Mani, Senthil Kumar. et al.

Patent Trials and Appeals Board

Oct 1, 2019

14485482 - (R) (P.T.A.B. Oct. 1, 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.
14/485,482 09/12/2014 Senthil Kumar Mani 070852.000051 3270
125968 7590 10/01/2019
Vorys, Sater, Seymour and Pease LLP
(ImgTec)
1909 K St., N.W.
Ninth Floor
Washington, DC 20006
EXAMINER
LUO, ANTHONY L
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
patlaw@vorys.com
vmdeluca@vorys.com
vorys_docketing@cardinal_ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SENTHIL KUMAR MANI and PRASAD PURAM
____________

Appeal 2018-007950
Application 14/485,482
Technology Center 2400
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant1 has submitted a timely
Request for Rehearing dated August 27, 2019 (“Request”), requesting
rehearing of the June 28, 2019 Decision on Appeal (“Opinion” or “Op.”)
affirming the rejections of claims 1–20 under 35 U.S.C. § 103. See Op. 12.
We have reconsidered the Opinion in light of Appellant’s arguments
in the Request. We find no substantive errors and decline to change our
prior decision for the following reasons. However, in an abundance of

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Imagination Technologies Limited. Appeal Br. 1.
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caution, we designate our affirmance of the rejections of claims 1–20 as new
grounds under 37 C.F.R. § 41.50(b).
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. See 37 C.F.R.
§ 41.52(a)(1). Generally, arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs are not permitted in the
request for rehearing. See id. Permitted new arguments are limited to:
(a) new arguments based upon a recent relevant decision of either the Board
or a Federal Court; (b) new arguments responding to a new ground of
rejection designated pursuant to 37 C.F.R. § 41.50(b); or (c) new arguments
that the Board’s decision contains an undesignated new ground of rejection.
See id. § 41.52(a)(2)–(4).
PURPORTED, UNDESIGNATED NEW GROUND OF REJECTION
The Examiner rejected claims 1, 7–9, 11, 16–18, and 20 under § 103
as being unpatentable over Zheng (US 2010/0312552 A1, published Dec. 9,
2010) and Rajendran (US 2008/0027717 A1, published Jan. 31, 2008). See
Final Act. 4–7; Ans. 2–3.2 Appellant’s arguments in the briefs regarding
this and other rejections did not persuade us of error. See Op. 5–11. In the
Request, Appellant contends that we presented new factual findings in the
Opinion that constitute new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). See Request 1–2.
I.
Appellant first asserts, in the Opinion, we relied on a new factual
finding that claim 1’s limitation reciting “wherein, if at least a portion of the

2 We refer to the Final Office Action mailed September 1, 2017 and the
Examiner’s Answer mailed May 30, 2018.
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voice data is classified as unvoiced, the encoded voice data payload is
determined to be a critical payload” (“the ‘wherein’ clause”) is a conditional
limitation similar to that discussed in Ex parte Schulhauser, No. 2013-
07847, 2016 WL 6277792, at *5, 7 (PTAB Apr. 28, 2016) (precedential).
See Request 1 (citing Op. 6–7). We are not persuaded.
Our claim interpretation does not rise to the level of a new ground of
rejection, for which Appellant has not had a fair opportunity to react to the
thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302–03 (CCPA
1976) (“[T]he ultimate criterion of whether a rejection is considered ‘new’ in
a decision by the [B]oard is whether [applicants] have had fair opportunity
to react to the thrust of the rejection.”). Our discussion concerning how the
“wherein” clause should be construed was not necessary to resolve
Appellant’s dispute, but rather was intended to highlight to Appellant the
breadth of this limitation. See Op. 7 (noting the “wherein” clause is a
conditional limitation, but then proceeding to address this limitation “even if
this ‘wherein’ clause were not a conditional limitation”). Moreover, we
sustained the rejection based on Zheng and Rajendran (Op. 7–8), which
according to Appellant, is the rejection from which this appeal was taken.
Request 1 (stating “the rejection appealed from is the proposed modification
of Zheng with Rajendran under 35 U.S.C. 103 (see Final rejection at 4).”).
On this basis, Appellant has been afforded a fair opportunity to
respond to the rejection.
II.
Appellant next contends, in the Opinion, we relied on new factual
findings that (1) Zheng alone suggests the “wherein” clause, and (2)
Rajendran is technically cumulative to Zheng with respect to the “wherein”
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clause. See Request 1 (citing Op. 7). According to Appellant, the rejection
appealed from is the proposed modification of Zheng with Rajendran under
35 U.S.C. § 103, and we newly found Zheng alone teaches the “wherein”
clause. See id. at 1–2 (quoting Final Act. 4–5).
In the Answer and as cited in the Opinion (Op. 5, 7), the Examiner
elaborated on Zheng’s teachings, finding Zheng’s speech data may include
voice and unvoiced data. See Ans. 2 (citing Zheng ¶ 42). The Examiner
explained Zheng further discloses analyzing a speech frame by determining
whether the speech frame is a critical frame and by creating a redundant
copy of the speech frame. See id. (citing Zheng ¶ 40). According to the
Examiner, “[w]hen Zheng discloses the speech data is critical, it could mean
the unvoiced data is critical.” Id.; see Op. 7 (quoting Ans. 2).
Consequently, at least as of the Answer, Appellant was on notice of
the Examiner’s position regarding Zheng’s paragraphs 40 and 42 related to
the limitation “determining whether the encoded voice data payload is a
critical payload or non-critical payload by classifying the received voice data
as voiced or unvoiced” and the “wherein” clause. See Op. 5–7; id. at 7
(citing Ans. 2–3 and stating “the Examiner indicated (1) Zheng alone
suggests or, alternatively, (2) Zheng in combination with Rajendran suggests
the ‘wherein’ step.”). Notably, Appellant could have petitioned the Director
regarding the Examiner’s failure to designate the rejection of claim 1 as
elaborated on in the Answer as a new ground pursuant to 37 C.F.R.
§ 41.40(a), and “[f]ailure of appellant to timely file such a petition will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection.” 37 C.F.R. § 41.40(a) (2019); see MPEP
§ 1207.03(b).
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In any event, the record lacks some clarity regarding whether
Rajendran is being discussed as an alternative rejection under § 103 or the
sole § 103 rejection. See Ans. 2–3. For example, although we understand
the Examiner to have taken an alternative position relying on Zheng’s
teaching alone to teach the features in claim 1’s “determining” step and the
“wherein” clause, the Examiner further states “Zheng does not explicitly
disclose the unvoiced data is a critical payload” and then addresses
Rajendran regarding this limited feature of claim 1. Id. (emphasis added).
Thus, the record is not entirely clear concerning whether Rajendran is being
discussed as the sole rejection or an alternative rejection under obviousness.
Therefore, out of an abundance of caution, we grant the Request to the
extent the Examiner did not present an alternative rejection of claims 1, 7–9,
11, 16–18, and 20 based on Zheng alone under 35 U.S.C. § 103.
We further designate our affirmance of the rejections of claims 1, 7–9,
11, 16–18, and 20 as explained in the Opinion (Op. 3–11) as new grounds
due to the above-noted ambiguities. To clarify, claims 1, 7–9, 11, 16–18,
and 20 are rejected based on (1) Zheng alone or, alternatively, (2) Zheng in
combination with Rajendran. Op. 5–8. More particularly, the Opinion
explains how Zheng alone teaches or suggests the disputed “determining”
step and the “wherein” clause. See id. The Opinion further discusses
Zheng’s teachings in paragraphs 40 and 42 with respect to the “wherein”
clause and how “Rajendran provides an additional reason why an artisan
would want to recognize [Zheng’s] data as critical (e.g., important in
comprehending speech in the highband) and even how an artisan would have
recognized unvoiced speech data (e.g., data that includes more
information).” Op. 7–8 (citing Zheng ¶¶ 40, 42); see id. at 9–10. As to the
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remaining, undisputed limitations, we adopt the Examiner’s findings and
conclusions. See Final Act. 4–8.
Conclusion
We designate our affirmance of the rejections of claims 1, 7–9, 11,
16–18, and 20 based on (1) Zheng alone or, alternatively, (2) Zheng in
combination with Rajendran as new grounds, affording Appellant another
opportunity to respond. Because we are designating the rejections of claims
1, 7–9, 11, 16–18, and 20 as new grounds, we similarly designate the
rejections of the remaining claims as new grounds.

PURPORTED POINTS BELIEVED TO BE MISAPPREHENDED OR OVERLOOKED
I.
In the Request, Appellant contends that we misapprehended
Appellant’s argument regarding Zheng when we stated Appellant argued
Zheng fails to teach “determining whether the voice data payload is a critical
payload or noncritical payload by classifying the received voice data as
voiced or unvoiced,” as recited in claim 1. See Request 2–3 (citing Op. 5).
According to Appellant, Appellant did not dispute that Zheng classifies
frames as critical or noncritical, but argued “Zheng does not disclose
determining data classified as unvoiced to be a critical payload.” See id. at 3
(quoting Appeal Br. 8) (underlining omitted). We are not persuaded.
In the Appeal Brief, Appellant argues
Zheng does not disclose the step of ‘determining whether the
voice data payload is a critical payload or noncritical payload
by classifying the received voice data as voiced or unvoiced,
wherein if at least a portion of the voice data is classified as
unvoiced, the voice data payload is determined to be a critical
payload,’ as required by the claims.
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Appeal Br. 8 (underlining omitted). We acknowledged this argument in the
Opinion, stating “Appellants assert [that] Zheng fails to teach ‘determining
whether the voice data payload is a critical payload or noncritical payload by
classifying the received voice data as voiced or unvoiced’” as claim 1
recites. See Op. 5.3 Additionally, we noted Appellant contended “Zheng
does not teach determining an encoded voice data payload to be a critical
payload if at least a portion of the voice data is classified as unvoiced. . . .”
Id. at 3–4. We further addressed both these arguments in the Opinion. Id. at
5–8.
Thus, contrary to Appellant’s contention (see Request 3), we did not
misapprehend Appellant’s argument, and addressed Appellant’s contention
regarding Zheng and whether it discloses the recited “data payload is
determined to be a critical payload” if the recited “voice data is classified as
unvoiced” in claim 1.
II.
Appellant further contends that we misapprehended the Examiner’s
findings to be that Zheng alone suggests the “wherein” clause. See Request
3 (citing Op. 7). According to Appellant, nowhere in the record did the
Examiner find that Zheng discloses the “wherein” clause. See id. (citing
Final Act. 2, 4–5 and another final action, mailed October 28, 2016).
At the outset, we note the appeal is taken from the rejection in Final
Action dated September 1, 2017 (not any preceding action discussed by
Appellant), and confine our discussion to this rejection. Also, as previously

3 We note a typographical error on page 5 of the Opinion. “See Appeal Br. 7
(citing Zheng ¶ 42)” should be “See Appeal Br. 8 (citing Zheng ¶ 42).”
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explained, the Examiner found Zheng teaches (1) speech data may include
voiced and unvoiced data and (2) determining whether a data frame is a
critical data frame. See Ans. 2 (citing Zheng ¶ 42); see also In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“In reviewing the examiner’s decision
on appeal, the Board must necessarily weigh all of the evidence and
argument. . . . [T]he ultimate determination of patentability is made on the
entire record.”). The Examiner further found Zheng discloses modules that
analyze a speech frame by determining whether the speech frame (e.g.,
voiced or unvoiced) is a critical frame. See Ans. 2 (citing Zheng ¶ 40). The
Examiner elaborates that, “[w]hen Zheng discloses the speech data is
critical, it could mean the unvoiced data is critical.” Id. (emphasis added).
We therefore disagree that the Examiner had not found Zheng at least
suggests the “wherein” clause.
Zheng further supports this position. Zheng states a FEC (forward
error correction) module “determine[s] whether the speech frame is a critical
frame and protect[s] the speech frame by creating a redundant copy of the
speech frame.” Zheng ¶ 40, Fig. 3. Zheng further states module 402
“determine[s] if a speech frame is a critical frame based on a speech mode
434” (id. ¶ 42 (emphasis added), Fig. 4), which includes voiced and
unvoiced speech modes (e.g., contains voiced or unvoiced data) (see id.).
As such, contrary to Appellant’s contention, we did not misapprehend
the Examiner’s findings. We further discussed in the Opinion and above the
proposed alternative positions the Examiner presented for the “wherein”
clause based on (1) Zheng alone, and (2) Zheng and Rajendran collectively.
Op. 6–8. Yet, for reasons previously indicated, we designate our affirmance
of the rejections of claims 1, 7–9, 11, 16–18, and 20 based on (1) Zheng
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alone or, alternatively, (2) Zheng in combination with Rajendran as new
grounds.
III.
Appellant next asserts that we misapprehended the teachings in
Zheng’s paragraphs 41 and 42. See Request 4. In particular, Appellant
contends that we misapprehended Zheng’s examples of speech mode “as
being the same as a listing of critical frames.” Id. According to Appellant,
if all of Zheng’s examples of speech mode are determined as critical, then
there is nothing to be determined by Zheng’s critical frame identification
(ID) module 402 because every speech frame by definition has a speech
mode. See id. We disagree.
First, we did not misapprehend Zheng’s paragraph 41 in our Opinion
because we do not discuss or rely on this paragraph. See generally Op.
Second, we did not misapprehend Zheng’s example in paragraph 42 to
mean that all the frames in the list (e.g., voiced, unvoiced, silence, transient,
and voiced onset) are critical frames as asserted. See Request 4. Rather,
Zheng states “a critical frame identification module 402 . . . may determine
if a speech frame is a critical frame based on a speech mode 434 of the
frame and the adjacent frames. . . . Examples of speech mode may include
voiced, unvoiced, silence, transient, voiced onset, etc.” Zheng ¶ 42
(emphases added). The emphasized indefinite article “a” in the above
passage underscores that Zheng teaches or suggests to ordinary skilled
artisans that one exemplary speech mode (e.g., unvoiced) among the
exemplary speech modes (e.g., voiced, unvoiced, silence, transient, and
voiced onset) determines whether a speech frame is a critical frame. See id.
Thus, when we stated “Zheng teaches various embodiments that determine
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specific frames being critical, including those related to voiced or unvoiced
data as well as other modes” and “a range of possible critical payloads” (Op.
6), we meant that Zheng teaches or suggests a speech frame is a critical
frame based on the speech mode being voiced, unvoiced, or one of the other
speech modes, not when the speech frame is classified as any of the
discussed speech modes.
Third, Appellant does not adequately explain how our purported
misapprehension (which we disagree with) leads to an error in the proposed
rejection, including how Zheng teaches away from the claimed subject
matter. Request 4. In any event, we acknowledged and addressed the
argument that Zheng teaches away from the claimed subject matter in the
Opinion. Op. 3–4, 8–10. We also indicated Zheng discusses the voice
example presented in the briefs. Op. 6 (citing Appeal Br. 8 and Reply Br.
2). But, we further explained that Appellant “do[es] not address Zheng’s
further teachings noted by the Examiner” (id.) (emphasis added), including
those explained above in Zheng’s paragraph 42.
Based on the record, we disagree that we misapprehended the
teachings in Zheng’s paragraphs 41 and 42.
IV.
Appellant lastly contends that we overlooked two facts pointed out by
Appellant, which support that no possible combination of Zheng with
Rajendran could result in the claimed invention. See Request 4–5.
Appellant first asserts Rajendran’s Figure 18A illustrates that full frame
bandwidth uses more bits to encode a voiced frame than to encode an
unvoiced frame. Id. at 5. Appellant also asserts Rajendran pertains to
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encoding frames, not transmitting them or redundant transmissions over a
network. Id. We are not persuaded.
As to the latter assertion, we did not overlook this contention because
we specifically stated Appellant’s “contention that Rajendran does not
disclose transmitting encoded frames over a network (Reply Br. 3) is
unavailing, for such contention does not address the reason why Rajendran
was cited as previously discussed. See Final Act. 5[.]” Op. 10. That is,
Rajendran was relied upon in the rejection for a limited purpose—to teach or
suggest why one skilled in the art would have wanted to recognize and
determine unvoiced data as a critical payload and how to recognize such
data (Op. 7–8) and not for (1) its transmission features, (2) its redundancy
features, or (3) Figure 18A’s encoded scheme. See id. at 7–10.
As to the former assertion regarding Rajendran’s Figure 18A,
Appellant contended encoding an unvoiced frame with a larger number of
bits than what is done for a voiced frame does not teach classifying an
unvoiced frame as critical. Reply Br. 3. Although we did not explicitly
reiterate this argument in the Opinion, we addressed that Rajendran was not
relied upon to teach or suggest encoding frames or the number of bits used
when encoding, but rather to teach or suggest that one skilled in the art
would have recognized or known that unvoiced data in the highband has
more information than voiced data. Op. 7–8, 10. Even Appellant recognizes
this teaching. Reply Br. 3 (stating Rajendran “[is] reflective of the fact that
more information is present in the certain band of an unvoiced frame than is
present in the certain band of a voiced frame.”). The Opinion further
explains Rajendran’s teaching provides a reason why an artisan would have
wanted to recognize unvoiced data as critical (e.g., important in
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comprehending speech in the highband), and even how an artisan would
have recognized unvoiced speech data (e.g., identifying data having more
information in the highband). See Op. 7–8 (citing Final Act. 5; Ans. 3).
This discussion also provided a reason with some rational underpinning to
combine Rajendran’s teaching with Zheng to arrive at the disputed
“wherein” clause (“wherein, if at least a portion of the voice data is
classified as unvoiced, the voice data payload is determined to be a critical
payload.”) Id. at 7–9.
As such, we disagree with Appellant that we overlooked the
two-noted facts pointed out in the Reply Brief.
Appellant does not specifically address the rejections of claims 2–20
in the Request. See Request.
Accordingly, Appellant has not persuasively identified a point in the
briefs that we misapprehended or overlooked under 37 C.F.R. § 41.52(a)(1).

CONCLUSION
We have considered the arguments raised by Appellant in the
Request, but are not persuaded that our original decision was in error.
However, as previously noted, the record lacks some clarity regarding
whether the Examiner alternatively rejected claims 1, 7–9, 11, 16–18, and 20
based on Zheng alone. Accordingly, we grant the Request to designate this
rejection a new ground of rejection under 37 C.F.R. § 41.50(b). Similarly,
as a cautionary measure and as explained above, we designate each of the
remaining rejections, all of which are based on Zheng in combination with at
least one other reference, as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
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REHEARING GRANTED IN PART;
37 C.F.R. § 41.50(b)