Ex Parte Puri et al

Board of Patent Appeals and Interferences

Mar 31, 2008

09793035 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ATUL PURI,
YINGWEI CHEN, and HAYDER RADHA
____________

Appeal 2007-3241
Application 09/793,0351
Technology Center 2600
____________

Decided: March 31, 2008
____________

Before ALLEN R. MACDONALD, SCOTT R. BOALICK,
and MARC S. HOFF, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed February 26, 2001. The real party in interest is
Koninklijke Philips Electronics N.V.
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-12, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants' invention relates to a method of video compression that
uses multiple base layer frames to produce each of the enhancement layer
frames. (Spec. 1:1-4.) In the words of the Appellants:
according to the present invention, using a wider
locality of base layer pictures may serve as a better
source for generating the enhancement layer
frames for any particular picture, as compared to a
single temporally co-located base layer frame.

(Spec. 8:2-6.)

Claims 1 and 5 are exemplary:
1. A method for coding video data,
comprising:

coding a portion of the video data to produce base
layer frames;

generating residual images from the video data and
the base layer frames utilizing multiple base layer
frames for each of the residual images; and

coding the residual images with a fine granular
scalability technique to produce enhancement layer
frames.
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5. A method of decoding a video signal
including a base layer and an enhancement layer,
comprising:

decoding the base layer to produce base layer
video frames;

decoding the enhancement layer with a fine
granular scalability technique to produce
enhancement layer video frames; and

combining each of the enhancement layer video
frames with multiple base layer video frames to
produce output video.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wu US 6,614,936 B1 Sep. 2, 2003
(filed Dec. 3, 1999)

Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Wu.
Claims 11 and 12 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

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
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been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).2

ISSUE
The first issue is whether Appellants have shown that the Examiner
erred in rejecting claims 1-12 under 35 U.S.C. § 103(a). The issue turns on
whether Wu teaches or suggests using multiple base layer frames for each
enhancement layer frame.
The second issue is whether Appellants have shown that the Examiner
erred in rejecting claims 11 and 12 under 35 U.S.C. § 101.

PRINCIPLES OF LAW
On appeal, all timely filed evidence and properly presented arguments
are considered by the Board. 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

2 Except as will be noted in this opinion, Appellants have not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. 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).
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view of the entire record. Id. However, on appeal to the Board it is an
appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred.
"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
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Id. at 1739. The Court
explained:
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.

Id. at 1740.
The level of ordinary skill in the art may be evidenced by the prior art
references. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
("Although the Board did not make a specific finding on skill level, it did
conclude that the level of ordinary skill in the art . . . was best determined by
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appeal to the references of record . . . . We do not believe that the Board
clearly erred in adopting this approach."); see also In re Oelrich, 579 F.2d
86, 91 (CCPA 1978) ("the PTO usually must evaluate both the scope and
content of the prior art and the level of ordinary skill solely on the cold
words of the literature").
"[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 977, 988 (Fed. Cir. 2006). "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.

ANALYSIS
Appellants contend that the Examiner erred in rejecting claims 1-12 as
being obvious over Wu and in rejecting claims 11 and 12 as being directed
to non-statutory subject matter. Reviewing the record before us, we do not
agree that the Examiner erred in rejecting claims 1-12 as being obvious. In
particular, we find that the Appellants have not shown that the Examiner
failed to make a prima facie showing of obviousness with respect to claims
1-12. Appellants failed to meet the burden of overcoming that prima facie
showing. However, we agree with Appellants that the Examiner erred in
rejecting claims 11 and 12 as being directed to non-statutory subject matter.

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Rejections under 35 U.S.C. § 103(a)
Appellants have argued claims 1-4, 9, and 11 together as a group.
(Br. 6-7.) Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select
claim 1 as representative.
Appellants argue that Wu does not teach or suggest generating
residual images using multiple base layer frames for each residual image, as
claimed. (Br. 6-7.) We do not agree.
The Examiner found that Figures 1, 4, and 9 of Wu disclose residual
images being produced using multiple base layer frames. (Ans. 3-4; Final
Office Action 3.) Discussing Figure 4, the Examiner explained that "[e]ach
of the base layer and enhancement layers comprises a plurality of frames,
which indicates . . . [that] the residual effectively derives from the frames of
that base layer and enhancement layers." (Ans. 3.) The Examiner further
found that the "[c]onfiguration of base layer frames and enhancement layer
frames taught by Wu corresponds to the frame arrangement depicted in
Appellant's invention figures 3-5." (Ans. 3.) We agree with these findings.
We note that in Figure 1 of Wu there is an arrow from the base layer
28 of frame 22 to the first enhancement layer 30 of frame 24 and there also
is an arrow from the base layer 28 of frame 24 to the first enhancement layer
30 of frame 24. (Wu Figure 1.) In addition, there is an arrow from the base
layer 28 of frame 24 to the first enhancement layer 30 of frame 26 and there
also is an arrow from the base layer 28 of frame 26 to the first enhancement
layer 30 of frame 26. (Wu Figure 1.) These arrows indicate that the first
enhancement layer 30 of frame 24 is generated using both the base layer 28
of frame 22 and the base layer 28 of frame 24, and that the first enhancement
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layer 30 of frame 26 is generated using both the base layer 28 of frame 24
and the base layer 28 of frame 26.
Similarly, in Figure 4 of Wu there is an arrow from the base layer 102
of frame 1 to the first enhancement layer 104 of frame 2 and there also is an
arrow from the base layer 102 of frame 2 to the first enhancement layer 104
of frame 2. (Wu Figure 4.) In addition, there is an arrow from the base
layer 102 of frame 3 to the first enhancement layer 104 of frame 4 and there
also is an arrow from the base layer 102 of frame 4 to the first enhancement
layer 104 of frame 4. (Wu Figure 4.) These arrows indicate that the first
enhancement layer 104 of frame 2 is generated using both the base layer 102
of frame 1 and the base layer 102 of frame 2, and that the first enhancement
layer 104 of frame 4 is generated using both the base layer 102 of frame 3
and the base layer 104 of frame 4.
Furthermore, we note that in discussing Figure 4, Wu teaches that "the
even frames are predicted from the even layers of the preceding frame and
the odd frames are predicted from the odd layers of the preceding frame,"
(Wu col. 6, ll. 20-23) and "[i]n addition, the correlation between a lower
layer and a next higher layer within the same frame can also be exploited to
gain more coding efficiency" (Wu col. 6, ll. 30-33). We also note that Chen,
U.S. Patent No. 6,057,884, issued May 2, 2000, which was listed on a Form
PTO-892 dated July 23, 2004, teaches using two base layer frames 510, 530
to produce an enhancement layer frame 524. (Chen col. 13, ll. 42-50, col.
14, ll. 17-20; Fig. 5.) Thus, a person of ordinary skill in the art at the time of
the invention would have known to use two base layer frames to produce an
enhancement layer frame.
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Appellants have not persuasively demonstrated error in the Examiner's
findings. Indeed, Appellants have not even addressed the Examiner's
findings regarding Figure 4 in the Brief.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Claims 2-4,
9, and 11 were argued as a group with claim 1, and fall together with
claim 1.
Appellants have argued claims 5-8, 10, and 12 together as a group.
(Br. 8.) Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select
claim 5 as representative.
Appellants argue that Wu does not teach or suggest combining an
enhancement layer video frame with multiple base layer video frames, as
claimed. (Br. 8.) In particular, Appellants argue that although the Examiner
refers to Wu's Figures 1 and 9 for the teaching of forming an enhancement
layer frame based on multiple base layer frames, "Wu's FIGs. 1 and 9
illustrate an encoder that produces encoded signals, and do not illustrate a
decoder that produces video frames, and thus cannot be said to teach the
details of such a decoder." (Br. 8.) We do not agree.
Wu teaches that "[w]ith layered coding, the various layers can be sent
over the network as separate sub-streams, where the quality level of the
video increases as each sub-stream is received and decoded." (Wu col. 2,
ll. 25-28.) Wu also teaches that "a decoder can be configured to choose and
decode a particular subset of these layers to get a particular quality
according to its preference and capability." (Wu col. 2, ll. 35-38.)
Therefore, Wu teaches that it would have been well within the ordinary level
of skill in the art to decode an encoded signal where the encoded signal used
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a particular encoding scheme. Accordingly, Wu teaches or suggests a
method of decoding a video signal by decoding the base layer to produce
base layer video frames, decoding the enhancement layer to produce
enhancement layer video frames, and then combining each enhancement
layer video frame with multiple base layer video frames to product output
video, as claimed.
Moreover, it would have been common sense for one of ordinary skill
in the art to have decoded an encoded video signal to produce video output
in a manner corresponding to the particular method of encoding. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (citing KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007))
("Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not."). In
particular, it would have been common sense for one of ordinary skill in the
art to have decoded a video signal, where the video signal had been encoded
using multiple base layer frames for each enhancement layer video frame, by
decoding the base layer to produce base layer video frames, decoding the
enhancement layer to produce enhancement layer video frames, and then
combining each of the enhancement layer video frames with multiple base
layer video frames to produce output video. As discussed with respect to
claim 1, such an encoding scheme for the encoded video signal would have
been obvious over Wu.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a). Claims 6-8,
10, and 12 were argued as a group with claim 5, and fall together with
claim 5.
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Rejections under 35 U.S.C. § 101
We agree with Appellants (Br. 9) that the Examiner erred in rejecting
claims 11 and 12 under 35 U.S.C. § 101. The Examiner found that these
claims are directed to non-statutory functional descriptive material because
claim 11 recites "A computer readable memory medium including code for
encoding video data" and claim 12 recites "A computer readable memory
medium including code for decoding a video signal." (Ans. 3-4; Final
Office Action 2.)
The Specification teaches that:
In one embodiment, the coding and decoding
employing the new scalability structure according
to the present invention is implemented by
computer readable code executed by the system.
The code may be stored in the memory 72 or
read/downloaded from a memory medium such as
a CD-ROM or floppy disk. In other embodiments,
hardware circuitry may be used in place of, or in
combination with, software instructions to
implement the invention.

(Spec. 19:17 to 20:1.)
We find that the "computer readable memory medium" recited by
claims 11 and 12 is in reference to the "memory medium" discussed in the
Specification. The term "memory medium" does not include a carrier signal
or descriptive material per se. Thus, interpreting claims 11 and 12 in light of
the Specification, we do not find that claims 11 and 12 are directed to non-
statutory functional descriptive material. Instead, claims 11 and 12 are
directed to functional descriptive material stored on a computer readable
medium, and therefore are statutory. See In re Lowry, 32 F.3d 1579,
1583-84 (Fed. Cir. 1994),
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Accordingly, we conclude that Appellants have shown that the
Examiner erred in rejecting claims 11 and 12 under 35 U.S.C. § 101.

CONCLUSION OF LAW
We conclude that:
(1) Appellants have not shown that the Examiner erred in rejecting
claims 1-12 for obviousness under 35 U.S.C. § 103.
(2) Appellants have shown that the Examiner erred in rejecting
claims 11 and 12 under 35 U.S.C. § 101.

DECISION
The rejection of claims 1-12 for obviousness under 35 U.S.C. § 103 is
affirmed.
The rejection of claims 11 and 12 under 35 U.S.C. § 101 is reversed.
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

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