Ex Parte Sole et al

Patent Trial and Appeal Board

May 18, 2018

13500119 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/500,119 04/04/2012
24498 7590 05/22/2018
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Joel Sole
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.
PU090146 9694
EXAMINER
SULLIVAN, TYLER
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
05/22/2018 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL SOLE, XIAOAN LU, PENG YIN, QIAN XU,
and YUNFEI ZHENG
Appeal2017-010220
Application 13/500,119 1
Technology Center 2400
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--49, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is THOMSON
LICENSING. Br. 3.
2 Our Decision refers to Appellants' Supplemental Appeal Brief filed
December 17, 2016 ("Br."); Specification filed April 4, 2012 ("Spec.");
Examiner's Answer mailed May 5, 2017 ("Ans."); and Final Office Action
mailed January 4, 2016 ("Final Act.").
Appeal2017-010220
Application 13/500,119
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 12, 23, 34, and 45 are independent claims. Claim 1 is
reproduced below:
1. A video encoder comprising:
an adaptive filter for performing filtering of prediction
data used to generate an intra prediction for a chroma component
of at least a portion of a picture, wherein the filtering is adaptive
with respect to at least one of filter parameters for the filtering
and whether the filtering is used or bypassed; and
a deblocking filter for filtering prediction data used to
generate an inter prediction.
Taniguchi
Kwon
Hung
He '752
He '252
Wilkins
References
us 5,412,434
US 2005/0243912 Al
US 2008/0117980 Al
US 2008/0137752 Al
US 2008/0240252 Al
US 2010/0061645 Al
Examiner's Rejections
May 2, 1995
Nov. 3, 2005
May 22, 2008
June 12, 2008
Oct. 2, 2008
Mar. 11, 2010
Claims 1-11, 23-33, 46, and 48 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Final Act. 11-12.
Claims 1-11, 19, 23-33, 41, 46, and 48 stand rejected under 35 U.S.C.
§ 112, first paragraph as failing to comply with the enablement requirement.
Id. at 9-11.
Claims 1-11, 23-33, 46, and 48 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite. Id. at 11.
Claims 1, 2, 12, 13, 23, 24, 34, 35, and 45--49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wilkins, He '252, Kwon, and
Taniguchi. Id. at 12-17.
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Application 13/500,119
Claims 3-11, 14--22, 25-33, and 36-44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wilkins, He '252, Kwon, Taniguchi,
He '752, and Hung. Id. at 17-29.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(l).
ANALYSIS
Statutory Subject Matter
The Examiner rejects claims 1-11, 23-33, 46, and 48 under 35 U.S.C.
§ 101 because the Examiner determines these claims encompass software
per se and, thus, are not within one of the four classes of statutory subject
matter. Final Act. 3, 12; Ans. 15-16. Appellants argue the "claimed
'encoder' and 'decoder' clearly are not 'signals and carrier waves"' because
"[ s ]ignals and carrier waves, unlike encoders and decoders, do not comprise
filters, nor are they capable of performing an intra prediction for a chroma
component of at least a portion of a picture." Br. 10.
We are not persuaded. A claim that is directed to software and is not
otherwise limited to one of the four statutory categories-process, machine,
manufacture, or composition of matter-is non-statutory subject matter. Cf
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007) ("Abstract
software code is an idea without physical embodiment ... . ");In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). That is, "software"
per se is not within any of the four statutory categories and is not patent-
eligible subject matter.
The Specification teaches "the present principles may be implemented
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Application 13/500,119
in various forms of hardware, software, firmware, special purpose
processors, or combinations thereof." Spec. 18: 1-3 (emphasis added). The
Specification, therefore, teaches that the claimed invention may be wholly
software. Accordingly, the encoder, decoder, and associated functionalities
recited by the claims subject to this ground of rejection include software
implementations, e.g., software encoders, software decoders, and software
filters. Further, the claims do not recite any physical structure that stores or
executes the software implementation, and, therefore, the claimed software
is not directed to any one of the statutory classes, i.e., a process, machine,
manufacture or composition of matter. As such, Appellants' argument that
encoders, decoders, filters, and their associated functions do not encompass
signals and carrier waves (Br. 10) does not persuade us that the claims are
directed to one of the four classes of statutory subject matter. Therefore, we
sustain the rejection of claims 1-11, 23-33, 46, and 48 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Indefiniteness
The Examiner rejects claims 1-11, 23-33, 46, and 48 under 35 U.S.C.
§ 112, second paragraph as being indefinite. In particular, the Examiner
determines that the claims recite means-plus-function limitations (Final
Act. 8-9) but the Specification does not adequately disclose structure
corresponding to those limitations (id.), and, as such, the Examiner
concludes the claims are indefinite (id. at 11 ). Appellants do not challenge
the Examiner's means-plus-function analysis or the merits of the
indefiniteness rejection (see Br. 8-14); accordingly, we sustain the
Examiner's rejection of claims 1-11, 23-33, 46, and 48.
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Enablement
Claims 1-11. 23-33. 46. and 48
The Examiner rejects claims 1-11, 23-33, 46, and 48 under 35 U.S.C.
§ 112, first paragraph because the Examiner concludes the full scopes of the
claimed "video encoder," "video decoder," "adaptive filter," and
"de blocking filter" are not enabled. Final Act. 1 O; Ans. 17-18. According
to the Examiner, Appellants' arguments "do[] not address the scope of the
enablement issues raised by the Examiner (above) when attempting to
analyze the claimed 'encoder', 'decoder', and 'filter' and determine if the
claimed elements functionally claimed have corresponding structure."
Ans. 18 (emphasis added). The Examiner's enablement rejection of these
claims appears, therefore, to be based on the lack of corresponding structure
for means-plus-function limitations. That defect renders the claims
indefinite, as noted above. Because we affirm the Examiner's conclusion
that the claims lack definiteness, we cannot readily ascertain whether the
Specification provides an enabling disclosure commensurate with the scope
of those claims. Accordingly, we proforma reverse this rejection of claims
1-11, 23-33, 46, and 48 under 35 U.S.C. § 112, first paragraph as being
non-enabled.
Claims 8. 19. 3 0. and 41
Claim 8 recites "a prediction value ... is a function of the prediction
data and the filtered prediction data," and claims 19, 3 0, and 41 recite
similar limitations. The Examiner further rejects claims 8, 19, 30, and 41
under 35 U.S.C. § 112, first paragraph because the Examiner concludes the
claimed "function" is not enabled. Final Act. 10-11; Ans. 13-14.
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Appellants argue the "Specification describes several embodiments with
ample detail to enable one of ordinary skill in the art to make and/or use the
invention." Br. 9 (citing Spec. 13: 18-27).
We agree with Appellants. The Specification teaches that the
"'prediction value of the prediction data' refers to the actual value that
ultimately is used for the prediction data from among two or more candidate
values." Spec. 8:6-12. Further, the Specification teaches a prediction value
is calculated as "the absolute value of the difference between the filtered
value and the non-filtered value is computed." Id. at 13:18-27. As such, the
Specification has provided direction and a working example explaining how
to calculate a prediction value as a "function" of prediction data and filtered
prediction data. In light of the direction and examples provided by the
Specification, we are not persuaded by the Examiner's determination that
undue experimentation would be required in order for one skilled in the art
to practice the full scope of the claimed invention because of the breadth of
the claims. Ans. 13-14, 17-18.
Accordingly, we do not sustain this rejection of claims 8, 19, 30, and
41 under 35 U.S.C. § 112, first paragraph as being non-enabled.
Obviousness
Claims 12-22 and 34-45. 47. and 49
Appellants contend the Examiner erred in finding He '252 and Kwon
teach "performing filtering of prediction data used to generate an intra
prediction ... wherein the filtering is adaptive" as recited in claim 12 and
similarly recited in claims 34 and 45. Br. 11-12. Specifically, Appellants
argue that, although "He ['252] describes an arrangement involving
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deblocking filters, which are used to filter data used for inter prediction," the
claims "recite that adaptive filtering is used to filter prediction data used for
intra prediction." Id. at 11. Appellants further argue "Kwon, like He, is
directed to deblocking filtering and does not teach adaptive filtering of
prediction data for the intra prediction of a chroma component." Id. at 12.
We are not persuaded of Examiner error. Appellants argue neither He
'252 nor Kwon teaches the disputed limitation (id. at 11-12); however, the
Examiner finds Wilkins teaches the disputed limitation - "performing
filtering of prediction data used to generate an intra prediction ... wherein
the filtering is adaptive." In particular, the Examiner relies on Wilkins's
disclosure of "adaptive loop filter 34" for video encoders and decoders
including an "intra-prediction mode" that forms "a prediction macroblock."
Ans. 20; Final Act. 13; Wilkins i-fi-122, 24, 27; see Wilkins Figs. 1-2.
Appellants' arguments that He '252 and Kwon do not teach "intra
prediction" (Br. 11-12) do not address the Examiner's findings that Wilkins
teaches intra prediction (Ans. 20; Final Act. 13). Accordingly, we are not
persuaded the Examiner erred in finding Wilkins teaches "performing
filtering of prediction data used to generate an intra prediction ... wherein
the filtering is adaptive" as recited in claim 1 and similarly recited in claims
12, 23, 34, and 45.
Appellants further contend the Examiner erred in finding Kwon
teaches "performing de blocking filtering of prediction data used to generate
an inter prediction," as recited in claim 12 and similarly recited in claims 34
and 45. Br. 12. Specifically, Appellants argue "Kwon's deblocking filter
cannot be involved in the filtering of prediction data used to generate any
prediction, inter-, intra- or otherwise" because "the deblocking filtering
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Application 13/500,119
described in Kwon entails a post processing filter, at the output of the
decoder, as opposed to a loop filter." Id. (citing Kwon Fig. 3).
We are not persuaded. Contrary to Appellants' assertion that Kwon's
deblocking filter is not a loop filter (id.), Kwon discloses that "de-blocking
filters can be integrated into a video codec as either a loop filter or a post
filter. Loop filters operate inside the motion compensation loop so that the
filtered frames are used as reference frames of subsequent coded frames"
(Kwon i-f 13) (emphasis added) (cited at Ans. 19). Appellants' argument is
premised on the assertion that Kwon's deblocking filter is not a loop filter
(Br. 12). Kwon, however, teaches embodiments in which its deblocking
filter is a loop filter (Kwon i-f 13); therefore, Appellants do not persuade us
of Examiner error.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Wilkins, He '252, Kwon, and Taniguchi teaches or suggests
the limitations as recited in independent claims 12, 34, and 45. Additionally,
Appellants do not provide separate arguments for claims 13-22, 3 5--44, 4 7,
and 49 which depend from claims 12, 34, and 45. See Br. 12-13. Therefore,
we sustain the obviousness rejections of claims 12-22 and 34--45, 47,
and 49.
Claims 1-11. 23-33. 46. and 48
Additionally, as discussed supra, the Examiner determines that the
Specification does not disclose structure corresponding to the means-plus-
function limitations recited in claims 1-11, 23-33, 46, and 48. Final Act. 8-
9, 11. The Court of Appeals for the Federal Circuit has stated that we must
"engage[] in a comparison of the asserted prior art's disclosure to the
'structure' disclosed in the" Specification to assess patentability of means-
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plus-function limitations over prior art. IPCom GmbH & Co. v. HTC Corp.,
861F.3d1362, 1371 (Fed. Cir. 2017), as corrected (Aug. 21, 2017) (citing
In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane)).
In this case, neither the Examiner nor Appellants have identified the
structure corresponding to the means-plus-function limitations that we
would compare with the disclosure of the prior art to assess the obviousness
rejection. Indeed, in their Appeal Brief, Appellants do not challenge the
Examiner's determination that the Specification does not disclose structure
corresponding to the means-plus-function limitations. Accordingly, we pro
forma reverse the obviousness rejections of claims 1-11, 23-33, 46, and 48.
DECISION
We affirm the Examiner's decision rejecting claims 1-11, 23-33, 46,
and 48 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
We affirm the Examiner's decision rejecting claims 1-11, 23-33, 46,
and 48 under 35 U.S.C. § 112, second paragraph as being indefinite.
We reverse the Examiner's decision rejecting claims 1-11, 19, 23-33,
41, 46, and 48 under 35 U.S.C. § 112, first paragraph as failing to comply
with the enablement requirement.
We affirm the Examiner's decision rejecting claims 12, 13, 34, 35, 45,
47, and 49 under 35 U.S.C. § 103(a) as being unpatentable over Wilkins, He
'252, Kwon, and Taniguchi.
We affirm the Examiner's decision rejecting claims 14--22 and 36-44
under 35 U.S.C. § 103(a) as being unpatentable over Wilkins, He '252,
Kwon, Taniguchi, He '752, and Hung.
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We reverse the Examiner's decision rejecting claims 1, 2, 23, 24, 46,
and 48 under 35 U.S.C. § 103(a) as being unpatentable over Wilkins, He
'252, Kwon, and Taniguchi.
We reverse the Examiner's decision rejecting claims 3-11 and 25-33
under 35 U.S.C. § 103(a) as being unpatentable over Wilkins, He '252,
Kwon, Taniguchi, He '752, and Hung.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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