Ex Parte Wee et al

Board of Patent Appeals and Interferences

Sep 26, 2011

10245172 (B.P.A.I. Sep. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SUSIE J. WEE and JOHN G. APOSTOLOPOULOS
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Appeal 2009-013286
Application 10/245,172
Technology Center 2400
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Before ROBERT E. NAPPI, JASON V. MORGAN, and ERIC B. CHEN,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013286
Application 10/245,172

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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 13. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Exemplary Claim
1. A computer readable medium having a data packet stored therein for
causing a functional change in the operation of a transcoder, said data packet
comprising:
a) a scalably encoded data portion; and
b) a header data portion corresponding to said scalably encoded data
portion, said header data portion including information that causes said
transcoder to be able to efficiently transcode said scalably encoded data
portion.

ISSUES
Is the 35 U.S.C. § 101 rejection of claims 1 – 13 unsustainable
because the Examiner erred in finding that the claims are directed to non-
statutory subject matter?
Are the 35 U.S.C. § 103(a) rejections of claims 1, 2, 5, 6, and 10 – 13
unsustainable because the Examiner erred in finding that the combination of
Park (US 6,148,288) and Wang (US 6,570,922 B1) teaches or suggests a
data packet comprising a scalably encoded data portion and a corresponding
header data portion, where the header data portion includes information that
causes a transcoder to be able to efficiently transcode the scalably encoded
data portion?

Appeal 2009-013286
Application 10/245,172

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and in the Examiner’s Answer in response to Appellants’
Appeal Brief. We concur with the conclusions reached by the Examiner.
Whether the Examiner erred in finding that the claims are directed to non-
statutory subject matter
We do not agree with Appellants (App. Br. 9) that the claimed data
packet constitutes functional descriptive material. While the data packet
includes a ―header data portion including information that causes said
transcoder to be able to efficiently transcode,‖ this claimed information does
not impart functionality on the transcoder. Instead, the unclaimed transcoder
itself possesses the needed functionality—functionality that happens to be
responsive to the claimed non-functional descriptive material.
Whether the Examiner erred in finding that the combination of Park and
Wang teaches or suggests a data packet comprising a scalably encoded data
portion and a corresponding header data portion, where the header data
portion includes information that causes a transcoder to be able to
efficiently transcode the scalably encoded data portion
Park’s bitstreams are encoded using data packets (Fig.3; col. 10, ll. 4 –
9). These data packets have a header portion (―HEADER‖) and a data
portion (quantization bit information for layers 0 . . . N) (id.). The data
portion is scalably encoded because it has ―a layered structure in which the
bitstreams of lower bitrate layers are contained in those of higher bitrate
layers‖ (col. 10, ll. 5 – 7). These teachings are illustrated in Park’s Figure 3.

Appeal 2009-013286
Application 10/245,172

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Figure 3 is shown below:

Park’s Figure 3, above, shows the structure of a Park’s disclosed
bitstream (col. 5, ll. 66 – 67).
Wang’s MPEG-2 bitstream structure also uses data packets for
encoding, where the data packets include headers (Fig.3; col. 11, ll. 36 – 49).
These headers provide parameters for transcoding the encoded pictures
(Fig.7a-1, box 702; col. 21, ll. 36 – 38). As such, we agree with the
Examiner that providing parameters for transcoding teaches or suggests
including information that causes a transcoder to be able to efficiently
transcode a scalably encoded data portion (Ans. 5 and 13).
Therefore, we agree with the Examiner that the combination of Park
and Wang teaches or suggests a data packet comprising a scalably encoded
data portion and a corresponding header data portion (Park), where the
header data portion includes information that causes a transcoder to be able
Appeal 2009-013286
Application 10/245,172

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to efficiently transcode the scalably encoded data portion (Wang) (Ans. 5
and 12 – 14).
Accordingly, we sustain the rejection of independent claims 1 and 10
under 35 U.S.C. § 103(a). Claims 2, 5, 6, 12, and 13 depend from
independent claims 1 and 10 and Appellants have not presented any
substantive arguments with respect to these claims. Therefore, we sustain the
rejection of claims 2, 5, 6, 12 and 13 under 35 U.S.C. § 103(a) for the same
reasons discussed with respect to independent claims 1 and 10.
Although Appellants nominally argue the rejection of claims 3, 4 and
7 – 9 separately (App. Br. 12 – 13), the arguments presented do not point out
with particularity or explain why the limitations of these claims are
separately patentable. Instead, Appellants merely argue that ―Dogan does not
overcome this shortcoming [of Park and Wang]‖ (App. Br. 12). We are not
persuaded by these arguments for the same reasons discussed with respect to
claims 1 and 10. Accordingly, we sustain this rejection.

CONCLUSIONS
The Examiner has demonstrated that claims 1 – 13 are unpatentable
because the Examiner did not err in finding:
1. that the claims are directed to non-statutory subject matter and
2. that the combination of Park and Wang teaches or suggests a data
packet comprising a scalably encoded data portion and a corresponding
header data portion, where the header data portion includes information that
causes a transcoder to be able to efficiently transcode the scalably encoded
data portion.

Appeal 2009-013286
Application 10/245,172

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DECISION
We affirm the Examiner’s decision rejecting claims 1 – 13.
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).

AFFIRMED

ELD