Ex Parte Minagawa et al

Patent Trial and Appeal Board

Oct 28, 2016

13022804 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/022,804 02/08/2011
23494 7590 11/01/2016
TEXAS INSTRUMENTS IN CORPORA TED
P 0 BOX 655474, MIS 3999
DALLAS, TX 75265
FIRST NAMED INVENTOR
Yusuke Minagawa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TI-66145 7421
EXAMINER
BELA!, NAOD W
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUSUKE MINAGA WA and SATORU YAMAUCHI
Appeal2015-004433
Application 13/022,804
Technology Center 2400
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-13, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Texas Instruments Incorporated as the real party in
interest. App. Br. 3.
Appeal2015-004433
Application 13/022,804
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to error detection in the decoding of
image data. Claims 1 and 7 are independent. Claim 1 is illustrative of the
invention and the subject matter of this appeal, and reads as follows (with
the disputed limitations in italics):
1. A method for decoding image data, the method
compnsmg:
receiving a bit stream of encoded image data, wherein the
image data was encoded in a selected domain by a transform
function;
extracting a set of coefficients from the bit stream, wherein
the set of coefficients represent a block of the image data;
comparing each coefficient to a theoretical model of a
distribution of the coefficient data representative of the
transform function; and
indicating a decoding error when a coefficient does not lie
vvithin the theoretical model.
App. Br. 9 (Claims App.).
The Rejections on Appeal
Claims 1--4, 7, and 9--11 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Lin et al. (US 6,721,362 B2; issued
Apr. 13, 2004) ("Lin") and Cirillo et al. (US 2007 /0257835 Al; pub. Nov. 8,
2007) ("Cirillo"). Final Act. 4--6.
Claims 5, 6, 12, and 13 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Lin, Cirillo, and Hourunranta (US
2004/0101055 Al; pub. May 27, 2004). Final Act. 6-7.
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Appeal2015-004433
Application 13/022,804
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Lin, Cirillo, and Lee (US 2009/0213938 Al; pub. Aug.
27, 2009). Final Act. 8.
ANALYSIS
We have reviewed the Examiner's rejections in light of the arguments
raised in the Briefs, on the record before us. Appellants contend the
Examiner erred in rejecting the claims, because (according to Appellants)
the Examiner did not make any findings demonstrating a rationale or
motivation to combine the references. App. Br. 6. For the reasons set for
the below, we are persuaded by Appellants' argument and, therefore, we
cannot sustain the Examiner's rejections.
Obviousness rejections "cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In the Final Action, the
only statement arguably addressing rationale to combine is the Examiner's
circular assertion that it would have been obvious to "modify Lin's error
detection method" by incorporating Cirillo "in order to implement an error
detection method." Final Act. 5. Appellant responds, in the Opening Brief,
that Cirillo's teaching of theoretical models for use in compression during
encoding of data is entirely unrelated to the problem of error detection in
decoding data, as taught in Lin. App. Br. 5---6. Specifically, Appellants
maintain that Cirillo teaches constructing an improved compression of data
in the encoding process, by representing coefficients as "departures from a
standard statistical distribution function" such as "Laplacian, Gaussian, or
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Appeal2015-004433
Application 13/022,804
Rayleigh," id. (citing Cirillo il 56), and that one of ordinary skill would not,
therefore, combine Cirillo with Lin. App. Br. 5---6. The Examiner's Answer,
like the Final Action, does not address Appellants' argument and is devoid
of any meaningful findings regarding the rationale or motivation for
combining the references. The Answer merely states, "the obviousness
conclusion was arrived upon discovering Cirillo's reference" and "the
Examiner determined ... Lin can be combined with ... Cirillo in order to
arrive at [A ]ppellants' broadly claimed invention." Ans. 9.
The record before us, namely the Final Action and Answer, includes
only conclusory statements, with no reasoning or findings explaining the
rationale for why one of ordinary skill in the art would combine Lin with
Cirillo. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. at 418, supra. Given the
absence of findings in the record, we cannot sustain the Examiner's
rejections.
DECISION
We reverse the Examiner's rejections of claims 1-13.
REVERSED
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