Ex Parte Park et al

Patent Trial and Appeal BoardFeb 27, 2019

12574283 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/574,283 10/06/2009 26171 7590 03/01/2019 FISH & RICHARDSON P.C. (DC) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Seung Wook Park 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. 19819-0285001 7850 EXAMINER ITSKOVICH, MIKHAIL ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 03/01/2019 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEUNG WOOK PARK, JUNG SUN KIM, YOUNG HEE CHOI, BYEONG MOON JEON, and JOON YOUNG PARK Appeal2017-004604 Application 12/574,283 Technology Center 2400 Before DENISE M. POTHIER, JOHN D. HAMANN, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-004604 Application 12/574,283 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 11, and 37--42. App. Br. 1. 2 Claims 2-10 and 12-36 are canceled. Id. We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing was conducted on February 13, 2019. A transcript will be made of record in due course. We reverse. THE INVENTION Appellants' invention relates to video decoding. Spec. 2. In some systems, encoders use a flag to indicate whether a bit stream includes coded transform coefficients. Id. at 23. For example, the flag equals "1" when the coefficients are present and "O" when they are not. Id. Storing a flag for each sub-block of a video frame, though, can be inefficient. Id. at 24. To improve efficiency, the invention uses a value to indicate whether the current block contains any sub-blocks with coded transform coefficients. Id. For example, if a block's value is "O," then no sub-blocks within the block contain the coefficients, and thus, no additional bits are needed for the sub-blocks. Id. 1 According to Appellants, the real party in interest is LG Electronics Inc. App. Br. 1. 2 Throughout this opinion, we refer to the Final Rejection ("Final Act."), mailed January 21, 2016; the Appeal Brief ("App. Br."), filed July 21, 2016; the Examiner's Answer ("Ans."), mailed November 16, 2016; and the Reply Brief ("Reply Br.") filed January 17, 2017. 2 Appeal2017-004604 Application 12/574,283 Claims 1 and 11 are independent. Claim 1 is reproduced below with our emphasis on the limitation at issue: 1. A method of decoding a video signal with a decoding apparatus, the method comprising: receiving, at the decoding apparatus, a bit stream including an encoded video signal; obtaining, with the decoding apparatus, block type information of a current block of a frame included in the encoded video signal; obtaining, with the decoding apparatus, an intra prediction mode of the current block when the block type information specifies that the current block is coded in intra mode; splitting, with the decoding apparatus, the current block into a plurality of partitions based on a transform block unit for the current block, wherein the transform block unit is a rectangular block on which a transform is applied; obtaining, with the decoding apparatus, a prediction value of a first partition of the plurality of partitions of the current block based on the intra prediction mode of the current block and previously decoded pixel values adjacent to the first partition; obtaining, with the decoding apparatus, residual data of the first partition, wherein obtaining the residual data comprises: obtaining, with the decoding apparatus from the bit stream, first coded block indication information for the current block, the first coded block indication information of the current block specifying whether the current block includes coded transform coefficients in the bit stream according to a value of the first coded block indication information, when the first coded block indication information of the current block corresponds to a value of 1, obtaining, with the decoding apparatus from the bit stream, second coded block indication information for each of the plurality of partitions of the current block, the second coded block indication information of each of the plurality 3 Appeal2017-004604 Application 12/574,283 of partitions of the current block specifying whether a corresponding partition includes coded transform coefficients in the bit stream according to a value of the second coded block indication information, and when the second coded block indication information of the first partition corresponds to the value of 1, obtaining, with the decoding apparatus from the bit stream, coded transform coefficients of the first partition and inverse-transforming, with the decoding apparatus, the obtained coded transform coefficients of the first partition; and reconstructing, with the decoding apparatus, the first partition using the prediction value and the residual data. THE EVIDENCE The Examiner relies on the following as evidence: Kobayashi et al. US 2004/0233989 Al Ye et al. US 2008/0165848 Al THE REJECTIONS Nov. 25, 2004 July 10, 2008 Claims 11 and 40-42 stand rejected under pre-AIA3 35 U.S.C. Â§ 112, first paragraph, as not complying with the enablement requirement. Final Act. 5. Claims 11 and 40-42 stand rejected under pre-AIA 35 U.S.C. Â§ 112, first paragraph, as not complying with the written-description requirement. Final Act. 5-6. 3 This application is being examined under the statute before the Leahy- Smith America Invents Act (AIA), Pub. L. No. 112-29, Â§ 3, 125 Stat. 284, 285-93 (2011) was enacted. Final Act. 2. 4 Appeal2017-004604 Application 12/574,283 Claims 11 and 40-42 stand rejected under pre-AIA 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Final Act. 6-7. Claims 1, 11, and 37--42 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a)4 as unpatentable over Kobayashi and Ye. Final Act. 8-16; Ans. 3. THE REJECTIONS UNDER 35 U.S.C. Â§ 112 The Examiner's Findings According to the Examiner, "the claimed apparatus is described by an entropy decoding unit function and by an inverse transform unit function, because a 'unit' is not a structure known in the art or even a means-for element that could have a structure." Ans. 20. The Examiner concludes that claims 11 and 40-42 do not comply with the enablement requirement because the claims are not "enabled for the full scope of the possible apparatus structures that could perform the claimed apparatus functions." Id.; see also Final Act. 5 (citing In re Hyatt, 708 F.2d 712, 714--15 (Fed. Cir. 1983)). The Examiner also concludes that the claims do not comply with the written-description requirement. Final Act. 5---6. According to the Examiner, claim 11 recites an apparatus "that performs a multitude of functions, where the functions are disclosed as being performed by separate structural elements," but the "Specification does not support separate structures for performing each functionally claimed element." Id. at 6. 4 Although the Examiner states that the claims are rejected under Â§ 102, not Â§ 103 (Final Act. 10), we agree with Appellants that this appears to be a typographical error. App. Br. 6 n.3. Considering the entire record here, we understand the claims to be rejected under Â§ 103. See, e.g., Ans. 3. 5 Appeal2017-004604 Application 12/574,283 The Examiner finds that claims 11 and 40-42 are indefinite. Id. In this rationale, the Examiner interprets claims 11 and 40-42 under 35 U.S.C. Â§ 112, sixth paragraph and finds that "the written description fails to disclose the corresponding structure, material, or acts for each claimed function." Id. Analysis I An issue common to the three rejections is whetherÂ§ 112, sixth paragraph, applies to claim 11. We tum to this issue first. Claim 11 recites an entropy decoding unit and an inverse transform unit. A limitation that lacks the term "means"-as is the case here-will trigger the rebuttable presumption thatÂ§ 112, sixth paragraph does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). The presumption is overcome if (1) "the claim term fails to 'recite[] sufficiently definite structure"' or (2) "recites 'function without reciting sufficient structure for performing that function."' Id. "The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Id. at 1349. Here, the claim limitations do not inform one of the units' structural character. Notably, the prefixes to the units are purely functional in nature. Apart from describing their function----e.g., decoding and transforming-the claims provide no structural context for determining the units' attributes. Rather, in the claimed system, each unit is described only by its function. Also, the Specification fails to impart any structural significance to the term "unit." See, e.g., Spec. 12; Fig. 2 (showing the system as a block diagram), 6 Appeal2017-004604 Application 12/574,283 cited in App. Br. 4. Thus, in the context of this application, "unit" would not be understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Also, claim 11 does not recite sufficient structure for performing the unit's functions. Apart from the nonce word "unit," the remainder of the claim does not recite a structure, hardware, or anything else that performs the function that follows "configured to." Thus, we interpret claim 11 as invoking Â§ 112, sixth paragraph. Claims 40-42 merely further limit what the current block comprises and do not impart any additional structure for performing the claimed units' functions. So these dependent claims also invokeÂ§ 112, sixth paragraph. II For the reasons discussed in this section, we do not sustain the rejection of claims 11 and 40-42 under pre-AIA 35 U.S.C. Â§ 112, first paragraph, as not complying with the enablement requirement. Final Act. 5- 6. The Examiner finds that claim 11 is a single-means claim. Id. at 5. Pre-AIA 35 U.S.C. Â§ 112, sixth paragraph, applies to "an element in a claim for a combination." Single-means claims do not recite such a combination. Claim 11, though, recites a combination of an entropy-decoding unit and an inverse-transform unit. App. Br. 7. And as discussed above, these units invoke Â§ 112, sixth paragraph. Thus, claim 11 is not a single-means claim. III "If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim" is indefinite. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). 7 Appeal2017-004604 Application 12/574,283 The Examiner rejects claims 11 and 40-42 as indefinite and not complying with the written-description requirement because "the written description fails to disclose the corresponding structure, material, or acts for each claimed function." Final Act. 6. As best understood, under the Examiner's reasoning, claim 11 lacks an adequate written description because an indefinite, unbounded functional limitation could cover all ways of performing the recited functions. See id. Notably, "a person of ordinary skill in the art plays no role whatsoever in determining whether an algorithm must be disclosed as structure for a functional claim element." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (emphasis added). For definiteness, the question is "whether the specification contains a sufficiently precise description of the 'corresponding structure' to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function." Id. at 624. "Where the specification discloses an algorithm .. , we judge the disclosure's sufficiency based on the skilled artisan's perspective." Id. "[W]hen the disclosed structure is a computer programmed to carry out an algorithm, 'the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm."' In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011 ). But under the Katz exception, "a standard microprocessor can serve as sufficient structure for 'functions [that] can be achieved by any general purpose computer without special programming."' EON Corp., 785 F .3d at 621 (citing In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)); accordMPEP Â§ 2181 (II)(B) (9th ed., 8 Appeal2017-004604 Application 12/574,283 Rev.08.2017, January 2018) (instructing Examiners that "a general purpose computer is usually only sufficient as the corresponding structure for performing a general computing function"). Here, the rejection does not discuss these considerations. See Final Act. 5-6. For example, the Examiner has not sufficiently explained why the claimed functions require specialized programming. Several functions in claim 11 merely obtain data of a particular type, which is a general computing function. See EON Corp., 785 F.3d at 621 ("In Katz, claim terms involving basic 'processing,' 'receiving,' and 'storing' functions were not necessarily indefinite because a general purpose computer need not 'be specially programmed to perform the recited function."') ( emphasis added). Also, the rejection does not adequately address the skilled artisan's perspective in assessing whether the disclosed structure would have been sufficient. For instance, Appellants argue that at least some claimed functions are accomplished using H.264/ A VC decoder algorithms disclosed in the Specification. App. Br. 9 (citing Spec. 11-12, Fig. 2). We do not hold that the Examiner must always make these particular findings in every rejection. Indeed, there may be other considerations to be made when examining these claims. See, e.g., Examining Computer- Implemented Functional Claim Limitation for Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57 (Jan. 7, 2019). Rather, in this instance, the Examiner has simply not supported the rejections adequately. See App. Br. 9. Thus, we are constrained by this record to find that the Examiner erred in rejecting claims 11 and 40-42 as indefinite and not complying with the written-description requirement. 9 Appeal2017-004604 Application 12/574,283 THE OBVIOUSNESS REJECTION OVER KOBAYASHI AND YE The Examiner's Findings In the Kobayashi-Ye combination, the Examiner finds that Kobayashi teaches the second coded-block indication information recited in claim 11. Final Act. 12; Ans. 17. Specifically, the Examiner finds that Kobayashi's macro-block mode and sub-block pixel-value prediction mode correspond to the recited first and second information. Final Act. 12 (citing Kobayashi ,r 213). The Examiner further finds that Kobayashi's predictive- residual signal corresponds to the recited coded transform coefficients. Id. According to the Examiner, Kobayashi's section 70 sends a predictive- residual signal with coefficients when the sub-block pixel-value prediction mode is intra-frame prediction mode. Id. Appellants ' Contentions According to Appellants, Kobayashi lacks the recited second coded block indication information. App. Br. 15. In particular, Appellants argue that the claimed information specifies "whether a corresponding partition includes" the coefficients. Id. Appellants argue that, because Kobayashi sends the predictive-residual signal in both intra- and inter-frame prediction mode, Kobayashi's information does not specify whether the block includes the coefficients. Id. Issue UnderÂ§ 103, has the Examiner erred in rejecting independent claim 11 by finding that Kobayashi and Ye would have taught or suggested the recited second coded block indication information? 10 Appeal2017-004604 Application 12/574,283 Analysis Claim 11 recites, in part, "the second coded block indication information of each of the plurality of partitions of the current block specifying whether a corresponding partition includes coded transform coefficients in the bit stream according to a value of the second coded block indication information." For example, one embodiment in the Specification uses a bit to indicate that the current block contains sub-blocks with information about coded transform coefficients. Spec. 24. This embodiment uses one such bit for each 16x 16 block in a signal. Id. A bit equal to "O" indicates that the signal has no more information about the coded coefficients. Id. Alternatively, a bit equal to "1" indicates that the signal has more information about the coded coefficients. Id. In this case, four more bits are used to indicate whether each 8x8 sub-block in the 16x16 block contains a coded coefficient. Id. Although this embodiment is illustrative and non- limiting, it nevertheless informs our understanding of claim 11. Claim 11 recites a first and second coded block indication information. Claim 11 further recites, when the first information is "1," obtaining the second information for each partition. The recited second information specifies whether a partition has coded transform coefficients. We agree that the Examiner has not shown that Kobayashi teaches the recited second information. App. Br. 15. Kobayashi teaches a hybrid-predicting section that can apply inter- frame prediction or intra-frame prediction to each sub-block. Kobayashi ,r 211. Kobayashi searches for a combination of the two prediction modes that achieves the most efficient encoding. Id. The "macro 11 Appeal2017-004604 Application 12/574,283 block mode" indicates the method of generating the predictive-residual signal for the current macro block. Id. ,r 11. When (1) "macro block mode" equals INTRA/INTER mode and (2) "intra-frame pixel value prediction mode" is selected for the current sub-block, inverse-orthogonal-transforming section 70 sends the predictive-residual signal. Id. ,r 213 ( emphasis added). Section 70 also sends the predictive-residual signal when (1) "macro block mode" equals INTRA/INTER mode and (2) "inter-frame pixel value prediction mode" is selected for the current sub-block. Id. ,r 214. That is, section 70 sends the predictive-residual signal in both sub-block pixel-value prediction modes. Id. ,r,r 213-214. The Examiner finds that Kobayashi's macro-block mode and sub- block pixel-value prediction mode correspond to the recited first and second information. Final Act. 12 (citing Kobayashi ,r 213). The Examiner finds that Kobayashi's predictive-residual signal corresponds to the recited coded transform coefficients. Id. But the Examiner has not shown that Kobayashi's sub-block pixel-value prediction mode indicates whether the predictive-residual signal is sent. Rather, Kobayashi sends the predictive- residual signal in both modes. Kobayashi ,r,r 213-214. According to the Examiner, the recited second coded block indication information indicates inputs "that already exist in the input signal, and does not limit the claim to performing a transformative step." Ans. 16. In the Examiner's view, claim 11 does not exclude decoding the second information regardless of the value. Id. at 15. The Examiner concludes that claim 11 is not limited "by claim language directed to content of a signal but does not require steps to be performed." Id. at 16; see also Final Act. 9-10 (discussing the patentable weight given to the recited content). 12 Appeal2017-004604 Application 12/574,283 Printed matter is given patentable weight "if the claimed informational content has a functional or structural relation to the substrate." In re Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015). For example, the Federal Circuit found that "a computer-based structural database was not printed matter, not because it involved a computer, but because the data structures 'contain[ed] both information used by application programs and information regarding their physical interrelationships within a memory."' Id. (quoting In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994)); see also MPEP Â§ 2111.05 (III) (instructing Examiners that "attribute data objects that perform the function of facilitating retrieval, addition, and removal of information in the intended computer system, establishes a functional relationship such that the claimed attribute data objects are given patentable weight."). Here, claim 11 's decoding apparatus reconstructs the partition using the prediction value and the residual data. To accomplish this, the decoding apparatus obtains the residual data using the content of the first and second coded block indication information. In this way, the informational content is functionally related to the recited steps, and thus, the content at issue here must be accorded patentable weight. Because the Examiner has not shown that Kobayashi 5 teaches or suggests that the second information specifies whether a corresponding partition includes coded transform coefficients, we agree the rejection is in error. App. Br. 15. 5 The Examiner does not rely on Ye to teach this limitation. See, e.g., Final Act. 12-13; Ans. 16-17. Rather, the Examiner finds that Ye teaches a flag associated with a macro block. Ans. 17 ( citing Ye ,r,r 65-67). 13 Appeal2017-004604 Application 12/574,283 The argument about the second coded block indication information (id.) is dispositive of the issues here, so we need not reach Appellants' remaining arguments. On this record, we do not sustain the rejection of independent claim 1. For the same reasons, we do not sustain the rejection of independent claim 11 and dependent claims 37--42, which also require the second coded block indication information. DECISION We reverse the Examiner's decision to reject claims 1, 11, and 37--42. REVERSED 14