Ex Parte Hurst

Board of Patent Appeals and Interferences

Jul 1, 2004

09001199 (B.P.A.I. Jul. 1, 2004)

The opinion in support of the decision being entered today
was not written for publication in a law journal and
is not binding precedent of the Board.

Paper No. 37

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT N. HURST JR.
_____________

Appeal No. 2003-1419
Application No. 09/001,199
______________

ON BRIEF
_______________

Before HAIRSTON, GROSS, and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the

examiner’s rejection of claims 1-28.

The Invention
The invention relates to a method to reduce the information to be
processed by a video decoder. The method includes the steps of identifying
macroblocks in the video signal and discarding those macroblocks that are not

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within a predetermined region. The predetermined region corresponds to either
the safe picture region or the safe-action region, see page 3 of appellant’s
specification.
Claim 1 is representative of the invention:
1. A method for decoding variable length encoded digital video
data including pictures, to a size less than the full size of the
pictures, each picture including a plurality of macroblocks, the
method comprising the steps of:

parsing the digital video data to identify macroblocks included in
the digital data video data;

discarding from the digital video data those macroblocks not
associated with a picture region substantially corresponding to one of a
safe-title picture region and safe-action picture region; and

storing the digital video data in a decoder input buffer, said digital
video data stored in said decoder buffer including fewer macroblocks per
picture than identified during said step of parsing.

References
Boyce et al. (Boyce) 5,635,985 Jun. 03, 1997
(filed Nov. 14, 1994)

Matthews, III et al. (Matthews) 5,677,708 Oct. 14, 1997
(filed May 05, 1995)

Kim 5,737,019 Apr. 07, 1998
(filed Jan. 29, 1996)

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Rejections at Issue
Claims 1, 3-9 and 13-28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Boyce in view of Matthews. Claims 2 and 10-12 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Boyce in view of
Matthews and Kim.
Opinion

We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s arguments set forth
in the briefs1 along with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and examiner, for the
reasons stated infra, we reverse the examiner’s rejection of claims 1-28 under
35 U.S.C. § 103.

1 This decision is based upon the Appeal Brief received August 21, 2002 and the Reply
Brief received January 13, 2003.

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Appellant argues on page 8 of the brief that the combination of Boyce and
Matthews does not teach or suggest “a method for decoding variable length
encoded digital video data or an apparatus for performing same that includes
discarding from the digital video data only those macroblocks not associated with
the particular picture regions defined by the standard.” Further, on pages 9 and
10 of the brief, the appellant identifies the limitations of claims 1, 6, 15 and 20,
which claim the feature of discarding from the digital video data only those
macroblocks not associated with a picture region.
We concur with the appellant. We find that each of the independent
claims includes a limitation that macroblocks not associated with a picture region
are discarded, and as discussed infra we find that the combination of Boyce and
Matthews does not teach this limitation.
In the statement of the rejection, on page 4 of the answer, the examiner
states that Boyce does not teach discarding macroblocks not associated with a
picture region. We agree.
The examiner argues, on page 7 of the answer, that Boyce teaches
reducing the data in the video image to limit the size of the buffer. Further, the
examiner argues:

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[T]he proposed combination of Boyce and Matthews does
suggest discarding unnecessary macroblocks outside the “safe
title” and “safe region” because Matthews, according [to] the
cited passage, particularly realizes that it is not in the best
interest of the viewer to contemplate an unreliable presentation,
which is the result of macroblocks outside the region described.
In other words, the unreliable presentation as seen in Matthews
is due to the fact that all the data is not present in the displayed
image, that is, the data outside the “safe title” “safe region” as
disclosed by Matthews have been discarded.

Further, on page 9 of the answer, the examiner argues:

Matthews realizes that areas in the outer border of the
display cannot be guaranteed, because these border items usually
create artifacts, eliminating, these items, constituting the border
macroblocks, is therefore strongly suggested by Matthews,
therefore, obvious to one skilled in the art as disclosed in col. 13,
lines 21-35 and col. 14, lines 3-7.

We disagree with the examiner’s rationale. An obviousness analysis
commences with a review and consideration of all the pertinent evidence and
arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and arguments.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “[T]he Board must not
only assure that the requisite findings are made, based on evidence of record,
but must also explain the reasoning by which the findings are deemed to support
the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In addition, our reviewing court stated in In re Lee, 277
F.3d at 1343, 61 USPQ2d at 1433, that when making an obviousness rejection

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based on combination, “there must be some motivation, suggestion or teaching
of the desirability of making the specific combination that was made by
Applicant” (quoting In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998)).
We do not find that Matthews provides suggestion to delete data from
macroblocks in the “safe title” or “safe region” as asserted by the examiner.
Matthews teaches a system for displaying a list of items and that some of the
items extend beyond the borders of the display, (see abstract of Matthews).
Matthews states that since some monitors suffer from vertical and horizontal
drift, the “safe title” and “safe action” regions are used to ensure that objects
intended for display are actually presented (see column 3, lines 1-17). Matthews
also teaches that it is preferred that the list should be displayed in the “safe title”
region. Further, since some items in the list are intentionally only partially
displayed, compensation for the safety zones is not needed, as the full display of
these items is not required (see column 13, lines 57-59 and column 14, lines
3-7). Thus, Matthews teaches that when video content is created, it should be in
the safe regions or else it may not be displayed. However, we do not find that
Matthews suggests that the data in these areas should be deleted. Accordingly,
we will not sustain the examiner’s rejection of claims 1, 3-9 and 13-28 under
35 U.S.C. § 103 as being unpatentable over Boyce in view of Matthews.

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Next, we turn to the rejection of claims 2 and 10-12 under 35 U.S.C. § 103
as being unpatentable over Boyce in view of Matthews and Kim. These claims
are ultimately dependent upon either claim 1 or 6, and as such include the
limitation of discarding from the digital video data only those macroblocks not
associated with a picture region. On page 6 of the answer, the examiner states
that Kim is relied upon to teach “parsing to extract from the digital video data,
one of a macroblock address indicium and slice position indicium.” However, the
examiner has not shown that Kim teaches the limitation of discarding from the
digital video data, only those macroblocks not associated with a picture region.
Accordingly, we will not sustain the rejection of claim 2 and 10-12 under 35
U.S.C § 103, as it contains the same deficiencies as noted in the rejection of
claims 1 and 6 under 35 U.S.C § 103.

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Conclusion
The decision of the examiner rejecting claims 1-28 under 35 U.S.C.

§ 103 is reversed.

REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh

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