Ex Parte Jain

Patent Trial and Appeal Board

Aug 4, 2017

14476585 (P.T.A.B. Aug. 4, 2017)

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.
14/476,585 09/03/2014 Sunil K. Jain P35080C 3596
104333 7590 08/08/2017
International IP Law Group, P.L.L.C.
13231 Champion Forest Drive
Suite 410
Houston, TX 77069
EXAMINER
AYNALEM, NATHNAEL B
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
eoffrceaction @ appcoll.com
Intel_Docketing @ iiplg.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 SUNIL K. JAIN
Appeal 2017-004976
Application 14/476,5851
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, 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 Final
Rejection of claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Intel Corp. App. Br. 2.
Appeal 2017-004976
Application 14/476,585
STATEMENT OF THE CASE2
The Invention
Appellant's claimed invention relates to a method and apparatus for
making intelligent use of active space in frame packing format. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis and labeling added to contested limitations):
1. A method, comprising:
providing a video stream having a left active video frame
and a right active video frame separated by an active space;
[LI] providing data in the active space, wherein the data
comprises unique device identification data; and
[L2] inferring a position of the left active video frame
and a position of the right active video frame by detection of
data in the active space.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Lowry et al. ("Lowry") US 2007/0247477 A1 Oct. 25, 2007
Maeda US 2008/0266386 Al Oct. 30, 2008
Choi et al. ("Choi")3 US 2011/0149032 Al June 23, 2011
2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
July 25, 2016); Reply Brief ("Reply Br.," filed Feb. 2, 2017); Examiner's
Answer ("Ans.," mailed Jan. 5, 2017); Final Office Action ("Final Act.,"
mailed Jan. 22, 2016); and the original Specification ("Spec.," filed
Sept. 3, 2014).
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Application 14/476,585
Rejections on Appeal
Rl. Claims 1, 2, and 7—11 stand rejected under pre-AIA 35 U.S.C.
§ 102(e) as anticipated by Choi. Ans. 2.
R2. Claims 3 and 14 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Choi and Maeda.
Ans. 5.
R3. Claims 4—6, 12, 13, 15, and 16 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of Choi and
Lowry. Ans. 6.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 4—10), we decide the
appeal of Rejection Rl of claims 1, 2, and 7—11 on the basis of
representative claim 1. We decide the appeal of Rejection R2 of claims 3
and 14 on the basis of representative claim 3. We decide the appeal of
Rejection R3 of claims 4—6, 12, 13, 15, and 16 on the basis of representative
claim 4.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1,3,
and 4 and, unless otherwise noted, we incorporate herein by reference and
3 In connection with the Choi reference, the Examiner also cites to Choi's
Provisional Application, Ser. No. 61/287,684, filed Dec. 17, 2009.
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Application 14/476,585
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 Appellant's arguments.
We highlight and address specific findings and arguments for emphasis as
follows.
1. Rejection R1 of Claims E 2 and 7—11 under $ 102(e)
Issue 1
Appellant argues (App. Br. 4—8; Reply Br. 2—3) the Examiner's
Rejection R1 of claim 1 under 35 U.S.C. § 102(e) as anticipated by Choi is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art expressly or
inherently discloses limitations LI and L2, as recited in claim 1?
Analysis
Appellant contends Choi's Vsync does not provide data that can be
used to identify a device or describe the data as unique device identification
information. App. Br. 7. Appellant further contends "Choi does not disclose
inserting data into the active space." Id. Appellant argues "a Vsync signal is
not the same as a device identifier." App. Br. 8.
Our reviewing court holds, "[i]n the patentability context, claims are
to be given their broadest reasonable interpretations . . . limitations are not to
be read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning
assigned to a term "must be sufficiently clear in the specification that any
departure from common usage would be so understood by a person of
experience in the field of the invention." Multiform Desiccants, Inc. v.
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Application 14/476,585
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A
patentee may act as its own lexicographer and assign to a term a unique
definition that is different from its ordinary and customary meaning;
however, a patentee must clearly express that intent in the written
description"). Absent an express intent to impart a novel meaning to a claim
term, the words take on the ordinary and customary meanings attributed to
them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
The Examiner finds Choi's second Vsync signal, inserted between the
first and second data regions, and the associated provided identifier (1 19)
disclose the recited "unique device identification data." Final Act. 6.
We are not persuaded the Examiner erred because Appellant does not
point to any definition in the Specification or claim, or to any evidence of
record, that would preclude the Examiner's broad but reasonable
interpretation for the claim term "unique device identification data."
Ans. 12—13. Although Appellant argues "a person of ordinary skill in the art
would not interpret a Vsync signal as being device identification data"
(Reply Br. 3), Appellant (App. Br. 7—8) does not address the Examiner’s
specific findings (Final Act. 6) regarding Choi’s associated provided
identifier (119). See also Ans. 9.4
4 Mere attorney arguments and conclusory statements 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); and Ex parte Belinne, No. 2009-004693, slip op. at 7—8
(BPAI Aug. 10, 2009) (informative) (available at http://www.uspto.gov/
web/offices/dcom/bpai/its/fd09004693.pdf).
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We also conclude the recited claim term “data” in limitation L2 is
interpreted under the broadest reasonable interpretation (BRI) as merely
being different, generic data because it lacks antecedent basis to "the data"
recited in limitation LI (emphasis added).
In further support of the Examiner's findings, and as a matter of claim
construction, we conclude the recitation of "unique device identification
data" in claim 1 is directed to non-functional descriptive material, to which
we accord no patentable weight. Even assuming our reviewing court were to
determine that Choi's Vsync signal's associated provided identifier (| 19)
does not encompass device identification data, 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, 1889 (BPAI 2008) (precedential) (“[T]he nature of
the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”). See In
reNgai, 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 (BPAI 2005) (informative) ("[Nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art"), affd, 191 Fed. Appx. 959 (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.
We conclude the informational content of the claimed "unique device
identification data" is not positively recited as actually being used to alter the
performance of a step or act in method claim 1. Therefore, we conclude the
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"providing data" limitation LI is merely descriptive and non-functional, and
is not actually used to perform any function or affect any outcome within the
scope of claim 1.
Therefore, on the record before us and under our claim construction,
buttressed by our findings of Appellant's reliance upon non-functional
descriptive material to distinguish over the cited prior art, we are not
persuaded of error in the Examiner's finding of anticipation. Therefore, we
sustain the Examiner's anticipation rejection of independent claim 1 and
grouped claims 2 and 7—11, which fall therewith. See Claim Grouping,
supra.5
2. Rejection R2 of Claims 3 and 14 under $ 103(a)
Issue 2
Appellant argues (App. Br. 8—9) the Examiner's Rejection R2 of
claim 3 under 35 U.S.C. § 103(a) as being obvious over the combination of
Choi and Maeda is in error. These contentions present us with the following
issue:
5 In the event of further prosecution, and to the extent that "a source device"
(claim 7) is a nonce word that fails to have a sufficiently definite meaning as
the name for a particular structure capable of performing the recited
functions, (see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
Cir. 2015)), we leave it to the Examiner to consider whether claim 7 should
be rejected under 35 U.S.C. §112, first paragraph, as a single means which is
nonenabling for the scope of the claim. See MPEP § 2164.08(a). See also
In re Hyatt, 708 F.2d 712, 714—15 (Fed. Cir. 1983) (A single means claim
which covered every conceivable means for achieving the stated purpose
was held nonenabling for the scope of the claim because the specification
disclosed at most only those means known to the inventor.). Although 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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Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein the data in the active space
comprises unique device identification data," as recited in claim 3?
Analysis
Appellant contends "Meada says nothing about adding data to an
active space of a 3D video stream." App. Br. 8.
We are not persuaded by Appellant's argument because dependent
claim 3 does not further limit claim 1. Claim 3 recites "[t]he method as
recited in claim 1 wherein the data in the active space comprises unique
device identification data." This recitation does not further limit claim l's
limitation LI: "providing data in the active space, wherein the data
comprises unique device identification data."6
Therefore, we sustain the Examiner's obviousness rejection R2 of
dependent claim 3, and claim 14, which falls therewith. See Claim
Grouping, supra.
6 While we note the Examiner objected to claim 3 as being of improper
form by failing to further limit the subject matter of the claim upon which it
depends (Final Ac.t 5), in the event of further prosecution of this application,
we leave it to the Examiner to determine whether dependent claim 3 meets
the requirements of 35 U.S.C. § 112(d) and should be rejected for failing to
further limit the subject matter of claim 1. See MPEP form 17.36.01
"Rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th
Paragraph, Improper Dependent Claim." Although 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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3. Rejection R3 of Claims 4—6, 12, 13, 15 and 16 under $ 103(a)
Issue 3
Appellant argues (App. Br. 8—9) the Examiner's Rejection R3 of
claim 4 under 35 U.S.C. § 103(a) as being obvious over the combination of
Choi and Lowry is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the limitation of "where the data in the active space comprises
a temporal stamp," as recited in claim 4?
Analysis
Appellant contends "[njothing in Lowry states that frame control
information is located in an active space and includes unique device
identification data." App. Br. 9. Appellant further contends:
Moreover, Lowry says nothing about the frame control
information including unique device identification data. As a
result, Lowry does not disclose, "providing data in the active
space, wherein the data comprises unique device identification
data," as generally recited by the present claims.
App. Br. 10.
We are not persuaded by Appellant's arguments because Appellant is
arguing the references separately. "[Ojne cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references." In re Keller, 642 L.2d 413, 426 (CCPA 1981).
As discussed above, the Examiner cites Choi, not Lowry, for teaching the
disputed limitations of claim 1. The Examiner cites Lowry for teaching or
suggesting "the data in the active space comprises a temporal stamp." Pinal
Act. 10.
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Therefore, we sustain the Examiner's obviousness Rejection R3 of
dependent claim 4, and claims 5, 6, 12, 13, 15, and 16, which fall therewith.
See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1—4), 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, which Appellant has
not shown. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1, 2, and 7—11 under 35 U.S.C. § 102(e) over the cited prior art
of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 3—6 and 12—16 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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