Ex Parte Negishi et al

Board of Patent Appeals and Interferences

Sep 29, 2011

09931577 (B.P.A.I. Sep. 29, 2011)

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.
09/931,577 08/17/2001 Shinji Negishi SON-2196 2196
7590 09/30/2011
RADER, FISHMAN & GRAUER, P.L.L.C
1233 20th Street, NW, Suite 501
Washington, DC 20036
EXAMINER
SHANG, ANNAN Q
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/30/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHINJI NEGISHI, HIDEKI KOYANAGI,
and YOICHI YAGASAKI
____________

Appeal 2010-003974
Application 09/931,577
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, JOHN A. JEFFERY, and
THU A. DANG, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 14, 27-30, 32-43, 45, 46, 48-52, 78, 95-109, and 116-
120. We have jurisdiction under 35 U.S.C. § 6(b), and we heard the appeal
on September 13, 2011.
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention provides a scene description conforming to the
state of a transmission line or receiver’s processing capability via scene
description and Elementary Stream (ES) processing and decoding units. See
generally Abstract; Fig. 1. Claim 27 is illustrative:
27. A data transmitting apparatus for transmitting a scene
description that describes at least one elementary stream (ES)
used to construct a scene, comprising:
an ES processing means that transfers at least one ES,
which conforms to at least one of a transmission line state and a
request issued from a receiving side;
a scene description processing means for transferring and
modifying a scene description, in accordance with the at least
one ES from the ES processing means, by adjusting the
properties assigned to the ES within the scene description.

The Examiner relies on the following as evidence of unpatentability:
Kalra US 5,953,506 Sept. 14, 1999
Appellants’ admitted prior art, Spec. 3:7–4:11 (“APA”).

THE REJECTIONS
1. The Examiner rejected claims 27-30, 32-39, and 95-104 under 35
U.S.C. § 102(e)2 as anticipated by Kalra. Ans. 3-8.3

1 This citation corresponds to the Examiner’s equivalent citation in
Paragraph 0010 of Appellants’ equivalent published application (US
2002/0031188 A1). See Ans. 9.
2 Although the Examiner cites § 102(e) as the statutory basis for this
rejection (Ans. 3), the cited Kalra patent actually qualifies as prior art under
§ 102(b) since it issued on September 14, 1999—more than one year before
Appellants’ U.S. filing date of August 17, 2001. We nevertheless deem this
error harmless since it does not affect our assessment of the merits of the
anticipation rejection.
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2. The Examiner rejected claims 1, 14, 27-30, 32-43, 45, 46, 48-52, 78,
105-109, and 116-1204 under 35 U.S.C. § 103(a) as unpatentable over
Kalra and APA. Ans. 8-14.

THE ANTICIPATION REJECTION
Regarding representative claim 27, the Examiner finds that Kalra
discloses every recited feature including (1) an ES processing means that
transfers an ES which the Examiner equates to Kalra’s geometry, texture,
and material data, and (2) a scene description processing means that is said
to transfer and modify a scene description according to the ES by adjusting
properties assigned to the ES within the scene description as claimed. Ans.
3, 15-22. In this finding, the Examiner equates the following elements in
Kalra to the recited scene description: (1) spatial data structures and object
lists within nodes (Ans. 16); (2) global, spatial partitioning, and base data
(Ans. 17); or (3) scene graph data (Ans. 18-19).
Appellants argue that Kalra does not disclose the recited ES and scene
description processing means, let alone identify separate scene description

3 Throughout this opinion, we refer to (1) the Appeal Brief filed July 16,
2009; (2) the Examiner’s Answer mailed September 16, 2009; and (3) the
Reply Brief filed November 16, 2009.
4 Although the Examiner’s rejection (1) includes claims 110-115 that were
cancelled by an amendment after final rejection filed on January 8, 2009 that
the Examiner entered (see Advisory Action mailed Feb. 3, 2009), and (2)
omits claims 116-120 added via that amendment, we nonetheless deem this
error harmless and present the correct claim listing here for clarity. Since
the Examiner indicates that claims 116-120 are rejected in the same manner
as cancelled claims 110-115 (see Advisory Action, at 2)—a finding that is
undisputed—we presume that the Examiner intended to reject claims 116-
120 here. Accord App. Br. 4 (indicating that claims 110-115 are cancelled,
and claims 116-120 are rejected in the Brief’s “Status of Claims” section).
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and ES elements as claimed. App. Br. 9-13; Reply Br. 3-7. Kalra is also
said to not modify properties assigned to the ES within the scene description
as claimed. Id. Appellants also contend that Kalra fails to disclose various
limitations of claims 33 and 34 noted below. The issues before us, then, are
as follows:

ISSUES
Under § 102, has the Examiner erred by finding that Kalra discloses:
(1)(a) an ES processing means that transfers an ES conforming to at
least one of a transmission line state and a request from a receiving side, and
(b) a scene description processing means for transferring and modifying a
scene description according to the ES by adjusting properties assigned to the
ES within the scene description as recited in claim 27?
(2) the scene description processing means transfers a scene
description (a) specifying whether the at least one ES is to be used to
construct a scene are used or not as recited in claim 33, and (b) whose
complexity conforms to the at least one ES as recited in claim 34?

FINDINGS OF FACT (FF)
1. We adopt the Examiner’s findings regarding Kalra’s disclosure as
our own. Ans. 3, 15-22.
2. Appellants refer to ESs as the motion picture signal, acoustic
signal, and others that are encoded in compliance with the ISO/IEC 13818
(i.e., MPEG2) standard. Spec. 1:16-19.
3. “[D]ata describing the construction of a scene shall be referred to
as a scene description. The scene description may include ES information
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that is needed to decode an ES to be used to construct a scene.” Spec. 7:7-
11.

ANALYSIS
Claims 27-30, 32, and 35-39
We begin by construing key limitations of representative claim 27,
namely a scene description and an ES. Appellants define a “scene
description” as “data describing the construction of a scene.” FF 3.
Appellants also define an ES as various signals encoded according to the
MPEG2 standard. FF 2.
Based on these definitions, we are not persuaded of error in the
Examiner’s findings that Kalra meets the recited ES and scene description
processing means. As noted above, the Examiner finds various elements of
Kalra fully meet a scene description (see Ans. 16-19), including Kalra’s
essential global data 700A, spatial partitioning data 700B, and base data for
visible scene graph leafs as shown in Figure 18A (Ans. 17). We see no error
in this interpretation, for this data is transmitted in an initial stream 700
distinct from subsequent dynamic streams 702 containing (1) additional base
data 702A, and (2) non-essential global data 702E as the Examiner indicates.
Id. Notably, these subsequent streams also include geometry, texture, and
material data 702B-D which the Examiner equates to the recited ESs—an
undisputed finding.
We see no error in the Examiner’s finding that this additional
streamed data in Kalra modifies the initially-streamed scene description
according to the ES, at least with respect to its constituent global and base
data. Moreover, we see no reason why at least some properties assigned to
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the ES within the scene description would not be adjusted in light of this
sequential modification. Not only are these findings regarding separate ESs
and scene descriptions reasonable on this record, Appellants do not squarely
address—let alone persuasively rebut—these particular findings. See App.
Br. 9-13; see also Reply Br. 3-7 (same). Appellants’ arguments regarding
Kalra’s 3D streaming capabilities and Virtual Reality Modeling Language
(VRML) (id.), while generally relevant to the Examiner’s position, do not
particularly show error in the Examiner’s specific mapping noted above, let
alone show how or why these findings are erroneous in light of the disclosed
definitions of ES and scene description. See FF 2-3.
We therefore are unpersuaded of error in the Examiner’s findings that
Kalra’s scalable streaming system discloses features at least equivalent to
Appellants’ disclosed ES and scene description processing means. We
therefore sustain the Examiner’s rejection of representative claim 27 and
claims 28-30, 32, and 35-39 not separately argued with particularity.

Claims 33 and 98
We likewise sustain the Examiner’s rejection of representative claim
33 since Appellants have not shown error in the Examiner’s position (Ans.
22-23) based on the functionality of Kalra’s Figure 25 which specifies that
shape, material, and texture information—data that is said to correspond to
the recited ES as noted previously—is used, at least in part, to construct a
scene. Appellants’ contention that Kalra does not distinguish a scene
description from an ES (App. Br. 13; Reply Br. 7) is unavailing and, in any
event, does not squarely address—let alone persuasively rebut—the
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Examiner’s position which we find reasonably supported by the
preponderance of the evidence on this record.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 33, and claim 98 which recites commensurate
limitations.

Claims 34 and 99
We reach a similar conclusion regarding representative claim 34.
Here again, Appellants (App. Br. 14; Reply Br. 8) do not squarely address—
let alone persuasively rebut—the Examiner’s position based on Kalra’s
shape, material, and texture information (which correspond to the ESs as
noted previously) that would provide at least some level of complexity to
which the scene description would conform. See Ans. 23.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 34, and claim 99 which recites commensurate
limitations.

THE OBVIOUSNESS REJECTION
For similar reasons, we also sustain the Examiner’s obviousness
rejection of claims 1, 14, 27-30, 32-43, 45, 46, 48-52, 78, 105-109, 116-120
over Kalra and APA. Ans. 8-14. Although Appellants nominally argue
various claim groupings separately in connection with this rejection, as the
Examiner indicates (Ans. 24-25), these arguments essentially reiterate
previously-noted alleged shortcomings of Kalra, and add that APA does not
cure those deficiencies. See App. Br. 19-29; Reply Br. 13-24. We are
therefore not persuaded that the Examiner’s position based on Kalra and
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APA collectively teaching and suggesting the disputed limitations is
erroneous.5 We also find that the Examiner’s reason to combine the
teachings of these references is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion.
We reach the same conclusion regarding claims 46 and 109, but add
that merely reciting the language of these claims (App. Br. 26, 29; Reply Br.
21, 24) is not a separate patentability argument. See 37 C.F.R. §
41.37(c)(1)(vii); see also In re Lovin, No. 2010–1499, slip op., 2011 WL
2937946 (Fed. Cir. July 22, 2011), at *7 (“[T]he Board reasonably
interpreted Rule 41.37 to require 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.”).

CONCLUSION
The Examiner did not err in rejecting (1) claims 27-30, 32-39, and 95-
104 under § 102, and (2) claims 1, 14, 27-30, 32-43, 45, 46, 48-52, 78, 105-
109, and 116-120 under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 14, 27-30, 32-43, 45, 46,
48-52, 78, 95-109, and 116-120 is affirmed.

5 Although the Examiner rejected claims 27-30 and 32-39 under both §§ 102
and 103 (compare Ans. 3 with Ans. 8), we nonetheless find any error
associated with this inconsistency harmless on this record since Appellants
have not shown error in the Examiner’s findings that all disputed limitations
are taught by Kalra or, alternatively, collectively over Kalra and APA.
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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

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