Ex Parte Kerner et alDownload PDFPatent Trials and Appeals BoardMay 22, 201913946457 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/946,457 07/19/2013 116341 7590 Schiff Hardin LLP (Intel) c/o Laura C. Brutman Schiff Hardin LLP 666 Fifth A venue New York, NY 10103 05/24/2019 FIRST NAMED INVENTOR Michael Kerner 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 42542-0030 2356 EXAMINER ITSKOVICH, MIKHAIL ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 05/24/2019 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): Patents-NY @schiffhardin.com lbrutman@schiffhardin.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 MICHAEL KERNER, NATI DINUR, and ASSAF GUREVITZ Appeal2017-010168 Application 13/946,457 1 Technology Center 2400 Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and JOHNNY A. KUMAR, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-27, which constitute all of the considered claims in the Application. We REVERSE. 1 Appellants identify Intel Mobile Communications GmbH as the real party in interest (App. Br. 1 ). Appeal2017-010168 Application 13/946,457 THE INVENTION Appellants' claimed invention is directed to [a] method for noise shaping [that] includes: reducing a bit- depth of an input signal to obtain a quantized input signal; feeding a quantization error corresponding to the bit-depth reduction of the input signal into a feedback loop to the input signal, the feedback loop comprising a first quantization stage, a second quantization stage and a correction stage, both the first and second quantization stages operating at the bit-depth of the input signal and the correction stage operating at a bit-depth of the quantization error; and generating a noise-shaped output signal at lower clock rate than the input signal based on the feedback loop. Abstract. CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method for noise shaping, the method comprising: reducing a bit-depth of an input signal to obtain a quantized input signal; feeding a quantization error corresponding to the bit- depth reduction of the input signal into a feedback loop to the input signal, the feedback loop comprising a first quantization stage, a second quantization stage and a correction stage, both the first and second quantization stages operating at the bit- depth of the input signal and the correction stage operating at a bit-depth of the quantization error; and generating a noise-shaped output signal at lower clock rate than the input signal based on the feedback loop. App. Br. 9 (Claims App'x). 2 Appeal2017-010168 Application 13/946,457 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is the following: Bolger et al. ("Bolger") Han et al. ("Han") Kwon et al. ("Kwon") Kinyua us 5,565,930 US 2006/0088222 Al US 2007 /0009026 Al US 7,432,841 B 1 REJECTIONS The Examiner made the following rejections: October 15, 1996 April 27, 2006 January 11, 2007 October 7, 2008 Claims 14--25 stand rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. Final Act. 3-5. Claims 1-23 stand rejected under 35 U.S.C. § I02(a)(2) as anticipated by Kwon. Final Act. 7-13. Claims 24 and 25 stand rejected under 35 U.S.C §I03(a) as being unpatentable over Kwon in view ofKinyua. Final Act. 14--15. Claim 26 stands rejected under 35 U.S.C §I03(a) as being unpatentable over Kwon in view of Han. Final Act. 15-17. Claim 27 stands rejected under 35 U.S.C §I03(a) as being unpatentable over Kwon in view of Han and Bolger. Final Act. 17-18. The Examiner has withdrawn the rejections of claims 14--25 under 35 U.S.C. § 112(b) and 35 U.S.C. § 101. Ans. 2. ISSUES The issues are whether the Examiner erred in: 1. finding the claims terms "a quantizer circuit configured to ... ", "a feedback loop circuit configured to ... ", and "a first and second noise 3 Appeal2017-010168 Application 13/946,457 shaping filter circuit ... configured to ... " require means-plus-function interpretations under 35 U.S.C. § 112(±) and consequently lack written description 35 U.S.C. § 112(a) (Final Act. 3-5); and 2. finding Kwon anticipates the limitation of feeding a quantization error corresponding to the bit-depth reduction of the input signal into a feedback loop to the input signal, the feedback loop comprising a first quantization stage, a second quantization stage and a correction stage, both the first and second quantization stages operating at the bit-depth of the input signal and the correction stage operating at a bit-depth of the quantization error[,] as recited in independent claim 1 ( emphasis added). ANALYSIS Except where indicated, we adopt the Examiner's findings in the Answer and Final Office Action and we add the following primarily for emphasis. We note that if Appellants failed to present arguments on a particular rejection, we decline to review unilaterally those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (The Board may treat arguments Appellants failed to make for a given ground of rejection as waived.). Claims 14-25 rejected under 35 U.S. C. § l l 2(a) The Examiner rejected claims 14--25, finding the claim elements "a quantizer circuit configured to ... ", "a feedback loop circuit configured to .. . ", and "a first and second noise shaping filter circuit ... configured to ... " require means-plus-function interpretations under 35 U.S.C. § 112(±) and finding "the written description fails to disclose the corresponding structure, 4 Appeal2017-010168 Application 13/946,457 material, or acts for each claimed function." Final Act. 4 ( emphasis omitted). Appellants argue that the claim elements "a quantizer circuit configured to ... ", "a feedback loop circuit configured to ... ", and "a first and a second noise shaping filter circuit ... configured to ... " recite sufficient structure to avoid an interpretation under 35 U.S.C. § 112(±). App. Br. 4, 5. We agree with Appellants that the Examiner erred in finding "a quantizer circuit configured to ... ", "a feedback loop circuit configured to .. . ", and "a first and second noise shaping filter circuit ... configured to ... " are means-plus-function limitations. A means-plus-function interpretation of a claimed element is proper under 35 U.S.C. § 112(±), when claim language recites "means for" followed by a functional limitation. By contrast, a claim limitation that does not use the term "means" or "step" will trigger the rebuttable presumption that 35 U.S.C. § 112(±) or pre-AIA 35 U.S.C. § 112, sixth paragraph, does not apply. Phillips v. AWHCorp., 415 F.3d 1303, 1310 (Fed. Cir. 2005) (en bane). The presumption is overcome when "the claim term fails to 'recite[] sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function."' Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en bane) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000). Instead of using "means" or "step" in such cases, a substitute term acts as a generic placeholder for the term "means" and would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. Id. "The standard is whether the words of the claim 5 Appeal2017-010168 Application 13/946,457 are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Id. at 1349. However, 35 U.S.C. § 112([) or pre-AIA 35 U.S.C. § 112, sixth paragraph, will not apply if persons of ordinary skill in the art reading the Specification understand the term to have a sufficiently definite meaning as the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function (e.g., "filters," "brakes," "clamp," "screwdriver," and "locks"). MPEP § 2181(I)(A); Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372-73 (Fed. Cir. 2003). In particular the following are examples of structural terms that have been found not to invoke 35 U.S.C. § 112([) or pre-AIA 35 U.S.C. § 112, sixth paragraph: "circuit," "detent mechanism," "digital detector," "reciprocating member," "connector assembly," "perforation," "sealingly connected joints," and "eyeglass hanger member." MPEP § 2181(I)(A); Massachusetts Inst. of Tech. & Elec. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1355-56 (Fed. Cir. 2006) (The court found the recitation of "aesthetic correction circuitry" sufficient to avoid pre-AIA 35 U.S.C. § 112, sixth paragraph, treatment because the term circuit, combined with a description of the function of the circuit, connoted sufficient structure to one of ordinary skill in the art.). The present claims recite that each element is a circuit followed by a function of the respective circuit. App. Br. 9 (Claim 1) (Claims App'x). The use of the term "circuit" followed by a sufficiently definite functional limitation precludes a finding of a means-plus-function claim element. Accordingly, the Examiner erred in determining that "a quantizer circuit configured to ... ", "a feedback loop circuit configured to ... ", and "a first 6 Appeal2017-010168 Application 13/946,457 and second noise shaping filter circuit configured to ... " are means-plus- function elements. The claimed circuits should have been provided the broadest reasonable interpretation instead of a means-plus-function interpretation. Consequently, the determination that Appellants failed to provided sufficient written description of the means-plus-function claim elements cannot be a basis for a finding of insufficient written description under 35 U.S.C. § 112(a). We reverse the rejections of claims 14--25 because the Examiner erred in finding the claims to recite means-plus-function elements and, therefore, erred in finding the claims lack written description under 35 U.S.C. § 112(a) upon that basis. Claims 1-23 rejected under 35 U.S.C. § 102(a)(2) Appellants argue, inter alia, that Kwon does not anticipate: feeding a quantization error corresponding to the bit-depth reduction of the input signal into a feedback loop to the input signal, the feedback loop comprising a first quantization stage, a second quantization stage and a correction stage, both the first and second quantization stages operating at the bit-depth of the input signal and the correction stage operating at a bit-depth of the quantization error[,] as recited in independent claim 1 ( emphasis added). App. Br. 7. Appellants argue that Kwon discloses a first quantization parameter to generate a residual signal for the current frame and a second quantization parameter according to an estimated available number of texture bits. Id. Appellants argue that Kwon fails to disclose the claimed correction stage operating at a bit-depth of the quantization error. Id. Rather, Appellants argue that the residual signal of Kwon "is the encoded signal resulting from the first 7 Appeal2017-010168 Application 13/946,457 encoding step, not a quantization error, as alleged by the Examiner in the Final Office Action on page 2." Id. We are persuaded by Appellants' arguments. The Examiner directs us to paragraph 8 of Kwon for the limitation of feeding a quantization error corresponding to the bit-depth reduction of the input signal into a feedback loop to the input signal, the feedback loop comprising a first quantization stage, a second quantization stage and a correction stage, both the first and second quantization stages operating at the bit-depth of the input signal and the correction stage operating at a bit-depth of the quantization error. App. Br. 9 (Claim 1) (Claims App'x); Final Act. 7, 8. These paragraphs do not teach or suggest a feedback loop comprising a correction stage operating at a bit-depth of the quantization error as recited in claim 1. Instead, Kwon relates to first and second quantization steps. Kwon ,r 8. The Examiner further explains that the feedback loop comprising a correction stage is merely an intended use or optional limitation. Ans. 13. We are not persuaded by the Examiner's response. Anticipation is established only when a single prior art reference discloses, expressly or under the principles of inherency, each and every element of a claimed invention as well as disclosing structure which is capable of performing the recited functional limitations. RCA Corp. v. Applied Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983). Presently, the Examiner has improperly construed the feedback loop comprising a correction stage as an optional or intended use limitation. The feedback loop with a correction stage is a necessary and integral element of the claim. Since the Examiner has failed to find that Kwon teaches a 8 Appeal2017-010168 Application 13/946,457 feedback loop comprising a correction stage, the Examiner has not established that Kwon anticipates the present claims. Accordingly, we reverse the Examiner's rejection of claim 1 and, for the same reasons, the rejections of claims 2-27. DECISION We reverse the Examiner's decision rejecting claims 14--25 under 35 U.S.C. § 112(a). We reverse the Examiner's decision rejecting claims 1-23 under 35 U.S.C. § 102(a)(2). We reverse the Examiner's decision rejecting claims 24 and 25 under 35 U.S.C. § 103. We reverse the Examiner's decision rejecting claim 26 under 35 U.S.C. § 103. We reverse the Examiner's decision rejecting claim 27 under 35 U.S.C. § 103. REVERSED 9 Copy with citationCopy as parenthetical citation