Hisao Sasai et al.

Patent Trials and Appeals Board

Nov 29, 2019

15233069 - (D) (P.T.A.B. Nov. 29, 2019)

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.
15/233,069 08/10/2016 Hisao SASAI 2016-1018 9963
513 7590 11/29/2019
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
MUNG, ON S
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HISAO SASAI, TAKAHIRO NISHI, YOUJI SHIBAHARA,
TOSHIYASU SUGIO, and VIRGINIE DRUGEON
Appeal 2018-008590
Application 15/233,069
Technology Center 2400
BEFORE JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Sun Patent Trust, appeals
from the Examiner’s decision to reject claims 6–8. (Final Act. 1.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sun Patent
Trust. (Appeal Br. 1.)
Appeal 2018-008590
Application 15/233,069
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CLAIMED SUBJECT MATTER
The claims are directed to an image decoding method and image
decoding apparatus. Claim 6, reproduced below, is illustrative of the
claimed subject matter:
6. An decoding method for decoding an image on a block-
by-block basis, the decoding method comprising:

decoding mode information that specifies one selected
prediction mode, the one selected prediction mode being selected
from among a plurality of prediction modes including a plurality
of direction prediction modes and two predetermined prediction
modes different from the plurality of direction prediction modes,
the two predetermined prediction modes including a DC
prediction mode; and

decoding a current block to be decoded included in the
image by predicting the current block using the selected one
prediction mode,

wherein the decoding mode information further includes:

determining whether or not either one of the two
predetermined prediction mode is selected as the one
selected prediction mode; and

when it is determined that both of the two
predetermined prediction mode are not selected as the
selected one prediction mode, determining one of the
plurality of directional prediction modes as the one
selected prediction mode, the plurality of directional
prediction modes being different from the two
predetermined prediction modes.
(Appeal Br. 12, Claims Appendix.)
REFERENCES
The prior art relied upon by the Examiner is:
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Application 15/233,069
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Drugeon et al. US 2010/0128995 A1 May 27, 2010
Karczewicz et al. US 2012/0008683 A1 Jan. 12, 2012

REJECTIONS
Claims 6–8 stand rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 6–8 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Karczewicz in view of Drugeon.
OPINION
Written Description Requirement
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
With respect to the written description rejection of independent claims
6–8, Appellant argues the claims together. (Appeal Br. 5–6.) Therefore, we
select independent claim 6 as the representative claim for the group and will
address Appellant’s arguments thereto. 37 C.F.R. § 41.37(c)(1)(iv).
With respect to representative independent claim 6, the Examiner
maintains that the claim limitation ““when it is determined that both of the
two predetermined predicting mode are not selected as the selected one
prediction mode, determining one of the plurality of directional prediction
modes as the one selected prediction mode”, is not disclosed in the
Specification or figures and fails to comply with the written description
requirement. (Final Act. 3; Ans. 7–8.)
Appellant contends that paragraphs 74, 164, 184, and 240 support the
claim limitations. (Appeal Br. 5–6; see also Appeal Br. 2–3.) Appellant
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Application 15/233,069
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further contends that when both of the two predetermined prediction modes
are not selected as the one prediction mode, it necessarily follows that the
selected one prediction mode must be one of the 33 directional prediction
modes, and as such, it is respectfully submitted that one of ordinary skill in
the art would reasonably understand the limitation is supported by the
Specification as originally filed such that the Appellant was in possession of
the invention as claimed. (Appeal Br. 5–6.)
The Examiner further maintains that “the Examiner still could not find
those limitations in the specification.” (Ans. 7.) We agree with the
Examiner that the portions of the Specification identified by Appellant do
not provide written description support to evidence possession at the time of
the invention. Therefore, we sustain the rejection of representative
independent claim 6 and independent claims 7 and 8 not separately argued.

Obviousness
With respect to the obviousness rejection of independent claims 6–8,
Appellant argues the claims together. (Appeal Br. 6–8.) Therefore, we
select independent claim 6 as the representative claim for the group and will
address Appellant’s arguments thereto. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the Karczewicz and Drugeon references do not
teach or suggest the claimed “decoding mode information” in the claimed
decoding method. (Appeal Br. 6–9.) Appellant further contends that
“paragraphs [0278]-[0280] and [0282] of Karczewicz determines whether or
not DC prediction mode is signaled for the block, that is, Step 352 does not
determine whether or not DC prediction mode is selected for the block.”
(Appeal Br. 7–8.) Appellant does not identify any specific definition for the
term “selected” in the Specification, and we note that the portions of the
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Application 15/233,069
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Specification identified in the Summary of the Claimed Subject Matter do
not identify any specific definition for the term “selected.”
Appellant addresses this specific teaching in isolation and does not
address the Examiner’s further reliance upon the additional paragraphs 50–
52, 54, 105, and 158 of the Karczewicz reference as relied upon by the
Examiner in the statement of the rejection. (See Final Act. 5–6.)
Moreover, the Examiner further responds to the points argued by
Appellant further addressing paragraphs 50 and 54 of the Karczewicz
reference. (Ans. 8–9.) The Examiner further maintains that the “limitations
disclosed by Karczewicz is equivalent to the claimed limitation “determining
whether or not either one of the two predetermined prediction mode is
selected as the one selected prediction mode,” as claimed. (Ans. 9.) We
agree with the Examiner that the signaling taught by the Karczewicz
reference is equivalent and suggestive of the claimed “selected prediction
mode.”
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner’s burden of production:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
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and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must “notify the applicant,” “stating the reasons
for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.

In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
Therefore, we find Appellant’s argument to be unavailing because we
agree with the Examiner that the signaling of the prediction would be
decoded as a selection of a prediction mode.
Appellant did not file a Reply Brief to respond to the Examiner’s
additional factual findings and discussion of the additional portions of the
Karczewicz reference relied upon by the Examiner in the grounds of the
rejection. Consequently, Appellant’s argument does not show error in the
Examiner’s factual findings or conclusion of obviousness of representative
independent claim 6.
With respect to independent claims 7 and 8, Appellant relies upon the
arguments advanced with respect to independent claim 6. (Appeal Br. 9.)
Therefore, independent claims 7 and 8 fall with representative independent
claim 6.
DECISION
The Examiner’s written description and obviousness rejections are
affirmed.
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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
6–8 112, para. 1 Written
description
6–8
6–8 103 Karczewicz,
Drugeon
6–8
Overall
outcome
6–8

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED