Ex Parte Lee et al

Patent Trial and Appeal Board

Sep 1, 2016

10947981 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/947,981 0912212004
23696 7590 09/06/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Yen-Chi Lee
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.
040566 3145
EXAMINER
BAILEY, FREDERICK D
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEN-CHI LEE, MING-CHANG TSAI, YAN YE,
FAN LING, and KHALED HELMI EL-MALEH
Appeal2015-002756
Application 10/94 7 ,9 81
Technology Center 2400
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1---68. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Qualcomm
Incorporated. (App. Br. 2.)
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EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A video decoding method that preserves physical layer
data unit boundary information above a physical layer, the
method comprising:
generating multiplex layer data units containing video
data based on physical layer data units;
embedding a boundary marker in a first multiplex layer
data unit to indicate a boundary between a first physical layer
data unit and a second physical layer data unit;
demultiplexing the multiplex layer data units to generate a
video data frame; and
associating, in a video decoder system, a detected
decoding error with a segment of the video data frame using the
boundary marker, wherein the segment of the video data frame
corresponds to one of the physical layer data units, and wherein
the boundary marker enables the detected decoding error to be
corrected without having to conceal all macro blocks of a slice
or an entire frame in which the detected decoding error is located.
REJECTIONS
The Examiner made the following rejections:
Claims 59---66 stand rejected under 35 U.S.C. § lOl(a) as being
directed to non-statutory subject matter. (Final Act. 5---6.)
Claims 1, 2, 4--11, 13, 15-18, 20-28, 30, 32-35, 37--42, 44, 46--49,
51-57, and 59---65 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heinzelman (US 6,754,277 Bl; issued June 22, 2004),
Fong (US 6,590,882B1; issued July 8, 2003), and Karandikar (US
2005/0195903 Al; published Sept. 8, 2005). (Final Act. 6-12.)
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Claims 3, 19, 36, and 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Heinzelman, Fong, Karandikar, and Yi (US
2003/0157927 Al; published Aug. 21, 2003). (Final Act. 12-14.)
Claims 12, 14, 29, 31, 43, 45, 58, and 66-68 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Heinzelman, Fong, Karandikar,
and Balachandran (US 7, 194,000 B2; issued Mar. 20, 2007). (Final Act. 14--
16.)
ISSUES
Issue 1: Did the Examiner err in finding claims 59---66 recite non-
statutory subject matter?
Issue 2: Did the Examiner err in finding Fong teaches or suggests
"generating multiplex layer data units containing video data based on
physical layer data units," as recited in claim 1 and similarly recited in
claims 17, 34, 48, 51, and 59?
Issue 3: Did the Examiner improperly combine Heinzelman and
Fong?
ANALYSIS
Issue 1
Appellants argue the Examiner erred in finding that claims 59-66 are
directed to non-statutory subject matter because "the specification is clear
that the term does not include transitory propagating signals." (App. Br. 10
(emphasis omitted).) In particular, Appellants argue paragraph 36 of the
Specification discloses computer-readable "media ... that cannot and do not
embody transitory propagating signals." (Id.)
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We are not persuaded. The Examiner finds, and we agree, there is no
express exclusion of transitory media in the Specification. (Ans. 3 (citing
Spec. i-f 36).) Instead, the Specification gives only examples of types of
computer-readable storage media, stating "computer-readable medium such
as random access memory (RAM), read-only memory (ROM), non-volatile
random access memory (NVRAM), electrically erasable programmable
read-only memory (EEPROM), FLASH memory, or the like." (Spec. i-f 36
(emphasis added).) The Specification's open-ended list of computer-
readable media examples does not expressly exclude transitory propagating
signals. Accordingly, because neither the claim nor the Specification
expressly exclude transitory signals from the scope of the claim, we are not
persuaded the Examiner erred in finding claims 59---66 encompass non-
statutory subject matter.
Issue 2
Appellants argue the Examiner erred in finding Fong teaches or
suggests "generating multiplex layer data units containing video data based
on physical layer data units," as recited in claim 1 and similarly recited in
claims 17, 34, 48, 51, and 59. (App. Br. 11-16; Reply Br. 2-7.)
Specifically, Appellants argue "the 'multiplex units 21 O' of Figure 2 of Fong
are still physical layer units" rather than units "above the [Radio Link
Protocol (RLP) Protocol Data Unit (PDU)] 'physical layer."' (App. Br. 13
(emphasis in original); Reply Br. 3.)
We are not persuaded. The Examiner finds, and we agree, Fong
teaches RLP-PDUs from one layer are multiplexed into "multiplex units" in
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a multiplex layer. (Ans. 4 (citing Fong 1:61---63, 3:7-23, Fig. 2); Final Act.
4--5, 7-8.)
Appellants' arguments are not commensurate with the scope of the
claims. Appellants argue that Fong's multiplex units "are below the RLP-
PDU units" while "the MUX-PDUs [,i.e. multiplex units.,] of [Appellants']
Figure 7 are above the RL[P]-PDU 'physical layer."' (Reply Br. 3
(emphasis in original); App. Br. 13.) However, the claims do not recite, and,
therefore, do not require, that the claimed multiplex layer data units are
generated "above" any other layer. Because Fong teaches PDUs
"multiplex[ed] in the Multiplex Layer . .. into multiplex units" (Fong 2:34--
36 (emphasis added)) and the claims do not require that the multiplex units
are generated in a layer "above" another layer, we are not persuaded the
Examiner erred in finding Fong teaches or suggests "generating multiplex
layer data units containing video data based on physical layer data units" as
recited in claim 1 and similarly recited in claims 17, 34, 48, 51, and 59. 2
Issue 3
Appellants argue the Examiner improperly combined Heinzelman and
Fong. (App. Br. 14; Reply Br. 5.) Specifically, Appellants argue "Fong
lacks any suggestion or motivation to modify operations beyond the physical
layer" and "Heinzelman similarly lacks any suggestion or motivation to
2 Appellants also argue the other cited references (i.e., Karandikar and
Heinzelman) do not teach this limitation. (See App. Br. 14--15.) Because
we are not persuaded the Examiner erred in finding Fong teaches the
disputed limitation, we need not address whether the other cited references
also teach that limitation.
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apply any of its disclosures pertaining to above the physical layer to
operations at the physical layer." (App. Br. 14; Reply Br. 5---6.)
We are not persuaded because Appellants' arguments that Fong and
Heinzelman do not provide a suggestion or motivation to modify Fong's
multiplex layer (App. Br. 14; Reply Br. 5-6), are directed to a modification
to Fong's multiplex layer that the Examiner does not make. (Ans. 4--5; see
Final Act. 4--5, 7-9). As discussed supra, we agree with the Examiner's
finding that Fong's multiplex layer generates multiplex data units from
PDUs (Ans. 4 (citing Fong 1:61---63, 3:7-23, Fig. 2; Final Act. 4--5, 7-8; see
Fong 2:34--36). Appellants' arguments discussing modifications to Fong's
multiplex layer that the Examiner does not make do not persuade us that the
Examiner improperly combined Heinzelman and Fong.
Regarding combining the references' teachings, the Examiner finds "it
would have been obvious to one having ordinary skill in the art at the time
the invention was made to modify the method taught by Heinzelman with
the limitations as taught by Fong to provide for multiplex layer mapping of
Link Layer PDU's to frames of the Physical Layer." (Ans. 7 (citing Fong
1 : 61---63).) Appellants' response to this rationale focuses again on their
argument that the claims require "above-physical-layer operations." (See
Reply Br. 6.) As discussed supra, the claims are not so limited.
Accordingly, we are not persuaded by Appellants' arguments that the
references themselves lack a suggestion to modify them to arrive at the
limitations of claim 1. See also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) ("[T]he analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
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account of the inferences and creative steps that a person of ordinary skill in
the art would employ.").
For the reasons discussed above, Appellants have not persuaded us
that the Examiner improperly combined Heinzelman and Fong.
Remaining Claims
Appellants do not argue separate patentability for dependent claims 2-
16, 18-33, 35--47, 49, 50, 52-58, and 60-68 which depend directly or
indirectly from claims 1, 17, 34, 48, 51, or 59. (See App. Br. 16.) For the
reasons set forth above, therefore, we are not persuaded the Examiner erred
in rejecting these claims. Accordingly, we sustain the Examiner's rejections
of claims 2-16, 18-33, 35--47, 49, 50, 52-58, and 60-68. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 59-66 under 35 U.S.C. § lOl(a) as
being directed to non-statutory subject matter is affirmed.
The Examiner's rejection of claims 1, 2, 4--11, 13, 15-18, 20-28, 30,
32-35, 37--42, 44, 46--49, 51-57, and 59---65 under 35 U.S.C. § 103(a) as
being unpatentable over Heinzelman, Fong, and Karandikar is affirmed.
The Examiner's rejection of claims 3, 19, 36, and 50 under 35 U.S.C.
§ 103(a) as being unpatentable over Heinzelman, Fong, Karandikar, and Yi
is affirmed.
The Examiner's rejection of claims 12, 14, 29, 31, 43, 45, 58, and 66-
68 under 35 U.S.C. § 103(a) as being unpatentable over Heinzelman, Fong,
Karandikar, and Balachandran is affirmed.
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Application 10/94 7 ,9 81
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).
AFFIRMED
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