Tung-Hsing Wu et al.

Patent Trials and Appeals Board

Dec 12, 2019

14534184 - (D) (P.T.A.B. Dec. 12, 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.
14/534,184 11/06/2014 Tung-Hsing Wu MTKP1892USA 2095
27765 7590 12/12/2019
NORTH AMERICA INTELLECTUAL PROPERTY CORPORATION
5F., NO.389, FUHE RD., YONGHE DIST.
NEW TAIPEI CITY,
TAIWAN
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
Patent.admin.uspto.Rcv@naipo.com
mis.ap.uspto@naipo.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TUNG-HSING WU and KUN-BIN LEE

Appeal 2019-000597
Application 14/534,184
Technology Center 2400
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–26, which are all of the claims
pending in this application. We have jurisdiction 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. Appellant identifies the real party in interest as MediaTek
Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention is directed generally to
“a method and apparatus for performing block prediction search based on
restored sample values derived from stored sample values in a data buffer.”
Spec. ¶ 6.2
Claims 1, 5, 11, 14, 18, and 24 are independent claims. Claims 1 and 5
are illustrative of the subject matter on appeal and reads as follows (with
format changes and paragraph lettering added):
1. A block prediction search method, comprising:
[a] encoding or decoding a first pixel line to generate
sample values of a plurality of samples in the first pixel line;
[b] generating a bit-depth reduced sample value by
sampling each of the sample values of the samples in the first
pixel line according to a difference between a bit depth of said
each of the sample values and a buffer bit depth of a data
buffer, wherein the bit depth of said each of the sample values
is larger than the buffer bit depth of the data buffer, and a bit
depth of the bit-depth reduced sample value is smaller than the
bit depth of said each of the sample values;
[c] storing bit-depth reduced sample values of the
samples in the first pixel line into the data buffer;
[d] obtaining restored sample values by reading the data
buffer, wherein the restored sample values are derived from
stored bit-depth reduced sample values in the data buffer, and a
bit depth of each of the restored sample values is not smaller

2 Our Decision refers to the Non-Final Office Action mailed January 24,
2018 (“Non-Final”); Appellant’s Appeal Brief filed May 16, 2018 (“Appeal
Br.”) and Reply Brief filed November 1, 2018 (“Reply Br.”); the Examiner’s
Answer mailed September 14, 2018 (“Ans.”); and the original Specification
filed November 6, 2014 (“Spec.”).

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than a bit depth of each of the stored bit-depth reduced sample
values;
[e] detecting occurrence of an edge in the first pixel line
according to the restored sample values;
[f] determining a block prediction vector of a pixel group
in a second pixel line different from the first pixel line based at
least partly on a last edge count value indicative of a number of
samples in the first pixel line that have gone by since the edge
occurs, wherein determining the block prediction vector of the
pixel group in the second pixel line comprises:
[g] generating a comparison result by comparing a
first set of N consecutive samples in the first pixel line
with each of second sets of N consecutive samples in the
first pixel line, wherein N is a positive integer, a
rightmost sample of the first set of N consecutive sample
in the first pixel line and a rightmost sample of the pixel
group in the second pixel line have a same column
position in an image, and rightmost samples of the first
set of N consecutive samples and the second sets of N
consecutive samples are different samples in the first
pixel line;
[h] referring to the comparison result to select one
of the second sets of N consecutive samples;
[i] utilizing a position offset between the rightmost
sample of the first set of N consecutive sample and a
rightmost sample of said one of the second sets of N
consecutive samples as the block prediction vector of the
pixel group; and
[j] checking at least the last edge count value to
determine whether or not the block prediction vector is
selected as a final block prediction vector of the pixel
group in the second pixel line; and
[k] when the block prediction vector is the final block
prediction vector of the pixel group in the second pixel line,
encoding or decoding the pixel group in the second pixel line
according to the final block prediction vector.
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Appeal Br. 27–28 (Claims App.).
5. A block prediction search method, comprising:
[a] encoding or decoding a first pixel line to generate
sample values of a plurality of samples in the first pixel line;
[b] storing first sample values derived from the sample
values of the samples in the first pixel line into a data buffer;
[c] obtaining second sample values by reading the data
buffer, wherein the second sample values are derived from
stored first sample values, each having a first bit depth in the
data buffer;
[d] computing a last edge count value according to the
second sample values, wherein the last edge count value is
indicative of a number of samples in the first pixel line that
have gone by since an edge occurs;
[e] obtaining third sample values by reading the data
buffer, wherein the third sample values are derived from stored
first sample values, each having the first bit depth in the data
buffer;
[f] computing sample difference information according to
the third sample values that correspond to a first set of N
consecutive samples in the first pixel line and second sets of N
consecutive samples in the first pixel line, wherein N is a
positive integer, the sample difference information comprises
sample difference values each generated by comparing the first
set of N consecutive samples with one of the second sets of N
consecutive samples, a rightmost sample of the first set of N
consecutive sample in the first pixel line and a rightmost
sample of a pixel group in a second pixel line have a same
column position in an image, and rightmost samples of the first
set of N consecutive samples and the second sets of N
consecutive samples are different samples in the first pixel line;
and
[g] determining a block prediction vector of the pixel
group in the second pixel line different from the first pixel line,
comprising:
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[h] selecting one of the second sets of N
consecutive samples according to the sample difference
values that are generated by comparing the first set of N
consecutive samples and the second sets of N
consecutive samples;
[i] utilizing a position offset between the rightmost
sample of the first set of N consecutive sample and a
rightmost sample of said one of the second sets of N
consecutive samples as the block prediction vector of the
pixel group; and
[j] checking at least the last edge count value to
determine whether or not the block prediction vector is
selected as a final block prediction vector of the pixel
group in the second pixel line; and
[k] when the block prediction vector is the final block
prediction vector of the pixel group in the second pixel line,
encoding or decoding the pixel group in the second pixel line
according to the final block prediction vector.
Id. at 28–29 (Claims App.).

Rejections on Appeal
Claims 14–26 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Non-Final 6–7.
Claims 1–26 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention. Id. at
6.
Claims 1–26 stand rejected under 35 U.S.C. § 112(b) as being
incomplete for omitting essential elements, such omission amounting to a
gap between the elements. Id.
Claims 1–26 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Id. at 7–9.
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Claims 1–26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lin et al. (US 2006/0126726 A1; June 15, 2006) (“Lin”),
Wan et al. (US 2006/0023794 A1; Feb. 2, 2006) (“Wan”), and Lee (US
2004/0109503 A1; June 10, 2004). Id. at 11–18.

ANALYSIS
I. Section 112(a) rejection of claims 14–26
Claim 14 recites “a first processing circuit, . . . a second processing
circuit, . . . and a third processing circuit” for performing a series of
functions. The Examiner finds, for claim 14 and similarly for claims 15–26,
“the written description fails to disclose or indicate that applicant had
possession of the corresponding differentiated structure for each claimed
function or possession of differentiated structure for each claimed circuit.”
Non-Final 7.
Appellant argues that because a “circuit” has been defined by the
Dictionary of Computing as “‘the combination of a number of electrical
devices and conductors that, when interconnected to form a conducting path,
fulfill some desired function’ . . . [,] a skilled person in the pertinent art
should readily appreciate that a ‘circuit’ includes electrical components and
conductive connections that are properly arranged to achieve a designated
function.” Appeal Br. 18. Appellant also argues that “the Federal Circuit
concluded that the term ‘circuit,’ combined with a description of the
function of the circuit, connoted sufficient structure to one of ordinary skill
in the art to avoid 35 U.S.C. 112, paragraph 6, treatment.” Id. (citing Mass.
Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1355–56 (Fed. Cir. 2006);
Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir.
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2004)).
The Examiner responds that “[c]iting to Linear does not indicate that
Applicant had possession of claimed circuits” because “Linear addressed
construction under 112(6) not 112(1).” Ans. 10. The Examiner notes that the
Federal Circuit’s “tendency to accept the word ‘circuit’ as [] structure does
not mean that Applicant can simply insert the word ‘circuit’ without support
for the particular circuit in the specification.” Non-Final 3. The Examiner
further responds that “[c]iting to a dictionary on pages 17-18 is not evidence
that Applicant possessed the details of a circuit implementing each claimed
function.” Ans. 11. The Examiner also notes that “external references neither
define nor indicate that Applicant had possession of the specific structure
being claimed, such as ‘circuit, obtaining restored sample values . . . circuit,
determining a block prediction vector . . . circuit, encoding or decoding the
first pixel line.” Non-Final 3.
The Federal Circuit has consistently held that 35 U.S.C. § 112, first
paragraph, contains a written description requirement separate from
enablement. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To satisfy the written
description requirement, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention, and that the invention, in that context is
whatever is now claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991).
Contrary to the Examiner’s position, and consistent with Appellant’s
Summary of Claimed Subject Matter section of the Appeal Brief, we
determine that the original disclosure provides adequate written description
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support for the “first processing circuit,” “second processing circuit,” and
“third processing circuit,” as recited in claim 14. See Appeal Br. 9–11 (citing
Figs. 2–4, Spec. ¶¶ 20–23, 26, 27, 29–32, 34, 35, 41, 43, 44). For example,
paragraphs 32 and 41 of the Specification provide support for the “first
processing circuit” by describing a first processing circuit configured to
detect an occurrence of an edge in the first pixel line according to restored
sample values derived from the stored sample values in the data buffer. See
Spec. ¶¶ 32, 41. Paragraphs 29 to 31, 35 and 44 also provide support with
their description of the first processing circuit’s obtaining of the restored
sample values. Id. ¶¶ 29–31, 35, 44. Paragraphs 29 and 33 of the
Specification provide support for the “second processing circuit” by
describing processes by which a block prediction circuit, or the second
processing circuit thereof, may determine a block prediction vector for a
pixel group in the second pixel line. See id. ¶¶ 29, 33. Paragraphs 20–22 of
the Specification provide further technical detail as to how the block
prediction vector may be detected, including the comparison of consecutive
samples in a pixel line and checking to determine whether a candidate BP
vector can become the final BP vector. See id. ¶¶ 20–22. Paragraphs 25, 28,
34, 35, 37–39, 43, and 44 of the Specification provide support for the “third
processing circuit” by describing an encoding circuit that encodes (and a
decoding circuit that decodes) pixel groups and lines and generates a bit-
depth reduced sample value that is stored in the data buffer.
To the extent the Examiner’s position is that further written
description is necessary to adequately describe how a circuit is physically
fabricated and configured or programmed such that it may perform the
recited claim functions, we do not agree. The Specification is viewed from
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the perspective of one of ordinary skill. Falko–Gunter Falkner v. Inglis, 448
F.3d 1357, 1366–68 (Fed. Cir. 2006). Accordingly, where, as here, “the field
of [] invention is a predictable art, such that a lower level of detail is
required to satisfy the written description requirement than for unpredictable
arts,” Appellant may also rely on that which is “well-known in the art” to
meet this requirement. Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d
1357, 1361 (Fed. Cir. 2018); Falko–Gunter, 448 F.3d at 1366–68. Therefore,
even if not explicitly disclosed in the Specification, the written description
requirement for fabricating and configuring or programming a circuit such
that it may perform the recited functions has been met because these
concepts were old and well-known to one of ordinary skill in the computing
arts.
For the foregoing reasons, we do not sustain the rejection of claims
14–26 under 35 U.S.C. § 112(a).
II. Section 112(b) rejections of claims 1–26
a. Indefiniteness
Under 35 U.S.C. § 112, second paragraph, the test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention,” In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014), or if it “is amenable to two or more plausible claim
constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Because the language of 35 U.S.C. § 112(b) is substantially
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the same as its predecessor, 35 U.S.C. § 112, second paragraph, the same
test for definiteness applies here.
The Examiner concludes that claims 1–26 are indefinite because
“encoding or decoding a first pixel line to generate sample values,” as
recited, “fails to point out what is included or excluded by the claim
language.” Non-Final 6. The Examiner explains that “[e]ncoded and
decoded data are different, presumably the processing of encoded and
decoded data would have to be different, and so it is not clear as to what data
processing the claims are directed to.” Id. The Examiner further explains that
[i]n the art of video processing, an encoding device is
functionally opposite to a decoding device and may be
substantively different in algorithm and data dependencies,
even for the same data content. They are not substitutes or
interchangeable. An element stating that it can be either an
encoder or a decoder provides conflicting implications for the
rest of the claim as to the types of signals being processed and
the types of data dependencies to be observed, which render the
claims indefinite in scope.
Ans. 9 (emphasis omitted).
We agree with the Examiner that the processes of encoding and
decoding are different and not interchangeable. But, as Appellant argues, the
disputed limitation is not indefinite because the claim language, in view of
the Specification, makes clear that
the same block prediction search method is performed at both
of the compressor and the decompressor, where sample values
used by the block prediction search method performed at the
compressor are reconstructed sample values obtained by
encoding a pixel line, and sample values used by the block
prediction search method performed at the decompressor are
decoded sample values obtained by decoding a pixel line.
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Appeal Br. 16 (citing Spec. ¶¶ 21, 25, 36, 37). In other words, the claim
requires the same block prediction method to be performed either on sample
values generated by encoding the first pixel line or on samples generated by
decoding the first pixel line. The Examiner asserts that the limitation at issue
“provides conflicting implications for the rest of the claim,” but the
Examiner has not presented any persuasive evidence that performing the
same block prediction method on either the encoding-generated sample
values or decoding-generated sample value would have been ambiguous,
vague, or otherwise unclear. Ans. 9. Although the claim’s recitations of
alternative limitations may be broad, “[b]readth is not indefiniteness.” In re
Gardner, 427 F.2d 786, 788 (CCPA 1970).
For the foregoing reasons, we do not sustain the rejection of claims 1–
26 under 35 U.S.C. § 112(b), as being indefinite.
b. Omission of essential elements
The Examiner also rejects claims 1–26 under 35 U.S.C. § 112(b) as
being “incomplete for omitting essential elements, such omission amounting
to a gap between the elements.” Non-Final 6 (citing MPEP § 2172.01). The
Examiner finds that
[t]he claims are directed to ‘obtaining restored sample values by
reading the data buffer, wherein the restored sample values are
derived from stored bit-depth reduced sample values in the data
buffer,’ however the claims are silent as to how the missing
data is restored, what is the source of restored data, or how it
ended up in a data buffer in which reduced bit-depth samples
were stored.
Id. (emphasis omitted).
Appellant disputes the Examiner’s rejection, citing the Specification’s
description of what the restored sample values are, how they may be
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obtained, and how they may be used to determine a block prediction vector.
Appeal Br. 17 (citing Spec. ¶¶ 29, 31). Accordingly, Appellant argues that
“a restored sample value may be obtained by applying a left-shifting
operation to a bit-depth reduced sample value read from a data buffer, or
may be obtained by directly using the bit-depth reduced sample value read
from the data buffer.” Id. The Examiner responds that the claim language
“seems to discard data and then recover lost data out of thin air” and that
“even [the] specification is silent on how to restore sample values from bit-
depth reduced sample values[;] clearly only the reduced sample values are
available.” Ans. 10.
Under § 112(b), the examiner may reject claims as being indefinite if
they omit essential elements, steps or necessary structural cooperative
relationship of elements. See In re Collier, 397 F.2d 1003, 1005 (CCPA
1968); see MPEP § 2172.01. Not every omission, however, renders the
claims indefinite, for they need not recite every detail of patent applicant’s
process. See In re Johnson, 558 F.2d 1008, 1017 (CCPA 1977); In re
Roberts, 470 F.2d 1399, 1403 (CCPA 1973); In re Rainer, 305 F.2d 505,
509 (CCPA 1962). Breadth must not be equated with indefiniteness. In re
Miller, 441 F.2d 689, 693 (CCPA 1971).
We are not persuaded by the Examiner’s conclusion that the claims
are incomplete for omitting essential elements and, thus, indefinite. As an
initial matter, the Examiner asserts that “the claims are silent as to how the
missing data is restored, what is the source of restored data, or how it ended
up in a data buffer,” but “it is the function of the specification, not the
claims, to set forth the ‘practical limits of operation’ of an invention.”
Johnson, 558 F.2d at 1017 (citing Rainer, 305 F.2d at 509). In other words,
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contrary to the Examiner’s line of argument, “[o]ne does not look to claims
to find out how to practice the invention they define, but to the
specification.” Id. (citing Roberts, 470 F.2d at 1403; In re Fuetterer, 319
F.2d 259 (CCPA 1963)). Thus, the absence in the claim of additional,
specific steps that would bring about the restored sample values is no defect.
Moreover, as Appellant argues, the Specification adequately describes
“obtaining restored sample values by reading the data buffer” as claimed,
including how a sample value may be restored and its source. For example,
according to the Specification, a restored sample value may be obtained by
using a left shift operation such that the restored value equals the stored
sample value modified by a left shift amount. Spec. ¶¶ 29–30. Alternatively,
the restored sample value may be obtained by setting its value equal to the
stored sample value itself. Id. ¶ 31. The Examiner’s assertion that “the
claims are silent as to how . . . [the restored sample values] ended up in a
data buffer” suggests an interpretation of “obtaining restored sample valued
by reading the data buffer” as retrieving restored sample values previously
stored in the data buffer. But such an interpretation is inconsistent with the
Specification, which makes clear that the restored sample values are not
being retrieved from the data buffer, but rather are being determined and,
thus, obtained using other data previously stored in the buffer (e.g., the
stored bit-reduced sample values).
For the foregoing reasons, we do not sustain the rejection of claims 1–
26 under 35 U.S.C. § 112(b), as being incomplete for omitting essential
elements, such omission amounting to a gap between the elements.
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III. Section 101 rejection of claims 1–26
A. Applicable Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“[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 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Id. at 217. If so, we then examine “the elements of [the] claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claim for an
“inventive concept,” “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.’” Id. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites one of the abstract ideas listed in the Revised Guidance
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(“Prong One”) and (2) fails to integrate the recited abstract idea into a
practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Id. at 56.
With these principles in mind, we first analyze whether claims 1 and 5
are directed to an abstract idea.3
B. Abstract Idea
The Examiner determines that each of the independent claims (as well
as their dependencies) are directed to an abstract idea. Non-Final 7–9. In
particular, the Examiner determines that the “the claims appear to be
directed toward an abstract idea, mathematical transformation of data in the
field of video processing.” Id. at 8. The Examiner analogizes the claims to
the court-identified abstract ideas of “encoding and decoding . . . an image
. . . and . . . a mathematical equation,” and “[s]electing information for
collection by content or source, analyzing it, and displaying results of
collection and analysis.” Id. at 8–9 (citing RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322 (Fed. Cir. 2017); Elec. Power Grp., LLC v. Alstom S.A.,

3 Appellant argues the independent claims together as representative of all
the pending claims (hereinafter “the claims”). See Appeal Br. 18–21. We
select claims 1 and 5 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
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830 F.3d 1350, 1353 (Fed. Cir. 2016)). The Examiner explains that the
claims “are directed entirely to a transformation of image data from one
form to another (start with encoding or decoding data, manipulate data, and
end with encoding or decoding data), which is not eligible subject matter
under section 101.” Ans. 7 (emphasis omitted). The Examiner further
explains that “the claims recite operations of the established industry
standards in video coding ‘MPEG1/2/4, H.263, H.264, Microsoft WMV9,
and Sony Digital Video, to name a few.’” Id. at 8 (emphasis omitted) (citing
Lin ¶ 3; Spec. ¶ 5).
1. USPTO Step 2A, Prong One
Beginning with Prong One of the first step of Alice, we must
determine “whether the claims at issue are directed to one of those
patent-ineligible concepts,” including the abstract ideas enumerated in the
Revised Guidance. Alice, 573 U.S. at 217. One of the subject matter
groupings identified as an abstract idea in the Revised Guidance is “[m]ental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” Revised Guidance, 84 Fed.
Reg. at 52. Another subject matter grouping identified as an abstract idea in
the Revised Guidance is “[m]athematical concepts—mathematical
relationships, mathematical formulas or equations, mathematical
calculations.” Id.
Limitation [a] and [k] of claims 1 and 5 recite: encoding or decoding a
first pixel line to generate sample values of a plurality of samples in the first
pixel line . . . ; and . . . encoding or decoding the pixel group in the second
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pixel line according to the final block prediction vector.4 These limitations
recite the concept of encoding and decoding, which the Federal Circuit has
identified as “an abstract concept long utilized to transmit information” and
could be performed in the human mind or with pen and paper. RecogniCorp,
855 F.3d at 1326, see also id. (“Morse code, ordering food at a fast food
restaurant via a numbering system, and Paul Revere’s ‘one if by land, two if
by sea’ signaling system all exemplify encoding at one end and decoding at
the other end.”). Accordingly, consistent with our Office Guidance and case
law, we determine that limitations [a] and [k] of claims 1 and 5 recite a
mental process and, thus, an abstract idea. See Revised Guidance, 84 Fed.
Reg. at 52.
Limitations [c], [d], and [f]–[j] of claim 1 recite:
storing . . . sample values of the samples in the first pixel line
. . . ; obtaining restored sample values . . . ; determining a block
prediction vector of a pixel group in a second pixel line . . .
based at least partly on a last edge count value indicative of a
number of samples in the first pixel line that have gone by since
the edge occurs, wherein determining the block prediction
vector of the pixel group in the second pixel line comprises:
generating a comparison result by comparing . . . set[s] of . . .
samples . . .; referring to the comparison result to select one of
the . . . sets of . . . samples; utilizing a position offset between
the . . . samples as the block prediction vector of the pixel
group; and checking at least the last edge count value to
determine whether or not the block prediction vector is selected
as a final block prediction vector of the pixel group in the
second pixel line.5

4 Independent claims 11, 14, 18, and 24 recite similar limitations. See
Appeal Br. 30–36 (Claims App.).
5 Independent claims 11, 14, and 24 recite similar limitations. See Appeal
Br. 30–33, 35–36.
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Similarly, limitations [b]–[j] of claim 5 recite
storing first sample values . . . ; obtaining second sample values
. . . ; computing a last edge count value according to the second
sample values . . . ; obtaining third sample values . . . ;
computing sample difference information according to the third
sample values . . . , the sample difference information
comprises sample difference values each generated by
comparing . . . samples . . . ; and determining a block prediction
vector of the pixel group in the second pixel line . . . ,
comprising: selecting . . . samples according to the sample
difference values . . . ; utilizing a position offset between the . . .
samples as the block prediction vector of the pixel group; and
checking . . . the last edge count value to determine whether or
not the block prediction vector is selected as a final block
prediction vector of the pixel group in the second pixel line.6
These limitations of claims 1 and 5 recite the concepts of storing data,
obtaining data, computing data (e.g., by comparing data), and determining or
generating data by selecting data, utilizing, and checking data. Similarly, the
Federal Circuit has identified claims that store, collect, and analyze data,
e.g., by performing mental steps or mathematical calculations, as being
directed to abstract ideas. See, e.g., RecogniCorp, 855 F.3d at 1326–27
(determining that the claim’s recitation of a mathematical formula in
addition to the abstract concept of encoding and decoding did not render the
claim non-abstract); Elec. Power Grp., 830 F.3d at 1354 (characterizing as
abstract the concept of collecting information, analyzing information by
steps people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information); TDE
Petroleum Data Sols., Inc. v. AKM Enter., Inc., 657 F. App’x 991, 993 (Fed.

6 Independent claim 18 recites similar limitations. See Appeal Br. 33–34
(Claims App.).
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Cir. 2016) (determining that claims directed to storing, gathering, and
analyzing data were abstract).7
Based on the analysis above, we determine that claims 1 and 5 each
recite multiple abstract ideas, including mental processes and mathematical
concepts (functions or operations that can be performed in the human mind
or with pen and paper and mathematical calculations) for performing a block
prediction search. In that regard, we note that merely combining several
abstract ideas does not render the combination any less abstract.
RecogniCorp, 855 F.3d at 1327 (“Adding one abstract idea . . . to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas). Accordingly, consistent with our Office Guidance and case
law, we determine that claims 1 and 5 recite abstract ideas in the mental
processes and mathematical concepts groupings. See Revised Guidance, 84
Fed. Reg. at 52.
2. USPTO Step 2A, Prong Two
Because we determine that claims 1 and 5 each recite an abstract idea,
we turn to Prong Two of Step 2A of the Alice/Mayo framework and consider
whether each claim is “directed to” an abstract idea or integrates the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51. In doing so, we consider whether there are any additional
elements beyond the abstract idea that, individually or in combination,

7 See also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d
1364, 1372 (Fed. Cir. 2017) (determining that “claims directed to the
collection, storage, and recognition of data” were abstract).

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“integrate the [abstract idea] into a practical application, using one or more
of the considerations laid out by the Supreme Court and the Federal
Circuit.”8 Id. at 54–55.
The Examiner determines that “[t]he elements of the present claims,
when considered individually and in combination, are not directed toward
significantly more than an abstract idea itself” because the claims’
“computing is applied at a high level of generality,” the “claims are
presented by statements of intended results . . . without limitation to
specialized computer features or hardware,” and the claims “amount[] to no
more than mere instruction to implement an abstract idea on a computer (or
processing circuits).” Non-Final 8. The Examiner adds that
there are no limitations directed toward judicially recognized
improvements to another technology or technical field;
improvements to the structure of the computer itself; or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment, i.e.
there are no limitations to a transformation of an object or
specialized computer features or hardware; [the recited]
computer is used as a tool to apply the abstract ideas.
Id. at 9.
We do not agree. Instead, we are persuaded by Appellant’s arguments
that “the claims as a whole include meaningful limitations significantly more
than the abstract idea” because they recite limitations that “can improve the

8 We acknowledge that some of these considerations may be properly
evaluated under step two of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate them under step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See id. at 54–55.
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compressor/decompressor design by saving the data buffer size.” Appeal Br.
20 (emphasis omitted), see also id. at 19–21.
Limitations [b], [d], and [e] of claim 1 include:
[b] generating a bit-depth reduced sample value by
sampling each of the sample values of the samples in the first
pixel line according to a difference between a bit depth of said
each of the sample values and a buffer bit depth of a data buffer,
wherein the bit depth of said each of the sample values is larger
than the buffer bit depth of the data buffer, and a bit depth of the
bit-depth reduced sample value is smaller than the bit depth of
said each of the sample values; . . .
[d] . . . wherein the restored sample values are derived
from stored bit-depth reduced sample values in the data buffer,
and a bit depth of each of the restored sample values is not
smaller than a bit depth of each of the stored bit-depth reduced
sample values; . . . [and]
[e] detecting occurrence of an edge in the first pixel line
according to the restored sample values.
Contrary to the Examiner’s position, the recited limitations are not
merely “statements of intended results . . . without limitation to specialized
computer features or hardware.” Rather, the claims recite specific steps for
performing a block prediction search that use data determined in a specific
way to perform additional, specialized functions. For example, claim 1’s
recitation of detecting an occurrence of an edge in the first pixel line
depends on the restored sample values, which were derived from the stored-
bit-depth reduced sample values, which were generated by sampling the
sample values of the first pixel line in a specific way. This edge detection is
used later by the method for determining last edge count value and, in turn, a
block prediction vector.
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Moreover, limitations [b], [d], and [e] of claim 1 integrate the recited
abstract idea into a practical application because, as described in the
Specification,
computing a last edge count value and SAD (sum of absolute
difference) values based on restored sample values derived
from stored sample values in the same data buffer, rather than
the reconstructed/decoded sample values. . . , the compressor
/decompressor does not need extra storage for storing data
needed by the last edge count computation.
Spec. ¶ 19, see also id. ¶ 23. Thus, instead of storing the pixel data
used for block prediction in different line buffers with different buffer
bit depth settings, which would result in a higher production cost (see
id. ¶ 5), “the present invention . . . reduce[s] the hardware cost by
obtaining any previous pixel line data needed in computation of a
block prediction vector from restored sample values derived from
stored sample values in the same data buffer” (id. ¶ 25). In other
words, as Appellant explains,
the hardware cost (particularly, the buffer requirement) of the
compressor/decompressor can be effectively reduced by
sampling the reconstructed/decoded samples to generate
bit-depth reduced samples, storing the bit-depth reduced
samples into a data buffer, obtaining restored samples from
reading the data buffer, and compute edge information (e.g., a
position of an edge and an associated last edge count value)
needed to determine a block prediction vector according to the
restored samples.
Appeal Br. 20, see also id. at 19–20 (citing Spec. ¶¶ 5, 19, 23, 25).
Similarly, claim 5 additionally recites that the second sample values
are obtained “by reading the data buffer” and “are derived from stored first
sample values, each having a first bit depth in the data buffer,” and that the
third sample values are obtained “by reading the data buffer” and “are
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derived from stored first sample values, each having the first bit depth in the
data buffer.” Thus, both the second sample values and third samples values
were derived from data stored in the same data buffer. And, as discussed
above, the block prediction vector is determined based on the sample
difference information, which was computed according to the third sample
values, and the edge count value, which was computed according to the
second sample values. Therefore, when read in combination with the other
limitations of claim 5, the additional limitations of claim 5 integrate the
recited abstract idea into a practical application for reasons similar to those
discussed above for claim 1. As Appellant explains, “the hardware cost
(particularly, the buffer size requirement) of the compressor/decompressor
can be effectively reduced by using the same data buffer to provide samples
needed by the last edge count computation and the SAD computation.” Id. at
21. As with claim 1, claim 5 does not recite “statements of intended results
without limitation to specialized computer features or hardware,” but instead
recites specific steps for performing a block prediction search that use data
determined in a specific way to perform additional, specialized functions.
Thus, by reducing the hardware cost in the ways described above, we
determine that claims 1 and 5 are not “directed to” an abstract idea, but
instead provide an improvement rooted in computer technology. Contrary to
the Examiner’s determinations, claims 1 and 5 are distinguishable from the
patent-ineligible claims in RecogniCorp, which recited neither a
“particularized application of encoding and decoding image data,” nor an
improvement rooted in computer technology. See RecogniCorp, 855 F.3d at
1327–28.
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Accordingly, we determine the recited judicial exception is integrated
into a practical application such that each of claims 1 and 5, as a whole, is
not directed to the judicial exception. Because we conclude claims 1 and 5
are not directed to a judicial exception, and thus are patent-eligible, this ends
the patent-eligibility inquiry under the Revised Guidance, and we need not
proceed to the Step 2B analysis.
3. Conclusion
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 5, and dependent claims 2–4 and 6–10, under 35 U.S.C. § 101.
For similar reasons, we do not sustain the Examiner’s rejection of
independent claims 11, 14, 18, and 24, and claims 12, 13, 15–17, 19–23, 25,
and 26, which depend from therefrom, under 35 U.S.C. § 101.
IV. Section 103 rejection
a. Claims 1–4, 8, 11–17, 21, and 24–26
Based on Appellant’s arguments in the Briefs (Appeal Br. 21–25;
Reply Br. 4–6), the dispositive issue before us with respect to the § 103
rejection of claims 1–4, 11–17, and 24–26 is whether the Examiner’s
proposed combination of Lin, Wan, and Lee would have suggested the
following limitation, as recited in claim 1, and recited similarly in claims 11,
14, and 24:
generating a bit-depth reduced sample value by sampling each
of the sample values of the samples in the first pixel line
according to a difference between a bit depth of said each of the
sample values and a buffer bit depth of a data buffer, wherein
the bit depth of said each of the sample values is larger than the
buffer bit depth of the data buffer, and a bit depth of the bit-
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depth reduced sample value is smaller than the bit depth of said
each of the sample values.9
In addressing this limitation in the Non-Final Office Action, the
Examiner first “notes that this element employs multiple circular definitions,
sample value by sampling, bit-depth reduced is smaller” and that “[u]nder
the broadest reasonable interpretation consistent with the instant
specification and ordinary skill in the art, this element refers to quantization
of sample values as known in the art to reduce bit-depth.” Non-Final 12.
Accordingly, the Examiner finds Lin teaches “generating a bit-depth reduced
sample” as recited with its disclosure of a “quantization process [that]
effectively throws out low-order bits of the transform coefficients.” Id.
(citing Lin ¶ 6).
Appellant argues that “a skilled person should readily appreciate that
this passage [of Lin] describes the original bit information recorded by the
low-order bits (i.e., least significant bits) of a transform coefficient is lost
due to the quantization process [] to reduce the value represented by bits of
the transform coefficient,” but “the bit-depth of the transform coefficient
remains unchanged.” Appeal Br. 22 (emphasis added) (citing Lin ¶ 6).
Appellant further argues that “the appellant’s sampling operation is
performed upon the reconstructed/decoded pixel sample according to a
difference between the buffer bit depth and the sample bit depth,”
whereas “the quantization process mentioned by Lin does not have such
characteristics.” Id. at 22 (citing Spec. ¶¶ 25–27).

9 To the extent Appellant makes other arguments in the Briefs with respect
to these claims, we do not address them because our decision of this issue is
dispositive.
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In the Answer, the Examiner responds that Lin’s disclosure of a
“quantization process [that] effectively throws out low-order bits of the
transform coefficients” “indicates that in prior art quantization, bits of a
sample are thrown out leaving a sample with a reduced bit depth.” Ans. 12.
We are persuaded by Appellant’s arguments that the Examiner erred.
Lin relates to “video processing, and more particularly, to digital signal
processing structures that can carry out decoding processes . . . for multiple
video standards.” Lin ¶ 2. The background of Lin describes the use of
compression algorithms when processing video images to reduce temporal
and spatial redundancy. Id. ¶¶ 4–6. For example, Lin teaches that spatial
redundancy may be reduced by applying a discrete cosine transform (DCT)
to 8x8 blocks and entropy coding quantized transform coefficients using
Huffman tables. Id. ¶ 6. Lin further teaches that quantizing the transform
coefficients “reduc[es] to zero small high frequency coefficients” and
“effectively throws out low-order bits of the transform coefficients.” Id. But
the Examiner does not provide any persuasive evidence that Lin’s
quantization process generates a bit-depth reduced sample value. Although
Lin’s quantization process throws out low-order bits of the transform
coefficients, there is no evidence that the bit-depth of the transform
coefficient or any other element has changed. Nor does the Examiner
provide any persuasive evidence that Lin’s quantization process teaches a
sampling operation performed on a reconstructed or decoded pixel sample
according to a difference between the buffer bit depth and the sample bit
depth. The Examiner also does not cite Wan or Lee for teaching or
suggesting the disputed claim element or provide a predictable rationale to
fill the gaps in the rejection.
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In view of the foregoing, the Examiner has not adequately shown that
the combined teachings of the cited prior art references would have
suggested claim 1, including “generating a bit-depth reduced sample value.”
Accordingly, on this record, we are constrained to find the Examiner
erred because the Examiner has not adequately shown that the proposed
combination of prior art references renders claim 1 obvious by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence).
Thus, we do not sustain the Examiner’s rejection of claim 1 under
§ 103. For similar reasons, we do not sustain the Examiner’s § 103
rejections of claims 2–4, 11–17, and 24–26, which include similar
deficiencies.
Although independent claims 5 and 18 do not recite a limitation
similar to claim 1’s “generating a bit-depth reduced sample value,” claims 8
and 21, which depend respectively from claims 5 and 18, do:
8. The block prediction search method of claim 5, wherein the
sample values stored in the data buffer are bit-depth reduced
sample values of the samples in the first pixel line.

21. The image processing apparatus of claim 18, wherein the
sample values stored in the data buffer are bit-depth reduced
sample values of the samples in the first pixel line.
Appeal Br. 30, 35 (Claims App.).
Because claims 8 and 21 recite a limitation similar to claim 1’s
“generating a bit-depth reduced sample value,” and, in rejecting these
claims, the Examiner relies on the same deficient findings, reasoning, and
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conclusion from the rejection of claim 1, we also do not sustain the
Examiner’s § 103 rejections of claims 8 and 21. See Non-Final 16–18.
b. Claims 5–7, 9, 10, 18–20, 22, and 23
The Examiner rejects claim 5 over the combination of Lin, Wan, and
Lee “for reasons stated for Claim 1, because the ‘sample difference
information’ of Claim 5 corresponds to the ‘sampling each of sample values
of a plurality of samples’ embodiment of Claim 1.” Non-Final 16 (citing id.
at 11–16).
Appellant notes that “claim 5 includes limitations . . . different from
. . . claim 1” and, thus, “claim 5 should not be rejected on the same basis of
the same reasons stated for claim 1.” Appeal Br. 23. Appellant quotes
several elements of claim 5 and explains that
claim 5 defines that sample values used for computing the last
edge count value and sample values used for computing the
sample difference information are all restored sample values
derived from bit-depth reduced sample values stored in the data
buffer, where the computed last edge count value is checked to
see if the block prediction vector found using the sample
difference information should be used for encoding the pixel
group.
Id. at 23–24. Appellant then argues that after carefully reviewing the
disclosures of Lin, Wan, and Lee, it finds no description pertinent to the
claim elements identified above. Id. at 24.
We agree with Appellant that claim 5 differs in scope from claim 1.
Thus, we recognize that the Examiner’s decision to reject claim 5 “for the
same reasons stated for claim 1” runs the risk of not addressing one or more
elements of claim 5. But Appellant’s argument does not specifically identify
and explain how the claim language at issue is patentably distinguishable
from the cited disclosures of the prior art references. Therefore, we are not
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persuaded of Examiner error because the argument amounts to a general
allegation that the claims define a patentable invention. See 37 C.F.R.
§ 41.37(c)(1)(vii) (noting that an argument that merely points out what a
claim recites is unpersuasive); see also In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
Accordingly, we sustain the Examiner’s rejection of claim 5 under 35
U.S.C. § 103. For the same reasons, we sustain the Examiner’s § 103
rejection of independent claim 18, and the Examiner’s § 103 rejection of
dependent claims 6, 7, 9, 10, 19, 20, 22, and 23, which are not separately
argued.
CONCLUSION
We reverse the Examiner’s rejection of claims 14–26 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
We reverse the Examiner’s rejection of claims 1–26 under 35 U.S.C.
§ 112(b), as being indefinite.
We reverse the Examiner’s rejection of claims 1–26 under 35 U.S.C.
§ 112(b), as being incomplete for omitting essential elements.
We reverse the Examiner’s rejection of claims 1–26 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 5–7, 9, 10, 18–20, 22,
and 23 under 35 U.S.C. § 103.
We reverse the Examiner’s rejection of claims 1–4, 8, 11–17, 21, and
24–26 under 35 U.S.C. § 103.
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In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14–26 112(a) Written
Description
14–26
1–26 112(b) Indefiniteness 1–26
1–26 112(b) Incomplete 1–26
1–26 101 Eligibility 1–26
1–26 103 Lin, Wan, Lee 5–7, 9, 10,
18–20, 22,
23
1–4, 8, 11–17,
21, 24–26
Overall
Outcome
5–7, 9, 10,
18–20, 22,
23
1–4, 8, 11–17,
21, 24–26

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART