Chen, Sean et al.

Patent Trials and Appeals Board

Feb 6, 2020

15463387 - (D) (P.T.A.B. Feb. 6, 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.
15/463,387 03/20/2017 Sean Chen 199-1124USC 8988
11422 7590 02/06/2020
Blank Rome LLP - Polycom
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
CHIO, TAT CHI
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
02/06/2020 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):
houstonpatents@blankrome.com
patentdocket@poly.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEAN CHEN and DAVID WANG1
____________________

Appeal 2019-000292
Application 15/463,387
Technology Center 2400
____________________

Before BRYAN F. MOORE, NORMAN H. BEAMER, and
MATTHEW J. McNEILL, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–18, which are all claims pending in the application.
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. Appellant identifies the real party in interest as Polycom,
Inc. Appeal Br. 3.
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BACKGROUND2
Appellant’s disclosed embodiments and claimed invention relate to
“the field of video compression, and particularly to a method of motion
estimation in video compression.” Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A method of efficiently reducing complexity of sub pixel
motion estimation in video compression for limiting
degradation, comprising:
a) determining, in one or more reference frames of a video
picture, a best full-pixel motion vector F for a block in
a current frame of the video picture;
b) determining a best half-pixel motion vector H from a
set of half-pixel motion vectors based on the best full-
pixel motion vector;
c) determining a best quarter-pixel motion vector Q from
a set of quarter-pixel motion vectors based on the best
full-pixel motion vector and the best half-pixel motion
vector;
d) determining the best motion vector for the block as
BMV = F + H + Q; and
e) determining full-pixel motion estimation based on the
best motion vector.
Appeal Br. 13 (Claims App’x).
REJECTIONS
Claims 1–18 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–6.

2 Throughout this Decision we have considered the Specification filed
March 20, 2017 (“Spec.”), the Final Rejection mailed September 13, 2017
(“Final Act.”), the Appeal Brief filed April 21, 2018 (“Appeal Br.”), the
Examiner’s Answer mailed August 7, 2018 (“Ans.”).
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent, Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1–18 under 35 U.S.C. § 101
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.,
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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
(“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, 7,
and 13 are directed to an abstract idea.
B. Abstract Idea
The Examiner determines that each of the independent claims (as well
as their dependencies) are directed to an abstract idea. Final Act. 2–6. In
particular, the Examiner determines that the claims are directed to “a method
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of efficiently reducing complexity of sub pixel motion estimation in video
compression for limiting degradation,” which according to the Examiner, is
an abstract idea. Id. at 3. For example, the Examiner asserts the claimed
“steps for determining motion vectors, if nothing more, are only
mathematical algorithm that organize and manipulate information through
mathematical correlations.” Id. at 2. The Examiner further asserts the
claims “do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the claims do not
recite elements that would add meaningful limits to practicing the abstract
idea.” Id. at 3. The Examiner analogizes the claims to the court identified
abstract ideas of “organizing and manipulating information through
mathematical correlations.” Id. at 3 (citing Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)).
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 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.
Independent claims 1, 7, and 13 are directed to “sub pixel motion
estimation in video compression” as recited in the preamble of those claims.
Limitations [d] of claims 1, 7, and 13 recites “determining the best motion
vector for the block as BMV = F + H + Q.” Thus, at least limitation [d]
discussed above encompasses mathematical concepts.
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Similar to the claims found patent-ineligible in Digitech, Appellant’s
claim 1 “employs mathematical algorithms [(calculations)] to manipulate
existing information to generate additional information[, which] is not patent
eligible. ‘If a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory.”’ Digitech, 758 F.3d at 1351 (quoting
Flook, 437 U.S. at 595 (internal quotations omitted)). More recently, our
reviewing court explained that, similar to Digitech, claims applying a
mathematical formula (to assign image codes) as well as encoding and
decoding image data recite an abstract idea. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1326–27 (Fed. Cir. 2017). In particular, the
Federal Circuit explained that claims focused on mathematical concepts are
abstract--“outside of the math, claim 1 . . . is not directed to otherwise
eligible subject matter. Adding one abstract idea (math) to another abstract
idea (encoding and decoding) does not render the claim non-abstract.”
RecogniCorp, 855 F.3d at 1327. Accordingly, consistent with our Office
Guidance and case law, we determine that at least limitation [d] of
independent claims 1, 7, and 13 recite encompasses mathematical concepts
and, thus, an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52.
Appellant contends that the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 6–12.
Specifically, Appellant contends, “Examiner fails even to set forth a clear
definition of the alleged abstract idea,” simply quotes the preamble of the
claims, and states the claim recites “organizing and manipulating
information through mathematical correlations” citing Digitech. Id. at 6. As
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evinced above, we disagree with these characterizations that the Examiner
failed to make a sufficient showing.
Based on the analysis above, we determine that claims 1, 7, and 13
each recite an abstract idea, including mathematical concepts for performing
sub pixel motion estimation in video compression. Accordingly, consistent
with our Office Guidance and case law, we determine that claims 1, 7, and
13 recite abstract ideas in the mathematical concepts grouping. See Revised
Guidance, 84 Fed. Reg. at 52.
2. USPTO Step 2A, Prong Two
Because we determine that claims 1, 7, and 13 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, as opposed to
integrating 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, “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.” Id. at 54–55.
The Examiner determines that “[t]he claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claims do not recite elements that would
add meaningful limits to practicing the abstract idea.” Final Act. 3.
Specifically, the Examiner determines that “[t]he claim does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additional elements when considered both
individually and as an ordered combination do not amount to significantly
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more than the abstract idea. The claim does not recite elements that would
add meaningful limits to practicing the abstract idea. No additional elements
are recited in the claim beyond the description of the abstract idea.” Id. at 4.
We disagree. Claims 1, 7, and 13 are directed to “sub pixel motion
estimation in video compression” as recited in the preamble of those claims.
Limitations [a], [b], and [c] of claims 1, 7, and 13 recite respectively:
determining a full motion vector F, determining a half-motion vector H, and
determining a quarter motion vector Q. Limitation [a] recites that the full
motion vector F is determined “in one or more reference frames of a video
picture, a best full-pixel motion vector F for a block in a current frame of the
video picture.” Limitations [d] and [e] of claims 1, 7, and 13 recite
respectively recite “determining the best motion vector for the block as
BMV = F + H + Q” and “determining full-pixel motion estimation based on
the best motion vector.” Appeal Br. 13 (Claims App.) (emphases added). We
refer collectively to the steps of claims 1, 7, and 13 as “determining steps.”
We are persuaded by Appellant’s arguments that “claims 1-18 are not
directed to an abstract idea because the claims are directed to motion
estimation in the field of computer video compression and address solving a
problem unique to electronic devices, improving the functionality of those
devices by reducing the computational complexity of motion estimation.”
Id. at 8.
Specifically, Appellant asserts
As the preamble to each independent claim states, the claimed
systems, methods, and machine readable medium are aimed at
‘reducing complexity of sub pixel motion estimation in video
compression for limiting degradation.’ The reduced complexity
has a real world result: ‘desirable Rate-Distortion quality in
different kinds of motion scenarios’ without the need for ‘highly-
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expensive interpolation’ in which ‘sub-pixel motion estimation
occupies a significant amount of computation, sometimes even
more than that of full pixel motion estimation.’ (Specification at
[0002].) The claimed techniques improve the operation of the
computer performing video processing, by reducing the ‘amount
of computation of the sub pixel motion estimation’ by 30-35%
with ‘extremely little’ ‘impact on video quality.’[Specification at
¶ 17]

Id. at 7–8. Appeal Br. 20, see also id. at 19–21. Thus, limitations [a]
– [e] of claim 1 integrate the recited abstract idea into a practical application,
because they explicitly recite a “video picture” and, described in the
Specification, the claimed techniques may improve the operation of the
computer performing video processing, by reducing the “amount of
computation of the sub pixel motion estimation’ by 30-35% with ‘extremely
little’ ‘impact on video quality.” Spec. ¶ 17.
Examiner also argues that Appellant’s Specification indicates that the
computer hardware performing the determining steps “are platform-
independent and that the techniques may be implemented on a variety of
commercial computing platforms having a variety of processors.” Ans. 8
(citing Spec. ¶ 40). Additionally Appellant admits, “the current claims do
not expressly recite any computer technology.” Appeal Br. 12.
We agree with Appellant’s citation to McRO Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299, 1315, (Fed. Cir. 2016) for the
proposition that an improvement in computer-related technology that clearly
improves the functioning of a computer is not directed to an abstract idea.
Appeal Br. 8. Specifically, Appellant contends that the process of claim 1
constitutes a specific process that constitutes a technological improvement
similar to McRO—the recited techniques provide “address solving a problem
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unique to electronic devices” and “improving the functionality of those
devices by reducing the computational complexity of motion estimation.”
Appeal Br. 7.
In McRO, the at-issue claims focused on methods of automatic lip
synchronization and facial expression animation. Although the limitations
were embodied in software executed by a generic computer, the recited rules
enabled automation of specific tasks (animation) that previously could not
be automated or accomplished using identical manual procedures. The
Federal Circuit relied on the Specification’s detailed explanation of the rules
in finding that the subject matter was patent eligible. It was McRO’s rules
that (the Federal Circuit found) improved the computer-related technology
allowing the computer to perform a function not previously performable by a
computer. See McRO, 837 F.3d at 1313–16. In the instant claim, the rules
regarding sub pixel motion estimation reduce the complexity of video
compression.
Similarly, in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the Federal Circuit held that a
specific technology-based solution that improved a technological process
was patent eligible. Such is the case in the instant claims.
In summary, although we conclude that Appellant’s claims 1, 7, and
13 recite a judicial exception (USPTO’s Step 2A, Prong 1; see 2019 Revised
Guidance), for the reasons above, taken as a whole, claims 1, 7, and 13
integrate the determining full-pixel motion estimation process into a
practical application for video compression (USPTO’s Step 2A, Prong 2; see
2019 Revised Guidance). We, therefore, determine claims 1, 7, and 13 are
directed to patent eligible subject matter.
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2. USPTO Step 2B Analysis—Inventive Concept or Significantly
More
Having concluded Appellant’s claims are not directed to an abstract
idea under the 2019 Revised Guidance Step 2A analysis, 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
Summary
For at least the reasons above, we are persuaded of Examiner error in
the rejection of claim 1 under 35 U.S.C. § 101. Thus, we reverse the
Examiner’s rejection under § 101 of independent claim 1, independent
claims 7 and 13, and dependent claims 2–6, 8–12, and 14–18, which depend
from claims 1, 7, and 13 (respectively) and which were not separately
argued with specificity.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–18
under 35 U.S.C. § 101.
DECISION
We reverse the Examiner’s rejection of claims 1–18.

3 Appellant asserts that claims 1–18 are analogous to the claims in the
“Digital Image Processing” example presented as Example 3 in the
“Abstract Idea Examples 1-8” published by the Office on January 27, 2015.
Appeal Br. 9. “Digital Image Processing” Example 3 presents a claim
considered by the courts to be eligible subject matter in Research Corp.
Tech., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed Cir. 2010). Id. The
example relates to the Step 2 B Analysis, therefore, we do not need to
discuss this argument by Appellant.
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18

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)(iv). See
37 C.F.R. § 41.50(f).
REVERSED