Ex Parte Gordon et alDownload PDFPatent Trial and Appeal BoardApr 30, 201410871640 (P.T.A.B. Apr. 30, 2014) Copy Citation 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. 10/871,640 06/17/2004 Stephen Gordon 14528.00089 1570 16378 7590 05/01/2014 BGL/Broadcom P.O. Box 10395 Chicago, IL 60610 EXAMINER LEE, Y YOUNG ART UNIT PAPER NUMBER 2485 MAIL DATE DELIVERY MODE 05/01/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEPHEN GORDON and REINHARD SCHUMANN ____________________ Appeal 2012-000665 Application 10/871,640 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000665 Application 10/871,640 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8, 23, 25, 27, and 29-33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to systems and methods for encoding and decoding video data in parallel (Spec. p. 3 [¶0008]). Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A decoder system for decoding encoded video data, said decoder system comprising: a host processor for receiving a spatially encoded frame wherein certain portions of the spatially encoded frame are data dependent on other portions of the spatially encoded frame and finding a first portion of the encoded frame and a second portion of the encoded frame, wherein the first portion of the encoded frame and the second portion of the encoded frame are data independent from each other; a first decoder engine for receiving an indicator of the first portion of the spatially encoded frame that is independent from the second portion of the spatially encoded frame from the host processor and decoding the first portion of the spatially encoded frame; and a second decoder engine for receiving an indicator of the second portion of the spatially encoded frame that is independent from the first portion of the spatially encoded frame from the host processor and decoding the second portion of the spatially encoded frame, while the first decoder engine decodes the first portion of the spatially encoded frame. (Contested limitations emphasized). Appeal 2012-000665 Application 10/871,640 3 REJECTION The following rejection is before us for review: Claims 1-8, 23, 25, 27, and 29-33 stand rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of Murdock et al. (US 2003/0138045 A1, pub. July 24, 2003 (hereinafter “Murdock”)) and Takano (US 6,212,231 B1, iss. Apr. 3, 2001). (Ans. 4). GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal of the obviousness rejection of claims 1-8, 29-31, and 33 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 We address the § 103 rejection of independent claim 23 and its dependent claims 25, 27 and 32 separately, infra. ANALYSIS Claim construction As an initial matter of claim construction, we observe independent claims 1 and 29 recite statements of intended use of the claimed apparatus. (e.g., at claim 1, “a host processor for [performing intended functions, e.g., the contested “finding” function]). We conclude this contested limitation does not further limit the structure of the claimed apparatus.2 Therefore, a 1 Appellants filed a Notice of Appeal on February 9, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an Ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) § 1220(I) Rev. 8, July 2010. 2 Regarding all apparatus claims on appeal: See Superior Indus, Inc. v. Masaba, Inc., 2014 WL 163046 at *5 (Fed. Cir. 2014) (Rader, J., concurring) (stating “[A] system claim generally covers what the system is, Appeal 2012-000665 Application 10/871,640 4 question arises as to the amount of patentable weight, if any, that should be accorded to the functional intended-use limitations of apparatus claims 1 and 29. We further note the scope of apparatus claim 1 is not limited by the “wherein” clause, (“wherein the first portion of the encoded frame and the second portion of the encoded frame are data independent from each other” (emphasis added)), that does not limit the claim to a particular structure. 3, 4 not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)”). “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim's preamble . . .” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. 3 Our reviewing court guides that the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). 4 See MPEP § 2111.04 regarding “wherein” clauses: Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. Appeal 2012-000665 Application 10/871,640 5 Therefore, a question arises as to how much patentable weight, if any, should be given to the contested “wherein” clause limitation of claim 1 regarding the contested “data independent” limitation. Moreover, to the extent the first and second decoder engines may be implemented entirely in software, the first and second decoder engines are not positively recited as being invoked and executed on any machine or computer platform. (Claims 1 and 29). Even if we assume arguendo the contested functional limitations recited in system (apparatus) claims 1 and 29 may be accorded patentable weight by our reviewing court, we find the preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for the reasons discussed infra. Combinability under § 103 Rejection – representative claim 1 over Murdock and Takano Issue: Did the Examiner err in combining the Murdock and Takano references? The Supreme Court guides that the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner (MPEP § 2111.04 Eighth Edition, Rev. 9, Aug. 2012). Appeal 2012-000665 Application 10/871,640 6 must show some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR, 550 U.S. at 418 (citing Kahn, 441 F.3d at 988). Appellants contend, “…the Examiner appears to propose this combination based solely on improper hindsight.” (App. Br. 8). Regarding Appellants’ hindsight argument, we are cognizant that our reviewing courts have not established a bright-line test for hindsight. The U.S. Supreme Court guides that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court also qualified the issue of hindsight by stating “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” (Id.). Here, we see the hindsight question before us as a balancing test, i.e., whether the Examiner’s proffered combination of references is merely: (1) “the predictable use of prior art elements according to their established functions” (KSR, 550 U.S. at 417), consistent with common sense; or, (2) would an artisan reasonably have combined the cited references in the manner proffered by the Examiner but for having the benefit of the claim to use as a guide? After reviewing the respective teachings and suggestions of the cited references, we find the evidence more strongly supports the first prong of the balancing test. We find the Examiner provided sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness: Appeal 2012-000665 Application 10/871,640 7 Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, having both the references of Murdock et al and Takano before him/her, to exploit the well known macroblock format as taught by Takano in the slice decoder system of Murdock et al in order to have a high efficiency of data transfer. (Ans. 6). We further agree with the Examiner’s finding: “col. 2, lines 56-57 of Takano explicitly states that the first goal of the invention is to arrange macroblocks in a plurality of parallel accessible banks in order to achieve a high efficiency of data transfer.” (Ans. 7). Moreover, Appellants have not demonstrated that the Examiner’s proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Syst., Inc. v. Tetra Pak Cheese and Powder Sys., Nos. 2012-1463 -1501, slip op. at 18 (Fed. Cir. Aug. 6, 2013). For these reasons, we are not persuaded the Examiner erred in combining the Murdock and Takano references. Limitations under § 103 Rejection – representative claim 1 over Murdock and Takano Issue 1: Did the Examiner err in finding the combination of references would have taught or suggested the contested limitation, “a host processor for … finding a first portion of the encoded frame and a second portion of the encoded frame” (emphasis added), within the meaning of claim 1? Appeal 2012-000665 Application 10/871,640 8 Appellants contend: Hence, the Examiner contends that the host processor 105 of Murdock finds the first and second portions of the encoded stream in the manner required by claim 1. Appellant disagrees. The Examiner fails to cite to any text from Murdock or to otherwise explain how or where Murdock discloses this claim limitation. Accordingly, the Examiner has failed to meet his burden of showing that the cited references disclose all of the limitations of claim 1. (Reply Br. 10). The Examiner points to paragraph [0053] of Murdock (see Ans. 4), and Figures 2, 5, and paragraphs [0051]-[0054] (see Ans. 7) as teaching or suggesting the contested limitations. We find Appellants have failed to traverse the specific factual findings made by the Examiner. Arguments not made are considered waived.5 We further note that Appellants’ statements (see App. Br. 9 and Reply Br. 10) which merely point out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Moreover, Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).6 5 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection . . . [T]he Board may treat any argument with respect to that ground of rejection as waived.”). 6 “Argument in the brief does not take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted Rule 41.37 to Appeal 2012-000665 Application 10/871,640 9 While failing to rebut the Examiner’s findings, Appellants point to Murdock at paragraphs [0075-0077] and assert: Nothing in this passage or elsewhere in Murdock indicates, however, that the host processor 105 finds a first portion of the encoded frame and a second portion of the encoded frame. Instead, each decoder 110 receives the entire coded stream of video frames and independently determines whether or not it is supposed to decode a particular slice (e.g. Fig. 5) of the stream. (App. Br. 11, emphasis added) Thus, Appellants contend Murdock’s host processor 105, which corresponds to the claimed “host processor,” does not perform the functional limitation “for… finding a first portion of the encoded frame and a second portion of the encoded frame” since each decoder in Murdock determines whether or not to decode a first and second portion of an encoded frame. (Claim 1). First, we observe that claim 1 does not preclude the claimed decoder from determining whether or not to decode a first and second portion of an encoded frame. Instead claim 1 broadly recites a host processor “for receiving [and] … finding a first portion of the encoded frame and a second portion of the encoded frame”. (emphasis added). We further disagree with Appellants’ contention that Murdock’s host processor 105 does not perform the claimed “for…finding” function. To the contrary, we find Murdock’s decoders rely on host processor 105 to determine (i.e., find) which portion of a frame to decode. See ¶ [0052] of Murdock ,“An encoded stream of video data is received via a common host require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appeal 2012-000665 Application 10/871,640 10 interface 105…”) and particularly ¶ [0053]: “…the common host interface 105 is used to program a unique decoder id into each decoder in the configuration. It can also be used to specify to each decoder the total number of decoders in the system. This information is used (in one embodiment) by each decoder to determine its respective portion of a frame to be decoded.” (emphasis added)). Given that Murdock’s host interface receives the encoded stream of video data and programs each decoder with information that is used by each decoder to determine its respective portion of a frame to be decoded, we find that Murdock’s host processor determines (i.e., finds) each decoder’s respective portion of a frame to be decoded. Therefore, given this evidence, we are not persuaded the Examiner erred in finding that Murdock, when combined with Takano, would have taught or suggested a host processor “for… finding a first portion of the encoded frame and a second portion of the encoded frame”. Issue 2: Did the Examiner err in finding the combination of references would have taught or suggested the contested limitation, “wherein the first portion of the encoded frame and the second portion of the encoded frame are data independent from each other ” (emphasis added), within the meaning of claim 1? Appellants contend: In addition, claim 1 is patentable because the proposed combination of Murdock and Takano fails to disclose or suggest that “the first portion of the encoded frame and the second portion of the encoded frame are data independent from each other,” as required by claim 1. In this regard, the Examiner merely states “(e.g., different slices)” in contending that Murdock discloses this limitation. The Examiner fails to cite to Appeal 2012-000665 Application 10/871,640 11 any text from Murdock or to otherwise explain how or where Murdock discloses this claim limitation. (Reply Br. 13). The Examiner finds: Since each slice is decoded independently and in parallel, without delaying or duplicated decoding of one slice from another slice, one of ordinary skill in the art would have had no difficulty in recognizing that a first slice and a second slice of the frame are data independent from each other. (Ans. 8). Turning to the supporting portions of Appellants’ Specification, for context regarding the contested “data independent” limitation, we observe non-limiting language that describes macroblocks as being data dependent (i.e., cannot be decoded in parallel) and macroblocks that are data independent (i.e., can be decoded in parallel). See Spec. 14, ¶¶ [0053-0054]. Thus, we agree with the Examiner’s finding (Ans. 8) that the contested claim limitation “wherein the first portion of the encoded frame and the second portion of the encoded frame are data independent from each other ” reads on Murdock’s macroblock slices that are decoded in parallel (See Murdock, ¶11, ¶52 and fig. 5). Given the non-limiting exemplary supporting embodiments in Appellants’ Specification (e.g., ¶¶ [0053-0054]), we are not persuaded the Examiner’s claim interpretation of the contested “data independent” limitation is overly broad, unreasonable, or inconsistent with Appellants’ Specification. For these reasons, we find the preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness. To the extent claims 3 and 4 are discussed separately by Appellants (App. Br. 13-15), Appellants argue reasons such as improper hindsight, that Appeal 2012-000665 Application 10/871,640 12 we have previously addressed with respect to claim 1. We particularly note Appellants fail to rebut the Examiner’s specific findings (Ans. 6 and 8-9). A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Furthermore, regarding Appellants’ repeated assertions that “Appellant reserves the right to argue additional reasons beyond those set forth above to support the allowance…” (e.g., App. Br. 16-17), arguments not made are considered waived. See n.5 supra. Therefore, for essentially the same arguments articulated by the Examiner in the Answer (7-10), as discussed above, we sustain the Examiner’s § 103 rejection of independent claims 1 and 29. Claims 2-8, 30, 31, and 33 (not substantively argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). See supra note 1. Rejection – independent claim 23 over Murdock and Takano Issue: Did the Examiner err in finding the combination of references would have taught or suggested the contested limitation, “simultaneously spatially encoding a first macroblock of a frame in a first column and a second macroblock of a frame in a second column that is at least two columns away from the first column” (emphasis added), within the meaning of claim 23? The Examiner finds the contested limitations are taught in Takano at Figure 1, video encoder 11 and Figure 2, macroblock subblock N+1 and subblock N+4. (Ans. 9). Appeal 2012-000665 Application 10/871,640 13 Appellants contend: In this regard, Appellant notes that both of the references relate to decoding data, not encoding data. Nothing in either reference discloses or suggests simultaneously spatially encoding first and second macroblocks of a frame, let alone doing so where the second macroblock is at least two columns away from the first macroblock. (App. Br. 17, emphasis added). Again, the Examiner fails to cite to any disclosure from the references to support this rejection. Accordingly, the Examiner has failed to meet his burden of showing that claim 23 is obvious over Murdock and Takano. (App. Br. 18). We disagree with Appellants’ contentions. Appellants (App. Br. 17- 18, see also Reply Br. 21-24) fail to rebut the Examiner’s specific findings (Ans. 9) pointing to Takano’s encoder 11 and the macroblocks (subblock N+1 and subblock N+4) depicted in Figure 2, as being two columns away from one another. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Furthermore, we are not persuaded by Appellants’ argument (App. Br. 18) that the Examiner’s rejection of claim 23 is based on improper hindsight, as per our discussion above. Therefore, we sustain the Examiner’s § 103 rejection of independent claim 23. Claims 25, 27, and 32 (not substantively argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). See n.1 supra. Appeal 2012-000665 Application 10/871,640 14 Reply Brief To the extent Appellants advance new arguments in the Reply Brief not in response to a shift in the Examiner’s position in the Answer, we note “[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief … is waived.”) (citations and quotation marks omitted). DECISION We affirm the Examiner’s decision rejecting claims 1-8, 23, 25, 27, and 29-33 under § 103. 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). See 37 C.F.R. § 41.50(f). AFFIRMED mls Copy with citationCopy as parenthetical citation