Ex Parte Loo

Patent Trial and Appeal Board

Nov 20, 2012

11333495 (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.
11/333,495 01/17/2006 Patrick Loo 14528.00314 3857
16378 7590 11/21/2012
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
MARTELLO, EDWARD
ART UNIT PAPER NUMBER
2678
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 PATRICK LOO
____________

Appeal 2010-004139
Application 11/333,495
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
ANDREW CALDWELL, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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Invention
Appellant’s invention relates to mobile multimedia communications.
See Spec. ¶ 0004. Claim 1 is reproduced below with a certain disputed
limitation emphasized:
1. A method for processing information in a communication device,
the method comprising:
receiving within a mobile multimedia chip, an image processing
command, wherein said image processing command controls an image
editor within said mobile multimedia chip and is received from outside of
said mobile multimedia chip;
translating within said mobile multimedia chip, said received image
processing command into an image operation; and
editing within said mobile multimedia chip, image data based on said
image operation.
The Examiner relies on the following as evidence of unpatentability:
Eschbach US 6,715,127 B1 Mar. 30, 2004
Freer US 2006/0009234 A1 Jan. 12, 2006

The Rejection
The Examiner rejected claims 1-30 under 35 U.S.C. § 103(a) as
unpatentable over Freer and Eschbach. Ans. 3-13.1

THE CONTENTIONS
Regarding representative claim 1, the Examiner finds that the central
processing unit (CPU) 30 in Freer discloses the mobile multimedia chip that
receives an image processing command. Ans. 3-4. The Examiner further
finds that Freer does not teach the translating and editing steps, for which

1 Throughout this opinion, we refer to (1) the Appeal Brief filed July 13,
2009; (2) the Examiner’s Answer mailed November 9, 2009; and (3) the
Reply Brief filed January 5, 2010.
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Eschbach in combination with Freer was relied upon to teach or suggest.
Ans. 4.
Appellant argues that Freer’s CPU 30 has no mobile communication
functionality and thus cannot be a mobile multimedia chip that receives an
image processing command as recited. App. Br. 7-8, 11-12; Reply Br. 3-7.
Appellant further asserts that the Global System for Mobile Communications
(GSM) module 34, which performs the mobile communication functionality,
in Freer is separate from the CPU 30. App. Br. 7; Reply Br. 3. Appellant
also contends that Eschbach has nothing to do with image processing within
a mobile communication device and that combining Eschbach with Freer
does not teach translating or editing with a mobile multimedia chip as
recited. App. Br. 8-10; Reply Br. 12.

Claims 1-5, 10-15, 20-25, and 30
ISSUES
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Freer and Eschbach collectively would have taught or suggested:
(1) a mobile multimedia chip?
(2) receiving an image processing command within a mobile
multimedia chip?
(3) translating and editing within the mobile multimedia chip?

ANALYSIS
We begin by construing the key disputed limitation of claim 1 or the
recited mobile multimedia chip. This phrase, “mobile multimedia chip,” has
not been defined by Appellant. See generally Specification. Nor has
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Appellant demonstrated that this phrase has special meaning in the art. See
App. Br. 6-13. As such, we will give this phrase its broadest reasonable
construction to include a multimedia chip used within a mobile environment.
See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Based on this understanding, we turn to Freer.
Freer teaches a portable device 4 to obtain the user’s position and
other data using a Global Positioning System (GPS). ¶¶ 0002, 0027-29;
Figs. 1-2. Freer further discloses that the device 4 has a CPU 30 described
as a multimedia chip (e.g., Samsung S3C2440 multimedia chip).
¶¶ 0032-33; Fig. 3. Appellant has not challenged that Freer’s processor 30 is
a multimedia chip. See App. Br. 6-12. Additionally, Appellant does not
argue that Freer’s processor is not used within a mobile device. See id.
Thus, as broadly as recited, Freer teaches a multimedia chip (e.g., 30) used
within a mobile environment or a “mobile multimedia chip.”
Moreover, Appellant provides conflicting information concerning
what in his disclosure encompasses a mobile multimedia chip. First, in the
original Appeal Brief, Appellant argued that the recitation in claim 1
requires all functions to be performed within a single chip. See App. Br. 11.
Then, Appellant contends in the Reply Brief that a mobile multimedia chip
includes “all the relevant portions of the ‘mobile multimedia system’ 100,
namely, the core processor portion, the RF processing portion and the
peripheral interface portion, are all part of Appellant’s ‘mobile multimedia
chip[.]’” Reply Br. 6 (emphases omitted); see also Reply Br. 7. Based on
the later discussion, Appellant argues that the recited mobile multimedia
chip can include multiple portions or components. In which case, Freer’s
disclosure of the CPU 30 and the GSM module 34, which Appellant admits
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has the mobile communications functionality (App. Br. 8), as well as other
portions (e.g., Bluetooth 3007 and other components) can reasonably be
mapped to a collective mobile multimedia chip that performs both the
multimedia and the mobile communications functionality. Also, regardless
of the similarities between the core processor in the disclosure and Freer’s
CPU 30 (Ans. 14-16), Appellant has stated that the mobile multimedia chip
in clam 1 is broader in scope to include multiple components, for which
Freer teaches.
We therefore are not persuaded that Freer fails to teach the mobile
multimedia chip as recited in claim 1. Appellant also asserts that Freer and
Eschbach do not teach or suggest the recited receiving an image command
within the mobile multimedia chip. App. Br. 7-8. Merely pointing out what
claim 1 recites and then asserting that the combination fails to teach this
limitation is not considered a separate argument for patentability. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Likewise, Appellant’s quoting
of the translating and editing steps in claim 1 (App. Br. 8-9, 12) and stating
that Freer and Eschbach fail to teach such limitations are not considered
separate arguments.
Appellant states that Eschbach is not in the same field of endeavor and
does not disclose the translating and editing steps. App. Br. 9-11. To the
extent Appellant is asserting that Eschbach is non-analogous art (see App.
Br. 9), Eschbach relates to an image editor for editing raster images
displayed in a graphical user interface (Eschbach, Abstract; col. 5, l. 57–col.
6, l. 9) and is reasonably pertinent to the problem with which the inventor
was concerned (i.e., providing editing functionality for images found in an
application, such as cropping, resizing, and rotating) (see ¶¶ 0042, 0056).
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We therefore find that Eschbach is analogous art. See In re Kahn, 441 F.3d
977, 986-87 (Fed. Cir. 2006).
Additionally, Appellant attacks Eschbach individually (see App.
Br. 9-10) when arguing that the combination fails to teach the translating and
editing steps. See App. Br. 8-10. Such an individual attack however does
not show nonobviousness where the rejection, as in here, is based on Freer
and Eschbach. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). As the Examiner indicates, the rejection relies on both Freer’s and
Eschbach’s teachings collectively to conclude that the combination teaches
the translating and editing steps. See Ans. 3-4, 18 (indicating Eschbach was
relied upon for “only the image editing functions”). Thus, because the
Examiner does not rely on Eschbach to teach a mobile multimedia chip (see
App. Br. 10), Eschbach need not teach this feature. Also, because the
Examiner does not rely on Eschbach alone to perform translating or editing
within such a chip (see App. Br. 9-10; Reply Br. 12), such arguments are not
consistent with the Examiner’s rejection.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 1 and claims 2-5, 10-15, 20-25, and 30
not separately argued with particularity (App. Br. 12-13).

Claims 6, 16, and 26
Representative claim 6 recites converting a portion of the image data
from native image format to the image format compliant with the editing
using at least one CODEC. The Examiner finds that Eschbach teaches this
recited step (Ans. 5) and additionally states that it is well known in the art to
code and decode images (e.g., JPEG images) using a CODEC function (Ans.
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24). Appellant argues that the disclosed image coding in Eschbach does not
necessarily use CODEC and that the controller 3 performs such image
coding. App. Br. 13-14; Reply Br. 12-13.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 6 by finding
that Freer and Eschbach would have taught or suggested converting a
portion of the image data from native image format to the image format
compliant with the editing using at least one CODEC?

ANALYSIS
Based on the evidence of record, we do not find error in the
Examiner’s rejection of claim 6. First, we note that an ordinarily skilled
artisan would have understood the term, CODEC, to be an acronym for the
phrase, coder-decoder. Thus, Eschbach need only teach or suggest using a
coder-decoder when converting an image data portion from one format to
one compliant with the editor. As the Examiner notes, Eschbach teaches
using an image coding or compression scheme to process image data within
the image editor. Ans. 5 (citing col. 1, ll. 41-44, col. 3, ll. 50-57). This
portion of Eschbach teaches the coding aspect of the CODEC that converts a
native image format into a format compliant with the image editor.
Also, accounting for the creative steps and inferences an ordinarily
skilled artisan would have employed, one skilled in the art would have
recognized that an image editor that includes an image coding scheme would
also include a decoding scheme. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). That is, when the user completes edited an image within
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the editor, a skilled artisan would have recognized that the coding process
would be reversed, so that the image data is compatible with the rest of the
system and displayed as edited. Appellant also does not dispute that the use
of a CODEC to code and decode images (e.g., JPEG CODECs discussed at
Ans. 24) was known to ordinarily skilled artisans. See Reply Br. 13-14.
Lastly, Appellant argues that coding within Eschbach occurs within
the controller. App. Br. 13-14. Even assuming, without deciding, that this is
true, claim 6 does not require the conversion to occur within any specific
component. Thus, we find such an argument is not commensurate in scope
with claim 6 and performing such a coding and decoding within the
controller, as alleged, reads on the broad recitation.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claim 6 and claims 16 and 26 not separately argued with
particularity.

Claims 7, 17, and 27
Representative claim 7 recites applying an image effect to an image
data portion based on the translated image processing command. Appellant
argues that Eschbach does not disclose the recited image processing
command received within a mobile multimedia chip. App. Br. 14-15; Reply
Br. 15. Because the Examiner relies upon Freer – not Eschbach – to teach
this limitation (see Ans. 3-4, 14-16, 18), we are not persuaded. To the extent
Appellant is repeating the arguments presented for claim 1, we refer to our
previous discussion. Also, merely pointing out what claim 7 recites and then
asserting that the combination fails to teach this limitation (App. Br. 14) is
not considered a separate argument for patentability. See Lovin, 652 F.3d at
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1357. For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claim 7 and claims 17 and 27 not separately argued with
particularity.

Claims 8, 9, 18, 19, 28, and 29
Representative claim 8 recites acquiring a plugin for the editing based
on the translated image processing command. The Examiner finds that
Eschbach teaches this recited step. Ans. 6 (citing col. 6, ll. 44-53).
Additionally, the Examiner explains that Eschbach’s controller, when
providing editing commands related to coding scheme, pulls in code
currently not residing with the processor or teaches or suggests using a
plug-in. See Ans. 25-26. Appellant argues that the cited portion of
Eschbach (i.e., col. 6, ll. 44-53) has no support for the recited plug-in and a
coding scheme does not require a plug-in but may use firmware or software
within local memory. App. Br. 15-16; Reply Br. 16-17.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 8 by finding
that Freer and Eschbach would have taught or suggested acquiring a plugin
for the editing based on the translated image processing command?

ANALYSIS
Based on the evidence of record, we do not find error in the
Examiner’s rejection of claim 8. Eschbach teaches an extractor 4 determines
and identifies the image coding or compression type used to compress the
image and the controller can retrieve and instruct a display or interface to
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provide editing commands related to the coding scheme. Col. 6, ll. 44-53.
Admittedly, Eschbach does not provide many details as to whether the
extractor and controller obtain such functionality through a program found
in local memory or a plug-in. See id.
Yet, the Examiner finds that, given the number of different image
coding schemes and the limited memory on a mobile device, an ordinarily
skilled artisan would have recognized the advantages of using a plug-in to
provide such editing commands device when needed. See Ans. 25-26.
Appellant does not challenge these findings that use of plug-ins was known
to ordinarily skilled artisans or that mobile devices have limited memory.
See Reply Br. 16-17. Appellant rather contends that there is no evidence
that Eschbach’s coding scheme must use a plug-in and could use the codes
found in local memory. See id. However, when there are a finite number of
known identified, predictable solutions (e.g., use of plug-in, local memory
firmware, or local memory software), ordinarily skilled artisans would have
had a good reason to pursue the known options within their grasp, including
using a plug-in in Eschbach. See KSR, 550 U.S. at 421.
Also, merely pointing out what claim 8 recites and then asserting that
the combination fails to teach this limitation (App. Br. 15) is not considered
a separate argument for patentability. See Lovin, 652 F.3d at 1357.
Lastly, claims 9, 19 and 29 depend from claims 8, 18, and 28
respectively. While not separately argued, we group claims 9, 19, and 29
with claims 8, 18, and 28 due to their dependencies.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claim 8 and claims 9, 18, 19, 28, and 29 not separately
argued with particularity.
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CONCLUSION
The Examiner did not err in rejecting claims 1-30 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-30 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)(iv).

AFFIRMED

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