Sony Corporation

Patent Trials and Appeals Board

Oct 26, 2021

2020002821 (P.T.A.B. Oct. 26, 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.
14/649,704 06/04/2015 Yoshitomo TAKAHASHI 1946-0740 1139
60803 7590 10/26/2021
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
MAIL DATE DELIVERY MODE
10/26/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITOMO TAKAHASHI and OHJI NAKAGAMI
Appeal 2020-002821
Application 14/649,704
Technology Center 2400
Before JOSEPH L. DIXON, JOHN A. JEFFERY, 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), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–6, and 13–17. We have
jurisdiction 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(a) (2019). Appellant identifies the real party in interest as Sony
Corporation. Appeal Br. 3.
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Application 14/649,704

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CLAIMED SUBJECT MATTER
The claims are directed to an encoding device and encoding method,
and a decoding device and decoding method capable of improving coding
efficiency of an image of a plurality of viewpoints. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An apparatus comprising:

an encoding device configured to encode a coding image;
and circuitry configured to:

assign, via the encoding device, viewpoint
identification information for identifying viewpoints to
viewpoints of a first image, a second image, and a current
coding image such that values of the viewpoint
identification information are sequentially increased from
a viewpoint present most in a first direction;

set, via the encoding device, an image of a
viewpoint having a smaller viewpoint identification
information than the viewpoint identification information
of the current coding image as the first image;

set, via the encoding device, an image of a
viewpoint having a larger viewpoint identification
information than the viewpoint identification information
of the current coding image as the second image;

register, via the encoding device, image specifying
information sequentially in a first reference list, in order
of:
first image specifying information specifying
the first image present in the first direction from the
viewpoint of the current coding image; and then

second image specifying information,
specifying the second image present in a second
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direction opposite to the first direction, in an order
after the first image specifying information is
registered in the first reference list;

register, via the encoding device, the image
specifying information sequentially in a second reference
list, in order of:

the second image specifying information; and
then

the first image specifying information in an
order after the second image specifying information
is registered in the second reference list such that
the registration order of first image specifying
information and the second image specifying
information in the first reference list is different
than the registration order of the first image
specifying information and the second image
specifying information in the second reference list;
and

encode, via the encoding device, the current coding image
using the first reference list and the second reference list to
generate coded data.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hannuksela et al. US 2010/0020871 A1 Jan. 28, 2010
AAPA Spec. para. 6
REJECTIONS
Claims 1, 4, 5, 13, and 15–17 stand directed to “[an encoding device] .
. . and circuitry configured to assign viewpoint identification information . . .
set an image . . . register, in a first reference list . . . register, in a second
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reference list . . . encode the current coding image.”2 Final Act. 5. The
claims are rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement. The claim(s)
contains subject matter which was not described in the specification in such
a way as to reasonably convey to one skilled in the relevant art that the
inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the
application was filed, had possession of the claimed invention.
Claims 1, 4–6, and 13–17 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over AAPA in view of Hannuksela.
OPINION
35 U.S.C. § 112, first paragraph, written description requirement
The Examiner finds that the written description lacks support for the
claimed “circuitry” to provide functional correspondence to the claimed
functions under 35 U.S.C. § 112, sixth paragraph. Final Act. 4–5.
Appellant contends that the Specification provides written description
support for the claimed “circuitry” and that the Specification provides
written description support for the encoding according to the claimed first
reference list and the second reference list.
We agree with Appellant that the Specification provides written
description support for the claimed hardware “circuitry” for carrying out the
recited claim functions. Additionally, Appellant sets forth in the
Specification the underlying methodology and algorithms for assigning
settings and registering the viewpoint identification information and the
image specifying information. As a result, we cannot sustain the Examiner’s

2 We note that the Examiner lists canceled claim 2.
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written description rejection because Appellant had possession of the
claimed invention at the time of the invention.

35 U.S.C. § 112, second paragraph
The Examiner provides a discussion of claim interpretation with
regards to intended use, optional claim language, “wherein,” and the
Examiner states that “[w]hile substantive rejection of such language is
provided below for purposes of compact prosecution, Examiner suggests
rephrasing such claim language to recite limitations corresponding to the
subject matter of the claim.” Final Act. 6–7. But, the Examiner does not
expressly set forth any substantive rejection. Final Act. 6–8.
Appellant contends that the “wherein” clauses provide meaningful
limitations and are not optional claim language. Appeal Br. 14.
In the Examiner’s Answer, the Examiner does not expressly recite any
express rejections and merely discusses the § 112, first paragraph rejection
without mentioning any § 112, second paragraph rejection. Ans. 8–9. The
Examiner specifically finds that “[a] listing of generic hardware in the
specification does not indicate that the inventors had possession of the
details of particular software algorithms or hardware configurations that
would implement the claimed specialized functions.” Ans. 8–9.
As a result, we find the Examiner’s discussions fall short of setting
forth an indefiniteness rejection under 35 U.S.C. § 112, second paragraph
and providing notice thereof under 35 U.S.C. § 132. As a result this issue is
moot.

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35 U.S.C. § 103(a)
With respect to illustrative independent claim 1, Appellant contends
that the AAPA in view of Hannuksela does not teach or suggest every
element of the claimed invention. Appeal Br. 15–19. Appellant’s
arguments will similarly apply to independent claim 6 that includes similar
claim limitations.
The Examiner concludes that
Appellant proposes a trivial and obvious application of AAPA to
code redundant information available in the AAPA by repeating
the coding step described in AAPA. Evidence indicates multiple
bases for why this redundant coding would be obvious: (1)
obvious as a non-preferred embodiment of AAPA, (2) obvious
as a duplication of steps and results in AAPA, (3) obvious in
view of Han[n]uksel[]a.
Ans. 9.
We disagree with the Examiner and find that the Examiner has not
provided a teaching or suggestion of using two different lists with the
encoding process, but rather the Examiner has only provided evidence of
using two alternative lists where only a single list is used in the encoding
process. As a result, the Examiner has not provided the required showing of
a teaching, suggestion, or motivation to modify the prior art teachings of the
AAPA or the Hannuksela reference to meet the specifically claimed
limitation “encode, via the encoding device, the current coding image using
the first reference list and the second reference list to generate coded data.”
The Examiner additionally finds that the claimed invention is merely a
duplication of a coding step relying upon In re Harza, 274 F.2d 669 (CCPA
1960) (“duplication of parts has no patentable significance unless a new and
unexpected result is produced”). Ans. 6. The Examiner also finds that “the
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objective evidence in this application seems to indicate that the claimed
application is obvious.” Ans. 6 (emphasis added). The Examiner further
finds that
Applicant admits that “a user can freely assign the view IDs” in
Specification, Paragraph 9. And, there is no evidence that
duplicating an encoding for a second order produces unexpected
results (i.e. the second order is applied in the same way that the
first order is applied).
Ans. 6 (emphasis omitted).
Although we agree with the Examiner that the Specification evidences
“a user can freely assign the view IDs regardless of the arrangement of the
cameras,” this paragraph merely evidences the use of a single reference list
rather than two reference lists (first and second) and the AAPA provides no
express support or suggestion for duplication of the lists or use of two lists
for encoding. Spec. ¶ 9. Moreover, we find the use of two lists to encode is
not a mere duplication where different lists are used individually. Here, the
claim requires two reference lists are used to code the data. Consequently,
the Examiner has not provided evidence of the use of a first reference list
and a second reference list to code a stream of data. The Examiner merely
speculates that the invention uses a single list at different times. (“This
indicates that it would have been obvious to substitute one list order for
another.” Final Act. 14; compare with Spec. ¶ 14, 16, 130, 131).
As a result, the Examiner has not provided sufficient factual findings
to support the ultimate conclusion of obviousness of illustrative independent
claim 1 and its dependent claims 4, 5, 13, and 15–17. Independent claim 6
and dependent claim 14 contain similar limitations, and we cannot sustain
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the Examiner’s conclusion of obviousness based upon the same deficiency
in the factual findings.
CONCLUSION
We reverse the Examiner’s written description and obviousness
rejections of claims 1, 4–6, and 13–17.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 13,
15–17
112, first
paragraph
Written
Description
1, 4, 5, 13,
15–17
1, 4–6, 13–
17
103(a) AAPA,
Hannuksela
1, 4–6, 13–
17
Overall
Outcome
1, 4–6, 13–
17

REVERSED