Ex Parte Fang et al

Patent Trial and Appeal Board

Dec 28, 2017

13831074 (P.T.A.B. Dec. 28, 2017)

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.
13/831,074 03/14/2013 Xue Fang GOGL-l 103-B 5639
124222 7590 01/02/2018
Google Technology Holdings LLC
c/o Young Basile Hanlon & MacFarlane, P.C.
3001 W. Big Beaver Road, Ste. 624
Troy, MI 48084
EXAMINER
OWENS, TSIONB
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
01/02/2018 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):
docketing @ youngbasile. com
audit @ youngbasile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XUE FANG and LIMIN WANG
Appeal 2017-007992
Application 13/831,0741
Technology Center 2400
Before: ALLEN R. MacDONALD, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants’ Brief (“App. Br.”) identifies Google Technology Holdings
LLC as the real party in interest. App. Br. 3.
Appeal 2017-007992
Application 13/831,074
CLAIMED SUBJECT MATTER
The claims are directed to video compression using a pulse code
modulation (“PCM”) mode for encoding and/or decoding selected portions
of a video stream. Spec. 25-27. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method comprising:
determining, by a computing device, a pulse code
modulation (PCM) flag that indicates whether a PCM mode can
be used to encode or decode a portion of video;
evaluating, by the computing device, a single conditional
statement once to determine if the PCM flag indicates the PCM
mode is enabled;
based on the evaluating of the single conditional
statement, when the PCM flag indicates the PCM mode is
enabled, performing:
encoding or decoding, by the computing device, a
first PCM parameter indicating a bit depth for representing
a PCM luma component of the portion of video;
encoding or decoding, by the computing device, a
second PCM parameter indicating a bit depth for
representing a PCM chroma component of the portion of
video;
encoding or decoding, by the computing device, a
third PCM parameter indicating a minimum block size for
one or more PCM luma coding blocks of the portion of
video;
encoding or decoding, by the computing device, a
fourth PCM parameter indicating a difference between the
minimum block size and a maximum block size for the one
or more PCM luma coding blocks of the portion of video;
and
encoding or decoding, by the computing device, a
fifth PCM parameter indicating whether a PCM loop filter
is disabled or enabled for the portion of video, wherein the
first PCM parameter, the second PCM parameter, the third
PCM parameter, the fourth PCM parameter, and the fifth
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Application 13/831,074
PCM parameter are encoded or decoded consecutively
without any other bits or syntax between the first PCM
parameter, the second PCM parameter, the third PCM
parameter, the fourth PCM parameter, and the fifth PCM
parameter in or from an encoded bitstream associated with
the portion of video.
App. Br. 11 (Claims Appendix).
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Narroschke et al. (US 2014/0036998 Al; pub. Feb. 6,
2014, hereinafter “Narroschke”) and Chen (US 2014/0023138 Al; pub. Jan.
23,2014). Final Act. 4.
ISSUES
First Issue: Do the “encoding or decoding” steps recited in
independent method claim 1 need to be performed under the broadest
reasonable interpretation of the claim?
Second Issue: Has the Examiner erred in finding Chen teaches or
suggests five PCM parameters which are decoded (claim 11) or encoded
(claim 16) “consecutively without any other bits or syntax between” them,
as recited in independent claims 11 and 16?
ANALYSIS
First Issue
Claims 1-20 are pending and rejected by the Examiner under 35
U.S.C. § 103(a) as being unpatentable over Narroshke and Chen. Appellants
argue for patentability of independent claims 1,11, and 16 based on two
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Application 13/831,074
limitations recited in the claim. Claim 1 is a process claims; claims 11 and
16 are device claims directed to a decoder and an encoder, respectively.
Appellants first contend the cited prior art does not teach or suggest PCM
parameters that “are encoded or decoded consecutively without any other
bits or syntax between” them. App Br. 7-9. Appellants also argue the
limitation of “a third PCM parameter indicating a minimum block size for
one or more PCM luma coding blocks of the portion of video” is not taught
or suggested by the prior art. App. Br. 9-10.
Before we consider the teachings of the prior art references, however,
we first address the issue of claim scope in light of this Board’s precedential
decision in Ex Parte Schulhauser, Appeal No. 2013-007848 (PTAB April
28, 2016) {“Schulhauser”). In Schulhauser, the Board held, when
construing a method claim according to its broadest reasonable
interpretation, conditional steps in process claims need not be carried out to
be within the scope of the claim. Schulhauser at 8.
Here, claim 1 is a method claim, and the limitations relied upon by
Appellants for patentability are conditional. That is, the recited “encoding
and decoding” steps in claim 1 are only performed “when the PCM flag
indicates the PCM mode is enabled.” App. Br. 11 (Claims Appendix).
According to the broadest reasonable interpretation under Schulhauser, in
situations where this condition is not met (i.e., the claim does not positively
recite the occurrence of the condition), the “encoding and decoding” steps
are not necessarily performed, which is consistent with Appellants’
Specification and Drawing. See Figs. 5A, 5B. As such, when the PCM flag
indicates the PCM mode is not enabled, claim 1 is met by merely carrying
out the prior two steps of “determining” and “evaluating.”
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Application 13/831,074
Appellants do not contend the “determining” and “evaluating” steps
are not taught in the cited references. Appellants’ arguments for
patentability of claim 1 are based on the alleged absence of the conditional
process steps. As such, Appellants’ arguments are not commensurate with
the broadest reasonable interpretation of claim 1, and are therefore,
unpersuasive. Accordingly, we sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a) together with the rejections of dependent claims 2-
10 which are not argued separately.
Because we sustain the rejection of claim 1 relying on a different
claim interpretation than applied by the Examiner, we designate our
affirmance of the rejection of this claim as well as dependent claims 2-10 as
a NEW GROUND OF REJECTION so as to provide Appellants with a full
and fair opportunity to response to the thrust of the rejections. This decision
should not be construed to imply that, in all instances in which the Board
affirms a rejection based on a claim interpretation that differs from the claim
interpretation applied by the examiner, the thrust of the rejection is changed
so as to warrant designation of the affirmance as a new ground of rejection.
Rather, in this particular case, in light of the scope of the arguments
presented by Appellants, the Board deems it, in the interests of fairness to
Appellants, appropriate to designate the affirmance as a new ground of
rejection.
Second Issue
Although Schulhauser dictates the broad construction of method claim
1, it also held that same rationale does not necessarily apply to system or
device claims, such as Appellants’ claims 11 and 16:
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The broadest reasonable interpretation of a system claim having
structure that performs a function, which only needs to occur if a
condition precedent is met, still requires structure for performing
the function should the condition occur. This interpretation of
the system claim differs from the method claim because the
structure ... is present in the system regardless of whether the
condition is met and the function is actually performed. Unlike
[the method claim], which is written in a manner that does not
require all of the steps to be performed should the condition
precedent not be met, [he system claim] is limited to the structure
capable of performing all the recited functions.
Schulhauser at 14.
Therefore, in assessing the rejection of claims 11 and 16, because
these claims recite structure that performs a function (a medium comprising
instructions), we must decide whether the Examiner erred in finding the
combination of Narroshke and Chen teach or suggest five PCM parameters
which are decoded (claim 11) or encoded (claim 16) “consecutively without
any other bits or syntax between” them, as argued by Appellants. In
rejecting the independent claims, the Examiner finds Chen teaches the
recited “consecutively without any other bits or syntax between.” Final Act.
2-3 (citing Chen Abstract, 8-10, 64-66, 91-93, and Tables 1-4).2
Appellants argue the Examiner erred because “Chen expressly indicates that
these syntax elements are encoded or decoded with other bits or syntax
between them.” App. Br. 8. Appellants specifically identify syntax inserted
between the second PCM parameter
pcm sample bit depth chroma minusl, and the third PCM parameters
log2_min_pcm_coding_block_size_minus3, shown in Table 4 of Chen in
support of their argument. We agree with Appellants.
2 The Examiner makes no finding that Narroshke teaches this limitation.
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Although Narroshke and Chen teach the five recited PCM parameters,
we discern no teaching or suggestion in the references that the five
parameters are coded “consecutively without any other bits or syntax
between,” as recited in claims 11 and 16. The Examiner does not explain
how the various syntax elements shown in Chen correspond to the recited
PCM parameters, nor does the Examiner identify any consecutive syntax
elements or bits which correspond to the disputed limitation. Accordingly,
we agree with Appellants that the Examiner has erred in finding Narroshke
and Chen teach or suggest the five recited PCM parameters being encoded
or decoded “consecutively without any other bits or syntax between” them,
and we do not sustain the rejection of claims 11 and 16.
Summary
For the reasons discussed above, we affirm the Examiner’s rejection
of independent claim 1 claims 2-10 which depend therefrom. We reverse
the rejection of independent claims 11 and 16, as well as the rejection of
claims 12-15 and 17-20 which depend therefrom.
DECISION
We affirm the Examiner’s rejection of claims 1-10.
We reverse the Examiner’s rejection of claims 11-20.
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.
§ 1.136(a)(l)(iv).
This decision contains new grounds of rejection of claims 1-10
pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) of 37 C.F.R. provides
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“[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record. . . .
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.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, § 41,501b)
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