Ex Parte Denolf

Board of Patent Appeals and Interferences

Mar 31, 2009

10251688 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KRISTOF DENOLF
____________________

Appeal 2009-0733
Application 10/251,6881
Technology Center 2600
____________________

Decided:2 March 31, 2009
____________________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Interuniversitair Microelektronica Centrum
(IMEC).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0733
Application 10/251,688

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, and 4-12.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellant’s invention relates to MPEG-4 video decoding employing
motion compensation (Spec. 1). In Appellant’s decoding methods, related to
similarity exploiting coding methods, for each of the macroblocks (MBs) of
an image data structure, decoding of the current block, including retrieving
the related reference block, decoding the (error) texture information of the
current block and finally reconstructing the current block, is performed
before another block of the same MB is considered (para. [0026]; Fig. 22).
Claim 1 is exemplary:
1. A method of decoding a video bit stream, wherein the bit stream
comprises a representation of a sequence of image data structures, wherein
each of the image data structures comprises a group of macroblock data
structures, wherein each macroblock data structure comprises a group of
block data structures, wherein the block data structures comprises luminance
or chrominance data structures, the method comprising:
decoding a block data structure before another block data structure is
decoded, wherein the block data structure is a portion of a current
macroblock data structure, and wherein the macroblock data structure is a
portion of a current image data structure.

3Claim 3 has been canceled.
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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Purcell US 5,630,033 May 13, 1997
Lee US 5,761,423 Jun. 2, 1998
Sekiguchi US 6,108,449 Aug. 22, 2000
Wu US 6,418,166 B1 Jul. 9, 2002
Claims 7 and 11 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Claims 1 and 7-9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Purcell.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Purcell in view of Wu.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Purcell in view of Sekiguchi.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Purcell in view of Wu and Sekiguchi.
Claims 6 and 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Purcell in view of Lee.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed March 5, 2007), the Reply Brief (“Reply Br.,” filed
September 11, 2007), and the Examiner’s Answer (“Ans.,” mailed July 11,
2007) for their respective details.

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ISSUE
Appellant argues that Purcell’s teaching that processing functions
operate on chrominance and luminance data separately does not meet the
claim limitation of “‘decoding a block data structure before another block
data structure is decoded’” (Br. 9)(emphasis added). In Appellant’s view,
because the separate processing of Purcell could occur in parallel, it was
error for the Examiner to find that such processing “must be performed one
after another” (Br. 10; see Final Rej. 8). The Examiner asserts that Purcell’s
disclosure of separate processing of 8x8 blocks means that each block must
be processed separately and completely before the next 8x8 block can be
processed (Ans. 6).
The respective contentions of Appellant and the Examiner thus
present us with the following issue:
Has Appellant shown that the Examiner erred in finding that Purcell
teaches decoding a block data structure before another block data structure is
decoded, as recited in each independent claim?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns MPEG-4 video
decoding employing motion compensation (Spec. 1).
2. In Appellant’s decoding methods, related to similarity
exploiting coding methods, for each of the macroblocks (MBs) of an image
data structure, decoding of the current block, including retrieving the related
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reference block, decoding the (error) texture information of the current block
and finally reconstructing the current block, is performed before another
block of the same MB is considered (para. [0026]; Fig. 22B).
Purcell
3. Purcell teaches a structure and method for encoding digitized
video signals under the MPEG standard (col. 2, ll. 59-60).
4. Purcell discloses that “various downstream processing
functions, e.g. DCT, IDCT operations or motion estimation, operate on
chrominance and luminance data separately” (col. 10, ll. 34-37).
5. Purcell does not disclose the details of the video decoding
process (col. 43, ll. 14-16).
Wu
6. Wu teaches a method for performing motion estimation that
improves the coding efficiency by using a measure of the combined motion
and error data to select the motion parameters for a block (e.g., the motion
vector) (col. 3, ll. 37-40).
Sekiguchi
7. Sekiguchi teaches a motion picture decoding system which can
decode a coded bitstream obtained by encoding a motion picture comprised
of a sequence of interlaced images each having its texture data and shape
data (col. 5, ll. 46-51).
Lee
8. Lee teaches a storage architecture for storing pictures in an
optimized manner for use as predictors in motion compensated temporal
video decoding (col. 1, ll. 6-9).

Appeal 2009-0733
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PRINCIPLES OF LAW
“‘A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.’” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
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“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
When a work is available in one form of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "‘Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.’" In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
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ANALYSIS
35 U.S.C. § 112 REJECTION
Claims 7 and 11 stand rejected in the Examiner’s Answer under 35
U.S.C. § 112, second paragraph, for indefiniteness (Ans. 3). The Examiner
correctly notes in the Response to Argument section that Appellant did not
respond to the rejection in the Brief (Ans. 4). Appellant also did not
mention the § 112 rejection in the Reply Brief.
Because Appellant has not demonstrated error in the Examiner’s
rejection,4 we will sustain the rejection of claims 7 and 11 under 35 U.S.C.
§ 112, second paragraph.
35 U.S.C. § 102 REJECTION OF CLAIMS 1 AND 7-9
Independent claims 1 and 8 each require “decoding a block data
structure before another block data structure is decoded.” The Examiner
argues that Purcell teaches this feature. Because Purcell discloses that
“various downstream processing functions, e.g. DCT, IDCT operations or
motion estimation, operate on chrominance and luminance data separately,”
(FF 4; emphasis added), and because Purcell uses block-based transform
coding, the Examiner reasons that Purcell operates such that processing on
an 8x8 chrominance (or luminance) data block must be concluded before

4 See MPEP § 1205.02, Rev. 3, Aug. 2005 (“If a ground of rejection stated
by the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board.”); see also 37 C.F.R.
§ 41.37(c)(1)(vii) (requiring a statement in the briefs as to each ground of
rejection presented by Appellant for review); 37 C.F.R. § 41.37(c)(1)(vii)
(stating that arguments not presented in the briefs by Appellant will be
refused consideration).

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processing commences on another 8x8 luminance (or chrominance) block
(Ans. 6).
The Examiner does not indicate, nor do we find, any disclosure in
Purcell explicitly stating that it processes a luminance (or chrominance) data
block before beginning processing on another chrominance (or luminance)
data block. The Examiner’s position therefore amounts to an argument that
Purcell’s disclosure of separate processing inherently meets the claimed
limitation of sequential processing.
We cannot agree with the Examiner’s position, however. We are
persuaded by Appellant’s argument that the separate processing disclosed by
Purcell does not necessarily mean consecutive processing, and that motion
estimation of chrominance and luminance macroblocks could be performed
in parallel (App. Br. 10). Because we find that Purcell’s separate processing
is not necessarily consecutive, we find that it was error for the Examiner to
(impliedly) argue that Purcell inherently teaches consecutive block
processing.
Further, even if we were to accept arguendo that Purcell’s disclosure
inherently teaches consecutive block processing, the Examiner’s rejection
would still be erroneous. Claims 1 and 8 are directed to a method of
decoding a video bit stream. Purcell’s invention, by contrast, is directed to a
structure and method for encoding digitized video signals (FF 3). Although
Purcell does include cursory disclosure of a variable length decoder (VLD)
110, Purcell does not disclose the details of the video decoding process (FF
5). Each of the sections of Purcell cited by the Examiner at page 5 of the
Examiner’s Answer (i.e., cols. 2-3, 41-42, and 36-37), as well as the section
of column 10 relied upon supra, disclose details of the video encoding
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process, in particular motion estimation, rather than the video decoding
process. Appellant’s argument that motion estimation is not performed in
decoding a video stream (App. Br. 9) is unrebutted by the Examiner.5 The
Examiner asserts that video decoding under Purcell’s regime would simply
“reverse[] the encoding process to reconstruct the image, block by block”
(Ans. 6). In the absence of evidence in Purcell or elsewhere to corroborate
the Examiner’s statement, however, we do not agree that decoding is
necessarily a simple reversal of encoding, and we will not rely upon the
Examiner’s bare assertion as a basis for rejecting the claims.
Because Appellant has shown that the Examiner erred in finding that
Purcell teaches every limitation of claims 1 and 8, we will not sustain the
rejection of claims 1 and 7-9 under 35 U.S.C. § 102.
35 U.S.C. § 103 REJECTION OF CLAIM 4
Claim 4 depends from claim 1, the rejection of which we reverse
supra. We have reviewed Wu, and find that it does not remedy the
deficiencies of Purcell that we have noted. Therefore, we will reverse the
rejection of claim 4 under 35 U.S.C. § 103(a) for the same reasons expressed
supra with respect to independent claim 1.
35 U.S.C. § 103 REJECTION OF CLAIM 2
Claim 2 depends from claim 1, the rejection of which we reverse
supra. We have reviewed Sekiguchi, and find that it does not remedy the
deficiencies of Purcell that we have noted. Therefore, we will reverse the

5 Evidence to support Appellant’s position can be found in Wu. Wu Figure 1
shows a video encoder, and Figure 2 shows a video decoder. The encoder of
Figure 1 includes motion estimation block 34. The decoder of Figure 2,
however, does not perform motion estimation.
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rejection of claim 2 under 35 U.S.C. § 103(a) for the same reasons expressed
supra with respect to independent claim 1.
35 U.S.C. § 103 REJECTION OF CLAIM 5
Claim 5 depends from claim 1, the rejection of which we reverse
supra. We have reviewed Sekiguchi and Wu, and find that they do not
remedy the deficiencies of Purcell that we have noted. Therefore, we will
reverse the rejection of claim 5 under 35 U.S.C. § 103(a) for the same
reasons expressed supra with respect to independent claim 1.
35 U.S.C. § 103 REJECTION OF CLAIMS 6 AND 10-12
Claim 6 depends from claim 1, the rejection of which we reverse
supra. We have reviewed Lee, and find that it does not remedy the
deficiencies of Purcell that we have noted. Therefore, we will reverse the
rejection of claim 6 under 35 U.S.C. § 103(a) for the same reasons expressed
supra with respect to independent claim 1.
Independent claims 10 and 12 each require “a processing unit,
configured to decode a block data structure before another block data
structure is decoded.” As discussed supra with respect to claim 1, we find
that Purcell does not teach this limitation. We have reviewed Lee, and find
that it does not remedy the deficiencies of Purcell that we have noted.
Therefore, because Appellant has shown that the Examiner failed to
establish a prima facie case of the obviousness of claims 10 and 12, we will
not sustain the rejection of claims 10-12 under 35 U.S.C. § 103.

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CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in finding that Purcell
teaches decoding a block data structure before another block data structure is
decoded.
ORDER
The Examiner’s rejection of claims 7 and 11 under 35 U.S.C. § 112 is
affirmed. The Examiner’s rejections of claims 1, 2, and 4-12 under 35
U.S.C. §§ 102 and 103 are reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

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