Ex Parte Peng et al

Board of Patent Appeals and Interferences

Sep 22, 2008

09758647 (B.P.A.I. Sep. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WEN-HSIAO PENG
and YEN-KUANG CHEN
____________

Appeal 2008-1126
Application 09/758,6471
Technology Center 2600
____________

Decided: September 22, 2008
____________

Before MAHSHID D. SAADAT, SCOTT R. BOALICK,
and JOHN A. JEFFERY, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed January 10, 2001. The real party in interest is Intel
Corporation.
Appeal 2008-1126
Application 09/758,647

2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-24.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants' invention relates to an encoding process for video data.
(Spec., Abstract.)
Claim 1 is exemplary:
1. A method comprising:

generating a first body of data being sufficient to permit
generation of a viewable video sequence of lesser quality than
is represented by a source video sequence;

generating a second body of data being sufficient to
enhance the quality of the viewable video sequence generated
from the first body of data, the second body of data being
generated by subtracting a reconstructed body of data from a
subsection of the source video sequence, wherein the
reconstructed body of data is selected from a group of at least
two separate reconstructed bodies of data, and wherein the
second body of data includes an enhancement layer that
captures differences between the viewable video sequence and
the source video sequence; and

predicting a subsection of the enhancement layer
according to a prediction mode of a plurality of prediction
modes, the plurality of prediction modes including prediction
using the source video sequence and a combination of a
previous enhancement frame and the first body of data.

2 Claims 25 and 26 have been withdrawn.
Appeal 2008-1126
Application 09/758,647

3
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ueno US 5,436,665 Jul. 25, 1995
Li US 2002/0080878 A1 Jun. 27, 2002
(filed Oct. 12, 2001)3

Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Ueno and Li.

Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).4

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) as being obvious over the
disclosures of Ueno and Li.

3 Li claims priority under 35 U.S.C. § 119(e) to provisional patent
application no. 60/239,676, filed Oct. 12, 2000.
4 Except as will be noted in this opinion, Appellants have not presented any
substantive arguments directed separately to the patentability of the
dependent claims. In the absence of a separate argument with respect to
those claims, they stand or fall with the representative independent claim.
See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2008-1126
Application 09/758,647

4
PRINCIPLES OF LAW
All timely filed evidence and properly presented arguments are
considered by the Board in resolving an obviousness issue on appeal. See In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472.
When that burden is met, the burden then shifts to the Applicant to rebut.
Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding
rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence
of adequate weight, the prima facie case of unpatentability is dissipated. In
re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in
view of the entire record. Id. However, on appeal to the Board it is the
Appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) ("On appeal to the Board, an applicant can
overcome a rejection [for obviousness] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). In KSR, the Supreme Court reaffirmed that "[t]he combination
Appeal 2008-1126
Application 09/758,647

5
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Id. at 1739.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d at 988. "To facilitate review, this
analysis should be made explicit." KSR, 127 S. Ct. at 1741. However, "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id.
An obviousness rejection can be based on a reference that happens to
anticipate the claimed subject matter. See In re Meyer, 599 F.2d 1026, 1031
(CCPA 1979). In sustaining a multiple reference rejection under 35 U.S.C.
§ 103(a), the Board may rely on one reference alone without designating it
as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961);
In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966).
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
Appeal 2008-1126
Application 09/758,647

6
ANALYSIS
Appellants contend that the Examiner erred in rejecting claims 1-24 as
being obvious over Ueno and Li. Reviewing the record before us, we do not
agree. In particular, we find that Appellants have not shown that the
Examiner failed to make a prima facie showing of obviousness with respect
to claims 1-24. Appellants failed to meet the burden of overcoming that
prima facie showing.

Claims 1-5, 8-13, 16-21, and 24
Appellants have argued claims 1-5, 8-13, 16-21, and 24 together as a
group. (Br. 6-11.) Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii),
we select claim 1 as representative.
Appellants argue that Ueno and Li do not teach or suggest "the second
body of data being generated by subtracting a reconstructed body of data
from a subsection of the source video sequence," "wherein the second body
of data includes an enhancement layer that captures differences between the
viewable video sequence and the source video sequence," and "predicting a
subsection of the enhancement layer according to a prediction mode of a
plurality of prediction modes, the plurality of prediction modes including
prediction using the source video sequence and a combination of a previous
enhancement frame and the first body of data," as claimed. (Br. 5-11.)
In particular, Appellants argue that "the prediction signal generated by
Ueno is never stored, and therefore, cannot be used in combination with the
base layer to predict an enhancement layer" and "[i]n addition, Ueno is
devoid of any teachings regarding a base layer and a combination of the base
layer with one or more enhancement layers to provide fine granularity
Appeal 2008-1126
Application 09/758,647

7
scaling or FGS." (Br. 5; see also Br. 8-11.) Appellants also argue that "the
high resolution signal [of Ueno] referred to by the Examiner does not
capture differences between the viewable video sequence and the source
video sequence" (Br. 8; see also Br. 7) and "the prediction signal [of Ueno]
is not based on differences between a reconstructed signal and the input
picture signal, but is in fact formed by selecting a prediction candidate that
yields the smallest difference when subtracted from the input picture signal
to provide the prediction error" (Br. 11). Appellants further argue that there
is no motivation to combine the teachings of Ueno and Li and that the
Examiner used improper hindsight. (Br. 9-10.) We do not agree.
Initially, as noted by the Examiner (Ans. 7), we observe that claim 1
does not recite storing a signal, does not recite a base layer, and does not
recite providing fine granularity scaling (FGS), and thus the Appellants'
arguments regarding these features are not commensurate with the scope of
the claim.
The Examiner correctly found (Ans. 9) that:
The high resolution picture at the output from adder 24 of
Ueno, which represents the combination of the prediction signal
output from predictor 104 and IDCT signal from inverse DCT
23, is being stored in frame memory 27 as the previous high
resolution picture. The predictor 104 of Ueno therefore uses
the previous high resolution picture stored in frame memory 27
as part of the motion estimation predictions, as described at
column 8, lines 11-27, and column 8, line 59 to column 9, line
29 of Ueno.

(Ans. 9.) The Examiner reasoned that "the high resolution signal generated
by Ueno is equivalent to one or more enhancement layers" (Ans. 9) or
obvious in view of the enhancement layer teachings of Li (id.). The
Appeal 2008-1126
Application 09/758,647

8
Examiner also noted that, similar to the teachings of Ueno, "applicant's
Figure 6 also provides a frame buffer 1 for storing a previous enhancement
frames generated from the combination of the prediction signal 684 and
IDCT signal, to be used for motion estimation prediction." (Ans. 9.)
Therefore, we agree with the Examiner that Ueno fully discloses a prediction
mode "including prediction using the source video sequence and a
combination of a previous enhancement frame and the first body of data," as
claimed.
The claim broadly recites that the second body of data includes an
enhancement layer, and the enhancement layer captures differences between
the viewable video sequence and the source video sequence. The Examiner
found that Ueno "does not particularly teach" that the second body of data
includes an enhancement layer, but the Examiner "considered [it] obvious
that the high resolution signal generated by the second body of Ueno et al is
equivalent to the one or more enhancement layers as claimed." (Ans. 5.) As
explained infra, we agree with the Examiner that Ueno teaches a second
body of data that includes an enhancement layer and also teaches that the
enhancement layer captures differences between the viewable video
sequence and the source video sequence. Nevertheless, the Examiner turned
to Li for the disclosure of "a video apparatus and method for digital video
enhancement" that "teaches the conventional enhancement layer
generation[]." (Ans. 5-6.) The disclosure of Li further buttresses the
Examiner's prima facie case of obviousness.
The Examiner correctly found that:
Ueno at column 8, line 59 to column 9, line 8 clearly teaches
the calculation of differences between the (a) low resolution
picture [i.e., viewable video sequence], high resolution picture,
Appeal 2008-1126
Application 09/758,647

9
and intra-frame prediction picture derived from the predictor
and prediction mode decision unit 104, and (b) the input picture
[i.e., source video sequence] to select a prediction mode. The
low resolution picture for example is representative of the
viewable video sequence and the input picture signal is
representative of the source video sequence, and therefore the
high resolution picture signal as derived from the second unit
(i.e., elements 100, 101, 12, 17-24, 27, 104 of Ueno) is based
on the difference between [or, in the terminology of the claim,
"captures differences between"] the viewable video sequence
and the source video sequence.

(Ans. 8.) Therefore, we agree with the Examiner that Ueno fully discloses a
second body of data that includes "an enhancement layer that captures
differences between the viewable video sequence and the source video
sequence," as claimed.
The Examiner also correctly found "that the second body of Ueno as
provided by elements 100, 101, 12, 17-24, 27, 104 of Figure 1 is
nevertheless generated by subtracting [using subtracter 12] a reconstructed
body of data (i.e., output of 104 of Figure 1) from a subsection of the source
video sequence (i.e., output of 101 of Figure 1), as claimed." (Ans. 11.)
Therefore, we agree with the Examiner that Ueno fully discloses a "second
body of data being generated by subtracting a reconstructed body of data
from a subsection of the source video sequence," as claimed.
We do not agree with Appellants' argument that there is no motivation
to combine or that the Examiner used improper hindsight in combining the
disclosures of Ueno and Li. As discussed supra, we agree with the
Examiner (Ans. 5-6) that Ueno teaches or suggests the recited enhancement
layer under the broadest reasonable interpretation of the claim consistent
with the Specification. The Examiner turned to Li for the disclosure of
Appeal 2008-1126
Application 09/758,647

10
conventional enhancement layer generation, and thus Li further buttresses
the Examiner's prima facie case of obviousness. Both Ueno and Li relate to
video coding (Ueno, Abstract; Li, Abstract), and the Examiner articulated a
rationale with rational underpinnings to combine the disclosures of Ueno
and Li (Ans. 5-6, 10).
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Claims 2-5,
8-13, 16-21, and 24 were argued as a group with claim 1, and fall together
with claim 1.5

Claims 6, 14, and 22
Appellants have argued claims 6, 14, and 22 together as a group.
(Br. 12-15.) Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 6 as representative.
Appellants argue that "the combination or modification of Ueno in
view of Li would fail to teach or suggest the selection of the reconstructed
body of data as indicated in syntax of a bit stream transmitted from an
encoder, as recited by the claimed invention." (Br. 14.) Appellants further

5 We note that independent claim 9 appears to be directed to non-statutory
subject matter. Claim 9 recites "a computer readable medium." The
Specification teaches that "computer and/or machine readable media" may
be "electrical, optical, acoustical and other forms of propagated signals (e.g.,
carrier waves, infrared signals, digital signals, etc.)." (Spec. 18:18 to 19:1.)
Therefore, a computer readable medium appears to include a signal
embodied in a carrier wave. But a signal embodied in a carrier wave is not
statutory subject matter because it does not fall within any of the four
categories of statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007).
Appeal 2008-1126
Application 09/758,647

11
argue that there is no motivation to combine the teachings of Ueno and Li
and that the Examiner used improper hindsight. (Br. 13.) We do not agree.
We agree with the Examiner that, "regarding the selection of the
reconstructed body as indicated in syntax of a bitstream transmitted from an
encoder, such features are considered inherent in the MPEG system as
disclosed within Ueno (see column 9, lines 38-53)." (Ans. 13.) In
particular, Ueno, at column 9, lines 49-51, teaches that "[t]he prediction
mode is subjected to variable-length coding as type information and
multiplexed for each prediction unit (e.g., a macroblock for MPEG)."
Therefore, the disclosure of Ueno renders obvious the subject matter claimed
by claim 6.
Also, as discussed above with respect to claim 1, we do not agree that
the Examiner used improper motivation or impermissible hindsight in
combining Ueno and Li.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 6 under 35 U.S.C. § 103(a). Claims 14
and 22 were argued as a group with claim 6, and fall together with claim 6.

Claims 7, 15, and 23
Appellants have argued claims 7, 15, and 23 together as a group.
(Br. 15-18.) Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 7 as representative.
Appellants argue that "the combination or modification of Ueno in
view of Li would fail to teach or suggest a first set of motion vectors used to
generate the first body of data and the first set of motion vectors are used to
generate the second body of data, as recited by the claimed invention."
Appeal 2008-1126
Application 09/758,647

12
(Br. 17.) In particular, Appellants argue that "although low resolution
prediction selection circuit [of Ueno] uses a motion vector from high
resolution prediction selection circuit 131, this motion vector is completely
distinct from the motion vector generated by high resolution prediction
circuit 134." (Br. 17.) Appellants further argue that there is no motivation
to combine the teachings of Ueno and Li and that the Examiner used
improper hindsight. (Br. 15.) We do not agree.
As the Examiner correctly found, Ueno teaches "that a motion vector
generated by prediction selector 132[,] corresponding to the optimal
predictive signal[,] is sent to prediction mode decision unit 135, and
prediction mode decision unit 135 will select a motion vector which
minimizes the prediction error from among all the received motion vectors
generated by circuits 131, 132, and 134." (Ans. 13-14; Ueno, col. 9, l. 57 to
col. 10, l. 22, Fig. 5.) The Examiner recognized "that the motion vectors
generated by circuits 131, 132, and 134 of Ueno are distinct from each other,
as explained by the appellants, but it is nevertheless that [sic] the motion
vector generated by prediction selector 132 represents the first set of motion
vectors." (Ans. 14.) Because "the prediction mode decision unit 135 may
select the motion vector (first set of motion vectors) generated by prediction
selector 132 to generate the second body of data," (Ans. 14) the Examiner
found that Ueno "reads on the claimed features of wherein the first set of
motion vectors are used to generate the first body of data and the first set of
motion vectors are used to generate the second body of data" (Ans. 14).
Under the broadest reasonable interpretation of the claim consistent
with the Specification, we agree with the Examiner that Ueno renders
obvious the claimed subject matter. Claim 7 broadly recites that the first set
Appeal 2008-1126
Application 09/758,647

13
of motion vectors are used to generate the first body of data and the second
body of data. The plain language of claim 7 does not preclude intermediate
steps in using the first set of motion vectors to generate either the first body
of data or the second body of data. Thus, the first set of motion vectors
generated by prediction selector 132 may be used in the intermediate step of
being selected by prediction mode decision unit 135, and then the selected
motion vector is used to generate the second body of data. Because the
claim is broadly worded, we do not find error with the Examiner's claim
interpretation or findings regarding Ueno.
Also, as discussed above with respect to claim 1, we do not agree that
the Examiner used improper motivation or impermissible hindsight in
combining Ueno and Li.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 7 under 35 U.S.C. § 103(a). Claims 15
and 23 were argued as a group with claim 7, and fall together with claim 7.

CONCLUSION OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-24 for obviousness under 35 U.S.C. § 103.

DECISION
The rejection of claims 1-24 for obviousness under 35 U.S.C. § 103 is
affirmed.

Appeal 2008-1126
Application 09/758,647

14
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

KIS

John P. Ward
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, L.L.P.
Seventh Floor
12400 Wilshire Boulevard
Los Angeles, CA 90025-1026