Ex Parte Aggarwal et al

Patent Trial and Appeal BoardJun 5, 2014

10318295 (P.T.A.B. Jun. 5, 2014)

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. 10/318,295 12/11/2002 Gaurav Aggarwal 106861-0405 8166 121312 7590 06/06/2014 Foley & Lardner LLP/ Broadcom Corporation 3000 K Street N.W, Suite 600 Washington, DC 20007-5109 EXAMINER NGUYEN BA, HOANG VU A ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 06/06/2014 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 GAURAV AGGARWAL, ARUN GOPALAKRISHNA RAO, MARCUS KELLERMAN, DAVID ERICKSON, JASON DEMAS, SANDEEP BHATIA, and GIRISH HULMANI ____________ Appeal 2011-013105 Application 10/318,295 Technology Center 2400 ____________ Before BRUCE R. WINSOR, IRVIN E. BRANCH, and CATHERINE SHIANG, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 3-9, and 11-15, which constitute all the claims pending in this application. Claims 2, 10, and 16-18 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Real Party in Interest identified by Appellants is Broadcom Corporation. (App. Br. 3.) Appeal 2011-013105 Application 10/318,295 2 STATEMENT OF THE CASE Appellants’ disclosure “relates to video recorder and playback systems, and more particularly to controlling the presentation of content.” (Spec. ¶ 5.) Claim 1, which is illustrative, reads as follows: 1. A method for decoding pictures, said method comprising: decoding at least one prediction picture; storing the at least one prediction picture in a memory; providing for displaying [sic] a first picture by a display engine, wherein the first picture is data-dependent on the at least one prediction picture, wherein the first picture is a P- picture and wherein the P-picture includes a plurality of macroblocks, each of said plurality of macroblocks being associated with a single motion vector and wherein displaying the first picture comprises calculating a location of reference pixels associated with motion vectors; and providing for display a second picture responsive to providing for display the first picture, wherein the second picture is data-dependent on the at least one prediction picture, and wherein the second picture is after the first picture in rewind order; and wherein providing for display the first picture and the second picture further comprises decoding the first picture and the second picture, and wherein decoding the first picture and the second picture further comprises motion compensating the first picture and second picture using originally encoded motion vectors. (App. Br., Claims App’x.) The Examiner relies on the following prior art in rejecting the claims: Hoang US 6,295,089 B1 Sept. 25, 2001 Kim US 7,224,730 B2 May 29, 2007 Wee, Susie and Bhaskaran Vasudev, “Compressed-Domain Reverse Play of MPEG Video Streams,” in the Proceedings of the SPIE Appeal 2011-013105 Application 10/318,295 3 International Symposium on Voice, Video, and Data Communications (Boston, MA, Nov. 1998) ("WeeVas98").2 Claims 1, 3, and 7-9 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. (Ans. 3-4.) Claims 1 and 3-6 stand rejected under 35 U.S.C. § 103(a) as obvious over WeeVas98 and Kim. (Ans. 4-7.) Claims 7-9 and 11-15 stand rejected under 35 U.S.C. § 103(a) as obvious over WeeVas98, Kim, and Hoang.3 (Ans. 8-11.) Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Jan. 12, 2011; “Reply Br.” Filed June 13, 2011) and the Answer (“Ans.” Mailed Mar. 13, 2011) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). 2 WeeVas98 comprises 12 un-numbered pages that will be referred to herein as pages 1-12. 3 The Examiner does not list Kim in the general statement of the ground for rejection (see Ans. 8) but does rely on Kim in the detailed explanation of the rejection of claim 7 (see Ans. 8-9). We find the omission of Kim from the general statement of the ground of rejection to be harmless error, at most. We find Appellants were adequately informed of the Examiner’s reliance on Kim in rejecting claim 7 and the claims which depend from claim 7. (See also Final Rejection 10-11.) Appeal 2011-013105 Application 10/318,295 4 REJECTIONS UNDER 35 U.S.C. § 101 ISSUE The issue presented by Appellants’ contentions is as follows: Did the Examiner err in relying on the machine-or-transformation test to reject claims 1, 3, and 7-9 as directed to non-statutory subject matter? ANALYSIS The Examiner finds as follows: The instant claims [1, 3, and 7-9] are neither positively tied to a particular machine that accomplishes the claimed method steps nor transform underlying subject matter, and therefore do not qualify as a statutory process. The method including steps of decoding, storing and displaying is broad enough that the claim could be completely performed mentally, verbally or without a machine nor is any transformation apparent. (Ans. 3-4.) The Examiner explains that “[w]hile the claims recite a series of steps or acts to be performed, a statutory ‘process’ under 35 U.S.C. [§] 101 must (1) be tied to particular machine, or (2) transform underlying subject matter (such as an article or material) to a different state or thing.” (Ans. 3 (emphasis added) (citing In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), aff’d but criticized sub nom. Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218 (2010)).) As pointed out by Appellants (App. Br. 7) the Supreme Court has held as follows: The machine-or-transformation test is not the sole test for patent eligibility under § 101. The Court's precedents establish that although that test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under § 101. Appeal 2011-013105 Application 10/318,295 5 Bilski v. Kappos, 130 S.Ct. at 3227. Accordingly, it was error for the Examiner to base the rejection of claim 1, 3, and 7-9 only on application of the machine-or-transformation test. Furthermore, claims 1, 3, and 7-9 are analogous to the claims at issue in Research Corp. Technologies Inc. v. Microsoft Corp., 627 F.3d 859, 865 (Fed. Cir. 2010), in that they “present[] functional and palpable applications in the field of [digital video] technology” (id. at 868). “[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” Id. at 869. Accordingly, we do not sustain the rejection of claims 1, 3, and 7-9 under 35 U.S.C. § 101. REJECTIONS UNDER 35 U.S.C. § 103(a) ISSUES Based on Appellants’ arguments, we discuss the rejections under 35 U.S.C. § 103(a) by reference to claims 1 and 7. The issues presented by Appellants’ contentions are as follows: Does the combination of WeeVas98 and Kim teach or suggest that “decoding the first picture and the second picture [wherein the second picture is after the first picture in rewind order,] further comprises motion compensating the first picture and second picture using originally encoded motion vectors,” as recited in claim 1? Does the combination of WeeVas98 and Hoang teach or suggest that Appeal 2011-013105 Application 10/318,295 6 “the prediction picture comprises a future prediction picture, and wherein the picture for display and the future prediction picture are displayed in a fast forward mode of operation,” as recited in claim 7? ANALYSIS Claim 1 Appellants contend as follows: WeeVas98 describes a "Reverse-Play Transcoding Algorithm" where Reverse-Play is achieved by reversing motion vectors. Thus, the combination of WeeVas98 and Kim does not teach “rewind order” and “wherein providing for display the first picture and the second picture further comprises decoding the first picture and the second picture, and wherein decoding the first picture and the second picture further comprises motion compensating the first picture and second picture using originally encoded motion vectors”. (App. Br. 10; see also Reply Br. 10-12.) Appellants’ argument is unpersuasive because it is not commensurate with the broadest reasonable interpretation of claim 1. Claim 1 merely recites that the originally encoded motion vectors are used to motion compensate the first and second pictures. However, the claim places no limitations on the manner in which the vectors are used, nor does the claim preclude manipulation of the encoded vectors as a part of “using” the vectors. Therefore, we construe “using” broadly to encompass employing any use whatsoever of the originally encoded motion vectors in motion compensation. In particular, we conclude claim 1 does not preclude “using the originally encoded motion vectors” from encompassing reversing the originally encoded motion vectors. Therefore, we agree with the Examiner’s findings. Accordingly, we sustain the rejection of claim 1; independent claim 4, which is argued Appeal 2011-013105 Application 10/318,295 7 together with claim 1 (App. Br. 11); and claims 3, 5, and 6, which depend variously from claims 1 and 4 and were not separately argued with particularity (id.). Claim 7 The Examiner finds that the combination of WeeVas98 and Kim teach or suggest all of the limitations of claim 7, except a fast forward mode of operation. (See Ans. 8-9.) The Examiner finds “Hoang discloses macroblocks coded in Slices that contain information used for fast-forward, fast-reverse and resynchronization in the event of transmission error.” (Ans. 8 (citing Hoang col.1, l. 66—col. 2, l. 54).) The Examiner concludes “[i]t would have been obvious to a person having ordinary skill in the art at the time the invention was made to use the information disclosed in Hoang in WeeVas98 because the information provided in Hoang would help WeeVas98 display the pictures correctly in fast-forward mode.” (Id.) Appellants contend “Hoang, and therefore, the combination of WeeVas98 and Hoang, fail [sic] to enable one of ordinary skill in the art how to perform a fast forward operation.” (App. Br. 12.) Appellants explain as follows: Although Hoang recites that “Each Slice [has] . . . other information such as that which can be used for fast-forward, fast reverse, resynchronization in the event of transmission error, or other picture presentation purposes”, Hoang does not teach how to use this infomration [sic] for fast forward, or fast reverse. For example, Hoang does not state which particular fields in the slice structure could be used. It is noted that the slice structure is defined in both the MPEG-2 and MPEG-4 standards, but it would not be readily apparent to one of ordinary skill in the art how the foregoing information can be used to achieve fast forward operation. (App. Br. 12 (quoting Hoang col. 2, ll. 7-13).) Appeal 2011-013105 Application 10/318,295 8 In determining obviousness under 35 U.S.C. § 103(a), “a reference . . . is prior art for all that it teaches.” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F2d 1547, 1551 (Fed. Cir. 1989). However, “[i]n order to render a claimed apparatus or method obvious, the prior art must enable one skilled in the art to make and use the apparatus or method.” Id. “[A] presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled.” In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). In order to demonstrate non-enablement, it is the Appellants’ burden to show that “undue experimentation would be required to perform the claimed invention based on [the cited prior art].” Id. at 1289. “[U]ndue experimentation is determined based on both the nature of the invention and the state of the art.” Id. at 1290. While an applicant must generally do more than state an unsupported belief that a reference is not enabling, and may proffer affidavits or declarations in support of his position, we see no reason to require such submissions in all cases. When a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance. In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013). We are unpersuaded of error. Appellants contend that “it would not be readily apparent to one of ordinary skill in the art how the . . . information [in Hoang] can be used to achieve fast forward operation.” (Ans. 12 (emphasis added).) However, Appellants’ conclusory attorney arguments do not address whether one of ordinary skill in the art could practice the invention of claim 7 without undue experimentation, see Antor, 689 F.3d at 1289, in view of the combined teachings of Hoang, WeeVas98, and Kim. Further, Appellants have not pointed to any evidence in the record that would support such an argument. Given the high level of skill in the Appeal 2011-013105 Application 10/318,295 9 video encoding and compression art, as evidenced, e.g., by WeeVas98, and Kim, we conclude, based the preponderance of the evidence, that Appellants have not provided persuasive argument or evidence to rebut the presumption that Hoang, when read in conjunction with WeeVas89 and Kim, enables a fast-forward mode. Accordingly, we sustain the rejection of claim 7; independent claim 11, which was argued together with claim 7 (App. Br. 13); and claims 8, 9, and 12-15, which depend variously, directly or indirectly, from claims 7 and 11 (id.).4 DECISION The rejection of each of the appealed claims is sustained on at least one of the grounds specified in the rejection appealed from. See 37 C.F.R. § 41.50(a)(1). Accordingly, the decision of the Examiner to reject claims 1, 3-9, and 11-15 is affirmed. 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 kme 4 Appellants and the Examiner discuss the enablement of fast forward operation by Appellants’ Specification. (See App. Br. 13; Ans. 14-15; Reply Br. 15.) However, as pointed out by Appellants (Reply Br. 15), the Examiner has not rejected claim 7 as not enabled under 35 U.S.C. § 112, first paragraph. Accordingly, that issue is not before us.