Ex Parte Sun et al

Board of Patent Appeals and Interferences

May 30, 2008

09953329 (B.P.A.I. May. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIJUN SUN and SHAWMIN LEI
_____________

Appeal 2008-0599
Application 09/953,329
Technology Center 2600
____________

Decided: May 30, 2008
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and KARL
EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-63. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection against claims 1-63
under 37 C.F.R. § 41.50 (b).

INVENTION
Appellants’ claimed invention is to an improved filtering method and an
encoder/decoder that uses motion vectors respectively associated with adjacent
image blocks to decide whether to filter the boundary between those blocks (Spec.
3:9-20).
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. A method for at least one of encoding and decoding a digital image,
comprising:
(a) identifying a first region adjacent a second region in said image, wherein
said first region and said second region are substantially the same size;
(b) identifying a first set of one or more motion vectors calculated using
information only from said first region and a second set of one or more
motion vectors calculated using information only from said second region;
and
(c) irrespective of whether or not said first region has non-zero transform
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coefficients, selectively not filtering at least a portion of the boundary area
between said first region and said second region based on a relationship
between said first set of one or more motion vectors and only said second
set of one or more motion vectors.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Augenbraun US 5,654,759 Aug. 05, 1997
(filed Feb. 15, 1995)

ITU-Telecommunications Standardization Sector, Study Group 16, VCEG-
M81, Thirteenth Meeting, Austin, Texas, USA (Apr 2-4, 2001) (hereinafter
VCEG-M81).
The following rejections are before us for review:
Claims 1, 2, 22, 23, 43, and 44 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Augenbraun.
Claims 3-21, 24-42, and 45-63 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Augenbraun in view of VCEG-M81.

ANTICIPATION UNDER § 102(b)
The issue before us is whether the Examiner erred in rejecting claims 1, 2,
22, 23, 43, and 44 under 35 U.S.C. § 102(b) as anticipated by Augenbraun. The
issue turns on whether Augenbraun discloses the limitation: “identifying a first
region adjacent a second region in said image, wherein said first region and said
second region are substantially the same size” as claimed in independent claim 1,
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and similarly claimed in claims 22 and 43. Furthermore, the issue turns on
whether the Examiner erred by not identifying how the motion vectors are used to
identify blocky edges.

FINDINGS OF FACT
The relevant facts include the following:
1. Augenbraun discloses motion vector comparison between motion vectors of
a macroblock or multiple macroblocks corresponding to ¼ or less of a frame
which are compared to motion vectors in the rest of the frame (col. 7, ll. 40-
44).
2. Augenbraun discloses selectively low pass filtering only the pixels on the
edges of the blocks (col. 9, ll. 28-30).
3. Augenbraun further discloses that motion vectors of places other than the
edges of the blocks are analyzed by the blockiness identification circuit 202
to identify blocky boundaries, wherein the blocky boundaries and the edges
of the blocks are selectively filtered (col. 9, ll. 30-38).

ANALYSIS
A. Did the Examiner err in construing the claimed phrase “a first region
adjacent a second region . . . wherein said first region and said second
region are substantially the same size” as meaning ¼ of a frame adjacent
the rest of the frame?

Appellants argue that the claim requires that the adjacent regions are
“substantially the same size” (Br. 7-10). The Appellants assert that Augenbraun
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discloses “comparing the motion vectors associated with a region less than a
quarter of a frame, with motion vectors of the remaining portion of the frame”
(Appeal Br. 7) (emphasis in original).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. Inc., v. Union Oil Co. of California, 814 F.2d at 631.
The disputed claim limitation states: “identifying a first region adjacent a
second region in said image, wherein said first region and said second region are
substantially the same size.” Thus, independent claims 1, 22, and 43 require
adjacent regions which are substantially the same size.
Augenbraun discloses motion vector comparison between motion vectors of
a macroblock or multiple macroblocks corresponding to ¼ or less of a frame which
are compared to motion vectors to the rest of the frame (Finding of Fact 1).
Therefore, Augenbraun does not disclose a comparison of motion vectors between
two regions of “substantially the same size.”
Ordinarily, with terms of degree, such as “substantially,” Appellants must
define the meets and bounds of the term if it renders the claim close to a point of
novelty. See Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255
(Fed. Circ. 2008) (quoting General Electric v. Wabash Appliance Corp., 304 US
363, 371 (1938) and United Carbon Co. v. Binney & Smith Co. 317 US 228, 234
(1942)).
We note that the patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that patent
examiners demand that applicants do so in appropriate circumstances
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so that the patent can be amended during prosecution rather than
attempting to resolve the ambiguity in litigation.
Id.
However, in this circumstance, the Examiner has not responded to
Appellants’ argument that Augenbraun fails to teach the disputed limitation. We
note that the Examiner appears to have combined two different embodiments (Ans.
3) in Augenbraun to address the limitations of the rejected claims, which is
inappropriate under the principles of anticipation. In other words, the Examiner
combined the DCT coefficients/non-zero coefficient transforms, which correspond
to the embodiment disclosed in col. 8, l. 1-col. 9, l. 10, and a different embodiment
regarding identification of blockiness using motion vectors in col. 7, ll. 40-48.
Furthermore, Figures 6 and 7 addressed by the Examiner (Ans. 5) are directed to
filters that don’t require identification of blocky video (col. 9, ll. 45-48).
Thus, we are persuaded by Appellants’ argument that claims 1, 2, 22, 23, 43,
and 44 are not anticipated because Augenbraun neither expressly nor inherently
discloses comparison of motion vectors between regions of “substantially the same
size” (Finding of Fact 1).

B. Did the Examiner err by not identifying how the motion vectors are used
to identify the blocky edges?

Appellants argue that “[a]t page 3 line 15- 16 of the response, the Examiner
cites portions of Augenbraun disclosing the step of not filtering based on the
results from a blockiness identification circuit. This passage fails to disclose how
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the blockiness identification circuit uses motion vectors to identify blocking
artifacts” (Reply Br. 6).
The Examiner cited Augenbraun’s col. 9, ll. 28-39, for selectively not
filtering at least a portion of the boundary area (i.e., blocky edge) between the first
set of one or more motion vectors and only the second set of one or more motion
vectors (Ans. 3).
In the relevant cited section, Augenbraun discloses selectively low pass
filtering only the pixels on the edges of the blocks (Finding of Fact 2).
Augenbraun further discloses that motion vectors of places other than the edges of
the blocks are analyzed by the blockiness identification circuit 202 to identify
blocky boundaries, wherein the blocky boundaries and the edges of the blocks are
selectively filtered (Finding of Fact 3) (emphasis added). However, Augenbraun is
silent as to using motion vectors to identify blocky edges.
Thus, we are persuaded by Appellants’ argument that the section of
Augenbraun cited by the Examiner does not disclose use of motion vectors to
identify blocky edges.

OBVIOUSNESS
ANALYSIS
Appellants have presented no further arguments as to rejected claims 3-21, 24-42,
and 45-63 but instead rely on the arguments provided for independent claims 1, 22,
and 43 by virtue of their dependency (Appeal Br. 11). Thus, for the reasons as
articulated supra, and for the additional reason that VCEG-M81 does not cure the
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noted shortcomings in the teachings of Augenbraun, we find that the Examiner
erred in rejecting claims 3-21, 24-42, and 45-63 under 35 U.S.C. § 103(a) as
unpatentable over Augenbraun in view of VCEG-M81.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred in
rejecting claims 1-63.
We use our authority under 37 C.F.R. § 41.50 (b) to enter a new ground of
rejection of claims 1-63 as set forth below.

NEW GROUNDS OF REJECTION UNDER 35 U.S.C. § 112
FINDINGS OF FACT
4. The original claims 1, 22, and 43 recited: “selectively filtering at least a
portion of the region proximate the boundary between said adjacent
regions,” which essentially claims selectively filtering the width of the
boundary area between the two adjacent regions.
5. Appellants’ Specification states: “A skip mode filtering scheme may use the
motion estimation and/or compensation information for adjacent image
blocks as a basis upon which to selectively filter. If the motion estimation
and compensation information is sufficiently similar the filtering may be
skipped. This avoids unnecessary image blurring and significantly reduces
the required number of filtering operations, or any other appropriate value”
(Spec. 4:17-22).
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6. Appellants’ Specification further discloses that when the motion vectors
MV1 and MV2 point to adjacent blocks in the same reference frame
(MV1=MV2), then the deblock filtering may be skipped (Spec. 5:15-18).
7. Appellants’ Specification states that: “[i]n contrast to the block by block
manner of filtering, the present inventors came to the realization that
filtering determinations should be made in an edge by edge manner together
with other information (Spec. 11:15-17).

PRINCIPLES OF LAW
Under the written description portion of the first paragraph of 35 U.S.C.
§ 112, the Applicants must convey with reasonable clarity to those skilled in the art
that they had possession of the invention as of the filing date sought. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983).

ANALYSIS
Claims 1-63 are rejected under the first paragraph of 35 U.S.C. § 112 for
lack of written description.
Under the written description portion of the first paragraph of 35 U.S.C.
§ 112, the Applicants must convey with reasonable clarity to those skilled in the art
that they had possession of the invention as of the filing date sought. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d at 1563-64; In re Kaslow, 707 F.2d at 1375.
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The claimed language of “selectively not filtering at least a portion of the
boundary area between said first and said second region based on a relationship
between the first set of one or more motion vectors and only said second set of one
or more motion vectors” was introduced in independent claims 1, 22, and 43 in the
amendments filed January 10, 2005 and September 22, 2005. There is no support
for this limitation in the Application as originally filed.
The original claims 1, 22, and 43 recited: “selectively filtering at least a
portion of the region proximate the boundary between said adjacent regions,”
which essentially describes selectively filtering the boundary width between the
two adjacent regions (Finding of Fact 4). Furthermore, the Specification states: “A
skip mode filtering scheme may use the motion estimation and/or compensation
information for adjacent image blocks as a basis upon which to selectively filter. If
the motion estimation and compensation information is sufficiently similar the
filtering may be skipped. This avoids unnecessary image blurring and significantly
reduces the required number of filtering operations, or any other appropriate value”
(Finding of Fact 5). The Specification further discloses that when the motion
vectors MV1 and MV2 point to adjacent blocks in the same reference frame
(MV1=MV2), then the deblock filtering may be skipped (Finding of Fact 6).
Finally, the Specification states that : “[i]n contrast to the block by block manner of
filtering, the present inventors came to the realization that filtering determinations
should be made in an edge by edge manner together with other information
(Finding of Fact 7).
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In other words, the Specification supports comparison of the motion vectors
of the two adjacent regions and selectively not filtering the entire edge/boundary
between the two adjacent regions when the motion vectors are equal and
selectively filtering the entire edge/boundary between the two adjacent regions
when the motion vectors are not equal (Findings of Fact 4-7). However, the
Specification does not disclose the claimed limitation of: “selectively not filtering
at least a portion of the boundary area between said first region and said second
region based on a relationship between the first set of one or more motion vectors
and only said second set of one or more motion vectors.”
Thus, there is no supporting disclosure for the limitations added by
amendment, and hence these limitations constitute new matter.

DECISION
The decision of the Examiner to reject claims 1-63 is reversed.
We have entered a new ground of rejection against claims 1-63 under 37
C.F.R. § 41.50 (b).
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004),
1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides
"[a] new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

REVERSED
37 C.F.R. § 41.50(b)

eld

KEVIN L. RUSSELL
CHERNOFF, VILHAUER, MCCLUNG & STENZEL LLP
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601 SW SECOND AVENUE
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