Ex Parte Siegman et al

Patent Trial and Appeal Board

Sep 27, 2016

12862121 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/862, 121 08/24/2010 Craig S. Siegman
42624 7590 09/27/2016
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2540-1153 3421
EXAMINER
SECHSER, JILL D
ART UNIT PAPER NUMBER
2483
MAILDATE DELIVERY MODE
09/27/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. SIEGMAN and DANA WHEELER
Appeal2015-002095
Application 12/862, 121 1
Technology Center 2400
Before LARRY J. HUME, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-18, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Avocent Corp. App.
Br. 1.
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Application 12/862, 121
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates to video
compression and more particularly to block video compression and
Dambrackas Video Compression [(DVC)] systems." Spec. i-f 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A method in a data processing system for video
compress10n, compnsmg:
examining a current video frame and a previous video
frame;
determining which pixels in the current video frame
changed from the previous video frame;
determining a block size having a number of pixels in the
current video frame;
determining which blocks of pixels in the current video
frame changed from the previous video frame;
encoding the pixels of the blocks that have changed in
DVC protocol format; and
transmitting the encoding of the blocks that have
changed in the D VC protocol format, without transmitting the
blocks of the current video frame that have not changed.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
July 23, 2014); Reply Brief ("Reply Br.," filed Dec. 1, 2014); Examiner's
Answer ("Ans.," mailed Sept. 30, 2014); Final Office Action ("Final Act.,"
mailed July 25, 2013); and the original Specification ("Spec.," filed
Aug. 24, 2010).
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Application 12/862, 121
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Dambrackas US 7,321,623 B2 Jan. 22, 2008
Wang et al. ("Wang") WO 2010/049916 Al May 6, 2010
Rejection on Appeal
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Dambrackas and Wang. Final Act. 5.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5-10), we decide the
appeal of the obviousness rejection of claims 1-18 on the basis of
representative claim 1.
ISSUE
Appellants argue (App. Br. 5-10; Reply Br. 1-7) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Dambrackas and Wang is in error. These contentions
present us with the following issue:
Did the Examiner err in combining the cited prior art references to
teach or suggest a method in a data processing system for video compression
that includes, inter alia, the step of "transmitting the encoding of the blocks
that have changed in the DVC protocol format, without transmitting the
blocks of the current video frame that have not changed," as recited in
claim 1?
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Application 12/862, 121
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants generally contend none of the cited references teaches or
suggests the contested limitation of claim 1. App. Br. 5. Further, "[t]he
Office Action attempts to combine just the concept of blocks with
Dambrackas to result in the various limitations of the claims .... Simply
replacing pixels with blocks in DVC [Dambrackas Video Compression]
would not result in the disclosed system." App. Br. 6.
Appellants additionally argue:
There is no separate suggestion in the references or Office
Action for also using DVC inside a block of pixels in addition
to transmitting or not transmitting the block of pixels
accordingly. This system is more complex than that proposed
simple substitution, which Applicants submit there has not been
a sufficient motivation proposed for, but nonetheless, this
combination still would not result in the pending claims.
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Application 12/862, 121
App. Br. 7.
Appellants also contend the Dambrackas reference was "specifically
distinguished in [the] background of the present application," and thus
should not be used in the rejection. App. Br. 6---7 (citing Spec. i-f 3 -
"BACKGROUND"). "[T]he differences and improvements upon the
reference are significant." App. Br. 7.
We view the above-quoted statement as an admission that buttresses
the Examiner's findings, discussed infra. Our reviewing court guides that a
statement by an applicant in the Specification or made during prosecution
identifying the work of another as "prior art" or "background" is an
admission which can be relied upon for both anticipation and obviousness
determinations. Riverwood Int'! Corp. v. R.A. Jones & Co., Inc., 324 F.3d
1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices, Inc., 848
F.2d 1560, 1570 (Fed. Cir. 1988).
Appellants also contend the Examiner has not set forth a prima facie
case of obviousness because, allegedly,
[t]here is no motivation provided in the office action that
would result in the combination of these two references in a
way that would result in the pending claims . . . the purported
motivation to combine does not explain the motivation to create
the specific techniques in the claim limitations or even the
combination proposed by the Office Action.
App. Br. 8.
We disagree with Appellants and find the Examiner has set forth a
prima facie case of obviousness and motivation to combine the references in
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the manner suggested (Final Act. 5-7; Ans. 2---6), albeit one with which
Appellants do not agree. 3
We disagree because the Federal Circuit has held, "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed.
Cir. 2007). The Federal Circuit stated this burden is met by "adequately
explain[ing] the shortcomings it perceives so that the applicant is properly
notified and able to respond." Id., at 1370. It is only "when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection" that the prima facie burden has not been
met and the rejection violates the minimal requirements of 35 U.S.C. § 132.
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Our reviewing
court has also held, " [a] prima facie case of obviousness is established when
the teachings from the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art." Irz re Bell;
991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531F.2d1048,
1051(CCPA1976))(emphasis added).
Thus, we disagree with Appellants' contentions that the Examiner has
not met his burden of production with respect to establishing a prima facie
case for the obviousness rejection of claim 1.
3 As for the motivation to combine, the Examiner finds, "[i]n the present
case, both references are in the same field of video compression and are
exploiting redundancies. Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify the
encoding scheme as taught by Dambrackas with the prediction method using
a block of pixels taught by Wang in order to adaptively exploit redundancies
and to enhance the video compression of prior art compression techniques."
Ans. 5 (citing Dambrackas col. 3, 11. 10-14, and 56---60).
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Appellants conclude their arguments by contending, because there
allegedly is a "lack of sufficient motivation for the specific techniques
involved," "the references are pieced together only with impermissible
hindsight" (App. Br. 9) because "one of ordinary skill in the art would not
have combined these references in the manner contended, without the
hindsight reconstruction of the claimed invention." App. Br. 10.
We first note, because the Examiner rejects the claims as obvious over
the combined teachings of Dambrackas and Wang, the test for obviousness
is not what the references show individually but what the combined
teachings would have suggested to one of ordinary skill in the art. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Specifically, the
Examiner finds "both Dambrackas and Wang directly teach the motivation
for exploiting redundancies, hindsight has not been employed in combining
the references." See Ans. 6 (citing Dambrackas col. 3, 11. 10-14 and 56-60;
Wang 2; 11. 24--26).
We find that Appellants' invention is simply a combination of known
teachings that realize a predictable result. The Supreme Court has
determined that the conclusion of obviousness can be based on the
interrelated teachings of multiple patents, the effects of demands known to
the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR Int 'l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would
"be able to fit the teachings of multiple patents together like pieces of a
puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." Id. at 420-21.
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Here, we see the hindsight question before us as a balancing test, i.e.,
whether the Examiner's proffered combination of references is merely:
( 1) "the predictable use of prior art elements according to their established
functions" (KSR, 550 U.S. at 417), consistent with common sense; or, (2)
would an artisan reasonably have combined the cited references in the
manner proffered by the Examiner but for having the benefit of the claim to
use as a guide (i.e., impermissible hindsight)?
After reviewing the respective teachings and suggestions of the cited
references, we find the evidence more strongly supports the first prong of the
balancing test. It is our view that it would have been obvious to an artisan
having general knowledge of the DVC techniques of the Dambrackas
reference to combine the block prediction method of Wang for the reason
articulated by the Examiner. Final Act. 7; Ans. 3---6. We find the Examiner
provided sufficient articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR 550 U.S. at 418.
Moreover, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 15,
"EVIDENCE APPENDIX ... None.").
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Accordingly, based upon the findings above, on this record and by a
preponderance of evidence, we are not persuaded of error in the Examiner's
reliance on the combined teachings and suggestions of the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2-18 which fall therewith. See Claim
Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4l(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1-18 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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