Ex Parte Kato et al

Patent Trial and Appeal Board

Nov 20, 2012

10882838 (P.T.A.B. Nov. 20, 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.
10/882,838 07/01/2004 Sadaatsu Kato 9683/196 3327
27879 7590 11/21/2012
INDIANAPOLIS OFFICE 27879
BRINKS HOFER GILSON & LIONE
201 NORTH ILLINOIS STREET
CAPITAL CENTER, SUITE 1100
INDIANAPOLIS, IN 46204-4220
EXAMINER
PRINCE, JESSICA MARIE
ART UNIT PAPER NUMBER
2485
MAIL DATE DELIVERY MODE
11/21/2012 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 SADAATSU KATO, CHOONG SENG BOON,
TSUTOMU HORIKOSHI, and TAKASHI SUZUKI
____________

Appeal 2010-006595
Application 10/882,838
Technology Center 2400
____________

Before JOHN A. JEFFERY, JAMES B. ARPIN, and DAVID C. MCKONE,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

Opinion Dissenting-in-part filed by Administrative Patent Judge MCKONE.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

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STATEMENT OF THE CASE
Appellants’ invention receives and transmits encoded motion picture
data by determining an encoding condition based on a changed number of
motion picture transmitting devices. See generally Abstract. Claim 1 is
illustrative:
1. A motion picture receiving device, comprising:
an image data receiving unit configured to receive encoded image
data;
a decoding unit configured to decode the image data received by the
image data receiving unit;
an output unit configured to output the image data decoded by the
decoding unit; and
a control unit configured to determine an encoding condition of image
data by communication with a motion picture transmitting device which is a
source of the image data, and the control unit further configured to control
the decoding unit to enable decoding of the image data encoded in
accordance with the encoding condition;
wherein, when a number of motion picture transmitting devices
changes, the control unit is configured to determine the encoding condition
based on the changed number of the motion picture transmitting devices.

THE REJECTIONS
1. The Examiner rejected claims 1, 4-7, and 9-12 under 35 U.S.C.
§ 103(a) as unpatentable over Suh (US 6,798,915 B2; Sept. 28, 2004 (filed
Jan. 30, 2001)), Appellants’ Admitted Prior Art (AAPA), and “well known
prior art” (evidenced by Kadono (US 2008/0069241 A1; Mar. 20, 2008; eff.
filed Apr. 29, 2003)). Ans. 4-10.1

1 Throughout this opinion, we refer to (1) the Appeal Brief filed August 14,
2009 (“App. Br.”); (2) the Examiner’s Answer mailed October 29, 2009
(“Ans.”); and (3) the Reply Brief filed December 29, 2009 (“Reply Br.”).
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2. The Examiner rejected claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Suh, AAPA, “well know[n] prior art” (evidenced by
Kadono), and Yasuhiro (JP 07-236136 A; Sept. 5, 1995).2 Ans. 10-13.
3. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Suh, AAPA, “well known prior art” (evidenced by
Kadono), and Kurauchi (US 2003/0223494 A1; Dec. 4, 2003). Ans. 13-14.
4. The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a)
as unpatentable over Suh and AAPA. Ans. 14-16.3

THE OBVIOUSNESS REJECTION OVER SUH, AAPA, AND KADONO
The Examiner finds that Suh’s Figure 1 discloses a motion picture
receiving device with every recited feature of representative claim 1
including a “decoding unit” (image signal decoding means 14); an “output
unit” (display means 15); and a “control unit” (first and second control
means 13 and 16) configured to determine an image data “encoding
condition” (network state) via the first control means’ communication with a
“motion picture transmitting device” (screen size determining means 11)
which is an image data source. Ans. 4-5, 16-30. According to the

2 Although the Examiner cites Yasuhiro’s filing date of February 1994 (Ans.
3), Yasuhiro was published on September 5, 1995, as indicated. We adopt
the Examiner’s and Appellants’ nomenclature of referring to this reference
by the first-named inventor’s first name (Yasuhiro Takahashi).
3 Despite Appellants omitting the Examiner’s separate rejection of claims 11
and 12 over Suh and AAPA in the Brief’s “Grounds of Rejection to be
Reviewed on Appeal” section (App. Br. 7) and the Examiner incorrectly
confirming this statement as correct (Ans. 2), we nonetheless treat these
errors as harmless, for we consider Appellants’ arguments regarding claims
11 and 12 (App. Br. 28-32) to apply to both rejections because they both rely
on Suh and AAPA.
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Examiner, Suh’s “control unit” controls the decoding unit via the first and
second control means to enable decoding image data according to the
encoding condition. Ans. 4, 30-31.
Although the Examiner acknowledges that Suh lacks (1) an image
data receiving unit configured to receive encoded image data, and (2) the
control unit configured to determine the encoding condition based on a
changed number of motion picture transmitting devices, the Examiner cites
Kadono for teaching limitation (1), and AAPA for teaching limitation (2) in
concluding that the claim would have been obvious. Ans. 4-5, 16-31. In
reaching this conclusion, the Examiner cites Paragraph 0007 of the
Specification in the rejection as corresponding to the AAPA, but further
cites and quotes Paragraphs 0008 and 0009 as likewise constituting admitted
prior art in the Answer’s Response to Arguments section. Compare Ans. 4-
5 with Ans. 17-22, 24-29.
Appellants argue that the Examiner’s newly-cited Paragraphs 0008
and 0009 are not prior art—let alone admitted prior art—because the
passages merely describe a problem which the present invention can solve.
Reply Br. 2-4. Nevertheless, Appellants also argue that the cited prior art
fails to teach or suggest a control unit configured to (1) determine an
encoding condition (a) based on a changed number of motion picture
transmitting devices (App. Br. 8-13) and (b) by communication with a
motion picture transmitting device which is an image data source (App. Br.
15-16) and (2) control a decoding unit to enable decoding image data
encoded according to the encoding condition (App. Br. 13-15; Reply Br. 4-
6). Appellants further argue that the Examiner failed to articulate a
sufficient rationale to combine Suh with Appellants’ Paragraph 0007 to
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support an obviousness conclusion. App. Br. 12-13. Appellants also argue
various limitations of other claims, which are summarized below.

ISSUES
I. Under § 103, has the Examiner erred by finding that Suh, AAPA,
and Kadono, collectively, would have taught or suggested:
(1) a control unit configured to:
(a) determine an encoding condition:
(i) based on a changed number of motion picture
transmitting or receiving devices and
(ii) by communication with motion picture transmitting
or receiving devices which are image data sources and
destinations, respectively, and
(b) control a decoding unit to enable decoding image data
encoded according to the encoding condition as recited in
claims 1 and 9 (and commensurately recited in claims 11 and
12)? This issue turns on whether Appellants have persuasively
rebutted the Examiner’s finding that Paragraphs 0008 and 0009
of Appellants’ Specification constitute admitted prior art.
(2) a resource information receiving unit configured to receive
resource information from each motion picture transmitting device, and a
storage unit configured to store the received resource information, as recited
in claim 6?
II. Is the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
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ANALYSIS
Claims 1, 4, 5, and 11
We begin by addressing the key threshold question in this appeal,
namely whether Appellants have persuasively rebutted the Examiner’s
finding that Paragraphs 0008 and 0009 of Appellants’ Specification
constitute admitted prior art. As noted above, the Examiner cites only
Paragraph 0007 of the Specification in the rejection as corresponding to the
AAPA, but adds that Paragraphs 0008 and 0009 likewise constitute admitted
prior art in the Answer’s Response to Arguments section. Compare Ans. 4-
5 with Ans. 17-22, 24-29. Despite this inconsistency,4 we nonetheless find
that Appellants have not persuasively rebutted this finding on this record.
First, Paragraphs 0007 through 0009 are within the section of the
Specification entitled “RELATED ART.” See Spec. ¶¶ 0003-12. Although
this label does not say “PRIOR ART,” and despite Appellants’ arguments to
the contrary (Reply Br. 2-4), we see no error in the Examiner’s finding that
Paragraphs 0008 and 0009 constitute admitted prior art where, as here,
Appellants provide no persuasive evidence to rebut this presumption apart

4 Although the Examiner cites Paragraphs 0008 and 0009 for the first time in
the Response to Arguments section of the Answer, we find no harmful error
here, for the Examiner’s citations to the two paragraphs immediately
following Paragraph 0007 in the “RELATED ART” section cited in the
rejection do not change the overall thrust of the rejection to constitute a new
ground of rejection. See In re Kronig, 539 F.2d 1300, 1302-03 (CCPA
1976). Our conclusion is bolstered by the fact that Appellants did not
petition this inconsistency as an alleged new ground of rejection under 37
C.F.R. 1.181(a) according to MPEP 1207.03(IV), but, instead, filed a Reply
Brief addressing the Examiner’s additional citations.
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from unsubstantiated conclusory assertions which are entitled to little
probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
To be sure, related art is not prior art if the associated subject matter
is the inventor’s own work—a principle that applies even for subject matter
labelled “PRIOR ART.” See MPEP § 2129(I) (citing Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988); Reading & Bates
Constr. Co. v. Baker Energy Res. Corp., 748 F.2d 645, 650 (Fed. Cir.
1984)).
The crucial test, then, is whether disclosed subject matter, identified
as “prior art,” “related art,” or otherwise is the inventor’s own work. Id.
Where, as here, the record lacks a satisfactory explanation of why the
subject matter of Paragraphs 0008 and 0009 constitutes Appellants’ own
work, the Examiner may find to the contrary. See MPEP § 2129(I) (noting
that, absent a credible explanation, Examiners should treat subject matter
identified as “prior art” as the work of another).5

5 Accord Ex parte Lee, No. 2006-2328, 2006 WL 4075454, at *21 (BPAI
2006) (non-precedential) (“[W]e presume that the figures labeled
‘Background Art’ are ‘Prior Art.’ Appellant can overcome this presumption
by an affidavit or declaration of the inventor addressing the legal tests for
‘prior art’ and evidence of knowledge of the level of skill in the art;
arguments of counsel will not be persuasive.”); Ex parte Shirley, No. 2009-
2352, 2009 WL 1359080, at *11 (BPAI 2009) (non-precedential) (“When a
review of the record as a whole reasonably implies that—or at least raises a
reasonable question of whether—a particular disclosure or statement
constitutes a prior-art admission, an Examiner may use such a disclosure or
statement in formulating prior-art rejections . . . . even if the specific words
‘prior art’ are not expressly used verbatim.”). Cf. In re Ryan, 480 F.2d 1388,
1392 (CCPA 1973) (concluding that using water to eliminate a source of
sulfate precipitates in a regeneration column would have been obvious given
the known source of the problem, namely sulfate precipitation).
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To the extent that Appellants argue that the label “RELATED ART”
somehow avoids the presumption that the associated subject matter
constitutes prior art that argument is unavailing. If anything, the
Specification suggests otherwise. First, Appellants have not shown—nor do
we find—anything in the “RELATED ART” section, let alone Paragraphs
0008 and 0009, indicating that the associated subject matter is Appellants’
own work. Second, Appellants’ Paragraph 0013, which begins the
“DISCLOSURE OF THE INVENTION” section, notes the present invention
solves “the above problem”: a problem which refers to that discussed in the
preceding “RELATED ART” section. Spec. ¶ 0013 (emphasis added).
Notably, the next paragraph expressly states that the present invention’s
motion picture receiving device is intended “[t]o solve the problem of the
prior art . . . .” Spec. ¶ 0014 (emphases added). Appellants’ word choice
here is telling: not only do Appellants clearly and unambiguously refer to the
prior art, but actually refer to “the problem of the prior art” which suggests
that this problem is the same problem described in Paragraph 0013 which, in
turn, refers to the problem in the “RELATED ART” section (i.e., “the above
problem”). It is apparently this problem that Appellants refer to in
connection with Paragraphs 0008 and 0009: a problem that the present
invention seeks to solve. See Reply Br. 3.
Appellants’ Specification notes that, when a third communication
terminal joins and participates in a motion picture communication already
occurring between two terminals, each participating terminal needs to
receive two series of motion picture data from the second and third
terminals, respectively, and to decode and display received motion picture
data. Spec. ¶ 0008. “However, in initiating three-way communication, it is
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necessary for the first and second communication terminals to change
encoding conditions determined at the start of their two-way
communication.” Spec. ¶ 0009 (emphases added).
The clear import of this discussion is that the first and second
terminals determine encoding conditions (1) when they begin
communicating with each other,6 and (2) when a third terminal joins that
communication. The latter determination is implicit in changing encoding
conditions to initiate three-way communication, because the first and second
terminals must not only determine the previously-determined encoding
condition to change it, but also determine the updated encoding condition
resulting from this change. See id.
This process allegedly causes a problem in that the first and second
terminals cannot simultaneously maintain communication with each other
while commencing communication with the third terminal by changing
encoding conditions—a problem exacerbated by using terminals having low
encoding/decoding capabilities. Spec. ¶ 0009. These drawbacks are
illustrated in an exemplary scenario in Paragraph 0010 in which introducing
a third terminal into a communication between two terminals results in (1)
the first terminal’s inability to write all received data into the decoder’s input
buffer (resulting in inaccurate decoding), and (2) exceeding the maximum
bit rate. Spec. ¶ 0010.

6 Accord Spec. ¶ 0006 (“For transmitting/receiving a motion picture between
two communication terminals, each of the communication terminals must be
able to determine compatible communication conditions including, for
example, a motion picture encoding algorithm . . . and other relevant
conditions relating to the encoding and decoding.” (emphases added)).
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Despite these drawbacks, the fact remains that it is known that the first
and second terminals must determine encoding conditions to change them to
initiate three-way communication, as noted above. See Spec. ¶ 0009.
Therefore, this knowledge teaches or suggests a control unit that can
determine an encoding condition based on a changed number of motion
picture transmitting devices, as claimed. To the extent that this knowledge
belongs only to Appellants to constitute their own work has not been
evidenced on this record; rather, the record suggests otherwise.
Accordingly, the Examiner’s finding that the subject matter described in
Paragraphs 0008 and 0009 constitutes admitted prior art is reasonable on this
record. We, therefore, find no error in the Examiner’s position to the extent
that providing a control unit that can determine an encoding condition based
on a changed number of motion picture transmitting devices in Suh would
have been obvious in view of AAPA, for such an enhancement predictably
uses prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).7
Nor do we find error in the Examiner’s reliance on Suh for at least
suggesting a control unit configured to determine an encoding condition by
communication with a motion picture transmitting device which is an image

7 Despite the dissent’s assertions (Dissent Op. at 20-21), we merely conclude
that providing a control unit that can determine an encoding condition based
on a changed number of motion picture transmitting devices in Suh would
have been obvious in view of the known technique of determining encoding
conditions based on a changed number of devices—a technique that is an
implicit aspect of changing encoding conditions discussed in Paragraph 0009
on which the Examiner relies. This is not a new ground of rejection as the
dissent asserts (Dissent Op. at 21), but rather based on reasonable inferences
drawn from the passages cited and quoted by the Examiner.
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data source as claimed. As the Examiner explains (Ans. 25-26, 29-30),
Suh’s input image signal is input to screen size determining means 11 which
bidirectionally communicates with first control means 13 as shown by the
double arrows between these components in Figure 1. To be sure, the first
control means outputs control signals which determine screen size by
evaluating the network 10’s state, and the screen size determining means (1)
determines screen size according to control signals, and (2) outputs that size
to image signal encoding means 12. Suh, col. 3, ll. 9-18; col. 3, l. 45 – col.
4, l. 25; Figs. 1-2. Nevertheless, we find no error in the Examiner’s position
that the screen size determining means effectively functions as a “source” of
image data.
First, the screen size determining means outputs image data associated
with its inputted image signal to the image signal encoding means, as shown
in Figure 1 (and, therefore, functions as an image data “source” with respect
to the encoding means). Leaving this aside, however, Figure 1 at least
suggests that some sort of image data also is communicated from the screen
size determining means to the first control means as part of the bidirectional
communication between those two components, as the Examiner indicates.
Ans. 25-26, 29-30. In that sense, then, the screen size determining means
functions as a source of image data, at least with respect to the control unit,
and the control unit determines an image data encoding condition that is not
only directly tied to screen size (see Suh, Fig. 2 (steps 21-23); Ans. 30), but
also based, at least in part, on communication with the screen size
determining means. Appellants’ arguments (App. Br. 13-15; Reply Br. 4-6)
are unavailing and not commensurate the scope of the claim.
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Nor are we persuaded of error in the Examiner’s position (Ans. 4, 31)
to the extent that the second control means 16 of Suh’s “control unit”—
which the Examiner maps to both the first and second control means 13 and
16 in Suh (Ans. 31)—controls the image signal decoding means 14 (i.e., the
“decoding unit”) according to the encoding condition, as claimed.
Appellants’ contention that Suh’s two controllers separated by a network is
not a motion picture receiving device (App. Br. 15-16) is unavailing,
because it is not commensurate with the scope of the claim and, in any
event, ignores the components’ receiving image data on both sides of Suh’s
network. See Suh, col. 3, l. 9 – col. 4, l. 26; Figs. 1-2.
Lastly, we are not persuaded by Appellants’ argument that the
Examiner failed to articulate any rationale sufficient to support an
obviousness conclusion. App. Br. 12-13. The Examiner’s stated rationale to
combine the references, namely, to efficiently transmit encoded image data
(Ans. 5, 29), has at least some rational underpinning in connection with
determining associated encoding conditions in the disclosed image display
apparatus and justifies the Examiner’s obviousness conclusion.
We, therefore, are not persuaded that the Examiner erred in rejecting
representative claim 1 and claims 4, 5, and 11 which are not separately
argued with particularity.8

8 Although Appellants nominally argue claim 11 separately (App. Br. 28-30;
Reply Br. 9), Appellants reiterate arguments similar to those made for claim
1, which we find unpersuasive for the reasons noted previously.
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Claims 6 and 7
We do not, however, sustain the Examiner’s rejection of claim 6
reciting, in pertinent part, a resource information receiving unit configured
to receive resource information from each motion picture transmitting
device, and a storage unit configured to store the received resource
information. To be sure, Appellants’ “RELATED ART” section of the
Specification indicates that using the H.264/AVC encoding algorithm
necessitates storing reference frames in memory of an encoder or decoder
(Spec. ¶ 0005), as the Examiner indicates. Ans. 6, 36. But even assuming
that these reference frames constitute “resource information,” as the
Examiner suggests, we still fail to see how this applies to the recited
resource information receiving unit which the Examiner equates to Suh’s
second control means 16 which must be configured to receive resource
information from each motion picture transmitting device. This resource
information also must be used by the control unit to determine the encoding
condition at each of those devices as claimed. Moreover, it is not clear how
this teaching applies to the known encoding condition determination that the
Examiner relies upon in Appellants’ Paragraph 0009 noted above. The
weight of the evidence on this record, therefore, favors Appellants’ position.
App. Br. 18-21; Reply Br. 8.
We, therefore, are persuaded that the Examiner erred in rejecting
claim 6 and claim 7, which depends on claim 6. Because this issue is
dispositive regarding our reversing the rejection of these claims, we need not
address Appellants’ other arguments regarding claim 7. App. Br. 21-22;
Reply Br. 8.

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Claims 9, 10, and 12
We do, however, sustain the Examiner’s rejection of independent
claims 9 and 12. Ans. 8-9, 15-16. Claim 9 is similar to claim 1 except that
it recites a motion picture transmitting device and a control unit that is
configured to determine an encoding condition (i) based on a changed
number of motion picture receiving devices, and (ii) by communication with
at least one motion picture receiving device which is an image data
destination. Claim 12 recites an encoding method with commensurate
limitations.9
Despite these emphasized differences, we are unpersuaded of error in
the Examiner’s position (Ans. 8-9, 15-16, 40-47, 49-51) essentially for the
reasons indicated regarding claim 1. First, the Examiner reasonably finds
that the subject matter disclosed in Appellants’ Paragraphs 0008 and 0009
constitutes admitted prior art, as noted previously. Second, the cited
passages at least suggest that communications terminals not only each have
image data transmit and receive capabilities to function as image data
transceivers, but that they also have encoding condition determination
capabilities as previously indicated. Appellants’ argument regarding
Paragraph 0007 (App. Br. 24-28; Reply Br. 9) does not persuasively rebut

9 Notably, claim 12 recites updating the encoding condition based on the
changed number of the one or more motion picture transmitting devices
unlike claim 9’s similar determination based on the changed number of
motion picture receiving devices. Leaving aside the lack of antecedent basis
for “the one or more motion picture transmitting devices” in claim 12
(emphases added), to the extent that Appellants’ argument is based on this
distinction between claim 9 and 12 (see App. Br. 31-32), we are
unpersuaded by these arguments for the reasons indicated in the opinion.
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the Examiner’s reliance on the collective teachings of AAPA (which
includes Appellants’ Paragraphs 0008 and 0009) and Suh, as noted above.
We, therefore, are not persuaded that the Examiner erred in rejecting
(1) claim 9; (2) claim 12 which recites commensurate limitations; and (3)
claim 10 which is not separately argued with particularity.

THE OBVIOUSNESS REJECTION OVER SUH, AAPA, KADONO, AND YASUHIRO
The Examiner acknowledges that Suh, AAPA, and Kadono lack a
control unit configured to determine the encoding condition based on the
decoding unit’s decoding capacity recited in claim 2, but cites Yasuhiro for
teaching this feature in concluding that the claim would have been obvious.
Ans. 10-13, 32.
Appellants argue that the Examiner’s reliance on Yasuhiro is
misplaced because Yasuhiro’s channel capacity reservation is unrelated to a
device’s decoding capacity. App. Br. 16-17; Reply Br. 6. Appellants also
argue limitations of claim 3 noted below. App. Br. 17-18; Reply Br. 7-8.

ISSUES
Under § 103, has the Examiner erred by finding that Suh, AAPA,
Kadono, and Yasuhiro, collectively, would have taught or suggested a
control unit configured to determine the encoding condition of image data:
(1) based on the decoding unit’s decoding capacity, as recited in
claim 2?
(2) by communication with one or more motion picture transmitting
devices based on a decoding capacity available for each motion picture
transmitting device after updating the encoding condition responsive to an
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increased number of motion picture transmitting devices, as recited in
claim 3?

ANALYSIS
Claim 2
We do not sustain the Examiner’s rejection of claim 2, which recites a
control unit configured to determine the encoding condition based on the
decoding unit’s decoding capacity. The Examiner’s reliance on Yasuhiro in
this regard (Ans. 10-11, 32) is unavailing. Although Yasuhiro dynamically
changes (1) assigned bandwidths of each moving image by recalculating
window depth, exposure ratio, etc., and (2) encoding speed in an image
transmission system (Yasuhiro, Abstract; ¶¶ 0019-25; Figs. 1-2), the
Examiner has not shown how this functionality determines encoding
conditions based on a decoding unit’s decoding capacity, as claimed.
Although the Examiner cites Appellants’ Paragraph 0009 in this regard
(Ans. 32), the Examiner has not explained how this known encoding
condition determination is based on the decoding unit’s capacity, let alone
how Yasuhiro’s bandwidth allocation functionality applies to the known
encoding condition determination in Appellants’ Paragraph 0009. We will
not speculate in that regard here in the first instance on appeal.
We, therefore, are persuaded that the Examiner erred in rejecting
claim 2.

Claim 3
We likewise reverse the Examiner’s rejection of claim 3, which
recites, in pertinent part, a control unit configured to determine the encoding
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condition of image data by communication with one or more motion picture
transmitting devices based on a decoding capacity available for each motion
picture transmitting device after updating the encoding condition responsive
to an increased number of motion picture transmitting devices. As noted in
connection with claim 2, the Examiner’s reliance on Yasuhiro and AAPA
for teaching determining encoding conditions based on decoding capacity is
unavailing, as is the Examiner’s additional reliance on Yasuhiro’s
calculation of overlapping state and exposure ratio in Paragraphs 0011 and
0012 (Ans. 12-13, 32), because Yasuhiro is silent regarding decoding
capacity as Appellants indicate. Reply Br. 7-8. Leaving aside the fact that
the encoding condition must be determined after it is updated responsive to
an increased number of transmitting devices—a temporal requirement that
the Examiner likewise fails to show on this record—the Examiner has still
not shown how encoding conditions are determined based on decoding
capacity, as claimed.
We, therefore, are persuaded that the Examiner erred in rejecting
claim 3.

THE OBVIOUSNESS REJECTION OVER SUH, AAPA, KADONO, AND KURAUCHI
Because the Examiner has not shown that Kurauchi cures the
deficiencies noted above regarding claim 6 from which claim 8 depends (see
Ans. 13-14, 39-40), we reverse the obviousness rejection of claim 8 for
similar reasons. We, therefore, need not address Appellants’ separate
arguments regarding claim 8. App. Br. 23-24; Reply Br. 8.

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THE OBVIOUSNESS REJECTION OVER SUH AND AAPA
For the reasons indicated previously regarding the first rejection of
claims 11 and 12, we likewise sustain the Examiner’s rejection of those
claims over Suh and AAPA. Ans. 14-16.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1, 4, 5, and
9-12, but erred in rejecting claims 2, 3, and 6-8.

ORDER
The Examiner’s decision rejecting claims 1-12 is affirmed-in-part.
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-IN-PART
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MCKONE, Administrative Patent Judge, DISSENTING-IN-PART:

I join the majority in reversing the Examiner’s obviousness rejections
of claims 2, 3, and 6-8. But I respectfully dissent from the majority’s
affirming the obviousness rejections of claims 1, 4, 5, and 9-12.
The majority states that the “key threshold question” in this appeal is
whether Appellants have rebutted the Examiner’s finding that Paragraphs
0008 and 0009 are admitted prior art. Maj. Op. 6. That is not what I
understand the crux of this case to be. If these paragraphs describe the state
of the art, then they are admissions of the state of the art. Rather, the key
questions in this case are what Paragraphs 0008 and 0009 of Appellants’
Specification teach and what did the Examiner find. I do not consider these
paragraphs to be describing the state of the art, nor do I believe that the
Examiner adequately articulated a rejection to that effect.
Appellants contend that Paragraphs 0008 and 0009 “are simply
describing a problem which the present invention can be configured to
solve.” Reply. Br. 3. This position has ample support in the language of
Paragraph 0009, which states, inter alia, that changing the encoding
conditions upon the addition of a third party to a two-way communication
“gives rise to a problem in that, the first and second communication
terminals are unable to simultaneously maintain communication with each
other while commencing communication with the third terminal by changing
encoding conditions.” Spec. ¶ 0009. This is a statement of a problem
presented by the state of the art, not an admission that a person of ordinary
skill in the art would have known how to solve it.
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The Examiner’s position is not as clear. As the majority points out,
the Examiner’s grounds of rejection do not cite Paragraphs 0008 and 0009
(nor does the Final Rejection). See Ans. 4-5. They are first introduced in
the Examiner’s Response to Argument. See Ans. 18-19. Upon quoting the
language, without more, the Examiner concludes “it is clear to the Examiner
that Suh (modified by AAPA) disclose to determine the encoding conditions
when the number of communication terminals changes.” Ans. 19.
From this, the majority concludes that the Examiner finds that
changing encoding conditions to initiate three-way communications is
“implicit,” Maj. Op. at 9, and that “it is known that the first and second
terminals must determine encoding conditions to change them to initiate
three-way communication . . . ,” Maj. Op. at 10. Respectfully, these are
findings of the Board – the Examiner never made such findings.
The majority also treats the Examiner’s belated invocation of
Paragraphs 0008 and 0009 as “no harmful error” because “the Examiner’s
citations to the two paragraphs immediately following Paragraph 0007 . . .
do not change the overall thrust of the rejection to constitute a new ground
of rejection.” Maj. Op. 6, n.4. I respectfully disagree. Paragraph 0007
discusses a workstation displaying a plurality of motion pictures received
from other terminals. See also Yasuhiro (the reference discussed in Spec. ¶
0007), at ¶ 0020. Paragraph 0009, in contrast, describes communications
between devices with “low encoding/decoding capability,” such as mobile
telephones. It does not follow that the prior art workstations of Paragraph
0007 would suffer from the same problem discussed in Paragraph 0009 for
mobile telephones, or benefit from the same solution. The Examiner does
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not explain why the technology of Paragraph 0007 would require a change
in encoding conditions upon the addition of another motion picture.
The problem is exacerbated by the Examiner’s failure to explain the
rejection. The Examiner appears to concede (or at least fails to contest) that
Suh in combination with Kadona and Paragraph 0007 does not render the
subject claims obvious. See Ans. 17-18. Yet in turning to Paragraph 0009,
is the Examiner contending that a skilled artisan would have modified the
technology of Paragraph 0007 per the description in Paragraph 0009? If so,
the Examiner should have provided some explanation, with rational
underpinning, as to why two non-analogous technologies would have been
combined and further pieced together with Suh (which, like Paragraph 0007,
was not concerned with device decoding capacity). Or is the Examiner
contending that Suh would simply be combined with Paragraph 0009, with
Paragraph 0007 becoming unnecessary? The majority appears to have
adopted this view, citing to Paragraphs 0008 and 0009, but not 0007, in its
findings. See Maj. Op. 9-10. This interpretation of the Examiner’s rejection
by the majority is itself a new ground of rejection.10
In sum, the Examiner’s stated grounds of rejection (see Ans. 4-5) are
not sustainable; Specification Paragraphs 0008 and 0009 describe a problem
with the state of the art, rather than a known solution; and the Examiner’s
new ground of rejection based on Specification Paragraphs 0008 and 0009

10 In footnote 5 (Maj. Op. 7), the majority cites In re Ryan, 480 F.2d 1388
(CCPA 1973), for the proposition that a solution to a problem may be
obvious given the known source of the problem. If the majority is
concluding that Appellants’ statement of a problem in Paragraph 0009 itself
reveals an obvious solution in light of Suh, the majority should say so, and
explain why such reasoning is not grounded in hindsight. That also would
require a new ground of rejection.
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(see Ans. 17-18) is not properly articulated. Therefore, I respectfully dissent
from the majority’s affirmance of the Examiner’s rejection of claims 1, 4, 5,
and 9-12.

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