Ex Parte Lafon

Patent Trial and Appeal Board

May 20, 2013

11312017 (P.T.A.B. May. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIPPE JEAN-MARCEL LAFON
____________

Appeal 2010-011646
Application 11/312,017
Technology Center 2600
____________

Before MARC S. HOFF, DEBRA K. STEPHENS, and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
According to Appellant, the invention relates to data compression
(Spec. ¶ [006]), and provides for quantization comprising preprocessing the
transform coefficients to predict one or more non-zero coefficients and one
or more zero coefficients, as well as predict the non-existence of non-zero
and zero coefficients (Spec., Abstract).1 Details of the appealed subject
matter are recited in illustrative independent claim 1, reproduced below from
the Claims Appendix of the Appeal Brief:2
1. A method for data compression in an apparatus,
comprising:
preprocessing transform coefficients in a data stream or signal
after transform coding and before quantization to predict one or
more non-zero coefficients and one or more zero coefficients or to
predict the non-existence of non-zero or zero coefficients; and
performing said quantization and an inverse quantization
process on the predicted non-zero coefficients.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 11 to 17 of the
Answer:3
Takahashi US 2001/0005432 A1 June 28, 2001

1 References to Appellant’s Specification (“Spec.”) are directed to the
specification filed on December 20, 2005.
2 References to the Appeal Brief (“App. Br.”) are directed to
Appellant’s Appeal Brief filed on January 25, 2010, and references to the
Reply are directed to Appellant’s Reply Brief filed on June 11, 2010.
3 References to the Examiner’s Answer (“Ans.”) are directed to the
Answer mailed on April 27, 2010.
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Hamamura US 2004/0056981 A1 Mar. 25, 2004
Kubota JP 10-023261 Jan. 23, 1998
Zhou et al., Method for Detecting All-Zero DCT Coefficients Ahead of
Discrete Cosine Transformation and Quantization, IEE ELECTRONICS
Letters, Vol. 34, No. 19, 1839-1840 (Sept. 17, 1998) [hereinafter “Zhou”].
The Examiner provides the following grounds of rejections, of which
Appellant seeks review:
1) Claims 1, 3-5, 7-15, 18-24, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zhou and Takahashi (Ans. 12-
14);
2) Claims 2, 6, 17, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zhou, Takahashi, and Kubota (Ans.15-
16); and
3) Claims 16, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zhou, Takahashi, and Hamamura (Ans.
16-17).
ISSUES
Based on Appellant’s arguments, the dispositive issues on appeal are:
(1) Whether Zhou discloses preprocessing “transform coefficients in a
data stream or signal after transform coding and before quantization,”
as recited in independent claims 1, 12, and 19 (App. Br. 7-10);
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(2) Whether Takahashi discloses “performing said quantization and an
inverse quantization process on the predicted non-zero coefficients,”
as recited in independent claims 1, 12, and 19 (App. Br. 10-12);
(3) Whether the Examiner’s rejection of dependent claims 3, 4, 13, 14,
and 22, is factually unsupported (App. Br. 12-16);
(4) Whether the rejection of dependent claims 7, 15, and 20 is proper
because the Examiner’s finding in Zhou regarding the claimed
“threshold value” is in error (App. Br. 13, 14, 15); and
(5) Whether the rejection of claims 2, 17, and 25 is proper because
Kubota fails to disclose storing “indices representing the predicted
non-zero coefficients” (App. Br. 20-21).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contention. Further, we have reviewed the Examiner’s response to
Appellant’s arguments. We address only those arguments that were properly
raised. As for dependent claims 5, 6, 8, 9-11, 18, 21, 23, 24, and 26,
separate patentability is not argued, and for dependent claims 16, 27, and 28,
Appellant’s arguments repeat the arguments made in connection with other
claims. Therefore, except for our ultimate decision, these claims are not
discussed further herein.
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ISSUE 1
Appellant contends that the independent claims require pre-processing
“transform coefficients in a data stream or signal after transform coding and
before quantization.” App. Br. 8. Appellant argues that, in contrast to
Appellant’s claims, Zhou teaches a method for detecting all-zero DCT
(discrete cosine transform) coefficients before transformation and
quantization. Id. Appellant relies on Zhou’s disclosure at page 1839, lines
11-13 and, left column, lines 35-36 to support this argument and to conclude
that Zhou fails to teach the disputed limitation. We are not persuaded.
We find that the Examiner properly relied on equation “(3)” of Zhou
as teaching a method for “predicting before quantization (and clearly after
transformation) whether a given transform coefficient will become zero or
not after quantization.” Ans. 18 (emphasis added). That equation teaches
comparing the absolute value of the DCT transform coefficient, |(F(u,v)|,
with a threshold. Zhou, eq. (3); see also Ans. 18-19. We also agree with the
Examiner that Zhou’s equation “(3)” can be applied to each individual
transform coefficient, and, therefore, the determination whether a coefficient
is a zero or non-zero coefficient, can be made individually. Ans. 19.
Accordingly, we find that the Examiner did not err in finding that
Zhou teaches the limitation of pre-processing “transform coefficients in a
data stream or signal after transform coding and before quantization.”
ISSUE 2
Appellant contends that Takahashi does not teach or suggest
“performing a quantization and inverse quantization process on the predicted
non-zero coefficients.” App. Br. 10. In Appellant’s view, Takahashi
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performs quantization of frequency-domain texture data – not on “predicted
non-zero coefficients.” App. Br. 10. And Takahashi’s inverse quantization
is performed on the output from the quantization. Id. We address each
argument in turn.
First, with regard to the quantization process taught in Takahashi, we
are not persuaded by Appellant’s argument, which improperly focuses on the
bodily incorporation of Takahashi in Zhou. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted).
We find that Figure 11 of Takahashi clearly shows the output of DCT
means, which performs transform coding, as the input to a quantization
means, which performs quantization. Takahashi, fig.11, item 1104;
¶ [0126]. We also agree with the Examiner that performing quantization of
the transform coefficients, as part of the compression process, is well known
in the art. Ans. 22. Thus, combining Takahashi’s quantization process with
Zhou’s method (using equation “(3)”), which predicts zero coefficients,
predictably yields a process where quantization is performed on only those
coefficients that do not satisfy Zhou’s equation, i.e. a non-zero coefficient.
This is further confirmed by Kubota, which teaches that the “invalid
coefficients” (those with a very small value or 0 value) are not quantized.
Kubota, Abstract, ¶ [0025] (stating that if the DCT coefficient at position P
in the 8x8 block is lower than the threshold, that data is disregarded).
Accordingly, we are not persuaded by Appellant that the Examiner erred in
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finding quantization of predicted non-zero coefficients is obvious in view of
the teachings in Takahashi, as modified by Zhou.
Second, with regard to inverse quantization, we note that the
Examiner finds that the inverse quantization process is well known in the art,
and cites Takahashi as evidence of that finding. Ans. 22. However, we find
that Takahashi discloses inverse quantization on the output of the quantized
data, not on the output of the DCT means. Takahashi, fig.11, item 1105.
Therefore, we are persuaded by Appellant’s argument that Takahashi does
not disclose inverse quantization on predicted non-zero coefficients.
Accordingly we are constrained to find that the combination of
Takahashi and Zhou does not render the invention as recited in claim 1
obvious.
ISSUE 3
Appellant contends that, for a multitude of dependent claims, the
Examiner’s rejection is unsupported by fact and is, instead, “improper
hindsight reconstruction.” App. Br. 12-16. In particular, Appellant argues
that claims 3, 4, 13, 14, and 22 are improperly rejected because Takahashi
fails to teach or suggest the limitations recited in those dependent claims,
namely the recited “values for RUN and the values for LEVEL” and entropy
coding. Appellant’s argument, however, does not address the Examiner’s
findings that variable length coding disclosed in Takahashi produces RUN
and LEVEL values. Ans. 14; see also, e.g., Final Rejection,4 ¶ 14.
Appellant’s Appeal Brief also fails to address the Examiner’s official notice

4 Reference to the “Final Rejection” is made to the Office Action
electronically issued on July 23, 2009.
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that “it is well known in the art to subsequently apply entropy encoding to
(RUN, LEVEL) to further reduce the size.” Ans. 14. Therefore, Appellant’s
argument fails to show error in the Examiner’s findings, and it is, therefore,
unpersuasive.
Furthermore, we find no basis or good cause for Appellant to argue
for the first time, in the Reply, that the Examiner’s findings and official
notice are not proper. Reply 7-8. The Final Rejection at paragraph 14
provided the same findings and official notice concerning the limitations
recited in claims 3, 4, 13, 14, and 22. Therefore, Appellant could have
presented the arguments in the Appeal Brief, and failed to do so. “Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam
Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.”) (citations and quotation
marks omitted).
Based on the foregoing, Appellant has not persuaded of error in the
Examiner’s findings in Takahashi and the Examiner’s official notice
concerning the limitations of claims 3, 4, 13, 14, and 22.
ISSUE 4
Appellant contends that the Examiner erred in rejecting claims 7, 15,
and 20 because Zhou’s equation “(4)” does not determine “threshold values”
and that Zhou’s equation “(3)” is “applicable to a PRE-transform
coefficient.” App. Br. 13, 14, 15. We do not agree with Appellant’s
conclusion. First, we agree with the Examiner’s finding that Zhou teaches a
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predetermined threshold value of 2Q when using the method taught by
equation “(3),” which is the equation the Examiner relies on to reject the
claims. Ans. 25 (emphasis added). Further, we have found, with regard to
Issue 1, supra, that equation “(3)” teaches the step of pre-processing
“transform coefficients . . . after transform coding.” Therefore, Appellant
has not persuaded us of error in the Examiner’s findings with respect to the
limitations recited in claims 7, 15, and 20.
ISSUE 5
Appellant contends that the rejection of claims 2, 17, and 25 is in error
because Kubota does not teach storing “indices representing the predicted
non-zero coefficients.” App. Br. 20-21. Appellant points to the Final
Rejection at page 9, but does not specifically identify what aspects of the
Examiner’s findings concerning these claims are objectionable. To be sure,
the Examiner relies on Kubota’s Figure 1 (items 11 and 12), Figures 2 – 4,
paragraphs 18-27 (especially the last three lines of paragraph 24 and the last
two lines of paragraph 25). Ans. 15; Final Rejection, 9. The Examiner also
finds that Kubota teaches indices “P,” which necessarily have to be stored to
be subsequently used by the data operation part 12. Ans. 15, Final
Rejection, 9. Appellant’s argument does not address any of the Examiner’s
findings, and, therefore, is not persuasive.
We concur, instead, with the Examiner’s findings and conclusions.
Specifically, we agree with the Examiner’s findings that Figure 4 of Kubota
teaches a process where indices “P” are stored (per ¶¶ 22-27), during the
processing of the coefficients with data selection part 11 and data operation
part 12 of Figure 1, and where the indices “P” correspond to the coefficients
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in the 8x8 block (from 1 to 64). Ans. 27. Accordingly, we find no error in
the Examiner’s determination that Kubota teaches storing “indices
representing the predicted non-zero coefficients,” as recited in claims 2, 17,
and 25.

NEW GROUNDS OF REJECTION OF CLAIMS 1-28 UNDER
37 C.F.R. § 41.50(B)
We make the following new grounds of rejection:
 Claims 1, 12, and 19 are rejected under 35 U.S.C. § 103(a) over
Zhou, Takahashi, Kubota, and Appellant’s Admitted Prior Art
(“AAPA”).
As stated supra, we agree with the Examiner’s findings as set forth
above in Issues 1 and 2, although as stated in Issue 2, we find that Takahashi
does not disclose inverse quantization on predicted non-zero coefficients.
However, we determine that inverse quantization of predicted non-zero
coefficients is obvious in light of Kubota and the Applicant’s Admitted Prior
Art (AAPA). Specifically, we find that Kubota teaches obtaining the DCT
coefficient and comparing each to a threshold value to determine which
coefficients will be disregarded. Kubota, ¶¶ [0011], [0014], [0025]. We
also find that Kubota teaches an image processing portion 4 and quantizing
portion 5, where, after the comparison is performed, the selected DCT
coefficients are further processed, e.g., quantized. Kubota, ¶ [0017].
Further, although Kubota does not teach performing inverse quantization on
the selected DCT coefficients, we find that performing inverse quantization
on DCT coefficients was known in the art as evidenced by Appellant’s
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description of the state of the art in the Background of the Invention
(AAPA). Spec. ¶ [0005] (stating that “[m]ost algorithms perform
quantization and inverse quantization on all of the coefficients resulting
from transform coding . . . .”). Accordingly, and relying on the Examiner’s
rationale stated in page 21 of the Answer, we find that Kubota’s Abstract
discloses the motivation of reducing the amount of arithmetic operations by
not performing operations on coefficients identified as “invalid.” Ans. 21
(citing Kubota, Abstract). And to accomplish the desired image processing
with the computational reductions of Kubota, a person of ordinary skill in
the art would perform desired operations, such as the known inverse
quantization per Appellant’s admission, on the DCT coefficients that are not
“invalid” per Kubota’s method. Consequently, we conclude that
independent claims 1, 12, and 19, which recite the disputed claim limitation,
are obvious under 35 U.S.C. § 103(a) over the combination of Zhou,
Takahashi, Kubota and AAPA as stated herein. Therefore, we reject claims
1, 12, and 19 under 35 U.S.C. § 103(a) for obviousness over Zhou,
Takahashi, Kubota, and AAPA.
Because we find no error in the findings concerning the disputed
limitations in the dependent claims discussed in Issues 3, 4, and 5, supra,
and because we leave undisturbed the specific findings the Examiner made
with respect to the remaining dependent claims, we modify the grounds of
rejection for the dependent claims by making new grounds of rejections
consistent with the independent claims. We hereby make new grounds of
rejection of the dependent claims as follows:
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(1) Claims 2-11, 13-15, 17, 18, 20-26 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Zhou, Takahashi, Kubota, and
AAPA; and
(2) Claims 16, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zhou, Takahashi, Kubota, and AAPA, and
further in view of Hamamura.
CONCLUSION
For the reasons stated supra with respect to Issue 2, we do not sustain
the rejection of independent claims 1, 12, and 19 for obviousness under 35
U.S.C. § 103(a) over the combination of Zhou and Takahashi. We also do
not sustain the rejections of claims 2-11, 13-18, and 20-28 based on their
dependence of the erroneous rejection of independent claims 1, 12, and 19.
However, we make the following new grounds of rejection under 37
C.F.R. § 41.50(b).
(1) Claims 1-15 and 17-26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Takahashi, Kubota, and AAPA; and
(2) Claims 16, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zhou, Takahashi, Kubota, and AAPA, and
further in view of Hamamura.
DECISION
We REVERSE the Examiner’s decision to reject:
1) Claims 1, 3-5, 7-15, 18-24, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Zhou and Takahashi;
2) Claims 2, 6, 17, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Takahashi, and Kubota; and
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3) Claims 16, 27, and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Takahashi, and Hamamura.
In a New Grounds of Rejection, we reject
1) Claims 1-15 and 17-26 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Takahashi, Kubota, and AAPA, and
2) Claims 16, 27, and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Zhou, Takahashi, Kubota, and AAPA, and
further in view of Hamamura.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 for taking any action connected 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)
(2011).
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REVERSED; 37 C.F.R. § 41.50(b)

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