SONY INTERACTIVE ENTERTAINMENT INC.

Patent Trials and Appeals Board

Aug 26, 2020

15036481 - (D) (P.T.A.B. Aug. 26, 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.
15/036,481 05/13/2016 Osamu OTA SCED25826(100809-00745) 4467
26304 7590 08/26/2020
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
KIR, ALBERT
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
doreen.devito@katten.com
nycuspto@katten.com
samson.helfgott@katten.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMU OTA and YASUNARI HATASAWA
Appeal 2019-002975
Application 15/036,481
Technology Center 2400
Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 4–10, which are all of the claims pending in the
application. Appeal Br. 1. Claims 2 and 3 were previously canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Sony Interactive Entertainment Inc. as
the real party in interest. Appeal Br. 2.
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TECHNOLOGY
The application relates to image delivery. Spec. ¶ 1.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. An image delivery device comprising:
an operation information acquisition section operable to
acquire operation information;
an image information acquisition section operable to
acquire image information generated on a basis of the operation
information;
an allocation information generation section operable to
generate allocation information representing allocation of
numbers of bits during compression of the image information on
the basis of the operation information;
a compression section operable to compress the image
information on a basis of the allocation information; and
a transmission section operable to transmit the compressed
image information,
wherein the allocation information generation section
includes a base information generation portion adapted to
generate, on a basis of act information representing behavior of
a target to be operated in accordance with the operation
information, base information with which image quality
information is associated, the image quality information
representing image quality level of each of a plurality of blocks
into which the image information is divided, the image quality
level being proportional to a number of bits allocated to each of
the blocks, and
the allocation information generation section generates
the allocation information on a basis of the last allocation
information and the base information,
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wherein the allocation information generation section
includes:
a weighting block adapted to assign a
predetermined weight to the last allocation information;
and
an addition block adapted to add the last allocation
information with the predetermined weight to the base
information.
REFERENCES
The Examiner relies on the following prior art references:
Name Number Date
Kenyon US 2002/0065925 A1 May 30, 2002
Laan WO 2009/073823 A1 June 11, 2009
Tokuda JP 2006-121578 A May 11, 2006
REJECTIONS ON APPEAL
Claims 1 and 6–10 stand rejected under 35 U.S.C. § 103 as obvious
over Laan and Tokuda. Final Act. 7.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as obvious over
Laan and Kenyon. Final Act. 12.
The rejection under 35 U.S.C. § 101 was withdrawn. Ans. 3.
ISSUE
Did the Examiner err in finding Tokuda teaches or suggests the
limitations italicized above in claim 1?
ANALYSIS
Claims 1 and 6–10
According to Appellant, the portions of claim 1 italicized above
require that the current “allocation information” is determined based upon
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“Base_Map + (Weighting_Factor * Previous_Allocation_Information).”
Appeal Br. 8–9 (formula reformatted for clarity). Appellant argues:
There is no disclosure in Tokuda that the allocation information
(i.e., the weighting for the blocks) . . . is determined by using the
last allocation information, weighting it using a predetermined
weight, and adding it to the base information. Rather, it appears
that the allocation information in Tokuda is based solely on the
movement of the camera (e.g., a right move selects a first
allocation information and a left move selects a second allocation
information). Tokuda does not disclose at all that the previous
allocation information is ever used for any purpose.
Appeal Br. 9.
The Examiner disagrees, finding that “a first compression
distribution” is shown in Figure 4(b) of Tokuda and “[u]pon the capturing
operation of panning, the compression distribution is variably changed . . . to
a second distribution of Fig. 4(c).” Ans. 4. According to the Examiner,
the two weights (6’s) of the left column of the first compression
distribution of the previous allocation information are weighted
down/removed to result in two weights of a single column (the
original right column of 6’s), which is added/combined with the
second compression distribution of two new weights (2’s) of the
base information. Such teaching of Tokuda clearly satisfies the
requirement set forth by the recited subject matter.
Ans. 4.
We agree with Appellant that Tokuda’s actual description of the
figures does not support the Examiner’s interpretation. Reply Br. 2. We
agree with Appellant that “Fig. 4(c) of Tokuda is described as being a
compression map when a right pan occurs and Fig. 4(b) is a compression
map when no panning occurs. No weighted linear combination (i.e.,
addition) or weighting of these compression maps is ever described in
Tokuda . . . .” Id. Appellant quotes paragraph 27 of Tokuda as stating: “In
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FIG. 4 (b), when the camera operation is not performed, the center portion is
the display range. . . . In FIG. 4 (c), when camera operation is performed and
panning in the right direction, the right side portion is the display range.” Id.
(emphasis omitted). Thus, the Examiner fails to provide sufficient support
for interpreting Figures 4(b) and (c) as teaching “weights” that are
“added/combined” as claimed.
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 6–10.
Claims 4 and 5
Although Appellant applies the same arguments to the rejection of
claims 4 and 5 under § 103, considerable speculations and assumptions are
necessary in order to determine what is being claimed. In particular, claim 4
depends from claim 2, which was previously canceled. Claim 5 depends
from claim 4 and therefore indirectly depends from canceled claim 2. We
do not think a rejection under § 103 should be based on speculations and
assumptions about dependency from a canceled claim. In re Steele, 305
F.2d 859, 862 (CCPA 1962). “If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious— the claim becomes indefinite.” In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970). Accordingly, we are constrained to reverse the
Examiner’s rejection of claims 4 and 5 under § 103 pro forma.
REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 4 and 5
For the reasons discussed above, in a new ground of rejection using
our authority under 37 C.F.R. § 41.50(b), we reject claims 4 and 5 under 35
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U.S.C. § 112(b) as indefinite for depending on a canceled claim. See also
MPEP § 608.01(n)(V).
OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected
35
U.S.C. §
References
/ Basis Affirmed Reversed
New
Ground
1, 6–10 103 Laan, Tokuda 1, 6–10
4, 5 103 Laan, Kenyon 4, 5
4, 5 112(b) Indefiniteness 4, 5
Overall 1, 4–10 4, 5
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
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for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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.
§ 1.36(a)(1)(iv).
REVERSED;
37 C.F.R. § 41.50(b)