 32-34.
However, we disagree with Appellants' arguments with respect to
claims 1-3, 5, 6, 8, 11-14, 16, 17, 19, 22, 26, 30, 31, and 35, and we
incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments with respect to these claims. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
We highlight and address specific findings and arguments regarding
claims 1, 26, and 27 for emphases as follows.
1. Claims 1-3, 5, 6, 8, 11-14, 16, 17, 19, 22, 30, and 35
Issue 1
Appellants argue (App. Br. 8-13; Reply Br. 6-17) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Wu is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses an
apparatus that includes a multi-pass video encoder that carries out the
functions and intended uses recited in limitations [L 1] and [L2] of claim 1?
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Analysis
Limitation [LI]
Appellants generally contend the cited prior art does not disclose all
the limitations of claim 1. App. Br. 8. Specifically, Appellants argue "in
contrast to 'performing a sub-sampling analysis of information from the
first[ -]pass encoding prior to a complexity analysis of the information' as
recited ... Wu simply discloses horizontal decimation 13. However,
horizontal decimation or sub-sampling in and of themselves is not the same
as a subsampling analysis." App. Br. 10. In addition, Appellants contend
"Wu discloses horizontal decimation 13 prior to the first pass encoding 14."
Id.
Finally, Appellants argue "not only does Wu fail to teach or suggest
the above underlined limitations of [the] Claims ... Wu actually teaches
away from the same. While a teaching away argument is not germane to a
rejection under 35 U.S.C. 102, it does show just how far off the cited
reference Wu is from the actual limitations recited in [the] Claims." App.
Br. 11.
First, as a matter of law, we agree, "[t]eaching away is irrelevant to
anticipation." Seachange Int'!., Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380
(Fed. Cir. 2005).
With respect to Appellants' contention concerning decimation not
being the same as a subsampling analysis, the Examiner finds:
It appears Appellant is associating Wu decimation 13 as
performing a sub-sampled analysis of information. The
Examiner associated the limitations "peiforming a sub-
sampling analysis of information" as initial complexity
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calculation 14 in fig. 1. Thus, Wu discloses wherein said multi-
pass video encoder performs a sub-sampling analysis of
information (see 14 in fig. 1) from the first[ -]pass encoding
prior to a complexity analysis (see 24 in fig. 1) of the
information.
Ans. 5 (emphasis added).
Moreover, with respect to Appellants' argument that Wu does not
disclose "performing a sub-sampling analysis of information from the first-
pass encoding prior to a complexity analysis of the information" (App.
Br. 10, emphasis added), the Examiner finds Appellants' argument is
incorrect because it "is based on the [mistaken] premise that Wu
decimation 13 [is relied upon as disclosing performing] a sub-sampled
analysis of information," contrary to the Examiner's actual findings, which
instead relies upon the initial complexity calculation carried out in "FIRST
PASS ENCODING AN INTIAL COMPLEXITY CALCULATION"
(element 14 ), to carry out the sub-sampled analysis of information. Ans. 5-
6; Fig. 1, element 14. Thus, we see no error in the Examiner's findings
concerning limitation [L 1].
Limitation [L2]
Appellants argue the recitation in claim 1 of "the information for use
in a subsequent-pass encoding and being analyzed in the sub-sampling
analysis and the complexity analysis independent of the first-pass encoding
and the subsequent encoding," is not disclosed by Wu paragraph 44 or
Figure 1, and also points to Figure 4 as providing support for this limitation.
App. Br. 12. Wu allegedly does not disclose limitation [L2] because the
reference instead "discloses an intertwined and dependent complexity
analysis with respect to the first pass encoding, hence teaching away from
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Application 12/311,668
the complexity analysis independent of the first-pass encoding recited in
Claim[] 1." Id.
Appellants additionally argue Wu discloses encoding complexity is
determined by the second pass encoder, "thus directly teaching away from
the []limitations of Claim[] 1." App. Br. 13.
The Examiner responds by finding:
[D]rawing fig. 4 reflects claim 1 limitations. Fig. 4 clearly
shows that the sub-sampling analyzer 415 and complexity
analyzer 420 are intertwined and dependent on the first pass
encoder 410 input. Note that the application specification does
not mention the word "independent" anywhere. Therefore, the
Examiner is forced to interpret the word "independent" as
shown in Fig. 4. That is, the word "independent" is interpreted
as, although the units relies on each other's input or output or
are intertwined, they are independent of each other because
their function differs.
Ans. 7. Lacking citation to an explicit definition of "independent" by
Appellants, we find no error in the Examiner's broad but reasonable
interpretation and related finding that Wu discloses limitation [L2].
Additional Claim Construction Considerations
As a matter of claim construction, and in further support of the
Examiner's finding of anticipation of claim 1, we note Appellants' apparatus
claim 1 only recites a single element, i.e., a "multi-pass video encoder" for
carrying out various functions and data manipulations on " input image
data."
While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. In re Schreiber, 128 F.3d
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1473, 1477-78 (Fed. Cir. 1997) (The absence of a disclosure in a prior art
reference relating to function did not defeat the Board's finding of
anticipation of claimed apparatus because the limitations at issue were found
to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d
210, 212-13 (CCPA 1971); In re Danly, 263 F.2d 844, 847 (CCPA 1959).
" [A ]pparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) (emphasis in original).
As additional matter of claim construction, we note the "input image
data" recited in claim 1, along with the recited "information from the first-
pass encoding" represent data that is not recited as imparting functionality to
a machine or computer within the broad scope of claim 1. Therefore, we
conclude apparatus claim 1 merely receives data (i.e., "input image data")
that is merely descriptive, and is not actually used to perform any function,
within the scope of claim 1.
We need not give patentable weight to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); see also Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005) (informative)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."),
ajfd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BP AI 2005) (informative) ("Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
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been obvious."), aj]'d, No. 06-1003 (Fed. Cir. 2006) (Rule 36). Thus, non-
functional descriptive material does not confer patentability to inventions
that are otherwise either anticipated or obvious over the prior art.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of dependent claim 1, and grouped
claims 2, 3, 5, 6, 8, 11-14, 16, 17, 19, 22, 30, and 35 which fall therewith.
See Claim Grouping, supra.
2. Claims 26 and 31
Issue 2
Appellants argue (App. Br. 13-15; Reply Br. 18-20) the Examiner's
rejection of claim 26 under 35 U.S.C. § 102(b) as being anticipated by Wu is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
apparatus of claim 1, wherein "the sub-sampling analysis and the complexity
analysis are performed intermediately with respect to the first-pass encoding
and the subsequent encoding," as recited in claim 26?
Analysis
Appellants contend:
[Because] the first pass encoding and initial complexity
calculation sub-element 14 [in Wu] is shown and described as a
single entity, the complexity calculation CANNOT be
intermediary to the first pass encoding, in direct contrast to the
explicit limitations recited in Claims 26 and 31. Rather, the
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arrangement of Wu teaches away from these limitations of
Claims 26 and 31.
Thus, not only does Wu fail to teach or suggest the above
underlined limitations of Claims 26 and 31, Wu actually
teaches away from the same.
App. Br. 14. As noted above, we do not find Appellants' "teach away"
argument to be persuasive. See Seachange, 413 F.3d at 1380.
In addition, responsive to Appellants' arguments, the Examiner finds,
and we agree, Wu paragraph 14 "clearly shows call-out 14 comprises two
separate functional entit[ies]," that is, the sub-sampling analysis and
complexity analysis are separate functions, and we find these are
"intermediate" to the first-pass encoding and the subsequent encoding.
Ans. 7 (citing to Examiner's rebuttal in connection with limitation [LI],
supra.); and see Wu Fig. 1 (containing element 14 intermediate to "first pass
encoder" 12 and "second pass encoder" 20).
l\.1oreover, as a matter of claim constrttction, \'X/e conclude the
additional contested limitation of claim 26, depending from apparatus
claim 1, is purely functional in its recitation, and does not further limit the
structure of the apparatus of claim 1. 3 See "Additional Claim Construction
Considerations," supra.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art to disclose the disputed limitations of
claim 26, nor do we find error in the Examiner's resulting finding of
3 Claim 26 recites "the sub-sampling analysis and the complexity analysis
are performed intermediately with respect to the first-pass encoding and the
subsequent encoding."
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Application 12/311,668
anticipation. Therefore, we sustain the Examiner's anticipation rejection of
dependent claim 26, and grouped claim 31 which falls therewith. See Claim
Grouping, supra.
3. Rejection of Claims 27-29 and 32-34
Issue 3
Appellants argue (App. Br. 15-16; Reply Br. 21-23) the Examiner's
rejection of claim 27 under 35 U.S.C. § 102(b) as being anticipated by Wu is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
apparatus of claim 1, "wherein weighting coefficients for various sub-
sampling parameters analyzed by the sub-sampling analysis are determined
by performing off-line simulations using training data comprising various set
of pictures lengths and various sets of pictures structures," as recited in
claim 27?
Analysis
Appellants contend the cited prior art does not disclose the contested
limitation of claim 27, i.e., "wherein weighting coefficients for various sub-
sampling parameters analyzed by the sub-sampling analysis are determined
by performing off-line simulations using training data comprising various set
of pictures lengths and various sets of pictures structures." App. Br. 15-16.
While the Examiner responds to most of Appellants' arguments and
claim limitations (Ans. 7-9), we find the Examiner does not address the
"weighting coefficients ... determined by ... using training data" portion of
the contested limitation in claim 27.
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Lacking any specific mapping of this limitation to the cited prior art,
we decline to engage in speculation as to how or where Wu discloses this
limitation. 4
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art to disclose the disputed limitation of claim 27. Therefore, we cannot
sustain the Examiner's anticipation rejection of dependent claim 27, and
claim 32, which recites the contested limitation in commensurate form. In
addition, we reverse the rejection of claims 28, 29, 33, and 34, which
variously depend from claims 27 and 32.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 5-23) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
4 In the event of further prosecution, we leave it to the Examiner to
determine whether a rejection under 35 U.S.C. § 103(a) would be
appropriate with respect to claim 27. While the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
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CONCLUSION
The Examiner did not err with respect to the anticipation rejection of
claims 1-3, 5, 6, 8, 11-14, 16, 17, 19, 22, 26, 30, 31, and 35 under 35 U.S.C.
§ 102(b) over the cited prior art of record, and we sustain the rejection.
The Examiner erred with respect to the anticipation rejection of
claims 27-29 and 32-34 under 35 U.S.C. § 102(b) over the cited prior art of
record, and we do not sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5, 6, 8,
11-14, 16, 17, 19, 22, and 26, 30, 31, and 35.
We reverse the Examiner's decision rejecting claims 27-29
and 32-34.
AFFIRMED-IN-PART
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