Ex Parte Walker et al

Board of Patent Appeals and Interferences

Jun 29, 2010

10501771 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MATTHEW D. WALKER, ADRIAN R. THURLOW,
and STEPHEN M. WEBSTER
________________

Appeal 2009-011213
Application 10/501,771
Technology Center 2600
________________

Decided: June 30, 2010
________________

Before KENNETH W. HAIRSTON, THOMAS S. HAHN, and
BRADLEY W. BAUMEISTER Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134 from the
Examiner’s final rejections of claims 1-10, 12, and 14. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on June 22, 2010. We
reverse, and enter a new ground of rejection.

Appeal 2009-011213
Application 10/501,771

2
STATEMENT OF THE CASE
Appellants claim a video system and method for encoding images by
generating (i) an encoded data set for a first image, and (ii) predictively
encoded further data sets derived from decoded versions of previous first
image data sets. A user selects another, or further, image. A first data set
for the further image is generated by predictively encoding a decoded
version of the previously generated first image data set, and further data sets
are generated by predictively encoding decoded versions of previous further
image data sets.1 Claim 1 is illustrative:
1. A method of transmitting images, the method comprising:

capturing a plurality of still images;

generating a first set of data by encoding a first one of said still
images;

generating one or more further sets of data by predictively encoding
the first image, wherein the predictive encoding is performed with
respect to a decoded version of the first image associated with a
previously generated set of data;
in response to a user request which selects a further one of said still
images, generating a first set of data representing the further image by
predictively encoding the further image, wherein the predictive
encoding is performed with respect to a decoded version of the first
image associated with a previously generated set of data; and

1 See generally Spec. 3:19-29; 4:1-4; 7:14-20; 9:18-23; 10:4, 5, 13-20;
12:18-28; Figs. 2 and 3.
Appeal 2009-011213
Application 10/501,771

3
generating one or more further sets of data representing the further
image by predictively encoding the further image, wherein the
predictive encoding is performed with respect to a decoded version of
the further image associated with a previously generated set of data.
The appealed rejections rely on the following prior art references:
King US 5,802,211 Sep. 1, 1998
Yavits US 2003/0048847 A1 Mar. 13, 2003

The Examiner rejected:
1. Claims 1, 4-10, 12, and 14 under 35 U.S.C. § 102(e) as being anticipated
by Yavits (Ans. 3-6);2 and
2. Claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over
Yavits and King (Ans. 6, 7).

APPELLANTS’ ARGUMENTS
Appellants argue claim 1 (App. Br. 14-16; Reply Br. 2-5), and
contend that the disputed limitations of claim 1 are similarly recited in the
remaining independent claims, which also are rejected as being anticipated
by Yavits (App. Br. 16). Appellants further argue that the rejected
dependent claims, including those rejected as being obvious, are patentable
because of incorporated base independent claim limitations not taught by
Yavits (App. Br. 17, 18).
Appellants assert, inter alia, that Yavits fails to teach generating a
first data set representing a selected further, e.g., a second, image by

2 Claims 10, 12, and 14 are not listed in the statement of rejection (Ans. 3).
We presume these are typographical errors because of discussions in the
associated statement of reasons addressing claims 10, 12, and 14 (Ans. 6).
Appeal 2009-011213
Application 10/501,771

4
predictively encoding a decoded version of a previously generated first
image data set (App. Br. 14; Reply Br. 3).

ISSUE
The pivotal issue is whether the Examiner erred in finding Yavits
explicitly or inherently teaches generating a first set of data representing a
further image by predictively encoding a decoded version of a previously
generated set of data for a first image as recited in independent claim 1?

ANALYSIS
Anticipation Rejection
Relevant to this appeal are the following method claim 1 recitations:
1. generating a first set of data by encoding a first image;
2. generating further sets of data for the first image by predictively
encoding decoded versions of previously generated sets of data for the
first image;
3. selecting a further image; and
4. generating a first set of data representing the further image by
predictively encoding a decoded version of a previously generated set
of data for the first image.
The Examiner finds Yavits teaches both of claim 1 recited generating
steps 2 (i.e., producing one or more data sets for the first image after it is
encoded) and 3 (i.e., producing a first data set representing the further
image). In particular, the Examiner identically describes the predictive
encoding procedures for both of claim 1, steps 2 and 3, and finds Yavits
teaches “predictive encoding (Fig. 6, 106 [“Motion Estimation Processor”])
Appeal 2009-011213
Application 10/501,771

5
is performed with respect to a decoded version of the first image associated
with a previously generated set of data ([0080])” (Final Rej. 3).
Appellants variously argue that claim 1 is patentable, including
asserting that Yavits fails to teach selecting a further image that is “encoded
in relation to the previous progressively enhanced frame selected by the
user” (App. Br. 14). More specifically, Appellants assert Yavits fails to
teach producing a first data set for the further image by performing
“‘predictive encoding . . . with respect to a decoded version of the first
image associated with a previously generated set of data,’ as required by
claim 1” (App. Br. 16; see also Reply Br. 3).
The Examiner acknowledges and addresses Appellants’ contentions
concerning “capturing still pictures” and “a user request to cause selection of
a different frame” (Ans. 8). Additionally, the Examiner, in apparent
conjunction with the claimed selecting a further frame, asserts Yavits
discloses “a Motion JPEG standard, which you would use when dealing with
still images (paragraph [0073] and [0173])” (id.). However, the Examiner
does not provide any more explanation, citation to Yavits or other evidence
of record addressing encoding a further frame. We do not find that Yavits,
including the cited paragraphs [0073] or [0173], explicitly or inherently
teaches the claim 1 recited generation of a first set of data representing a
further image by predictively encoding a decoded version of a previously
generated set of data for a first image. Consequently, we agree with
Appellants, the Examiner erred in finding claim 1 anticipated by Yavits,
because a claim only is anticipated if all the recited elements are expressly or
inherently described in a single prior art reference. Verdegaal Bros., Inc. v.
Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir. 1987).
Appeal 2009-011213
Application 10/501,771

6
For the foregoing reasons, the anticipation rejection of independent
claim 1 cannot be sustained, nor can the anticipation rejection of the other
independent claims 6, 7, or 9. Further, the anticipation rejection of claims 4,
5, 8, 10, 12, and 14 that incorporate the disputed limitations from base
independent claims can not be sustained.
Obviousness Rejection
Appellants contend that the rejection of claims 2 and 3 under § 103(a),
as being unpatentable over Yavits and King, should be reversed because
Yavits is deficient, as addressed supra, and King does not make up for the
deficiencies (App. Br. 18). We agree. Accordingly, we will not sustain the
rejection of claims 2 and 3.

NEW GROUND OF REJECTION
Claims 10, 12, and 14 are rejected under 35 U.S.C. § 101 for non-
statutory subject matter. Each of these claims recites a “computer readable
medium encoded with computer executable instructions.” We find these
recitations cover both non-transitory and transitory subject matter. This
construction is consistent with Appellants’ Specification (17:26-30).3
Accordingly, the claims are rejected under § 101 as encompassing non-
statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007) (transitory embodiments are not directed to statutory subject
matter).

3 At the oral hearing, Appellants’ counsel indicated that amendment of these
claims by narrowing them to read on “non-transitory” limited subject matter
would be acceptable.
Appeal 2009-011213
Application 10/501,771

7
ORDER
We reverse the Examiner's rejection of claims 1-10, 12, and 14.
We have entered a new ground of rejection under 37 C.F.R. §
41.50(b) for claims 2 and 3 under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection.., shall not be considered final for judicial review."
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. . . .

Appeal 2009-011213
Application 10/501,771

8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED - 37 C.F.R. § 41.50(b)

KIS
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203