Ex Parte Linzer

Board of Patent Appeals and Interferences

Jul 22, 2008

10277698 (B.P.A.I. Jul. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ELLIOT N. LINZER
_____________

Appeal 2008-1237
Application 10/277,698
Technology Center 2600
______________

Decided: July 22, 2008
_______________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and KEVIN F. TURNER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 1 through 9 and 27 through 46.
We affirm in part the Examiner’s rejections of these claims.

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INVENTION
The invention is directed to a method of video compression and
coding where data in the overscan region are absent from the encoded video.
See pages 3 and 4 of Appellant’s Specification. Claims 1 and 7 are
representative of the invention and reproduced below:
1. A method for decoding a digital video bit-stream comprising
the steps of:
(A) receiving said digital video bit-stream containing image
information; and
(B) receiving one or more overscan parameters, wherein said
one or more overscan parameters describe one or more dimensions of
an overscan region absent from said digital video bit-stream.

7. A method for encoding a digital video bit-stream comprising
the steps of:
(A) generating one or more overscan parameters describing
dimensions of an overscan region in an image;
(B) generating said digital video bit-stream containing encoded
image data for a picture region in said image, wherein image data for
said overscan region is absent from said digital video bit-stream; and
(C) presenting said digital video bit-stream and said one or
more overscan parameters.

REFERENCES
Katsumata US 5,353,065 Oct. 4, 1994
McGraw US 6,300,980 B1 Oct. 9, 2001
Buxton US 2003/0228127 A1 Dec. 11, 2003
(filed Jun. 6, 2002)
Liang US 2002/0196853 A1 Dec. 26, 2002
(filed Jun. 1, 1998)
Winger US 2004/0150540 A1 Aug. 5, 2004
(filed Feb. 2, 2004)

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Editors Proposed Draft Text Modifications for Joint Video
Specification (ITU-T Rec. H.264/ISO/IEC 14496-10 AVC) Draft 7,
October 2002, pp. 1-200.

REJECTIONS AT ISSUE
Claims 1 through 9, 29, 34 through 37, 40, 45, and 46 stand rejected
under 35 U.S.C. § 102(e) as being anticipated over Buxton.
Claims 27, 28, 38, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buxton in view of Katsumata.
Claims 30, 32, 41, and 43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buxton in view of Winger.
Claims 31 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buxton in view of McGraw.
Claims 33 and 44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buxton in view of Winger and Liang.
Throughout the opinion, we make reference to the Brief (received
March 5, 2007), Reply Brief (received August 23, 2007) and the Answer
(mailed June 27, 2007) for the respective details thereof.
ISSUES
Rejection of claims 1, 2, 4 through 6, 36, and 37 under 35 U.S.C. § 102(e).
Appellant argues on pages 6 though 13 of the Brief that the
Examiner’s rejection of claims 1, 2, 4 through 6, 36, and 37 is in error.
Appellant asserts that Buxton does not disclose “receiving one or more
overscan parameters, where the one or more overscan parameters
describe one or more dimensions of an overscan region absent from the
digital video bit-stream.” App. Br. 7. Further, on page 6 of the Reply
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Brief, Appellant argues that in the embodiment of Buxton where frame data
are copied into the overscan region, the encoder still encodes the overscan
region, thus the overscan region is not absent from the bit stream.
Thus, Appellant’s contentions with respect to the rejection of claims
1, 2, 4 through 6, 36, and 37, present us with the issue of whether the
Examiner erred in finding that Buxton teaches receiving one or more
overscan parameters, wherein said one or more overscan parameters
describe one or more dimensions of an overscan region absent from said
digital video bit-stream.

Rejection of claims 3, 29, 34, and 35 under 35 U.S.C. § 102(e).
On pages 13, 14, and 24 through 27 of the Brief, Appellant presents
arguments directed to the rejection of claims 3, 29, 34, and 35. These claims
all depend upon claim 1. As discussed infra, the issues raised with respect
to claim 1 are dispositive of the rejection of these claims. Accordingly, we
do not reach the additional issues raised by Appellant with respect to these
claims.

Rejection of claims 7 and 8 under 35 U.S.C. § 102(e).
Appellant argues, on pages 15 though 21 of the Brief, that the
Examiner’s rejection of claims 7 and 8 is in error. Appellant asserts that
Buxton does not disclose:
the steps of (A) generating one or more overscan parameters
describing dimensions of an overscan region in an image, (B)
generating the digital video bit-stream containing encoded image data
for a picture region in the image, where image data for the overscan
region is absent from the digital video bit-stream.
App. Br. 15.
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Appellant’s arguments on pages 15 through 21 of the Brief, are
directed to the embodiments of Buxton where data in the overscan region are
deleted. Further, on page 6 of the Reply Brief, Appellant argues that in the
embodiment of Buxton where frame data are copied into the overscan
region, the encoder still encodes the overscan region, thus the overscan
region is not absent from the bit stream.
Thus, Appellant’s contentions with respect to the rejection of claims 7
and 8, present us with the issue of whether the Examiner erred in finding that
Buxton teaches generating one or more overscan parameters, which describe
one or more dimensions of an overscan region of an image, and generating a
video bit stream containing image data for a region in the image, wherein
image data from the overscan region are absent from the image.

Rejection of claim 9 under 35 U.S.C. § 102(e).
Appellant argues, on pages 22 and 23 of the Brief, that the Examiner’s
rejection of claim 9 is in error. Appellant asserts that Buxton does not
disclose an overscan flag and values representing a number of either rows or
columns adjacent the picture region as claimed.
Thus, Appellant’s contentions with respect to the rejection of claim 9
present us with the issue of whether the Examiner erred in finding that
Buxton teaches that the generated overscan parameters include one of an
overscan flag, and values representing number of rows and columns adjacent
the image.

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Rejection of claim 40 under 35 U.S.C. § 102(e).
Appellant argues, on page 24 of the Brief, that the Examiner’s
rejection of claim 40 is in error. Appellant asserts that Buxton does not
disclose that the overscan parameters are presented separately from the
digital bit stream as claimed.
Thus, Appellant’s contentions with respect to the rejection of claim 9
present us with the issue of whether the Examiner erred in finding that
Buxton teaches that the that the overscan parameters are presented
separately from the digital bit stream.

Rejection of claims 45 and 46 under 35 U.S.C. § 102(e).
Appellant argues, on pages 27 and 28 of the Brief, that the Examiner’s
rejection of claim 45 is in error. Appellant asserts that Buxton does not
disclose that the step of generating overscan parameters involves assigning a
value representative of an offset from an outer edge of the overscan region
as measured from a corresponding edge of the picture as claimed. Appellant
presents similar arguments directed to claim 46 on pages 29 and 30 of the
Brief.
Thus, Appellant’s contentions with respect to the rejection of claim 45
present us with the issue of whether the Examiner erred in finding that
Buxton teaches the step of generating the overscan parameters includes a
value of the measure of the offset to an inner region of the offset as
measured from the corresponding outer edge of the image. Appellant’s
arguments with respect to claim 46 present us with a similar issue.

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Rejection of claims 27, 28, 38, and 39 under 35 U.S.C. § 103(a).
Appellant argues, on pages 32 through 34 of the Brief, that the
Examiner’s rejection of claims 27, 28, 38, and 39 is in error. Appellant
argues that neither Buxton nor Katsumata teach or suggest the desirability of
multiplexing one or more overscan parameters into the video bit stream as
claimed.
Thus, Appellant’s contentions with respect to the rejection of claims 27, 28,
38, and 39 present us with the issue of whether the Examiner erred in finding
that the combination of Buxton and Katsumata teach or suggest the
desirability of multiplexing one or more overscan parameters into the video
bit stream as claimed.

Rejection of claims 30 and 41 under 35 U.S.C. § 103(a).
Appellant argues, on pages 34 and 35 of the Brief, that the Examiner’s
rejection of claims 30 and 41 is in error. Appellant argues that the Examiner
has not provided objective reasoning to support the desirability of combining
the references. App. Br. 35.
Thus, Appellant’s contentions with respect to the rejection of claims
30 and 41 present us with the issue of whether the Examiner erred in
combining the teachings of Buxton and Winger.

Rejection of claims 31 and 42 under 35 U.S.C. § 103(a).
Appellant argues, on pages 36 and 37 of the Brief, that the Examiner’s
rejection of claims 31 and 42 is in error. Appellant argues that the Examiner
has not provided objective reasoning why one of ordinary skill in the art
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would consider the geometry flags of McGraw to be the same as the claimed
overscan flags which indicate whether or not to use default parameters.
App. Br. 36.
Thus, Appellant’s contentions with respect to the rejection of claims
31 and 42 present us with the issue of whether the Examiner erred in finding
that the combination of Buxton and McGraw teach overscan flags which
indicate whether or not to use default parameters.

Rejection of claims 32 and 43 under 35 U.S.C. § 103(a).
Appellant argues, on pages 35 and 36 of the Brief, that the Examiner’s
rejection of claims 32 and 43 is in error. Appellant argues that the Examiner
has not provided objective reasoning why one of ordinary skill in the art
would consider the making the video bit stream H.264 standard compliant.
App. Br. 36.
Thus, Appellant’s contentions with respect to the rejection of claims
32 and 43 present us with the issue of whether the Examiner erred
combining the teachings of Buxton with Winger’s teaching of making the
video bit stream H.264 standard compliant.

Rejection of claims 33 and 44 under 35 U.S.C. § 103(a).
Appellant argues, on pages 37 and 38 of the Brief, that the Examiner’s
rejection of claims 33 and 44 is in error. Appellant argues that the Examiner
has not provided objective reasoning why one of ordinary skill in the art
would modify Buxton to send the overscan parameters in the pan-and-scan
fields. App. Br. 38.
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Thus, Appellant’s contentions with respect to the rejection of claims
31 and 42 present us with the issue of whether the Examiner erred in finding
that the combination of Buxton, Winger and Liang teach placing the
overscan parameters in the pan-and-scan field.

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has recently stated
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the same
reason, 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. . . . [A]
court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.

Id. at 1740. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 1742.

37 C.F.R. § 41.37 (c)(1)(vii) states:
For each ground of rejection applying to two or more claims, the
claims may be argued separately or as a group. When multiple claims
subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of
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claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the
selected claim alone. Notwithstanding any other provision of this
paragraph, the failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any
grouped claim separately…. A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.

FINDINGS OF FACT
1. Buxton teaches a personal video recorder where the recorder drops or
modifies the overscan data from the video prior to compression and
storage. Abstract.
2. Buxton teaches that the overscan area constitutes the outer region of
the frame image. In most cases the image information in this area is
not displayed. Para. 0019, 0020.
3. Information in the overscan area is transmitted, and may include
noise, or a data channel. Para. 0022, 0024.
4. Buxton teaches that the image may be broken down into blocks of a
given number of rows and columns of pixels. The blocks can be
selected such that the overscan area can be defined by the border
blocks. These overscan areas may be defined by whole blocks or
partial blocks. See figure 4, and para. 0030-0032.
5. The blocks, or partial blocks represent a fixed number of rows and
columns of pixels, thus one skilled in the art would recognize that
they also represent a dimension of the block measured in units of
pixels.
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6. Buxton teaches several embodiments to reduce the data stored by the
personal video recorder. In one embodiment, the overscan encoder
may take data which are easily compressed, for example data from the
image area, and write them into the overscan area of the image frame.
In this embodiment, the video encoder makes a note that the block is
repeated (or copied) in the overscan region. Para. 0037.
7. Appellant admits on page 24 of the Brief that Buxton teaches a single
pathway from the encoder to the decoder. Thus, the image data and
the notations discussed in fact 6 are together on the single pathway.

ANALYSIS
Rejection of claims 1 through 6, 29, and 34 through 37 under 35 U.S.C.
§ 102(e).
Appellant’s arguments have persuaded us that the Examiner erred in
finding that Buxton teaches receiving one or more overscan parameters,
wherein said one or more overscan parameters describe one or more
dimensions of an overscan region absent from said digital video bit-stream.
Claim 1 recites that a video bit stream containing image information is
received, and that one or more overscan parameters is received. The
overscan parameters “describe one or more dimensions of an overscan
region absent from said digital video bit-stream.” Thus the scope of claim 1
includes two steps of receiving data where the second step receives data
identifying a data region absent from the video stream.

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The Examiner, in rejecting claim 1 relies upon the embodiment of
Buxton where the data from the image blocks are copied to the overscan
region. Ans. 5. The Examiner equates the notation, that the data portion in
the overscan area is a copy of the data in the image area, with the received
overscan parameters. Ans. 5, 6. We disagree with the Examiner’s finding
that this meets the claim. Though, in this embodiment of Buxton, the data
stream is missing information contained in the overscan area of the original
image (i.e., data stream to video decoder 40 does not have overscan
information from input signal 10), this is not what is claimed. Rather, as
discussed supra, the claim is limited to data identifying a data region absent
from the video stream. The identifiers, relied upon by the Examiner as
meeting the claimed overscan parameters, identify areas of the data stream
that are duplicated, but the data regions to which the identifiers refer are in
the data stream. Fact 6. Accordingly, we do not find that the Examiner has
shown that Buxton meets all of the limitations of independent claim 1. As
claims 2, 4 through 6, 29, and 34 through 37 depend upon claim 1 and are
similarly rejected; we will not sustain the Examiner’s rejection of claims 1,
2, 3, 4 through 6, 29, and 34 through 37.

Rejection of claims 7 and 8 under 35 U.S.C. § 102(e).
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that Buxton teaches generating one or more overscan parameters,
which describe one or more dimensions of an overscan region of an image,
and generating a video bit stream containing image data for a region in the
image, wherein image data from the overscan region are absent from the
image. The scope of claim 7 is different from claim 1, in that claim 7 recites
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two steps of generating data based upon an image. In the first step overscan
data is generated describing dimensions of an overscan region. In the
second step, video bit stream is generated containing data for a picture
region of said image and where image data in the overscan region is absent
from the video bit stream.
The Examiner, in rejecting claim 7 relies upon the embodiment of
Buxton where the data from the image blocks are copied to the overscan
region. Ans. 5. The Examiner equates the notation, that the data portion in
the overscan area is a copy of the data in the image area, with the overscan
parameters. Ans. 5, 6. We concur with the Examiner’s findings. Buxton
teaches that the notations identify image blocks or fractions of blocks. Fact
4. Further, we find that the blocks represent a dimension of an area. Fact 5.
Thus, we concur with the Examiner’s finding that Buxton’s notation
identifying a block in the overscan area is a duplicate of other image data
(fact 6), does identify an overscan parameter describing dimensions of the
overscan area.
Additionally, we find that Buxton teaches the second step of
generating a bit stream. Claim 7 recites that the image data from the
overscan region of the image is absent from the bit stream. We find that
Buxton teaches this feature. In figure 1 of Buxton, the input signal to the
system, represents the claimed image, and the output of the video encoder
(item 20) represents the bit stream. Buxton teaches that there is information
in the overscan area of the image. Fact 2. In the embodiment of the copy
and replace data blocks, the data in the blocks of the overscan area of the
image are overwritten with the copied data. Fact 6. Thus, the overscan data
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in the original input signal are absent from the bit stream as it has been
overwritten with the copied data.
For the aforementioned reasons, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claims 7 and 8.

Rejection of claim 9 under 35 U.S.C. § 102(e).
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that Buxton teaches that the generated overscan parameters
include one of an overscan flag and values representing number of rows and
columns adjacent the image. Claim 9 is dependent upon claim 7 and recites
“wherein said one or more overscan parameters comprises at least one of”
and recites several type of values. Thus, as claim 9 by recites “comprises at
least one of,” Buxton only needs to teach one of the data types. The
Examiner, on pages 7 and 8 of the Answer, finds that Buxton’s teaching of
the embodiment where the data from the image blocks are copied to the over
scan region, the use of blocks and partial blocks meets the dimensions of the
overscan region. We concur with the Examiner findings, that the size of the
blocks identified as copied is an identification of the block’s dimension.
Fact 5. Further, we consider the notation that the block is a copy to be the
equivalent to the claimed overscan flag. Thus, Appellant’s arguments have
not persuaded us of error in the Examiner’s rejection of claim 9 as we find
ample evidence to support the Examiner’s finding that Buxton teaches the
overscan parameters as recited in claim 9. Accordingly, we sustain the
Examiner’s rejection of claim 9.

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Rejection of claim 40 under 35 U.S.C. § 102(e).
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that Buxton teaches that the overscan parameters are presented
separately from the digital bit stream. Claim 40 recites that the overscan
parameters are provided separate from the video bit stream.
In support of the rejection, the Examiner states:
It is noted that since Buxton discloses implementing the central area
block copying operation to the overscan region (Buxton: paragraph
[0037], lines 10-14) using pre-processing (Buxton: paragraph [0037],
lines 15-18), the overscan parameters would be sent in advance, and
therefore, separately from the digital video bitstream. Furthermore,
even this feature were not found to anticipated by the Board, the
Examiner would note that such a feature is unpatentable under 35
U.S.C. 103(a) since it has long been held as an obvious modification
to separate something that was once integral, Nenvin v. Erlichman,
168 USPQ 177, 179, (USPTO Bd. Of Int. 1969).
Ans. 11.
We disagree with the Examiner’s rationale. We note that the
Examiner has rejected claim 40 under 35 U.S.C. § 102(e), and as such
obviousness is not an issue. Further, we do not find that the Examiner has
presented sufficient evidence that the pre-processing requires the notations
that a block is a copy (the overscan parameters) needs to be provided
separately as claimed. Thus, we will not sustain the Examiner’s rejection of
claim 40.

Rejection of claims 45 and 46 under 35 U.S.C. § 102(e).
Claim 45.
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that Buxton teaches the step of generating the overscan parameters
includes a value of the measure of the offset to an inner region of the offset
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as measured from the corresponding outer edge of the image. On page 11
and 12 of the Answer, the Examiner equates Buxton’s teaching of using
partial blocks to identify the overscan area with the claimed assigning a
value of the measure of the offset as claimed. We concur with the
Examiner’s finding. As discussed supra, the identification of the blocks and
the number of rows and pixels that are in the block are a value indicative of
a dimension. Fact 5. As these blocks are on the outer edge of the image, see
figure 4, the value of rows or columns, in the block or partial block,
represent a measure from the left (or top) outer edge of the image (which
includes the overscan area) to the inner edge left (or upper) edge of the
picture area. Accordingly, Appellant’s arguments have not persuaded us of
error in the Examiner’s rejection of claim 45, and thus, we sustain the
Examiner’s rejection of claim 45.
Claim 46.
Claim 46, similar to claim 45, recites that the step of generating the
overscan parameters comprises assigning a value. Claim 46 recites that the
value represents an offset to the inner edge of the overscan region from the
outer edge of the image. The difference between claim 45 and 46 is that
claim 45 recites the measurement from the outside in and claim 46 as the
measurement from the inside out. As discussed above with respect to claim
45 we find that Buxton’s teaching of using blocks meets this limitation. As
these blocks are on the outer edge of the image, see figure 4, the value of
rows or columns, in the block or partial block, represent a measure from the
inner edge right (or lower) edge of the overscan area to the right (or lower)
outer edge of the image (which includes the overscan area).
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Accordingly, Appellant’s arguments have not persuaded us of error in
the Examiner’s rejection of claim 46, and thus, we sustain the Examiner’s
rejection of claim 46.

Rejection of claims 27, 28, 38, and 39 under 35 U.S.C. § 103(a).
Initially, we note that though the bulk of Appellant’s arguments group
claims 27, 28, 38, and 39 together. Appellant does argue on page 32 of the
Brief that claims 27 and 28 are dependent upon claim 1 and are allowable
for the reasons discussed with respect to claim 1.1 Thus, Appellant’s
arguments have grouped the claims into two groups, the first group being
claims 27 and 28; the second group being claims 38 and 39. We select
claims 27 and 38 to be representative of each group respectively.
Claims 27 and 28.
Claims 27 and 28 are dependent upon claim 1. As discussed above
with respect to the rejection of claim 1 we find error in the Examiner’s
rejection based upon Buxton. The Examiner has not found, nor do we find
that the additional teachings of Katsumata, solve the problems in the
rejection of claim 1 noted above. Accordingly, we reverse the Examiner’s
rejection of claims 27 and 28 for the reasons discussed with respect to claim
1.

1 We note that on pages 12 and 13 of the Reply Brief, Appellant has
presented separate arguments directed to claims 28 and 39. However, the
grouping of the claims is established by the Brief and not the Reply Brief,
thus arguments made directed to claims 28 and 39 in the Reply Brief have
not been considered as they are directed to claims which Appellant already
grouped with other claims. See 37 C.F.R. § 41.37 (c)(1)(vii).
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Claims 38 and 39.
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of Buxton and Katsumata teaches or suggests
the desirability of multiplexing one or more overscan parameters into the
video bit stream as claimed. Claim 38 is dependent upon claim 7 and recites
that the overscan parameters are multiplexed into the video bit-stream.
Multiplexing is a process whereby two or more signals are combined
together. As discussed above with respect to claim 7, we find that Buxton
teaches the claimed overscan parameters and video bit stream. Appellant
has admitted that Buxton teaches only one signal path. Fact 7. Thus, the
two signals are present on one stream, i.e. multiplexed. Accordingly,
Appellant’s arguments have not persuaded us of error in the Examiner’s
rejection of claim 38 and claim 39 which is grouped with claim 38 and we
sustain the Examiner’s rejection of these claims.

Rejection of claims 30 and 41 under 35 U.S.C. § 103(a).
Initially, we note that though the bulk of Appellant’s arguments group
claims 30 and 41 together. Appellant does argue on page 34 of the Brief that
claim 30 is dependent upon claim 1 and is allowable for the reasons
discussed with respect to claim 1. Thus, Appellant’s arguments have
grouped the claims into two groups, the first group being claim 30; the
second group being claim 41.
Claim 30 is ultimately dependent upon claim 1. As discussed above
with respect to the rejection of claim 1 we find error in the Examiner’s
rejection based upon Buxton. The Examiner has not found, nor do we find
that the additional teachings of Winger, solve the problems in the rejection
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of claim 1 noted above. Accordingly, we reverse the Examiner’s rejection
of claim 30 for the reasons discussed with respect to claim 1.
Claim 41 is dependent upon claim 7. Appellant’s arguments have not
persuaded us that the Examiner erred in combining the teachings of Buxton
and Winger. Claim 41 depends upon claim 9 and recites that the values for
the overscan parameters are “expressed as unsigned integer Exp-Golumb-
coded elements.” The Examiner finds that Buxton discloses use of MPEG
as a coding method and that Winger teaches that it is desirable to use Exp-
Golumb-coded syntax elements to MPEG encoded information. Ans. 14.
The Examiner notes that this combination is “suggested to prevent video
signal distortion.” Ans. 14. We consider this explanation by the Examiner
to provide an objective reasoning that one would combine the teachings.
That “the combination of Buxton and Winger do not necessarily teach or
suggest the desirability of using the unsigned integer Exp Golumb-coded
syntax elements” as argued by Appellant on page 16 of the Reply Brief, is of
no consequence. The Examiner has demonstrated that the combination of
the Exp-Golumb-coded syntax elements to the system of Buxton represents
nothing more than using existing techniques to solve known problems.
Accordingly, Appellant has not persuaded us of error in the Examiner’s
rejection of claim 41 and we sustain the rejection of this claim.

Rejection of claims 31 and 42 under 35 U.S.C. § 103(a).
Claim 31 is ultimately dependent upon claim 1. As discussed above
with respect to the rejection of claim 1 we find error in the Examiner’s
rejection based upon Buxton. The Examiner has not found, nor do we find
that the additional teachings of McGraw, solve the problems in the rejection
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of claim 1 noted above. Accordingly, we reverse the Examiner’s rejection
of claim 31 for the reasons discussed with respect to claim 1.
Claim 42 is ultimately dependent upon claim 7. Appellant’s
arguments have persuaded us that the Examiner erred in rejecting claim 42.
Claim 42 is dependent upon claim 9 and recites “where in said overscan flag
has a first state indicating that the default values for overscan parameters
should be used and a second state indicating that the overscan parameters are
being sent.” Thus, the scope of claim 42 includes that there are two states
for the overscan flag, the second indicating overscan parameters are being
sent. On page 15 of the Answer, the Examiner responds to the Appellant’s
argument citing the geometry flags of McGraw in column 5, lines 1-10 as
teaching this limitation. As Appellant identifies, on page 36 of the Brief,
these flags merely identify whether a display overscans an image by 10% or
not. However, we fail to see how the teaching of these flags would suggest
that the overscan parameters of Buxton should be modified to indicate
whether or not to use default parameters. Accordingly, we will not sustain
the Examiner’s rejection of claim 42.

Rejection of claims 32 and 43 under 35 U.S.C. § 103(a).
Claim 32 is dependent upon claim 1. As discussed above with respect
to the rejection of claim 1 we find error in the Examiner’s rejection based
upon Buxton. The Examiner has not found, nor do we find that the
additional teachings of Winger, solve the problems in the rejection of claim
1 noted above. Accordingly, we reverse the Examiner’s rejection of claim
32 for the reasons discussed with respect to claim 1.
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21

Claim 43 is dependent upon claim 7. Appellant’s arguments have not
persuaded us that the Examiner erred in combining the teachings of Buxton
with Winger’s teaching of making the video bit stream H.264 standard
compliant. On page 8 of the Office action dated August 23, 2006, the
Examiner finds that Winger teaches using the H.264 standard for MPEG
video encoding (see also Winger para. 0021). In responding to Appellant’s
arguments, directed to the combination of Buxton and Winger, the Examiner
provides the same rationale discussed above with respect to claim 41. As
discussed supra with respect to claim 41, we consider the combination of
Winger’s teachings of using MPEG encoding techniques as applied to
Buxton to represent nothing more than using existing techniques to solve
known problems. Accordingly, Appellant has not persuaded us of error in
the Examiner’s rejection of claim 43 and we sustain the rejection of this
claim.

Rejection of claims 33 and 44 under 35 U.S.C. § 103(a).
Claim 33 is ultimately dependent upon claim 1. As discussed above
with respect to the rejection of claim 1 we find error in the Examiner’s
rejection based upon Buxton. The Examiner has not found, nor do we find
that the additional teachings of Winger and Liang, solve the problems in the
rejection of claim 1 noted above. Accordingly, we reverse the Examiner’s
rejection of claim 32 for the reasons discussed with respect to claim 1.
Claim 44 is dependent upon claim 43. Appellant’s arguments have
persuaded us that the Examiner erred in combining the teachings of Buxton
with Winger and Liang. On page 9 of the Office action dated August 23,
2006, the Examiner, citing paragraph 0317, finds that Liang teaches the
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22

existence of a pan-and-scan field an MPEG packet stream. The Examiner
states on page 17 of the Answer:
since Buxton discloses the use of MPEG (Buxton: paragraph [0016],
lines 1-5), and since Liang discloses that the pan and scan fields are a
part of the MPEG syntax bitstream, it would been obvious for one of
ordinary skill in art to place the overscan parameters as part those
fields in order to have the overscan decoder be able to pre-process for
the overscan region at a higher syntax level of the signal.

We disagree with the Examiner’s rationale. As argued by Appellant
on page 17 of the Reply Brief, we find that the Examiner has not presented
sufficient evidence that placing the overscan parameters in the pan-and-scan
fields would allow pre-processing the overscan regions at a higher syntax
level, (i.e., the Examiner has not shown that the knowledge of the scan and
pan fields (a known method) is known to allow for processing at a higher
syntax level (is a known solution to a problem)). Accordingly, we find that
the Examiner erred in teachings of Buxton with Winger and Liang to reject
claim 44.

CONCLUSION
For the foregoing reasons, we sustain the Examiner’s rejections of
claims 7, 8, 9, 45, and 46 under 35 U.S.C. § 102(e) and of claims 38, 39, 41,
and 43 under 35 U.S.C. § 103(a). We do not sustain the Examiner’s
rejection of claims 1 through 6, 29, and 34 through 37, and 40 under 35
U.S.C. § 102(e) and of claims 27, 28, 30, 31, 32, 33, 42, and 44 under 35
U.S.C. § 103(a) .

ORDER
The decision of the Examiner is affirmed-in-part.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

CHRISTOPHER P. MAIORANA, P.C.
LSI Corporation
24840 HARPER
SUITE 100
ST CLAIR SHORES, MI 48080