Ex Parte MacInnis

Patent Trial and Appeal Board

Sep 26, 2012

10850130 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALEXANDER MACINNIS
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Appeal 2010-002240
Application 10/850,1301
Technology Center 2400
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Before CAROLYN D. THOMAS, JAMES R. HUGHES, and
ANDREW J. DILLON, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 20, 2004, claiming benefit of U.S. S/N 60/472,182
May 21, 2003. The real party in interest is Broadcom Corp. (Br. 1.)
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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1, 2, 5, 6,
9, and 10. Claims 3, 4, 7, 8, 11, and 12 have been canceled. (Br. 2.) We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal concerns a picture decoding circuit,
system, and method for decoding a picture by storing a portion of a picture.
The storing comprising storing pixels from two or more rows of the picture
in a data word. (Spec. ¶¶ [13]-[15]; Abstract.)2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A method for storing a portion of a picture, said
method comprising:
storing two or more horizontally adjacent chroma red
pixels from each of two or more rows of the picture and two or
more horizontally adjacent chroma blue pixels from each of two
or more rows of the picture in a data word.
Rejection on Appeal
The Examiner rejects claims 1, 2, 5, 6, 9, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over U.S. Patent No. 5,581,310, issued Dec.
3, 1996 (“Vinekar”) and Applicant’s (Appellant’s) Admitted Prior Art

2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”)
filed May 26, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed August 19, 2009.
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(“AAPA”).

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that the combination of Vinekar and
AAPA collectively would have taught or suggested “storing two or more
horizontally adjacent chroma red pixels from each of two or more rows of
the picture and two or more horizontally adjacent chroma blue pixels from
each of two or more rows of the picture in a data word” within the meaning
of Appellant’s claim 1 and commensurate limitations of claims 5 and 9?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.
ANALYSIS
Based on Appellant’s arguments (Br. 5-6), we select independent
claim 1 as representative of Appellant’s arguments and groupings with
respect to claims 1, 2, 5, 6, 9, and 10. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1
Appellant contends that the combination of Vinekar and AAPA does
not teach the features recited in claim 1. (Br. 5-6.) Specifically, Appellant
contends that:
the Examiner acknowledges that Vinekar fails to teach [the
recited features] per claim 1. The Examiner asserts that the
Applicant’s admitted prior art (AAPA) teaches these aspects of
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claim 1, citing paragraph 6 on page 3 of the specification of the
present application. Appellant disagrees. As the Examiner
himself points out, the cited excerpt of the specification of the
present application talks about storing chroma sample pairs
from a single scan line, that is, from a single row, in a data
word. Claim 1, in contrast, calls for “storing two or more
horizontally adjacent chroma red pixels from each of two or
more rows of the picture and two or more horizontally adjacent
chroma blue pixels from each of two or more rows of the
picture in a data word.” These limitations are not taught by the
AAPA. Nor are they taught by Vinekar, as acknowledged by
the Examiner.
(Br. 5-6 (emphasis, notations, and footnotes omitted).)
The Examiner sets forth a detailed explanation of the obviousness
rejections in the Examiner’s Answer with respect to each of the claims (Ans.
2-6) and, in particular, the rejection of claim 1. (Ans. 3-6.) Specifically, the
Examiner provides a detailed explanation including graphical examples of
his findings with respect to both Vinekar and AAPA. In particular the
Examine explains that “Vinekar . . . discloses, storing two or more
horizontally adjacent luminance pixels (i.e. pixels from each of rows 0-W,
1-W, 2-W and 3-W) from each of two or more rows (i.e. 0-W, 1-W, 2-W and
3-W) of the picture in a data word (i.e. 230-addr 0) [fig. 2b].” (Ans. 5.) The
Examiner further explains that “AAPA discloses, [sic] storing four
horizontally adjacent (i.e. data from a single scan line) chroma red pixels
from a row and four horizontally adjacent (i.e. data from a single scan line)
chroma blue pixels from a row in a data word [specification page 3, para.
06].” (Ans. 6.)
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate legal conclusion that
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the combination of Vinekar and AAPA teaches the disputed features of
claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 for the
reasons set forth in the Answer, which we incorporate herein by reference.
(Ans. 2-6.) Our additional analysis will be limited to the following points of
emphasis.
We initially note that a portion of the disputed limitation, “two or
more horizontally adjacent chroma red pixels from each of two or more rows
of the picture and two or more horizontally adjacent chroma blue pixels
from each of two or more rows of the picture in a data word” (claim 1), is
essentially non-functional descriptive material in that the limitation simply
requires storing the specified data in a data word. The data to be stored –
“horizontally adjacent chroma red pixels” and “horizontally adjacent chroma
blue pixels” – are not expressly utilized in the claim to do anything. As
such, the pixel data constitute non-functional descriptive material, which
merely recites what the information or data represents. The acts of “storing”
the pixel data are the same regardless of what the data constitutes, how the
data may be named, or the relationship among the data and do not further
limit the claimed invention either functionally or structurally. The
informational content of the data thus represents non-functional descriptive
material, which “does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003),
aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
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method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887-90 (discussing non-functional descriptive material).
Even if we arguendo ascribe some patentable weight to the limitation,
as explained by the Examiner, Vinekar discloses a data word storing at least
two horizontally adjacent luminance pixels from two rows (scan lines) of a
picture. (See Ans. 5; Vinekar, Fig. 2b.) Accordingly, we agree with the
Examiner’s conclusion that Vinekar would have taught or at least suggested
a data word including pixel data from horizontally adjacent pixels and two
scan lines (pixel data from each of two or more rows of the picture). (See
Ans. 5.) We also find that AAPA discloses, as found by the Examiner (Ans.
6), a data word storing pixel data from four horizontally adjacent chroma red
pixels and also four horizontally adjacent chroma blue pixels (from a single
scan line). (See Spec. ¶ [06].) Accordingly, we agree with the Examiner’s
conclusion that AAPA would have taught or at least suggested a data word
including data from at least two horizontally adjacent chroma red pixels and
chroma blue pixels. (See Ans. 6.) Thus, we also agree with the Examiner’s
ultimate conclusion that the combination of Vinekar and AAPA would have
taught or at least suggested a data word storing at least two horizontally
adjacent pixels from two scan lines (Ans. 6) – i.e., “storing two or more
horizontally adjacent chroma red pixels from each of two or more rows of
the picture and two or more horizontally adjacent chroma blue pixels from
each of two or more rows of the picture in a data word” (claim 1).
We also find Appellant’s contrary arguments unpersuasive of error in
the Examiner’s obviousness rejection of representative claim 1 in that
Appellant presents arguments with respect to the individual references rather
than the cited combination of references. (Br. 5-6.) One cannot show
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nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091(Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981). Appellant
also do not persuade us of error in the Examiner’s obviousness rejection of
independent claims 5 and 9 which include limitations of commensurate
scope or dependent claims 2, 6, and 10 (dependent thereon) not separately
argued with particularity. (Br. 6.) Accordingly, we affirm the Examiner’s
obviousness rejection of claims 1, 2, 5, 6, 9, and 10.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 1,
2, 5, 6, 9, and 10 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 5, 6, 9, and 10
under 35 U.S.C. § 103(a).

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

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