15012380 (P.T.A.B. Jan. 23, 2018)

Ex Parte Sun et al

Patent Trial and Appeal BoardJan 23, 2018

15012380 (P.T.A.B. Jan. 23, 2018)

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. 15/012,380 02/01/2016 Shijun Sun 23156-0032008 6008 143308 7590 01/25/2018 FISH & RICHARDSON P.C. (Dolby) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER VO, TUNG T ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 01/25/2018 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): PATDOCTC@fr.com patents @ dolby.com mguo @ dolby. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIJUN SUN and LOUIS J. KEROFSKY Appeal 2017-0076541 Application 15/012,3802 Technology Center 2400 Before JOSEPH L. DIXON, LARRY J. HUME, and JOHN D. HAMANN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Non- Final Rejection of claim 2, which is the only claim pending in the application. Appellants have canceled claim 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 This Appeal is related to U.S. Patent Application No. 14/920,302, Appeal No. 2017-007652, which has been decided by the Board (Examiner reversed). 2 According to Appellants, the real party in interest is Dolby Laboratories Licensing Corporation. App. Br. 1. Appeal 2017-007654 Application 15/012,380 STATEMENT OF THE CASE3 The Invention Appellants' disclosed embodiments and claimed invention relate to methods and systems for image intra-prediction mode management. Spec., Title. Appealed Claim Claim 2, reproduced below, is the subject matter on appeal (formatting added): 2. An apparatus for decoding a current block of image, the apparatus comprising: a prediction mode selector configured to select an intra prediction mode; and a pixel predictor configured to predict pixel values of the current block using the selected intra prediction mode; wherein selecting the intra prediction mode comprises: a) determining an estimated prediction mode based on the prediction modes of blocks adjacent to the current block; b) receiving a first information indicating whether the estimated prediction mode is to be selected as the intra prediction mode; c) receiving a second information indicating the actual prediction mode to be selected as the intra prediction mode when the estimated 3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Nov. 30, 2016); Reply Brief ("Reply Br.," filed Apr. 20, 2017); Examiner's Answer ("Ans.," mailed Feb. 23, 2017); Non-Final Office Action ("Non- Final Act.," mailed Aug. 12, 2016); and the original Specification ("Spec.," filed Feb. 1,2016). 2 Appeal 2017-007654 Application 15/012,380 prediction mode is different from the actual prediction mode; and d) selecting either the estimated prediction mode or another prediction mode as the intra prediction mode based on the first and second information; and when the selected intra prediction mode is a prediction mode representing a direction of 22.5 degrees left from a vertical down, predicting a pixel value in the first row of the current block comprising: calculating a first sum by adding two pixels in a block above and adjacent to the current block; calculating a second sum by adding one to the first sum; and right shifting the second sum by one bit. Rejection on Appeal Claim 2 stands rejected under 35U.S.C. Â§ 101 as being directed to patent-ineligible subject matter as a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Ans. 3; see also Non-Final Act. 2. ISSUE Did the Examiner err in concluding the subject matter of claim 2 is directed to a judicial exception under Â§ 101, and is thus patent-ineligible? ANALYSIS Based upon our review of the record, we find a preponderance of the evidence supports particular arguments advanced by Appellants with respect to claim 2 for the specific reasons discussed below. We highlight and 3 Appeal 2017-007654 Application 15/012,380 address specific findings and arguments regarding claim 2 for emphasis as follows. Alice Step 1â€”The Claims are Directed to an Abstract Idea "Whether a [patent] claim is drawn to patent-eligible subject matter is an issue of law that is reviewed de novo." SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). Appellants contend "[t]he present application describes technology for encoding and decoding video frames for the purpose of transmitting video over computer networks." App. Br. 2. Video frames/images are compressed in order to reduce storage and bandwidth requirements associated therewith. Id. We note the claim is directed to selecting among various prediction modes in order to predict a pixel value. Claim 2. In the Non-Final Action, the Examiner finds "[cjlaim [2] is directed to an apparatus for decoding a current block . . . [and] does not include additional elements that are sufficient to amount to significantly more than the judicial exception because steps a), b), c), and d) are mathematical algorithms[s] that [are] routinely and conventionally performed by a generic processor, and without any improvements." Non-Final Act. 2. In carrying out the Alice analysis, the Examiner concludes the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial exception) because it recites "mathematical relationships/formulas encompassed in the selecting the intra prediction mode, i.e. sub-steps a) thru d) and prediction steps, i.e. calculating a first sum . . ., calculating a second sum . . . and right shifting, which are considered abstract idea." Non-Final Act. 2â€”3. Further, "[t]he claim is not directed to a specific implementation 4 Appeal 2017-007654 Application 15/012,380 of a solution to a problem in the software arts, and the focus of the claim is not on the specific asserted improvement in computer capabilities. Consequently, it is further concluded that the claim is directed to an abstract idea." Non-Final Act. 3. Section 101 provides that anyone who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' may obtain a patent. 35 U.S.C. Â§ 101. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize "the basic tools of scientific and technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty Ltd. v. CLSBanklnt'l, 134 S. Ct. 2347, 2354 (2014). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Id. The Supreme Court's two-part Mayo/Alice framework guides us in distinguishing between patent claims that impermissibly claim the "building blocks of human ingenuity" and those that "integrate the building blocks into something more." Alice, 134 S. Ct. at 2354. First, we "determine whether the claims at issue are directed to a patent-ineligible concept." Id. at 2355. If so, we "examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice framework are related, the "Supreme Court's formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the Â§ 101 inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the 5 Appeal 2017-007654 Application 15/012,380 Supreme Court "has not established a definitive rule to determine what constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2357). However, our reviewing court has held claims ineligible as being directed to an abstract idea when they merely collect electronic information, display information, or embody mental processes that could be performed by humans. Elec. Power Grp., 830 F.3d at 1353â€”54 (collecting cases). At the same time, "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law."). Relevant to this Appeal, our reviewing court has held claims ineligible when directed to the abstract idea of encoding and decoding image data, if they are directed to an abstract end-result, and do not recite a specific means or method for improving technology. RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322 (Fed. Cir. 2017). Cf. Realtime Data, LLCv. Carbonite, Inc., 6:17-cv-00121, 2017 WL 4693969, at *7 (E.D. Tex. Sept. 20. 2017) (distinguishing over RecogniCorp in step 2 of the Alice analysis because the claims disclose a specific improvement in computer capabilities relating to an improved data compression technique). 6 Appeal 2017-007654 Application 15/012,380 Turning to the claimed invention, the claim recites "[an] apparatus for decoding a current block of image." Claim 2 (preamble). The limitations also recite elements including: "a prediction mode selector configured to select an intra prediction mode; and a pixel predictor configured to predict pixel values of the current block using the selected intra prediction mode," with further limitations directed to how selecting the intra prediction mode is carried out. Claim 2. The Examiner concludes the claim is abstract because "the claim recite[s] mathematical relationship s/formulas encompassed in the selecting the intra prediction mode, i.e. sub-steps a) thru d) and prediction steps, i.e. calculating a first sum . . . , calculating a second sum . . . and right shifting, which are considered abstract idea[s.]" Ans. 4. Under step one, we agree with the Examiner that the invention claimed in claim 2 is directed to an abstract idea, and rely upon the court's holding in RecogniCorp that claims directed to encoding and decoding image data are abstract. RecogniCorp, 855 F.3d at 1326. Accordingly, on this record, under step one of Alice, and in view of RecogniCorp, we agree with the Examiner's conclusion that the claims are directed to an abstract idea. Alice Step 2â€”The Claims Contain an Inventive Concept Because we determine the claims are directed to an abstract idea, we analyze the claims under step two of Alice to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to "significantly more" than the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 1294, 1297-98). The 7 Appeal 2017-007654 Application 15/012,380 implementation of the abstract idea involved must be "more than performance of 'well-understood, routine, [and] conventional activities previously known to the industry.'" Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359) (alteration in original). In this case, we conclude claim 2 is directed to patent-eligible subject matter because it addresses improvements to conventional image decoding in which the claimed intraframe coding or intracoding is used to exploit the spatial redundancies within a video image resulting from adjacent blocks generally having similar attributes. The efficiency of the coding process is improved by referencing the spatial correlation between adjacent blocks, as represented by the ordered combination of the claimed method steps. See Spec. 124.4 Therefore, based upon the findings and conclusions above, on this record, we are persuaded of error in the Examiner's analysis and legal 4 The Federal Circuit found the claims in DDR to be patent-eligible under step two of the Mayo/Alice test because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). In DDR, the claim was held patent-eligible because it encompassed "an inventive concept" for resolving a "particular Internet-centric problem." DDR, 773 F.3d at 1259. While not in the same technological area, we conclude the claim on Appeal is somewhat analogous to the claims found patent-eligible by our reviewing court's holding in DDR because it provides an inventive concept for resolving particular image encoding and decoding problems, e.g., the claimed invention reduces the need for large data tables and memory, resulting in improved efficiency of the coding and decoding process, and thus represents an improvement in image encoding/decoding technology. See Spec. ^fl[ 6, 24. 8 Appeal 2017-007654 Application 15/012,380 conclusion that claim 2 is directed to patent-ineligible subject matter. Therefore, we do not sustain the Examiner's statutory subject matter rejection of claim 2 under Â§ 101. CONCLUSION The Examiner erred with respect to the non-statutory subject matter rejection of claim 2 under 35 U.S.C. Â§ 101, and we do not sustain the rejection. DECISION We reverse the Examiner's decision rejecting claim 2. REVERSED 9