Ex Parte Tanida et alDownload PDFPatent Trial and Appeal BoardJan 21, 201612528434 (P.T.A.B. Jan. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/528,434 08/24/2009 27572 7590 01/25/2016 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 FIRST NAMED INVENTOR Ryuichi Tanida 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. 5259-000103/US/NP 3536 EXAMINER CARTER, RICHARD BRUCE ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 01125/2016 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): troydocketing@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYUICHI TANIDA and ATSUSHI SHIMIZU Appeal2014-001703 Application 12/528,434 Technology Center 2400 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1--4 and 6. Claim 5 is canceled. See Response to Non-Final Office Action (filed Aug. 17, 2012) at 6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b) (2012). 1 According to Appellants, the real party in interest is Nippon Telegraph and Telephone Corporation. App. Br. 3. Appeal2014-001703 Application 12/528,434 STATEMENT OF THE CASE The Invention Appellants' invention "relates to a code amount estimating method and corresponding apparatus, program, and storage medium in video encoding in which a video image is subjected to orthogonal transformation and encoding using variable length code." Spec. i-f 1. Claims 1 and 4 are independent. Claim 1 is illustrative of the subject matter on appeal: 1. A code amount estimating method, used in video encoding, for estimating an amount of code generated in a first information source encoding method in which a plurality of orthogonal transformation sizes are selectable and encoding is performed by rearranging quantized two-dimensional orthogonal transformation coefficients to have a one- dimensional form, wherein the amount of code is estimated using a second information source encoding method which has a lower computation cost than the first information source encoding method and performs encoding using a variable length encoding table, and the code amount estimating method comprises the steps of: performing rearrangement, when encoding quantized values of coefficients of a larger-sized orthogonal transformation than an orthogonal transformation size assigned to the variable length encoding table, by rearranging the quantized values to have a one-dimensional form in the order defined in the first information source encoding method, wherein in the one-dimensional form, Run-Level sets of the number Run of successive "O" coefficients and a significant coefficient Level which follows them are obtained, and the obtained Run-Level sets are stored; computing the number of groups based on a proportion between an orthogonal transformation area corresponding to the orthogonal transformation size assigned to the variable length encoding table and an orthogonal transformation area for an encoding target; 2 Appeal2014-001703 Application 12/528,434 classifying the Run-Level sets into groups having the number of groups; dividing Run of each Run-Level set by the number of groups, and setting the obtained quotient as Run of the Run-Level set; determining a code length of each Run-Level set in each group by referring to the variable length encoding table; and computing the total sum of the determined code lengths, wherein the amount of code generated in the first information source encoding method is estimated to be the total sum of the code lengths of all groups, wherein the first information source encoding method is a context-adaptive binary arithmetic coding [("CABAC")] method, and the second information source encoding method is a context-adaptive variable length coding [("CA VLC")] method. App. Br. 21-22 (Claims App'x). Rejections on Appeal Claims 1--4 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sugahara et al. (US 2004/0120404 Al; published June 24, 2004) ("Sugahara"), Masuda et al. (US 5,398,078; issued Mar. 14, 1995) ("Masuda"), and Hussain et al. (US 2007/0296613 Al; published Dec. 27, 2007) ("Hussain"). See Final Act. 2-7. ISSUE The issue presented by Appellants' contentions are as follows: Under§ 103(a), did the Examiner err in concluding the combination of Sugahara, Masuda, and Hussain teaches or suggests "using a [CAVLC] method" "for estimating an amount of code generated in a [CABAC] method" as required by claim 1? 3 Appeal2014-001703 Application 12/528,434 ANALYSIS The Examiner finds Hussain teaches "using a [CA VLC] method" "for estimating an amount of code generated in a [CABAC] method" because it uses CABAC and CA VLC methods sequentially, wherein both CABAC and CA VLC are inherently lossless compression techniques. Ans. 10 (citing Hussain, Fig. 5C; i-f 77). Appellants argue Hussain does not teach sequentially using CABAC and CA VLC, but rather merely selectable encoding methods that allow selection between CABAC and CA VLC. App. Br. 15, 18; Reply Br. 2-3. Therefore, Appellants argue, the Examiner erred in finding that Hussain teaches or suggests "using a [CA VLC] method" "for estimating an amount of code generated in a [CABAC] method" as required by claim 1. App Br. 15, 18; Reply Br. 2-3. We agree with Appellants. Hussain teaches that "[t]he H.264 specification provides for two types of entropy encoding processes, including context-adaptive binary arithmetic coding (CABAC) and context-adaptive variable length coding (CA VLC)." Hussain i-f 4. Hussain further teaches CA VLC and CABAC modules for use in a variable length decoding ("VLD") unit and that "CAB AC and CA VLC decoding is [sic] very sequential .... " Hussain i-fi-1 29, 77; Fig. 5C. These cited passages of Hussain teach selecting between CAB AC or CA VLC methods in a video decoder. They do not teach or suggest using a CA VLC method for estimating an amount of code generated in a CABAC method. See Hussain, Fig. 5C; i-f 77. Although Hussain teaches that CABAC and CA VLC methods are sequential, the skilled artisan would understand this to mean that each method individually has a sequence of steps, not that one of the methods is performed before or after the other. 4 Appeal2014-001703 Application 12/528,434 See Hussain il 29. Furthermore, the cited passages of Hussain relate to video decoding, not "video encoding," as claimed. See Hussain, Fig. 5C; i-f 77. The Examiner has not directed us to any passages that persuade us that Hussain, Sugahara, or Masuda teaches or suggests, either individually or in combination, the elements of the disputed limitation as recited in claim 1. Nor has the Examiner provided any rationale that fills the gaps in the cited art. Appellants have demonstrated error in the rejection of claim 1 as unpatentable over Sugahara, Masuda, and Hussain. Accordingly, constrained by this record, we do not sustain the Examiner's rejection with respect to independent claim 1. For the same reason, we do not sustain the rejections of independent claim 4 and dependent claims 2, 3, and 6, each of which include the same deficiency discussed above with respect to the rejection of claim I. See App. Br. 12-19; Ans. 9-11; Final Act. 2-7. NEW GROUNDS OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Rejection under 35 USC§ 101 Claims 1--4 and 6 are rejected on a new ground of rejection under 35 U.S.C. § 101 as directed to nonstatutory subject matter, in particular to a judicial exception (i.e., abstract idea) without significantly more. To be statutorily patentable, the subject matter of an invention must be a "new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has held that there are implicit exceptions to the categories of patentable subject matter identified in § 101, including laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). 5 Appeal2014-001703 Application 12/528,434 The Court has "set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Id. (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)). The evaluation follows the two-part analysis set forth in Mayo: 1) determine whether the claim is directed to an abstract idea; and 2) if an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2350. Given that claim 1 is directed to a process, which is one of the statutory categories of invention, we analyze the claim to determine whether it is directed to any judicial exception. Claim 1 recites a method that estimates a code amount using a CA VLC method, which is a known mathematical algorithm in the art of video coding. See Hussain i-f 4; Spec. i-f 3. Specifically, claim 1 recites a CA VLC method that rearranges values, computes a number of groups based on a proportion, classifies sets of data into groups, divides data by the number of groups, sets values, determines a code length by referring to a table, and computes a total sum of the determined code lengths. Such a process falls within the "abstract idea" exception to the categories of patentable subject matter identified in § 101 because mathematical algorithms have been characterized by the Court as abstract ideas. See Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Parkerv. Flook, 437 U.S. 584, 591-92 (1978). Moreover, these elements of claim 1 represent a process that employs a mathematical algorithm to manipulate existing information to generate additional information, which the Federal 6 Appeal2014-001703 Application 12/528,434 Circuit has held to be an abstract idea. Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1350-51 (Fed. Cir. 2014). As is the case here, "[i]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory." Id (citing Flook, 437 U.S. at 595). For these reasons, we conclude that claim 1 is directed to an abstract idea. Next, we analyze the claim as a whole to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Claim 1 recites an additional element that the amount of code generated in a CABAC method is estimated to be the computed total sum of the CA VLC method. Also, the preamble of claim 1 recites the method's field of use as video encoding. Nevertheless, none of these additional elements amounts to significantly more than the exception. Defining the total sum of the CA VLC method to be an estimate for the amount of code generated with another known lossless compression technique, CABAC, is merely insignificant post-solution activity, at most an additional step in the recited algorithm. See Flook, 437 U.S. at 590; Hussain i-f 4; Spec. i-f 3; Ans. 10. Furthermore, simply limiting the use of the abstract idea to a particular technological environment, i.e., video encoding, does not mitigate preemption concerns or circumvent the prohibition against patenting an abstract idea. See Alice, 134 S. Ct. at 2358 (citing Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)). As discussed above, the elements of claim 1 merely calculate an estimate using a known mathematical algorithm, CA VLC; they do not add any meaningful limits that transform the abstract idea into a patent eligible application thereof. Accordingly, we reject claim 1 under 35 U.S.C. § 101 7 Appeal2014-001703 Application 12/528,434 as directed to nonstatutory subject matter in the form of an ineligible abstract idea. For similar reasons, we reject dependent claims 2 and 3, which merely provide additional limitations to the classifying step of the CA VLC algorithm. See App. Br. 22 (Claims App'x). Claims 4 and 6, which are directed to an apparatus and non-transitory computer readable storage medium for performing the method steps described above, are similarly rejected because their generically recited computer components add nothing of substance to the underlying abstract idea. See Alice, 134 S. Ct. at 2358; Flook, 437 U.S. at 594; App. Br. 23-24 (Claims App'x). DECISION The decision of the Examiner to reject claims 1--4 and 6 under 35 U.S.C. § 103(a) is reversed. We enter a new ground of rejection for claims 1--4 and 6 under 35 U.S.C. § 101. Section 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, 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 prosecution 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. 8 Appeal2014-001703 Application 12/528,434 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) ACP 9 Copy with citationCopy as parenthetical citation