Ex Parte Sekiguchi et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201710642508 (P.T.A.B. Feb. 22, 2017) Copy Citation 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. 10/642,508 08/18/2003 Shunichi Sekiguchi 2565-0273P 1661 127226 7590 02/24/2017 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 EXAMINER VO, TUNG T ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 02/24/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHUNICHI SEKIGUCHI, KOHTARO ASAI, TOKUMICHI MURAKAMI, HIROFUMINISHIKAWA, SHINICHI KURODA, YOSHIMIISU, and YURI HASEGAWA Appeal 2015-001842 Application 10/642,5081 Technology Center 2400 Before JEAN R. HOMERE, GARTH D. BAER, and SHARON FENICK, Administrative Patent Judges. FENICK, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 48—53. Claims 1—47 are cancelled. (Appeal Br. 17.) We have jurisdiction under 35 U.S.C. § 6(b)(1). We affirm. 1 Appellants identify MITSUBISHI DENKI KABUSHIKI KAISHA as the real party in interest. (Appeal Br. 1.) Appeal 2015-001842 Application 10/642,508 Invention Appellants’ invention relates to the decoding of moving picture data, including the generation of a prediction picture using a transformation method in the generation of a decoded image. The transformation methods used alternatively are a parallel translation, an affine transformation, and a perspective transformation. (Spec. 14:16—15:4, 15:14—22, 19:25—20,47:11— 21.) Exemplary Claim Claim 48, reproduced below, is exemplary: 48. A moving picture decoding apparatus, comprising: a memory for storing a previously decoded image as a reference image used for generating a prediction picture; a prediction picture generation section configured to alternatively apply a plurality of deformation methods including a parallel translation transform method, an affine transform method, and a perspective transform method to the reference image, the prediction picture generation section receiving indication information indicating one of a plurality of deformation methods for each moving picture sequence, a motion parameter, and prediction information indicating one of a plurality of prediction methods including a global prediction and a local prediction extracted from a bit stream, the prediction picture generation section identifying the indicated one of the plurality of deformation methods represented by the indication information, and generating the prediction picture using the reference image based on the identified deformation method, the identified deformation method being applied to the reference image so as to transform a portion of the reference image geometrically and being used for the global prediction indicated by the prediction information; and a decoding section for decoding a texture from the bit stream, and adding the texture to the prediction picture 2 Appeal 2015-001842 Application 10/642,508 generated by the prediction picture generation section so as to obtain a decoded image. Rejections I. The Examiner rejects claims 48—53 on the ground of nonstautuory obviousness-type double patenting as not patentably distinct from claims 1— 25 of U.S. Patent 6,775,326. (Final Action 2—3.) II. The Examiner rejects claims 48, 49, 51, and 52 under 35 U.S.C. § 102(b) as anticipated by Dachiku et al. (US 5,592,228; iss. Jan. 7, 1997) (hereinafter “Dachiku”). (Final Action 4—6.) III. The Examiner rejects claims 48, 49, 51, and 52 under 35 U.S.C. § 102(b) as anticipated by Hibi et al. (US 6,275,532 Bl; iss. Aug. 14, 2001) (hereinafter “Hibi”). (Final Action 6—8.) IV. The Examiner rejects claims 50 and 53 under 35 U.S.C. § 103(a) as unpatentable over Dachiku and Boon (US 5,767,911; iss. June 16, 1998). (Final Action 8—9.) V. The Examiner rejects claims 48—53 under 35 U.S.C. § 103(a) as unpatentable over Boon and Nakaya et al. (US 5,684,538; iss. Nov. 4, 1997) (hereinafter “Nakaya”). (Final Action 9—12.) ANALYSIS (A) Rejection I - Nonstatutory Obviousness-Type Double Patenting As an initial matter, we note that, in the principal brief, Appellants do not address the double patenting rejection. While Appellants do address this rejection in the Reply Br. (at 3—5) and we appreciate Appellants’ indication that the argument was inadvertently omitted (id. 2 at n.l), such an omission does not permit the Examiner an opportunity to fully respond. See 37 C.F.R. 3 Appeal 2015-001842 Application 10/642,508 § 41.41(b)(2) (2014) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Thus, we summarily affirm the double patenting rejection of claims 48-53. (B) Rejection II- 35 U.S.C. § 102(b) Rejection - Dachiku The Examiner finds claims 48, 49, 51, and 52 to be anticipated by Dachiku. (Final Action 4—6.) Specifically, the Examiner finds that Dachiku discloses the alternate deformation methods including a parallel translation transform method, an affine transform method, and a perspective transform method to be taught by equations (1), (8), and (12) of Dachiku. {Id. at 5.) Appellants argue that Dachiku discloses only an affine transform. (Appeal Br. 6-7.) Initially, we note that equations (1) and (8) are identical, and equations (1), (8), and (12) are not applied alternatively in one embodiment, but rather are disclosed as parts of separate embodiments. (Dachiku 9:5—8, 10:3—13, 19:62—64, 20:9-23, 22:26, 32-49.) In the context of anticipation, a reference must disclose all the limitations of a claim, arranged or combined in the same way as in the claim, and disclosure of parts of the claim in alternate embodiments of a patent specification may not satisfy this requirement. In re Arkley, 455 F.2d 586, 587—88 (CCPA 1972). Thus, we understand the Examiner to be mapping any of these Dachiku equations as performing the alternate application of the three deformation methods. The Examiner finds that the parameters of the equations can be used to express rotation, enlargement, reduction, deformation, and translation. (Final Action 4 Appeal 2015-001842 Application 10/642,508 4—6; Answer 14—15.) However, we agree with Appellants that Daichiku specifically discloses that equations (1) and (8) embody an affine transformation method. (Appeal Br. 6—7.) Appellants’ Specification discloses exemplary formulae for calculating a new point (x’, y’) from an initial point (x,y) under each deformation method. (Spec. 45 46.) While the Daichiku’s affine transformation equations may also include parameters that effect parallel translation (e.g., identified by the Examiner as parameters e and f of equations (1) and (8) (Final Action 5)), perspective transform is not addressed. In the absence of clear findings of how any of the Daichiku expressions or their parameters alternatively are used to embody each of the claimed parallel translation transform method, affine transform method, and perspective transform method, and in light of Daichiku’s express disclosure that the equations are affine transformation expressions, we find Appellants’ arguments persuasive. Therefore, we find Appellants’ arguments regarding the disputed limitation to be persuasive. Accordingly, we do not sustain the Examiner’s rejection of claims 48, 49, 51, and 52 as anticipated by Dachiku. (C) Rejection IV - 35 U.S.C. § 103(a) Rejection over Dachiku and Boon The Examiner’s obviousness rejection of claims 50 and 53 as unpatentable over the combination of Dachiku and Boon is based on the reasoning addressed supra with respect to Rejection II (Final Action 8—9) and argued on a similar basis by Appellants (Appeal Br. 11—12). For the reasons detailed above, we do not sustain the Examiner’s obviousness rejection of claims 50 and 53 as obvious over Dachiku and Boon. 5 Appeal 2015-001842 Application 10/642,508 (D) Rejection III - 35 U.S.C. § 102(b) Rejection - Hibi The Examiner finds claims 48, 49, 51, and 52 to be anticipated by Hibi. (Final Action 6—8.) Appellants reproduce the recitation of the claims, with evidence, provide a brief discussion of the disclosure of Hibi, and then assert that Hibi does not disclose certain disputed limitations. (Appeal Br. 8—9.) No specific discussion of the Examiner’s findings with respect to Hibi and the disputed limitations is presented. Thus, Appellants have not presented a substantive argument for patentability. See 37 C.F.R. § 41.37(c)(l)(iv) (2013); cf. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R. § 41.37(c)(l)(vii) as requiring “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”). We find that the Examiner has presented a prima facie case of anticipation, which stands unrebutted by Appellants’ arguments. On the present record, we are not persuaded of Examiner error. Therefore, we sustain the Examiner’s rejection of claims 48, 49, 51, and 52 under 35 U.S.C. § 102(b) as anticipated by Hibi. (E) Rejection V- 35 U.S.C. § 103(a) Rejection over Boon andNakaya The Examiner finds claims 48—53 unpatentable over the combination of Boon and Nakaya. (Final Action 9—12.) Upon consideration of the record, we are not persuaded that the Examiner erred in this rejection. Accordingly, we affirm the Examiner's decision on those grounds based on Boon and Nakaya. We are not persuaded by Appellants’ arguments and agree, instead, with the Examiner’s findings. Moreover, Appellants argue the references 6 Appeal 2015-001842 Application 10/642,508 individually whereas the rejection is based on the combination of the references. Appellants argue that Boon fails to disclose the alternative application of deformation methods by a prediction generation section, or receiving an indication of an applied deformation method for each moving picture sequence. (Appeal Br. 12.) Additionally, Appellants argue that Nakaya discloses that transformation functions are determined for a small area. (Id., referencing arguments made with respect to Hibi, at 9.) These arguments are not persuasive because they fail to address the Examiner's rejection as presented, which is based on a determination of what would have been obvious to one of ordinary skill in the art in view of the combined teachings of the prior art. (Final Action 9—12; Answer 21—23.) One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). The Examiner did not rely on Boon for teaching the alternative application of deformation methods to the reference image based on indication information. (Final Action 10—11.) Thus, the claimed deficiency of Boon is not dispositive. The Examiner used the combination of Boon and Nakaya to teach the alternate application of deformation methods. We are not persuaded by Appellants’ arguments regarding Nakaya’s alleged lack of a teaching with respect to the application of the deformation method except to a small area, as it is the combination of Boon and Nakaya that is used to teach or suggest the claimed invention. Additionally, we note that the claim requires only the application of the 7 Appeal 2015-001842 Application 10/642,508 identified deformation method to the reference image “so as to transform a portion of the reference image geometrically.” (Claim 48, emphasis added.) We, therefore, affirm the Examiner’s rejection of claims 48—53 as unpatentable over the combination of Boon and Nakaya. DECISION We summarily affirm the Examiner’s decision rejecting claims 48—53 on the ground of nonstautuory obviousness-type double patenting. We reverse the Examiner’s decision rejecting claims 48, 49, 51, and 52 as anticipated by Dachiku. We reverse the Examiner’s decision rejecting claims 50 and 53 as unpatentable over Dachiku and Boon. We affirm the Examiner’s decision rejecting claims 48, 49, 51, and 52 as anticipated by Hibi. We affirm the Examiner’s decision rejecting claims 48—53 as unpatentable over Boon and Nakaya. Because at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is affirmed. Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any subsequent action in connection with this appeal may be extended. AFFIRMED 8 Copy with citationCopy as parenthetical citation