QUALCOMM Incorporated

Patent Trials and Appeals Board

Oct 25, 2021

2020005738 (P.T.A.B. Oct. 25, 2021)

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.
14/818,134 08/04/2015 Wei Pu 1414-714US01/146599 4319
15150 7590 10/25/2021
Shumaker & Sieffert, P. A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
LEE, Y YOUNG
ART UNIT PAPER NUMBER
2419
NOTIFICATION DATE DELIVERY MODE
10/25/2021 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):
ocpat_uspto@qualcomm.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI PU, FENG ZOU, MARTA KARCZEWICZ, RAJAN
LAXMAN JOSHI, JOEL SOLE ROJALS, and VADIM SEREGIN
____________

Appeal 2020-005738
Application 14/818,134
Technology Center 2400
____________

Before JOHN A. EVANS, JENNIFER L. MCKEOWN,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 4, 8–10, 12, and 13. Claims 2, 5–7, 11, 14,
and 15 are withdrawn. We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Qualcomm Incorporated as the real
party in interest. (Appeal Br. 3.)

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Application 14/818,134

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THE INVENTION
Appellant’s disclosed and claimed invention is directed to extensions
to copy-above mode for palette mode coding. (Abstr.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method for removing redundancies for coding video
data in palette mode, the method comprising:
coding a plurality of palette indices, each of the palette
indices indicative of one or more color component values;
coding a current pixel of a current block of the video data
in copy-previous mode via coding a previous line index, the
previous line index indicating a particular line from a plurality
of lines including a pixel located above the current pixel in the
current block, wherein the plurality of lines include lines other
than a line including a pixel located directly above the current
pixel in the current block, the pixel identified by the previous
line index associated with one of the plurality of palette indices,
the coding of the current pixel in copy-previous mode further
comprising:
identifying a number of candidate values for the
previous line index,
identifying a number of escape pixels in a column
of pixels above the current pixel in the current block, the
escape pixels being coded without reference to the
plurality of palette indices,
reducing the number of candidate values for the
previous line index by the number of identified escape
pixels,
coding the previous line index based on the
reduced number of candidate values, and
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coding the current pixel based on the palette index
associated with the pixel identified by the previous line
index; and
transmitting the coded video data to a destination device
over a data network.
(Corrected Appeal Br. 3 (Claims Index).)
REJECTIONS
The Examiner rejected claims 1, 3, 4, 8–10, 12, and 13 under
35 U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more. (Final Act. 2 (referencing July 9, 2019 Non-
Final Rejection).)
The Examiner rejected claims 1, 3, 4, 8–10, 12, and 13 under
35 U.S.C. § 103 as being unpatentable over Yamaguchi et al. (US 5,883,678,
iss. Mar. 16, 1999) and Zou et al., Non-SCCE3: Copy from previous row
mode for palette coding (Joint Collaborative Team on Video Coding (JCT-
VC, 30 June - 9 July 2014). (Final Act. 3–5.)
ISSUES ON APPEAL
Appellant’s arguments present the following issues:2
Issue One: Whether the Examiner erred in finding the claims directed
to non-statutory subject matter. (Appeal Br. 7–11.)
Issue Two: Whether the Examiner erred in finding the combination of
Yamaguchi and Zou taught or suggested the independent claim 1 limitation,

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Apr. 1, 2020); the Corrected
Appeal Brief (filed May. 11, 2020); the Reply Brief (filed Aug. 4, 2020);
the Final Office Action (mailed Nov. 6, 2019); and the Examiner’s Answer
(mailed June 9, 2020) for the respective details.
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“‘reducing the number of candidate values for the previous line index by the
number of identified escape pixels,’” and the commensurate requirement of
independent claim 10. (Appeal Br. 13–14.)
ANALYSIS
Issue One
In rejecting the claims pursuant to 35 U.S.C. § 101, the Examiner
determined the claims are patent ineligible because the claims “recite(s)
mathematical relationships encompassed in the coding of video data, i.e.
substeps of coding a pixel, identifying a number of values, identifying a
number of pixels, reducing the number of values, etc. are considered as
abstract ideas.” (July 9, 2019 Non-Final Rejection 3.) The Examiner further
determined that the claims are not integrated into a practical application,
“because the generically recited coding of a line index do not add a
meaningful limitation to the abstract idea because they amount to simply
implementing the abstract idea on a computer.” (Id.) In addition, the
Examiner determined that the claims did not include additional elements that
amount to something “significantly more” than the recited abstract idea,
“because the additional elements, e.g., coding based on an index, when
considered separately and in combination, do not add significantly more to
the exception.” (Id.)
Appellant argues that the claims are not directed to mathematical
relationships, but rather “are directed to specific techniques for coding video
data.” (Appeal Br. 9.) Appellant further argues that, even if it is determined
that the claims recite an abstract idea, the claims integrate the purported
abstract idea into a practical application, because they “are directed to
specific techniques for coding video data using palette coding, including
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techniques that remove redundancies in coding a previous line index in
palette mode.” (Id. at 10.) Appellant argues the claimed subject matter is
“an improvement in the field of video coding by reducing redundancies and
generally improving the efficiency of a video coding process and/or the
efficiency of a video coder.” (Id. at 11 (citing DDR Holdings, LLC. v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).)
We are persuaded that the Examiner erred in rejecting the claims
pursuant to 35 U.S.C. § 101. An invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Here, claims 1–9 relate to a “method,” and claims 10–15
to a “device” — i.e., a process and a machine, respectively. However, the
Supreme Court has long held that “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589–90 (2013)). The “abstract ideas” category embodies
the longstanding rule that an idea, by itself, is not patentable. Alice, 573
U.S. at 216–17.
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217. The first step in the analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. Concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v.
Kappos, 561 U.S. 593, 611 (2010)); mathematical concepts (Parker v.
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Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent-eligible
include physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” 573 U.S. at 217 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.” 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at
72–73) (alteration in original). A claim that recites an abstract idea must
include additional features to ensure that the claim is more than a drafting
effort designed to monopolize the abstract idea. 573 U.S. at 221. A
transformation into a patent-eligible application requires more than simply
stating the abstract idea while adding the words “apply it.” Id.
Further to the Alice/Mayo analytical framework, and acknowledged
by Appellant, the USPTO published revised guidance on the application of
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§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance”). See also USPTO
October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019)
(hereinafter “Update”), noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019).
Under the Revised Guidance, the Office first looks to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 10.2019, June
2020)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance.
In evaluating the claims at issue, we consider claim 1 as
representative, consistent with how Appellant and the Examiner analyze the
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claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). As the Examiner
determined, the limitations of claim 1 can be summarized as “the coding of
video data” (Final Act. 3), specifically: “coding a plurality of palette
indices,” “coding a current pixel of a current block of the video data in copy-
previous mode,” “identifying a number of candidate values for the previous
line index,” “identifying a number of escape pixels in a column of pixels
above the current pixel”, “reducing the number of candidate values for the
previous line index by the number of identified escape pixels,” “coding the
previous line index based on the reduced number of candidate values,” and
“coding the current pixel based on the palette index associated with the pixel
identified by the previous line index.” (Corrected Appeal Br. 3 (Claims
Index).)
We are not persuaded that the Examiner erred in characterizing the
abstract idea in this manner. However, rather than summarizing the subject
matter of the claims as reciting mathematical relationships, the subject
matter is more appropriately characterized as reciting the abstract idea of a
mental process. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017) (claims “directed to the abstract idea of encoding and
decoding image data”).
Further, pursuant to the Revised Guidance, we consider whether the
recited judicial exception is integrated into a practical application.
Revised Guidance, 84 Fed. Reg. at 51. A claim is not “directed to” a judicial
exception, and thus is patent eligible, if the claim considered as a whole, and
in light of the specification, integrates the recited judicial exception into a
practical application of that exception. Id. at 53; BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)
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(claims could be eligible if ordered combination of limitations ‘”transform
the abstract idea . . . into a particular, practical application of that abstract
idea”); Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007 (Fed.
Cir. 2018). A claim may integrate the judicial exception into a practical
application when, for example, it reflects an improvement to technology or a
technical field. Revised Guidance, 84 Fed. Reg. at 55 n. 25 (citing MPEP §
2106.05(a)).
Here, when considered as a whole, and viewed in light of the
specification, the claims provide an improvement to the technology of video
compression, allowing more video data to be stored in media, and faster
transmission of video. As explained in the Specification:
In existing approaches to palette mode coding, there exist
a number of redundancies in extending copy-above mode to
copy from lines other than the directly previous line (i.e., copy-
previous mode). These redundancies may result from situations
in the copying from certain lines would be prohibited. Thus, by
removing these situations from the copy-previous mode, the
dynamic range of the coded previous line can be reduced,
thereby improving coding efficiency.
. . . .
A digital image, such as a video image, a TV image, a
still image or an image generated by a video recorder or a
computer, may include pixels or samples arranged in horizontal
and vertical lines. The number of pixels in a single image is
typically in the tens of thousands. Each pixel typically contains
luminance and chrominance information. Without compression,
the sheer quantity of information to be conveyed from an image
encoder to an image decoder would render real-time image
transmission impractical. To reduce the amount of information
to be transmitted, a number of different compression methods,
such as JPEG, MPEG and H.263 standards, have been
developed.
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(Spec. ¶¶ 21.)
Accordingly, we conclude that the subject matter of claim 1 (and the
remaining claims) is not directed to an abstract idea, and we do not sustain
the Examiner’s rejection of claims 1, 3, 4, 8–10, 12, and 13 are patent
ineligible.
Issue Two
In rejecting the independent claims, the Examiner determined that the
requirement of “reducing the number of candidate values for the previous
line index by the number of identified escape pixels,” was “disclose[d]” by
Figure 4 of Yamaguchi in combination with Zou Figure 1. (Final Act. 4.) In
a previous September 21, 2018 Non-Final Rejection, the Examiner also
relied on the disclosures in Yamaguchi directed to “alpha maps” and a
“reduction ratio.” (9/21/18 Non-Final Act. 5; see Appeal Br. 13.)
Appellant argues that the alpha map of Yamaguchi is used to
represent the shape of an object by “indicating the background by black
pixels and the object by white pixels,” and does not relate to assigning
values to a previous line index. (Appeal Br. 13 (citing Yamaguchi 26:51–
53).) Appellant further argues that the reduction ratio and Figure 4 of
Yamaguchi relate to reducing the number of pixel samples in an alpha map,
and have nothing to do with escape pixels or values of a previous line index.
(Appeal Br. 14 (citing Yamaguchi Fig. 4, 6:63–66, 11:40–49).)
In the Answer, the Examiner responds that Appellant’s specification
does not provide a detailed description of how the number of candidate
values for the previous line index are reduced, and that the pixel value
reducing process illustrated in Figure 33 of Yamaguchi satisfies the claim
requirement. (Ans. 4.) The Examiner also relies on Zou as teaching the “the
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well-known concept of such reducing process for the line index by using
truncation in the standard Escape Mode.” (Id.) Appellant argues in
response that Yamaguchi is directed to coding pixel values, whereas the
claims are directed to coding the previous line index. (Reply Br. 6.)
We agree with Appellant. Yamaguchi is directed to reducing the
number of coded pixels in an alpha map, and the Examiner does not point to
anything in that reference that would teach or suggest the subject matter of
the claims on appeal. Zou discloses coding pixels using palette indices and a
previous line index, but has no teaching or suggestion, whether alone or in
combination with Yamaguchi, of the claim requirement, “reducing the
number of candidate values for the previous line index by the number of
identified escape pixels.”
Accordingly, we do not sustain the rejections of independent claims 1
and 10. We also do not sustain the rejections of claims 3, 4, 8, 9, 12, and 13,
which depend from claims 1 or 10.
Appellant also requests rejoinder of withdrawn claims 2, 5–7, 11, 14,
and 15. (Appeal Br. 16.) These claims are not on appeal and we do not
have jurisdiction to consider this request.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 8–
10, 12, 13
101 Eligibility 1, 3, 4, 8–
10, 12, 13
1, 3, 4, 8–
10, 12, 13
103 Yamaguchi, Zou 1, 3, 4, 8–
10, 12, 13
Overall
Outcome
1, 3, 4, 8–
10, 12, 13
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REVERSED