Ex Parte Jeon et al

Patent Trial and Appeal BoardOct 15, 2012

11907460 (P.T.A.B. Oct. 15, 2012)

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. 11/907,460 10/12/2007 Byeong Moon Jeon 6111-000004/US/DVH 5073 30593 7590 10/16/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER AHMED, SAMIR ANWAR ART UNIT PAPER NUMBER 2665 MAIL DATE DELIVERY MODE 10/16/2012 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 BYEONG-MOON JEON and YOON SEONG SOH ____________________ Appeal 2010-003249 Application 11/907,460 Technology Center 2600 ____________________ Before DEBRA K. STEPHENS, ERIC S. FRAHM, and JOHNNY A. KUMAR, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003249 Application 11/907,460 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1 and 2. Appellants state that claims 1 and 2 stand or fall together (App. Br. 9; Reply Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Appellants’ invention relates to a decoder for a moving picture coding system, and determining motion vectors (Spec. ¶¶ [0003]-[0005]). The decoder calculates a picture order count to determine the direction of the motion vectors (Fig. 2, steps S115 and S125). Exemplary independent claim 1 under appeal, with emphasis and bracketed matter added, reads as follows:1 1. An apparatus for determining motion vectors of a current block in a current picture, comprising: a decoder configured to [1] obtain first and second motion vectors of at least one block other than the current block, the other blocks neighboring the current block at one of a left, top and top right position; the decoder configured to [2] obtain a direction of the first and second motion vectors of the at least one neighboring block, [A] wherein the direction is obtained based on a comparison of a picture order count value of the current picture and the picture order count value of a reference picture referred by the at least one neighboring block; 1 We note that the first word in the second line of the last paragraph of claim 1 of the instant application recites “predication motion vectors” instead of “prediction motion vectors” (claim 1 (emphasis added)). We consider this typographical error as harmless for purposes of this appeal. Appeal 2010-003249 Application 11/907,460 3 the decoder configured to [3] determine first and second predication motion vectors of the current block using the first and second motion vectors of the at least one neighboring block based on the obtained directions and by applying a median operation to the first motion vectors of the at least one neighboring block and applying a median operation to the second motion vectors of the at least one neighboring block. The Examiner’s Rejections2 (1) The Examiner rejected claims 1 and 2 under 35 U.S.C. § 112, first paragraph, as failing to provide adequate written description of the claimed invention, i.e., failing to describe the decoder in such a way as to reasonably convey to one skilled in the art that the inventor had possession of the currently claimed invention at the time the application was filed. Ans. 4-5. The Examiner determines that the originally filed Specification and Drawings fail to show, describe, and/or provide written description support for an apparatus including a decoder (Ans. 3-5). (2) The Examiner rejected claims 1 and 2 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim what Appellants consider to be the invention. Ans. 5. The Examiner determines (Ans. 5) that the term “decoder” in claim 1 does not 2 The Examiner provisionally rejected claims 1 and 2 on the ground of non- statutory obviousness-type double patenting as being unpatentable over claims 17 and 28 of copending Patent Application No. 10/337,808 (Ans. 4). We decline to decide the appeal as to the provisional obviousness-type double patenting rejection and specify that the Examiner process the provisional obviousness-type double patenting rejections consistent with MPEP § 804. On the record before us, addressing the Examiner's provisional rejection would be premature. See Ex parte Moncla, No. 2009- 006448, 95 USPQ2d 1884, 1885 (BPAI June 22, 2010) (precedential). We therefore do not reach the Examiner's provisional obviousness-type double patenting rejections of claims 1 and 2. Appeal 2010-003249 Application 11/907,460 4 provide any structure, and no tangible hardware structure is defined in the claims. (3) The Examiner rejected claims 1 and 2 as being unpatentable under 35 U.S.C. § 103(a) over Text of Committee Draft of Joint Video Specification (ITU-T Rec. H.264 ISO/IEC 14496-10 AVC, Fairfax, VA (May 2002) (hereinafter, “H.264”) and Ward (US 6,909,743 B1). Ans. 6-8. For purposes of applying the references to the claims, the Examiner interprets claim 1 as reciting a decoder, and relies upon H.264 as teaching element [2][A] of claim 1 (see Ans. 6-8). Appellants’ Contentions3 (1) Appellants contend (App. Br. 27-30; Reply Br. 16-17) that the Examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 112, first paragraph, because an apparatus having a decoder is adequately supported by paragraph [0042] of the Specification, as well as page 12 of the originally filed parent and copending Patent Application No. 10/337,808. (2) With regard to the rejection of claims 1 and 2 under 35 U.S.C. § 112, second paragraph, as being indefinite, Appellants assert that claim 1 recites a decoder which has a structure well-known to those persons of ordinary skill in the art, thus claims 1 and 2 have a “tangible hardware structure,” e.g., a decoder which is embodied as a processor (App. Br. 10-12; Reply Br. 4-6). (3) Appellants contend (App. Br. 13-26; Reply Br. 7-15) that the Examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103(a) over the 3 Appellants do not provide separate patentability arguments for claim 2 rejected under 35 U.S.C. § 103(a) over H.264 and Ward, and instead argue this claim with claim 1, stating that claims 1 and 2 rise and fall together (see App. Br. 9; Reply Br. 3). Appeal 2010-003249 Application 11/907,460 5 combination of H.264 and Ward for numerous reasons, including that H.264 fails to teach or suggest element [2][A] of claim 1, “wherein the direction is obtained based on a comparison of a picture order count value of the current picture and the picture order count value of a reference picture referred by the at least one neighboring block.” 4 Issues on Appeal Based on Appellants’ arguments, the following issues are presented on appeal: (1) Did the Examiner err in determining that the originally filed Specification fails to reasonably convey to one of ordinary skill in the art that Appellants had possession of the claim limitation of an apparatus including a decoder, as set forth in claims 1 and 2? (2) Have Appellants shown that the Examiner erred in rejecting claims 1 and 2 as being indefinite for failing to recite any structure under § 112, second paragraph? (3) Did the Examiner err in rejecting claims 1 and 2 as being obvious because H.264 fails to teach or suggest element [2][A] as set forth in claim 1? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (App. Br. 10-30) and the Reply Brief (Reply Br. 4-17) that the Examiner has erred. We agree with Appellants’ 4 We recognize that Appellants’ arguments present additional issues. Because we were persuaded of error by this issue, that H.264 fails to teach or suggest element [2][A] of claim 1, we do not reach the additional issues as the issue regarding element [2][A] of claim 1 is dispositive of the appeal. Appeal 2010-003249 Application 11/907,460 6 conclusions regarding the § 112, first paragraph, new matter rejection as well as the obviousness rejection. With regard to the § 112, second paragraph, rejection, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 5), with the exception that we disagree with the Examiner’s statement (Ans. 5) that the Specification fails to provide support for the apparatus including a decoder, and find that Appellants’ Specification in copending Patent Application Serial No. 10/337,808 provides adequate support for a moving picture coding system including a decoder (Spec. 12:5- 14). With regard to the § 112, second paragraph, rejection we concur with the conclusions reached by the Examiner, and highlight and address specific findings and arguments for emphasis as follows. Issue (1): § 112, First Paragraph, Rejection We agree with Appellants (App. Br. 27-30; Reply Br. 16-17) that the originally filed Specification reasonably conveys to one of ordinary skill in the art that Appellants had possession of the claim limitation “[a]n apparatus . . . comprising: a decoder,” as recited in claim 1 on appeal. Page 12, lines 5-14 of the originally filed Specification in copending Patent Application No. 10/337,808 describes a “moving picture coding system” that includes a decoder. We conclude that the recited apparatus of claim 1 is supported by the disclosure of a moving picture coding system. Thus, Appellants’ originally filed Specification provides a written description supporting a decoder, and the use of the term “decoder” in claim 1 does not create new matter. Appeal 2010-003249 Application 11/907,460 7 Accordingly, we will not sustain the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 112, first paragraph. Issue (2): § 112, Second Paragraph, Rejection Appellants have not established that the Examiner erred in rejecting claims 1 and 2 under § 112, second paragraph, as being indefinite (see App. Br. 10-12). The Specification contains no description of what a “decoder” is, and merely describes it by what it does (e.g., a method of decoding; see Spec. ¶¶ [0042], [0044], and [0050]). In addition, Figures 1-5 of the instant application on appeal do not show any decoder, system, or apparatus. Appellants’ Figure 2 is a “process” performed by the decoder, and Figures 2- 5 are flow charts illustrating the motion vector calculation (Spec. ¶¶ [0033]- [0036]). As a result of describing throughout the Specification the functions and method steps performed by a decoder, the decoder of claim 1 can reasonably considered to be software. We agree with the Examiner (Ans. 10) that a decoder is not always hardware, and a person of ordinary skill in the art would not assume any tangible structure for the decoder recited in the instant application, including the moving picture coding system or decoder of the claims. Appellants have not established that one of ordinary skill in the art would know what tangible hardware structure represents the “decoder” recited in claim 1, therefore claim 1 (as well as claim 2 depending from claim 1) is indefinite for failing to define and particularly claim what Appellants consider to be their invention. Therefore, the Examiner is correct that there is no description of a tangible hardware structure that makes up the apparatus (Ans. 5), and we will sustain the § 112, second paragraph, rejection of claims 1 and 2. Appeal 2010-003249 Application 11/907,460 8 Issue (3): § 103(a) Rejection over H.264 and Ward We agree with Appellants’ contentions (App. Br. 7-15) that the disclosure in §§ 3.48-50, 3.5-3.7, 11.4.1, 11.5.1 of H.264 fails to describe obtaining a direction of a motion vector based on a comparison, as set forth in element [2][A] of claim 1. We also agree with Appellants’ contention (App. Br. 25-26; Reply Br. 14-15) that Ward also fails to perform a comparison in order to identify a motion vector direction. In view of the foregoing, the combination of H.264 and Ward fails to teach or suggest element [2][A] as set forth in claim 1. Accordingly, we find error in the Examiner’s obviousness rejection relying on H.264 as teaching or suggesting element [2][A] of claim 1, and we will reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) over the combination of H.264 and Ward. For similar reasons, and by way of dependency on claim 1, claim 2 falls with claim 1. CONCLUSIONS (1) The Examiner erred in determining that the originally filed Specification fails to reasonably convey to one of ordinary skill in the art that Appellants had possession of the claim limitation of an apparatus including a “decoder,” and rejecting claims 1 and 2 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (2) Appellants have not established that the Examiner erred in rejecting claims 1 and 2 as being indefinite for failure to recite any structure under § 112, second paragraph. Appeal 2010-003249 Application 11/907,460 9 (3) The Examiner erred in rejecting claims 1 and 2 as being obvious under 35 U.S.C. § 103(a), because the combination of H.264 and Ward fails to teach or suggest element [2][A], as set forth in claim 1. Appeal 2010-003249 Application 11/907,460 10 DECISION5 (1) The Examiner's § 112, first paragraph, new matter rejection is reversed. (2) The Examiner’s § 112, second paragraph, indefiniteness rejection is affirmed. 5 Should there be further prosecution of claims 1 and 2, we leave it to the Examiner to determine the appropriateness of provisionally rejecting claims 1 and 2 of the instant application (Application No. 11/907,460) on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 2 of copending Application No. 11/907,459. The claims are almost identical, except that (i) claim 1 of the instant application is drawn to an apparatus for determining motion vectors, while claim 1 of Application No. 11/907,459 is drawn to an apparatus for predicting a motion vector, and (ii) claim 1 of the instant application recites a “decoder configured to determine first and second predication motion vectors of the current block using the first and second motion vectors of the at least one neighboring block based on the obtained directions” (claim 1, last paragraph (emphasis added)), while claim 1 of Application No. 11/907,459 recites a “decoder configured to determine first and second prediction motion vectors of the current block based on the obtained directions” (claim 1 of Application No. 11/907,459, last paragraph). We also note that claims 1 and 2 of Application No. 11/907,465 is very similar to claims 1 and 2 of the instant application, with the exception that the last half of the third paragraph is different. Instead of applying a median operation as in claim 1 of the instant application, claim 1 of Application No. 11/907,465 recites “such that the first prediction motion vector of the current block has the obtained direction of the first motion vector of the neighboring block and the second prediction motion vector of the current block has the obtained direction of the second motion vector of the neighboring block.” Appeal 2010-003249 Application 11/907,460 11 (3) The Examiner’s § 103(a) rejection is reversed. 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). AFFIRMED msc