Ex Parte Rose

Patent Trial and Appeal Board

Nov 23, 2016

12274323 (P.T.A.B. Nov. 23, 2016)

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.
12/274,323 11/19/2008 Kenneth Rose 032052-3254.US06 1035
25096 7590 11/28/2016
PFRKTNN TOTF TIP- NFA General
EXAMINER
PATENT-SEA HESS, MICHAEL J
P.O. BOX 1247
SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
11/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH ROSE
Appeal 2015-003066
Application 12/274,323
Technology Center 2400
Before JASON V. MORGAN, JUSTIN BUSCH, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1, 4—13, 16, 17, 22, 23, 25—29, 34, 35, 37-41 and 45—67.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Wasinoski Proctor,
LLC. App. Br. 2.
Appeal 2015-003066
Application 12/274,323
THE INVENTION
Appellant’s invention relates to:
A scalable predictive coder in which the current frame of
data is predicted at the enhancement-layer by processing and
combining the reconstructed signal at: (i) the current base-layer
(or lower layers) frame; and (ii) the previous enhancement layer-
frame. The combining rule takes into account the compressed
prediction error of the base-layer, and the parameters used for its
compression.
Abstract.
Exemplary independent claim 1 is reproduced below.
1. An encoder for performing scalable predictive coding, the
encoder comprising:
a base layer encoder configured to reconstruct base layer
data representing a current base layer frame to create
reconstructed base layer data, the reconstruction performed using
a base layer compression parameter, the base layer compression
parameter comprising at least one of a quantized base layer
residual, a quantization interval, or a partition region; and
an enhancement layer encoder configured to:
store, in a delay component, previous frame
reconstructed enhancement layer data generated from
processing a previous frame of enhancement layer data;
receive, distinct from the base layer data
representing the base layer frame, the base layer
compression parameter;
obtain, from the delay component, the previous
frame reconstructed enhancement layer data;
reconstruct enhancement layer data representing the
current frame based at least in part on the previous frame
reconstructed enhancement layer data; and
predict enhancement layer data representing the
current enhancement layer frame by processing and
combining the reconstructed base layer data and the
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previous frame reconstructed enhancement layer data,
wherein the predicting enhancement layer data
representing the current enhancement layer frame uses the
received base layer compression parameter.
REFERENCES and REJECTIONS
1. Claims 1,7, 13, 25, 37, and 64—66 are rejected under 35 U.S.C.
§112 first paragraph (pre-AIA), as failing to comply with the written
description requirement. Non-Final Act. 9.
2. Claims 46, 49, 52, 55, and 58 are rejected under 35 U.S.C.
§112 first paragraph (pre-AIA), for lack of enablement. Non-Final Act. 9.
3. Claims 1, 13, 25, 37, 66, and 67 are rejected under 35 U.S.C.
§112 second paragraph (pre-AIA), as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention. Non-Final Act. 10.
4. Claims 1, 13, and 66 are rejected under 35 U.S.C. § 112 second
paragraph (pre AIA), as including means-plus-fimction limitations without
disclosing corresponding structure, material, or acts for the claimed
functions. Non Final Act. 11.
5. Claims 1, ^U13, 16, 17, 22, 23, 25-29, 34, 35, 37^11, and 45-
67 are rejected under 35 U.S.C. § 102(b) as being anticipated by Home et al.
(US 5,515,377, issued May 7, 1996). Non-Final Act. 13.
6. Claims 1, ^U13, 16, 17, 22, 23, 25-29, 34, 35, 37^11, and 45-
67 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Home.
Non-Final Act. 24.
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ANALYSIS
A. Rejection of Claims 1, 7, 13, 25, 37, and 64—66 under the
Written Description Requirement
The Examiner finds “the specification and provisional application
failed to yield a sufficient disclosure regarding ‘receiv[ing], distinct from the
base layer data representing the base layer frame, the base layer compression
parameter,’ as recited in representative independent claim 1.” Non-Final
Act. 9. Accordingly, the Examiner rejects claims 1,7, 13, 25, 37, and 64—66
as failing the written description requirement of 35 U.S.C. § 112, first
paragraph, and denies Appellant’s claimed priority to the filing date of
Provisional Application No. 60/068,331 (hereinafter “the provisional
application”) at least with respect to the disputed recitation. See Non-Final
Act. 3.
Appellant argues that “persons of ordinary skill in the art would
recognize that the inventors had possession of what is claimed” based on
paragraphs 27, 44, 48, 51, and 54 and Figures 4 and 7 of Appellant’s
Specification.2 App. Br. 17. According to Appellant, these figures and
passages show the base compression parameters being passed from the base
layer to the enhancement layer separately from [i.e. distinct from] the
representation of the base layer frame . . . .” App. Br. 20—21.
2 Appellant also argues that the provisional application at pages 3^4 and
Figure 2 shows that Appellant had possession of the claimed features as of
the filing date of the provisional application and that the claims should
benefit from the priority date of the provisional. However, there are no
pending rejections that turn on whether Appellant had possession of the
claimed features on the filing date of the provisional application rather than
on the filing date of the non-provisional application. Thus, we do not
address this issue.
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A written “description must ‘clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed.’” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)). “In other words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date.” Id. (citing Vas-Cath, 935 F.2d at 1563). An applicant may show
possession of the claimed invention by describing the claimed invention
with all of its limitations using such descriptive means as words, structures,
figures, diagrams, and formulas that fully set forth the claimed invention.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Here, the Figures and description included in the Specification show
that the enhancement layer receives compression parameters from the base
layer (or other layers below it) that are shown to be separate and distinct
from other data received from the base layer representing the base layer
frame, such as base layer bits and base layer residual. See Spec. Figs. 5—7
(showing base compression parameters, base layer bits, and base layer
residual separately); see also Spec. 148 (indicating that the
Compressor/Quantizer outputs (1) the layer’s bits, (2) reconstructed residual
and (3) the set of compression parameters for use by a higher layer.).
The Examiner points to Appellant’s Specification as indicating that
the data representing a frame is equivalent to or includes the compression
parameters. See Ans. 20-21 (citing Spec. 117). But paragraph 17 of
Appellant’s Specification explicitly defines a frame as either a “group of
contiguous samples of an original input signal or a set of parameters
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extracted from the original group of samples (such as a set of transform
coefficients). . . (emphasis added). Thus, the compression parameters are
not necessarily equivalent to or included in the data representing a frame, but
rather, could be samples of the original input signal. Further, even if the
Examiner is correct that the frame data includes the compression parameters,
the claim does not preclude overlap between the data representing the base
layer frame and distinctly received compression parameters such that the
distinctly received compression parameters are redundant. Whether
redundant or not, Appellant’s Specification is replete with examples of
compression parameters being distinctly received. Accordingly, we agree
with Appellant that the Specification demonstrates that Appellant has
satisfied the written description requirement.
B. Rejection of Claims 46, 49, 52, 55, and 58 under the
Enablement Requirement
Claim 46, which we take as representative of claims 49, 52, 55 and
58, recites “the first enhancement layer encoder reconstructs enhancement
layer data representing the current frame using a first enhancement layer
compression parameter.” App. Br. 52 (Claims App’x) (emphasis added).
The Examiner finds
the ‘use’ limitation encompasses all ‘uses’ of a first enhancement
layer compression parameter that lead to enhancement layer data
representing a current frame. This overly broad scope is not
supportable by the Specification. Particularly, the Examiner
finds that, as to Wands factor (8), ‘the breadth of the claims’ with
regard to the ‘use’ of a first enhancement layer compression
parameter is unbounded as it encompasses every means of
obtaining enhancement layer data. Examiner finds that as to
Wands factor (2), ‘the amount of direction and guidance
presented’ by Applicant is minimal; as to Wands factor (3), there
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are no ‘working examples’ presented by Applicant in the
Specification.
Non-Final Act. 9—10.
Appellant argues the Specification describes that “[a]t each layer, a set
of parameters are used within that layer to generate a prediction for that
layer.” App. Br. 26 (citing Spec. Tflf 27, 48, and 51); see also Reply Br. 9
(citing Spec. Tflf 16, 48-49). This, according to Appellant, provides the
requisite enablement to one of ordinary skill to “reconstruct[] enhancement
layer data representing the current frame using a first enhancement layer
compression parameter,” as claimed. Further, Appellant argues “not
everything necessary to practice the invention need be disclosed. In fact,
what is well-known is best omitted.” Reply Br. 10 (citations omitted).
Appellant argues that “[a]s shown by both the Home reference . . . and the
Background section of Applicant’s Specification, an encoder that
‘reconstructs enhancement layer data’ ‘us[ing] a first enhancement layer
compression parameter’ is known by those of ordinary skill in the art” and
therefore does not have to be disclosed. Reply Br. 10 (citing Home 4:3—20).
We agree with Appellant. The test for compliance with the
enablement requirement is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988). The limitation at issue requires the first
enhancement layer encoder to reconstmct enhancement layer data using a
first enhancement layer compression parameter. In other words, the encoder
is using data from its own layer to reconstmct the current frame. As
Appellant points out, such an approach was well-known. Reply Br. 10.
Thus, we agree with Appellant that one of ordinary skill in the art would
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have been able to practice the claimed feature without undue
experimentation.
C. Rejection of Claims 1, 13, 25, 37, 66, and 67 as Being Indefinite
for Reciting “receive, distinct from the base layer data
representing the base layer frame, the base layer compression
parameter ”
The Examiner finds “the limitation drawn to ‘receive, distinct from
the base layer data representing the base layer frame, the base layer
compression parameter’ [of claim 1, which we take as representative] does
not make sense to one skilled in the art.” Non-Final Act. 10. According to
the Examiner “‘the base layer data representing the base layer frame’ would
necessarily include [the compression] parameters [such as a quantized base
layer residual, a quantization interval, or a partition region].” Id. Thus, the
Examiner concludes that “[t]he skilled artisan does not immediately
understand what ‘the base layer data representing the base layer frame’
means if it is not the distinct parameters received separately by the
enhancement layer encoder.” Id. at 11. The Examiner points to Appellant’s
Specification as further indicating that the compression parameters are at
least a portion of the data representing a base layer frame. See Ans. 27
(citing Spec. 117 (“A ‘frame’ as used herein refers [] to ... a set of
parameters . . . .”)).
Appellant argues that, read in light of the Specification, one of
ordinary skill would understand that the base layer frame would be
represented as coefficients, such as transform coefficients, and the
compression parameters would be separate from those coefficients. App. Br.
29. Further, Appellant points out the Examiner is relying only on a portion
of paragraph 17, and that paragraph 17 when read as a whole, indicates the
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base layer frame could alternatively consist of “a group of contiguous
samples of an original input signal.” Reply Br. 3—4, 12. Appellant
concludes that
the definitions of terms in Applicants’ Specification and their use
in the claims does not necessitate that a frame is equivalent to
compression parameters, does not require that compression
parameters are always quantized base layer residuals, and does
not prohibit overlap between the reconstructed base layer data
received by the enhancement layer and the distinctly received
compression parameter.
Reply Br. 12.
We agree with Appellant. “A patent is invalid for indefmiteness if its
claims, read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.” Nautilus, Inc. v. Biosig, Insts., Inc.,
134 S. Ct. 2120, 2124 (2014). As explained above (supra section A),
paragraph 17 defines a frame, at least alternatively, as “a group of
contiguous samples of an original input signal.” Spec. 117. Thus, frame
data does not necessarily include the compression parameters. Further, also
explained above (supra section A), we agree that the claim does not prohibit
overlap between the base layer data and the compression parameters.
Accordingly, we find that claim 1 delineates, with reasonable certainty to
those skilled in the art, the scope of the invention.
D. Rejection of Claims 1, 13, and 66 as Being Indefinite for
Reciting Means-Plus-Function Elements without Disclosing
Corresponding Structure
The Examiner finds “[cjlaims 1,13, and 66 disclose limitations that
are presumed to invoke 35 U.S.C. § 112, sixth paragraph” (Non-Final Act.
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12), but that “the written description fails to disclose the corresponding
structure, material, or acts for the claimed functions” (Non-Final Act. 11) of
those limitations. Specifically, the Examiner finds the term “encoder
configured to” is a “non-structural term (a term that simply is a substitute for
the term ‘means for’).... not modified by sufficient structure.” Non-Final
Act. 13.
Appellant argues “persons of ordinary skill in the art would
understand that an ‘encoder’ is a term for the structure that performs
encoding functions.” App. Br. 31 (citing Microsoft Computer Dictionary,
5th ed., 2002). Thus, according to Appellant “an encoder/decoder is
recognized in the art to denote specific structure, and is not simply ‘a nonce
word’ that is ‘merely a substitute for the term means for.’” App. Br. 31
(internal quotations omitted).
“The standard [for whether § 112 paragraph 6 applies] is whether the
words of the claim are understood by persons of ordinary skill in the art to
have a sufficiently definite meaning as the name for structure.” Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). The use of the
word “means” in a claim limitation creates a rebuttable presumption that
§112 paragraph 6 applies. Personalized Media Communications, LLC v.
Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). Conversely,
the failure to use the word “means” creates a rebuttable presumption that
§ 112 paragraph 6 does not apply. Id. “When a claim term lacks the word
‘means,’ the presumption [that § 112, paragraph 6 does not apply] can be
overcome . . . if. . . the claim term fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting sufficient structure for
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performing that function.’” Williamson, 792 F.3d at 1349 (quoting Walls v.
XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
First, we note that the term “means” is not used in the claim
limitations, creating a presumption that § 112, paragraph 6 does not apply.
Next, looking to the words of the claim, we agree with Appellant that the
term “encoder” denotes specific structure and is not merely a substitute for
the word “means.” In particular, the term encoder is modified by the terms
“base layer” and “enhancement layer” indicating to one of skill in the art that
the encoders in question are used in a multi-layer scalable coding system and
the claims themselves describe the functions performed by the encoders in
sufficient detail to impart structure to the claimed encoders. For example,
the claims describe the base layer encoder as reconstructing base layer data
using as input base layer compression parameters, and describe the
enhancement layer encoder as storing and obtaining previous frame
enhancement layer data, receiving base layer frame data and compression
parameters, reconstructing enhancement layer data, and predicting
enhancement layer data representing the current frame using the base layer
data and compression parameters.
Thus, we find that the Examiner has not overcome the presumption
that § 112, paragraph 6 does not apply to claim limitations at issue.
Accordingly, we do not sustain the Examiner’s rejection of claims 1, 13, and
66 as indefinite under 35U.S.C. § 112, second paragraph.
E. Rejection of Claims 1, 4—13, 16, 17, 22, 23, 25—29, 34, 35, 37—
41, and 45—67 under 35 U.S.C. § 102(b)
The Examiner finds Home discloses “an enhancement layer encoder
configured to . . . receive, distinct from the base layer data representing the
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base layer frame, the base layer compression parameter . . . and predict
enhancement layer data representing the current enhancement layer frame
. . . wherein the predicting . . . uses the received base layer compression
parameter.” Non-Final Act. 15 (citing Home 1:39-41,4:33—38, 5:20—26).
In particular, the Examiner finds Home discloses the use of base layer image
data to produce the enhancement layer image signal. Id. This is done by
decoding the base layer bit stream in Home’s two-layer video encoder.
According to the Examiner, the base layer bit stream includes base layer
compression parameters that are distinctly provided to the enhancement
layer. Ans. 31—32 (citing Home Fig. 2, 4:3—7, 4:46-47).
Appellant argues “Home’s description of a two-layer encoder does
not disclose that a compression parameter of the base layer is received by the
enhancement later [sic] and used in the enhancement later [sic] to predict
enhancement layer frames.” App. Br. 36. Specifically, Appellant argues
Home does not show the compression parameter, such as Qbl, being
received separately or being used in predicting the enhancement layer bits.
App. Br. 36—37.
We agree with Appellant. Although Home teaches the use of base
layer image data to produce the enhancement layer image signal (see Home
4:33—38), it does not explicitly disclose that compression parameters are
received by the enhancement layer encoder distinct from the base layer
image data. For example, Home indicates that the base layer quantization
step size, Qbl, is used for encoding the base layer, but does not explicitly
disclose Qbl being used to encode the enhancement layer. See Home 3:62—
63. Accordingly, we do not sustain the Examiner’s rejection under 35
U.S.C. § 102(b).
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F. Rejection of Claims 1, 4—13, 16, 17, 22, 23, 25—29, 34, 35, 37—
41, and 45—67 under 35 U.S.C. § 103(a)
The Examiner finds
With respect to the limitation of the independent claims
regarding receipt of base layer data representing the base layer
frame distinct from the base layer compression parameter, the
Examiner notes that parsing data from a base layer stream in
order to send it separately is obvious. To combine things that are
combinable or separate things that are separable where such
combination or separation yields nothing more than a predictable
result is the cornerstone of obviousness under KSR.
Non-Final Act. 24.
Appellant responds that “[hjowever, the independent claims are not
obvious, not only because Home does not disclose that a base layer
compression parameter is received distinct from the base layer data
representing the base layer frame, but also because Home does not disclose
that this distinct compression parameter is used to predict enhancement layer
data representing the current enhancement layer frame.” App. Br. 43.
We agree with Appellant. As explained above, Home does not
disclose that base layer compression parameters are received by the
enhancement layer distinct from other data representing the base layer
frame. Further, the Examiner’s finding that it would have been obvious to
separate the compression parameters from the base layer frame data rests on
the assumption that the base layer frame data necessarily includes the
compression parameters. The Examiner has not provided sufficient
evidentiary basis for such a finding. Accordingly, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1,7, 13, 25, 37, and 64—66 under
35 U.S.C. § 112 first paragraph (pre-AIA) for failing to comply with the
written description requirement is reversed.
The Examiner’s rejection of claims 46, 49, 52, 55, and 58 under 35
U.S.C. § 112 first paragraph (pre-AIA) for lack of enablement is reversed.
The Examiner’s rejection of claims 1,13, 25, 37, 66, and 67 under 35
U.S.C. § 112 second paragraph (pre-AIA), as being indefinite is reversed.
The Examiner’s rejection of claims 1, 4—13, 16, 17, 22, 23, 25—29, 34,
35, 37-41, and 45—67 under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 1, 4—13, 16, 17, 22, 23, 25—29, 34,
35, 37-41, and 45—67 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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