Ex Parte Jeon et al

Patent Trial and Appeal Board

Jan 31, 2017

12588069 (P.T.A.B. Jan. 31, 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.
12/588,069 10/02/2009 Byeong Moon Jeon 8736.01091.US22 4583
30827 7590
Dentons US LLP
1900 K. Street, N.W.
Washington, DC 20006
EXAMINER
HESS, MICHAEL J
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
mlaip @ dentons.com
paul.fugitt@dentons.com
mlapto @ mckennalong .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYEONG MOON JEON, SEUNG WOOK PARK,
HAN SUH KOO, and YONG JOON JEON
Appeal 2015-007191
Application 12/588,069
Technology Center 2400
Before JAMES R. HUGHES, NATHAN A. ENGELS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 16, 18—20, and 23, which constitute all of the
claims pending in this application. Claims 1—15, 17, 21, 22, and 24—31 have
been cancelled. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify LG Electronics Inc. as the real party in interest. Br. 3.
Appeal 2015-007191
Application 12/588,069
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for decoding/encoding a video signal using a reference picture list
for inter-view prediction. Abstract.
Claim 16, reproduced below, is illustrative of the claimed subject
matter:
16 A method for decoding multi-view video data in a multi­
view video stream with a decoding apparatus, comprising:
receiving, with the decoding apparatus, the multi-view
video stream, the multi-view video stream including a random
access picture, the random access picture including a random
access slice, the random access slice referencing only a slice
corresponding to a same time and a different view of the random
access picture;
obtaining, with the decoding apparatus, view number
information for the random access picture, the view number
information indicating a number of reference views of the
random access picture;
obtaining, with the decoding apparatus, view
identification information according to the view number
information, the view identification information providing a
view identifier of each reference view for the random access
picture;
initializing, with the decoding apparatus, an inter-view
reference picture list for interview prediction, the initializing
including ordering inter-view reference pictures specified by the
view identification information, the ordering including assigning
an inter-view reference index to each of the inter-view reference
pictures based on the view number information, the inter-view
reference index identifying one of the inter-view reference
pictures in the inter-view reference picture list used for inter­
view prediction of a block to be decoded in the random access
picture, the inter-view reference pictures being appended to an
initialized temporal reference picture list for temporal prediction,
the random access picture and the inter-view reference pictures
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included in the initialized inter-view reference picture list having
a same picture order count;
reordering, with the decoding apparatus, the inter-view
reference pictures included in the initialized inter-view reference
picture list by changing the inter-view reference index assigned
to each of the inter-view reference pictures;
determining, with the decoding apparatus, a prediction
value of a macroblock in the random access picture based on the
reordered inter-view reference picture list; and
decoding, with the decoding apparatus, the macro block
using the prediction value,
wherein the view number information and the view
identification information is obtained based on a value indicating
decoding order between the plurality of views.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Sohn et al. (“Sohn”) US 2003/0202592 A1 Oct. 30, 2003
Xin et al. (“Xin”) US 2006/0146143 Al July 6, 2006
Martinian et al. (“Martinian”) US 2007/0121722 Al May 31, 2007
REJECTIONS
Claim 16 stands rejected under 35U.S.C. § 101 because the claimed
invention is not supported by either a specific or substantial asserted utility
or a well-established utility. Final Act. 8—9.
Claim 16 stands rejected under pre-AIA 35U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. Final Act.
9.
Claims 16, 18—20, and 23 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Xin in view of Sohn and Martinian.
Final Act. 10—16.
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
Except for Appellants’ argument regarding the section 101 rejection, we
disagree with Appellants’ arguments, 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 (Final Act. 9—16), and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellants’
arguments (Ans. 15—24). We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted.2 * 4However, we
highlight and address specific findings and arguments for emphasis as
follows.
Section 101 Rejection
Appellants argue the Examiner erred in finding the invention claimed
in claim 16 lacks specific and substantial utility. Br. 6—12. Appellants argue
the claimed invention is useful to the public in its current form:
In this case, the claimed method achieves the result of decoding
multi-view video data in a multi-view video stream with a
decoding apparatus. Advantages of the claimed method include
excluding the redundancy information between views due to
various prediction schemes between views and such information
as slice types, macroblock types and macroblock prediction
modes, thereby enhancing performance of encoding/decoding
efficiency.
2 To be clear, we do not adopt the Examiner’s findings or conclusions
regarding the rejection under 35U.S.C. § 101.
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Br. 7.
The Examiner concludes that Appellants have not explained the utility
of the view identification information and the view number information.
Final Act. 8—9; Ans. 11—13. “Specifically, the Office asked Appellant to
explain what purpose the view identification information and view number
information has in the claimed invention. Neither the claim nor the
Specification specifically explains why the parameters are necessary.
Instead, Appellant contends a reference picture list is ‘based on’ such
information.” Ans. 12.
The “utility requirement” originates with the provision of 35 U.S.C.
§101 that a patent may be obtained on “any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof.” An inquiry by the Patent Office into whether a
claimed invention satisfies the utility requirement typically has two distinct
prongs. First, the Patent Office must determine whether the patent applicant
has asserted a specific and substantial utility for the claimed invention. In re
Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). Second, the Patent Office
must ascertain whether there is any evidence that one of ordinary skill in the
art would reasonably doubt the invention’s asserted utility. In re Brana, 51
F.3d 1560, 1566 (Fed. Cir. 1995). Only one credible assertion of specific
utility for the claimed invention is necessary to satisfy 35 U.S.C. § 101 and
35 U.S.C. § 112. Raytheon Co. v. Roper Corp., 724 F.2d 951, 958 (Fed. Cir.
1983).
We are persuaded by Appellants’ argument that the Examiner erred.
First, although the test for specific utility focuses on the claimed invention,
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the Examiner’s conclusion focuses on two limitations and not the claim as a
whole.
Second, we agree with Appellants that they have set forth a specific
and substantial utility for the claimed invention. See Br. 8—11 (citing Spec.
H 149, 167—171, Fig. 14). We further conclude that the Examiner has not
provided any reason for doubting the inventions asserted utility. Although
not binding, we note the Manual for Patent Examiner Procedure cautions
that examiners assessing specific utility “must treat as true a statement of
fact made by an applicant in relation to an asserted utility, unless
countervailing evidence can be provided that shows that one of ordinary skill
in the art would have a legitimate basis to doubt the credibility of such a
statement.” MPEP § 2107 (II).3
Accordingly, we do not sustain the Examiner’s rejection of claim 16
under the specific utility requirement of35U.S.C. § 101.
Section 112 Rejection
The Examiner makes findings using the relevant Wands4 factors and
determines that claim 16 is not enabled:
Particularly relevant to the enablement rejection are the
following Wands factors: amount of direction or guidance
presented, the presence or absence of working examples, and the
breadth of the claims. As to amount of direction or guidance,
Examiner’s review of the specification yielded no instances of
direction or guidance regarding the use of the view number
information and view identification information. As to presence
3 Appellants and the Examiner discuss whether or not claim 16 recites non­
functional descriptive material. See Br. 11—12; Ans. 13—14. We need not
decide that issue in resolving this appeal.
4 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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or absence of working examples, Examiner’s review of the
specification yielded no instances of a discussion of working
examples. As to breadth of the claims, as explained under the
utility rejection, supra, the claiming of numbers and identifiers
per se, represents a scope too broad to instruct one skilled in the
art where to start in the “use” of these parameters.
Final Act. 9. The Examiner further determines the limitation “based on” is
so broad that it covers any relationship, not matter how broad. Ans. 16. As
a result, although “the public is informed that a relationship exists between
the information and the claimed outcome, the public is not informed what
exactly that relationship is or how the outcome is achieved.” Id.
Appellants argue the Examiner erred. Br. 13—14. First, Appellants
argue the claimed invention “is in a predictable art (electrical).” Br. 14.
Second, Appellants argue the term “based on” has been used in thousands of
patents with years of use. Br. 14.
Appellants have not identified any errors in the Examiners findings
applying the Wands factors. “If an appellant fails to present arguments on a
particular issue — or, more broadly, on a particular rejection — the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). And although Appellants argue that the invention is in a
predictable art and the term based on has been used in thousands of patents,
Appellants do not present any evidence supporting the alleged enablement of
the claimed invention. “Attorney’s argument in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Therefore,
we are not persuaded by Appellants’ arguments that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 16 under
the enablement requirement of 35 U.S.C. § 112, first paragraph.
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Section 103 Rejection
Appellants argue the Examiner erred in determining the subject matter
of claim 16 to be unpatentable. Br. 15—22. First, Appellants argue the
Examiner erred in finding Xin teaches “the random access slice referencing
only a slice corresponding to a same time and a different view of the random
access picture” and “the inter-view reference pictures included in the
initialized reference picture list having a same picture order count,” as
recited in claim 16. Br. 16—19. Appellants’ argument is premised on
Appellants’ contention that “Xin teaches very high POC (e.g., 10,000-
10,100) for assigning the unique POC to each multi-view picture.” Br. 16
(citing Xin 188).
We are not persuaded by Appellants’ argument that the Examiner
erred. We find Appellants’ argument based on a faulty premise. Contrary to
Appellants’ argument, Xin merely teaches assigning a “unique POC for
every multiview reference picture according to a convention” with one
convention being assigning a POC “based on temporal order” (without
specifying high or low) “and then reserve a sequence of very high POC
numbers, e.g., 10,000-10,100, for the spatial and synthesized reference
pictures.” Xin 188.
We are also not persuaded of error based on Appellants’ arguments
because the arguments do not address the reasoning relied on by the
Examiner (Ans. 16—19) and, thus, does not adequately address the rejection
on appeal.
Furthermore, we are not persuaded of Examiner error because
Appellants do not provide persuasive argument or evidence to support their
discussion of Xin. See Br. 16—19. It is well settled that mere attorney
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arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also Pearson, 494 F.2d at 1405 (attorney
argument is not evidence).
Second, Appellants contend the Examiner erred in finding Xin, Sohn,
and Martinian teach various other limitations. Br. 19—20. For each of those
references, Appellants provide a single paragraph that provides a brief
description of the reference and a general denial that the references teaches a
disputed claim limitation. Id. For example, the entirely of the argument
directed to Sohn is:
Referring to Sohn paragraph [0049] cited by the Examiner the
“view number flag” disclosed by Sohn indicates the number of
total views of a multi-view video. There is no teaching or
suggestion of the number of reference views for a random access
picture being decoded, and there is no teaching or suggestion of
view identification information providing a view identifier for
each of the reference views of the random access pictures as
required by claim 16.
Id.
Appellants merely quote or summarize the claim language and make a
naked assertion that the prior art does not teach the limitation, andthese
naked assertions are insufficient to raise an argument that that Examiner
erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37
requires “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.”); see also 37 C.F.R.
§ 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
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cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”). Appellants fail to provide sufficient, persuasive argument or evidence
regarding the specific deficiency of Xin, Sohn, and Martinian with respect to
the disputed limitation of claim 16. Accordingly, we are not persuaded by
the conclusory denials that the Examiner erred.
Third, Appellants contend “that any combination of Sohn or Martinian
with Xin to impose the use the claimed view number information or the view
identification information would destroy the operation, purpose and intent of
Xin.” Br. 20. However, Appellants do not present any evidence—or even
detailed argument—as to why that is so. Accordingly, we are not persuaded
by Appellants’ argument that the Examiner erred.
Fourth, Appellants argue the Examiner did not provide a sufficient
reason to combine the references. Br. 21—22. Appellants further argue that
“[sjimply stating something is well-known” or “[sjtating that a standard
intends a particular syntax [that] ignores the contrary teachings of Xin” is
insufficient. Br. 22.
The Examiner finds reasons to combine the three prior art references:
19. One of ordinary skill in the art, at the time of Applicant’s
invention, would have been motivated to combine the elements
taught by Xin with those of Sohn because using flags to denote
random access pictures utilizes well-known bitstream signaling
techniques to delineate data types; a concept critical to the utility
of digital systems.
20. One of ordinary skill in the art, at the time of Applicant’s
invention, would have been motivated to combine the elements
taught by Xin - Sohn with those of Martinian because using
bitstream messaging (including supplemental enhancement
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information (SEI messages)) to convey information optionally
supported in the H.264 syntax is exactly what the developers of
the standard intended.
Final Act. 14; see also Ans. 24—25.
The Supreme Court has determined 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. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); id. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Furthermore, “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. In other words, “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 417. Additionally, rejections based on obviousness must be supported
by “some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006), cited with approval in KSR, 550 U.S. at 418.
We agree with the Examiner that the prior art contains known
solutions that have been used to improve one device and that a person of
ordinary skill in the art would have recognized that it could have been used
to improve other prior art devices in a predicable way. Indeed, the use of
flags and standardized syntax are such well known solutions that achieve
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predictable results. Appellants have not argued that it would have been
“uniquely challenging or difficult for one of ordinary skill in the art” to
make the modifications suggested by the Examiner. See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418). Therefore, we are not persuaded by Appellants’ arguments
that the Examiner erred in combining the prior art references.
Accordingly, we sustain the Examiner’s rejection of claim 16 as
unpatentable under 35 U.S.C. § 103(a), along with the rejections of claims
18—20 and 23, which are not argued separately. See Br. 22.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claim 16 under 35 U.S.C. § 112, first paragraph.
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 16, 18—20, and 23 as unpatentable under 35 U.S.C. § 103(a).
For the above reasons, we reverse the Examiner’s decisions rejecting
claim 16 under 35 U.S.C. § 101.
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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