InterDigital VC Holdings, Inc.

Patent Trials and Appeals Board

Oct 1, 2020

2019004166 (P.T.A.B. Oct. 1, 2020)

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.
15/806,893 11/08/2017 Yunfei Zheng 2009P00073 US01 4776
157363 7590 10/01/2020
InterDigital VC Holdings
4 Research Way
3rd Floor
Princeton, NJ 08543
EXAMINER
SULLIVAN, TYLER
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
PatentOPs.US@interdigital.com
donna.foligno@interdigital.com
patricia.verlangieri@interdigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUNFEI ZHENG, QIAN XU, XIAOAN LU, PENG YIN,
JOEL SOLE ROJALS, and ADEEL ABBAS
_____________

Appeal 2019-004166
Application 15/806,893
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–5, 7–9, 11–13, 15, and 16. Claims 2, 6, 10, 14, and 17–19 are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2019). According to Appellant, the “real party in
interest is InterDigital VC Holdings.” See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to method and
apparatus “for signaling intra prediction for large blocks for video encoders
and decoders.” Abstract.
Independent Claim 9
9. A video decoder, comprising at least a memory and one or
more processors, wherein the one or more processors are
configured to:
decode picture data for at least a large block in a picture
by determining that intra prediction is to be performed for the at
least a large block,
[L1] wherein the at least a large block has a large block
size greater than a basic coding unit size, the large block size
being one of 32x32 and 64x64 and the basic coding unit size
being 16x16,
[L2] wherein the intra prediction is signaled for the at least
a large block and the one or more processors are configured to:
- decode a binary split signaling syntax element specifying
whether the large block is further split into four equally sized
sub-blocks;
- decode an intra prediction mode for said large block in
the case where said binary split signaling syntax element
specifies the large block is not further split;
otherwise in the case where said binary split signaling
syntax element specifies the large block is further split:

2 We herein refer to the Final Office Action, mailed September 20, 2018
(“Final Act.”); Appeal Brief, filed February 6, 2019 (“Appeal Br.”); the
Examiner’s Answer, mailed March 5, 2019 (“Ans.”). We note Appellant has
not filed a Reply Brief.
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[L3] - decode for each sub-block, in the case where said
sub-block is 32x32, a binary split signaling syntax element
specifying whether said 32x32 sub-block is further split into four
equally basic coding unit sized blocks and decode an intra
prediction mode for said 32x32 sub-block in the case where said
binary split signaling syntax element specifies said 32x32 sub-
block is not further split; and
[L4] - decode for each sub-block, in the case where said
sub-block is 16x16, a single spatial intra partition type, the single
spatial intra partition type being determinable from among a
plurality of spatial intra partition types.
Appeal Br. 22–23, Claims App. (disputed L1–L4 limitations emphasized,
negative limitations in bold).

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Moriya et al.
(“Moriya”)
US 2008/0123947 A1 May 29, 2008
Chen et al.
(“Chen”)
US 2010/0086029 A1 April 8, 2010
Zheng et al.
(“Zheng”)
US 2012/0106629 Al May 3, 2012
Chen et al.
(“Chen ’357)
US Prov. 61/144,357 Jan. 13, 2009
Chen et al.
(“Chen ’631)
US Prov. 61/166,631 April 3, 2009
Park et al.
(“Park”)
WO 2009/028922 A2 March 5, 2009

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Rejections
As noted by Appellant, the non-statutory obviousness-type double
patenting (OTDP) rejection of claims 1, 3–5, 7–9, 11–13, 15, and 16, as
being unpatentable over claims 19, 23, 38, 40, 46, and 48 of copending
Application No. 13/381,538 (US PG PUB 2012/0106629 A1, “Zheng”), is
moot in view of a previously filed terminal disclaimer. See Appeal Br. 11.
We note the terminal disclaimer was filed on Feb. 6, 2019, and was
approved on Feb. 9, 2019. In response, the Examiner withdrew the OTDP
rejection in the Answer (16). Therefore, this rejection is not before us on
appeal.
The rejections that remain before us on appeal are:
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1, 3–5, 7–9,
11–13, 15,
16
112, second
paragraph

Indefinite
B 1, 5, 9, 13 103(a)

Park, Chen, Chen ’631, and Chen
’357
C 3, 4, 7, 8,
11, 12, 15,
16
103(a)

Park, Chen, Moriya
ANALYSIS
Rejection A under 35 U.S.C. § 112, second paragraph, Indefiniteness
Issue: Under 35 U. S.C. § 112, second paragraph, did the Examiner
err in concluding that claim 1 is indefinite?
The Examiner concludes claim 1:
teaches 32 x 32 as a large block, but later claims the 32 x 32
block as a sub-block which would imply the 64 x 64 block was
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selected as the large block, but defeats the definition of a 32 x
32 block as a large block making the claim indefinite.
Final Act. 17.
Applicant contends:
since the large block size is one of 64x64 and 32x32, the
corresponding sub-block size is one of 32x32 and 16x16.
Consequently, a 32x32 can be regarded as a large block in
partitioning scheme (1) and as a sub-block in splitting scheme
(2), and whether a 32x32 block is considered as a large block or
a sub-block would be readily understood by those skilled in the
art.
Appeal Br. 11–12. Appellant further contends:
[w]hen reading the claim as a whole, those skilled in the art
would clearly understand that a 32x32 block can be considered
as a large block or as a sub-block, depending on the partitioning
scheme as described above. Therefore, the recitation of a
32x32 block as a large block and later as a sub-block does not
render claim 1 indefinite.
Appeal Br. 12.
We note that 35 U.S.C. § 112, second paragraph, requires: “The
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.” As guided by the Manual of Patent Examining Procedure
(MPEP), a rejection based on the failure to claim the subject matter which
the applicant regards as the invention “is appropriate only where an inventor
has stated, somewhere other than in the application as filed, that the
invention is something different from what is defined by the claims.” MPEP
§ 2172(1).
Given the supporting descriptions in Appellant’s Specification
(pp. 13–14), and for essentially the same reasons argued by Appellant (App.
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Br. 11–12), we are persuaded that the language of claim 1 is not indefinite.
Therefore, we reverse the Examiner’s rejection of claims 1, 3–5, 7–9, 11–13,
15, and 16 under 35 U.S.C. § 112, second paragraph.
Rejection B under pre-AIA 35 U.S.C. § 103(a)
Under 35 U.S.C. § 103(a), we focus our analysis on the following
argued limitations regarding Rejection A of independent claims 1, 5, 9,
and 13.
Issue: Did the Examiner err by finding that Park, Chen, Chen ’631,
and Chen ’357 collectively teach or suggest the disputed, dispositive
limitation L3:
decode for each sub-block, in the case where said sub-block is
32x32, a binary split signaling syntax element specifying
whether said 32x32 sub-block is further split into four equally
basic coding unit sized blocks and decode an intra prediction
mode for said 32x32 sub-block in the case where said binary
split signaling syntax element specifies said 32x32 sub-block
is not further split [,]
within the meaning of independent claims 1, 5, 9, and 13? (emphasis
added).3
Rejection B of Independent Apparatus Claims 9 and 13
The Examiner finds the claim language “decode an intra prediction
mode for said 32x32 sub-block in the case where said binary split signaling
syntax element specifies said 32x32 sub-block is not further split” is taught

3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
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by a series of citations to Park, Chen ’357, and Chen ’631. See Final
Act. 21.
However, after reviewing each of these citations, we find that the
Examiner has not fully developed the record to show how the negative
limitation “where said binary split signaling syntax element specifies said
32x32 sub-block is not further split” (emphasis added) (which is also recited
in the original claims), is specifically taught or suggested by the Examiner’s
citations.
On this record, we find the Examiner’s mapping of this disputed
negative claim limitation to the corresponding specific features found in the
cited reference(s) is imprecise, and thus would require us to engage in some
degree of speculation.4 We decline to engage in speculation. On this record,
the Examiner has not clearly shown the specific mapping of this negative
limitation, and therefore has not established a prima facie showing of
obviousness under 35 U.S.C. § 103(a), and under the notice requirement of
35 U.S.C. § 132(a).
Therefore, we are constrained on this record to find the Examiner
erred in concluding that the cited combination of Park, Chen, Chen ’631, and
Chen ’357, renders obvious Appellant’s independent apparatus claims 9 and
13.

4 See 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.”) (emphasis added).

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Accordingly, we reverse the Examiner’s 35 U.S.C. § 103(a)
Rejection B of independent apparatus claim 9, and for the same reasons, we
also reverse Rejection B of independent apparatus claim 13, which recites
the contested negative limitation using similar language of commensurate
scope.
Rejection C of Dependent claims 11, 12, 15, and 16
Because we have reversed the rejection of independent claims 9 and
13 on appeal, we also reverse the Examiner’s Rejection C of each associated
dependent claim 11, 12, 15, and 16. On this record, the Examiner has not
shown how the additionally cited secondary Moriya reference overcomes the
aforementioned deficiencies of the base combination of Park and Chen, as
discussed above regarding independent apparatus claims 9 and 13.
Rejection B of Independent Method Claims 1 and 5
Regarding Rejection B of independent method claims 1 and 5,
although these claims also recite the disputed negative limitation discussed
above in commensurate form, we note the conditional language employed in
the limitations “in the case where said binary split signaling syntax element
specifies the large block is not further split” and
otherwise in the case where said binary split signaling syntax
element specifies the large block is further split:
- decoding for each sub-block, in the case where said sub-
block is 32x32, a binary split signaling syntax element
specifying whether the 32x32 sub-block is further split into four
equally basic coding unit sized blocks and decoding an intra
prediction mode for said 32x32 sub-block in the case where
said binary split signaling syntax element specifies said 32x32
sub-block is not further split; and
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- decoding for each sub-block, in the case where said sub-
block is 16x16, a single spatial intra partition type, the single
spatial intra partition type being determinable from among a
plurality of spatial intra partition types,
as recited in method claim 1, and similarly recited in (encoding) method
claim 5. (emphasis added).
See Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL
6277792, at *9 (PTAB, Apr. 28, 2016) (precedential) (holding “The
Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim (e.g., instances in
which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met.”); see also Ex
parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI Jan.
27, 2011).
Applying the precedential guidance of Schulhauser here, we find that
for independent method claims 1 and 5, the Examiner need not present
evidence of the obviousness of the disputed conditional method steps
because they are not required to be performed under the broadest reasonable
interpretation of the claim.5 Therefore, on this record, and based upon a

5 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
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preponderance of the evidence, Appellant arguments regarding the disputed
conditional limitations of claims 1 and 5 do not persuade us of error
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a)
Rejection B of independent claims 1 and 5.

Rejection C of Dependent Claims 3, 4, 7, and 8
Because dependent claims 3, 4, 7, and 8 depend variously from
rejected method claims 1 or 5, which we affirmed on the basis of
Schulhauser, as explained supra, the same basis for affirmance applies to all
claims that depend from claims 1 or 5 (and not separately argued).
Therefore, we affirm the Examiner’s Rejection C of dependent claims 3, 4,
7, and 8, for the same reasons discussed above regarding independent
method claims 1 and 5.
CONCLUSIONS
The Examiner erred in rejecting claims 1, 3–5, 7–9, 11–13, 15, and
16, as being indefinite under 35 U.S.C. § 112, second paragraph.
The Examiner erred in rejecting claims 9, 11, 12, 13, 15, and 16 under
35 U.S.C. § 103(a).
The Examiner did not err in rejecting claims 1, 3, 4, 5, 7, and 8 under
35 U.S.C. § 103(a).

step need not be carried out in order for the claimed method to be
performed.”).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–5, 7–9,
11–13, 15,
16
112, 2nd
par.

Indefiniteness 1, 3–5, 7–9,
11–13, 15,
16
1, 5, 9, 13 103

Park, Chen, Chen
’631, Chen ’357
1, 5 9, 13
3, 4, 7, 8, 11,
12, 15, 16
103

Park, Chen, Moriya 3, 4, 7, 8 11, 12, 15,
16
Overall
Outcome
1, 3–5, 7,
8
9, 11, 12,
13, 15, 16

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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART