Ex Parte Wang

Patent Trials and Appeals Board

Apr 10, 2019

14461520 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/461,520 08/18/2014
97818 7590 04/12/2019
GoogleLLC
c/o Young Basile Hanlon & MacFarlane, P.C.
3001 West Big Beaver Rd., Ste. 624
Troy, MI 48084-3107
FIRST NAMED INVENTOR
Yunqing Wang
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.
GOGL-1116-A 6575
EXAMINER
XU,XIAOLAN
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
04/12/2019 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):
docketing@youngbasile.com
audit@youngbasile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUNQING WANG
Appeal2018-006925
Application 14/461,520
Technology Center 2400
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 6-14, 16-20, and 22-25. The Examiner has
objected to claims 15 and 21. 3 Final Act. 1, 12. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed Aug. 18, 2014; "Final Act." for the Final Office Action,
mailed July 11, 2017; "App. Br." for Appellant's Appeal Brief, filed Dec.
21, 2017; "Ans." for Examiner's Answer, mailed May 10, 2018; and "Reply
Br." for Appellant's Reply Brief, filed June 26, 2018.
2 According to Appellant, the real party in interest is Google LLC. App.
Br. 3.
3 The objection to claims 15 and 21 is a petitionable matter and is not before
us on Appeal. See MPEP § 1002.02(c)(4).
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Application 14/461,520
BACKGROUND
Appellant's disclosed embodiments and claimed invention relate to
encoding and decoding digital video using "motion-compensated
partitioning." Spec. ,r 2. Claims 6, 7, 8, 11, 12, 13, 19, and 22, reproduced
below, are illustrative of the claimed subject matter:
6. A method comprising:
identifying a current block of a current frame of an input
video stream;
generating, by a processor in response to instructions
stored on a non-transitory computer readable medium, an
encoded block by encoding the current block, wherein
encoding the current block includes motion-compensated
partitioning the current block; and
transmitting or storing the encoded block.
7. The method of claim 6, wherein motion-compensated
partitioning the current block includes:
generating coarse motion estimation information for the
current block;
partitioning the current block; and
generating fine motion estimation information for the
current block.
8. The method of claim 7, wherein generating coarse motion
estimation information for the current block includes dividing
the current block into a plurality of basic blocks.
App. Br. 20-21 (Claims App'x).
11. The method of claim 7, wherein partitioning the current
block includes:
determining a partitioning scheme from a plurality of
candidate partitioning schemes, wherein each candidate
partitioning scheme from the plurality of candidate
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partitioning schemes includes at least one candidate
partition from a plurality of candidate partitions for the
current block; and
partitioning the current block using the partitioning
scheme.
12. The method of claim 11, wherein determining the
partitioning scheme includes generating a partitioning decision
tree including a plurality of nodes, wherein each node from the
plurality of nodes represents a candidate partition from the
plurality of candidate partitions.
13. The method of claim 12, wherein determining the
partitioning scheme includes traversing the partitioning
decision tree in a depth-first order.
Id. at 21-22.
19. The method of claim 11, wherein generating fine motion
estimation information for the current block includes:
Id. at 23.
generating sub-pixel motion information for each
partition from the partitioning scheme; and
determining a prediction mode for each partition from the
partitioning scheme.
22. The method of claim 10, wherein generating coarse motion
estimation information for the current block includes:
Id. at 26.
omitting performing coarse motion searching for blocks
other than the plurality of basic blocks.
THE REJECTIONS
RI. Claims 22-25 stand rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 4.
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R2. Claims 6-12 and 19 stand rejected under 35 U.S.C. § I02(a)(2)
as anticipated by Wang (US 8,761,261 Bl, published June 24, 2014). Final
Act. 5-8.
R3. Claims 13, 14, 16-18, and 20 stand rejected under 35 U.S.C.
§ 103 as obvious over Wang and Cho (US 2014/0146884 Al, published
May 29, 2014). Final Act. 9-11.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 4I.37(c)(l)(iv).
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Anticipation Rejection of Claims 6-12 and 19
Appellant argues claims 6-12 and 19 together as a group, and
Appellant also separately argues dependent claims 7, 8, 11, 12, and 19. App.
Br. 8, 12-15. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.3 7 ( c )(1 )(iv), we limit our discussion to independent claim 6 and
dependent claims 7, 8, 11, 12, and 19. Dependent claims 9 and 10, which
are not separately argued, stand or fall with the claims from which they
depend.
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Claim 6: "motion-compensated partitioning"
Claim 6 recites: "encoding the current block includes motion-
compensated partitioning the current block." App. Br. 20 (Claims App'x)
( emphasis added). The Examiner found Wang discloses this limitation
because Wang uses motion vectors to select a mode for partitioning a block
and encodes the block using the selected mode. Final Act. 2, 5---6 ( citing
Wang 1:49-59); Ans. 4.
Appellant argues the Final Action fails to establish a prima facie
rejection because it does not explain "why one skilled in the art would
consider some identified teaching of Wang to be equivalent to 'motion-
compensated partitioning."' App. Br. 9. In addition, Appellant faults the
Examiner for not providing an express definition of the term "motion-
compensated partitioning," and Appellant argues the Examiner pointed to
Wang's "motion estimation" rather than "motion compensation." Id.
at 10-11.
We are not persuaded of Examiner error. First, we do not agree with
Appellant's contention that the Examiner failed to establish a prima facie
case of anticipation. The Examiner provided sufficient notice of the reasons
for the rejection by identifying the relevant portions of the cited reference
and by explaining how the reference discloses the claim limitations. See
Final Act. 2, 5-6; In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (A prima
facie case is established when the rejection provides notice of the reasons for
the rejection, and it is deficient when it of "is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection."). Although Appellant faults the Examiner for failing to
provide a construction of a claim term, "[ t ]here has never been a requirement
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for an examiner to make an on-the-record claim construction of every term
in every rejected claim and to explain every possible difference between the
prior art and the claimed invention in order to make out a prima facie
rejection." In re Jung, 637 F.3d at 1363.
Further, Appellant does not identify error in the substance of the
Examiner's rejection. Appellant asserts Wang fails to disclose the claimed
motion-compensated partitioning, but fails to explain this conclusion. App.
Br. 9-12; Reply Br. 3. In particular, Appellant contends the Specification
"distinguishes motion-compensated partitioning," but Appellant neither
explains the meaning of this claim term nor distinguishes it from Wang's
disclosure. See App. Br. 9, 11-12 (citing Spec. ,r 62, Abstract). The
portions of the Specification referenced by Appellant fail to add any clarity
to Appellant's argument. See Spec. ,r 62, Abstract.
In addition, Appellant submits Wang's motion vectors are created
using motion estimation and submits the Examiner fails to show Wang's
motion estimation discloses motion compensation. See App. Br. 9-10. But,
neither claim 6 nor Appellant's Specification includes the term "motion
compensation"-rather, both recite "motion-compensated partitioning"-
and the Specification repeatedly describes the claimed motion-compensated
partitioning as partitioning based on motion estimation information obtained
for partitions. E.g., Spec. ,r,r 20, 66, Abstract, Fig. 8.
As the Examiner found, Wang discloses partitioning based on motion
estimation information obtained for partitions. Final Act. 2, 5---6 ( citing
Wang 1 :58-59); Wang 1 :49-59 (providing full context). Accordingly, we
see no error in the Examiner's finding that Wang discloses the claimed
motion-compensated partitioning.
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's finding that the cited prior art discloses
the disputed limitation of claim 6, nor do we find error in the Examiner's
resulting finding of anticipation. Accordingly, we sustain the Examiner's
anticipation rejection of independent claim 6.
Claims 7, 8, and 11: "partitioning the current block"
Claim 7 recites: "wherein motion-compensated partitioning the
current block includes: [ A J generating coarse motion estimation information
for the current block; [BJ partitioning the current block; and [CJ generating
fine motion estimation information for the current block." App. Br. 20-21
(Claims App'x) (letters added) (emphasis added).
The Examiner found Wang discloses claim 7. Final Act. 6 ( citing
Wang 1 :49--57). Specifically, the Examiner found: (A) Wang determines
motion vectors with integer accuracy4 for several potential partition modes,
which discloses "generating coarse motion estimation information ... ";
(B) Wang selects a most-accurate of those partition modes, which discloses
"partitioning ... "; and (C) Wang determines motion vectors with subpixel
accuracy for the selected, most-accurate partition mode, which discloses
"generating fine motion estimation information .... " Id.
Appellant argues this rejection "is in error and is misleading." App.
Br. 12. Specifically, Appellant contends Wang's selection of the most-
accurate partition mode "cannot reasonably be interpreted as partitioning the
4 Wang explains that integer accuracy may be a "single-pixel" (Wang 3:45),
which provides coarse information as compared to motion vectors with
subpixel accuracy.
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current block [in step BJ, since the block is already partitioned" in order to
calculate Wang's integer motion vectors (step A). Id. at 13; Reply Br. 4. In
response, the Examiner clarifies that Wang determines integer accuracy for
different partition modes and, upon selecting the most-accurate mode,
"actually partition[ s] the current block." Ans. 5 ( emphasis omitted).
We are not persuaded of error. Wang divides the block to create the
different partition modes before Wang selects a most-accurate partition
mode. Wang 3:36-43; Fig. 3 (showing divisions of blocks for different
partition modes). Appellant contends the existence of this step shows the
rejection is in error, but claim 7 does not preclude the existence of an
unclaimed step, such as the one identified by Appellant. 5 See Crystal
Semiconductor Corp. v. TriTech Microelectronics Int'!, Inc., 246 F.3d 1336,
1348 (Fed. Cir. 2001) (There is a presumption that a "comprising" claim
"does not exclude additional, unrecited elements."). Of importance, the
Examiner found a later step----i.e., Wang's selection of a partition mode and
actual partitioning of the block----discloses the disputed limitation. Final
Act. 6; Ans. 5. Appellant does not show error in this finding and,
consequently, does not show error in the Examiner's rejection of claim 7.
Claim 8 depends on claim 7 and specifies that the generation of coarse
motion estimation (step A) "includes dividing the current block into a
plurality of basic blocks." App. Br. 21 (Claim App'x). The Examiner found
Wang's multiple partition modes disclose this limitation because each mode
5 In fact, as discussed infra, claim 8 depends from claim 7 and specifically
recites this additional step as a claim limitation. See App. Br. 21 (Claim
App 'x) ("generating coarse motion estimation ... includes dividing the
current block into a plurality of basic blocks").
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partitions the block in a different way. Final Act. 6 (citing Wang 1:51-53).
Although Appellant admits this portion of Wang partitions the block (see
App. Br. 12 (noting Wang's "integer accuracy motion vectors relies on the
blocks being partitioned")), Appellant contends Wang fails to disclose
dividing the block (id. at 13; Reply Br. 5).
We are not persuaded by this argument because Appellant does not
explain why Wang's partitioning does not disclose the "dividing" required
by the claim, and a reference need not include the language recited by the
claim. 6 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (A reference
"need not satisfy an ipsissimis verb is test" to anticipate.). Appellant also
asserts the Examiner "ignores the distinctions" between the "dividing" of
claim 8 and the "partitioning" of claim 7. App. Br. 13; Reply Br. 5. We
disagree, as the Examiner points to different parts of Wang for each
limitation. Final Act. 5---6 ( explaining the rejection and relevant portions of
Wang). Appellant identifies no inconsistencies in the Examiner's mapping
of Wang to the claims, and Appellant shows no failure of Wang to disclose
the limitations of the claim. Accordingly, we see no error in the Examiner's
findings regarding claim 8.
For dependent claim 11, Appellant presents substantially similar
arguments as were presented for claim 7. App. Br. 13-14 (arguing Wang's
selection of a most-accurate partition mode cannot teach partitioning the
current block "since the block is already partitioned"); Reply Br. 5---6. As
6 Appellant notes that "dividing" and "partitioning" are different terms, but
fails to identify any relevant differences in the meanings of these two terms.
See App. Br. 13.
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explained above, these arguments do not persuade us of error in the
Examiner's finding.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's finding that the cited prior art discloses
the disputed limitations of claims 7, 8, and 11, nor do we find error in the
Examiner's resulting finding of anticipation. Accordingly, we sustain the
Examiner's anticipation rejection of dependent claims 7, 8, and 11. As
noted supra, dependent claims 9 and 10 are not separately argued and fall
with the claims from which they depend (i.e., independent claim 6 and
dependent claims 7 and 8).
Claim 12: "generating a partitioning decision tree"
Claim 12 recites: "determining the partitioning scheme includes
generating a partitioning decision tree including a plurality of nodes,
wherein each node from the plurality of nodes represents a candidate
partition from the plurality of candidate partitions." App. Br. 21 (Claims
App'x) (emphasis added).
The Examiner found Wang discloses this limitation because "figure 3
teaches a partitioning decision tree, a tree of blocks, wherein each block of
size 16*16, 8*16, 16*8, 8*8, 4*8, 8*4 and 4*4 is a node, which represents a
candidate partition." Final Act. 3, 8; see Ans. 7-8 (contending the findings
are consistent with the Specification). Appellant argues Wang fails to
disclose the claimed decision tree. App. Br. 14; Reply Br. 6-7.
In Figure 3, Wang illustrates seven modes for partitioning a block.
Wang 2:31, 3:36-43. But neither the figure nor its associated description
expressly discloses a decision tree (id.), and the Examiner does not explain
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why a person of ordinary skill in the art would understand Wang to
expressly or inherently disclose the claimed partitioning decision tree (see
Final Act. 3, 8; Ans. 7-8). In particular, the Examiner finds Wang discloses
a plurality of nodes that each represent a candidate partition, but the
Examiner does not directly address Appellant's argument that Wang lacks a
decision tree, as required by the claim. See id. Accordingly, we are bound
by the record to find error in the Examiner's finding that Wang discloses a
decision tree. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d
628, 631 (Fed. Cir. 1987) ("A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.").
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's reliance on the cited prior art
combination to disclose the disputed limitation of claim 12. Accordingly,
we do not sustain the Examiner's anticipation rejection of claim 12. 7
7 In the event of further prosecution, the Examiner may consider a rejection
of claim 12 under 35 U.S.C. § 103 as obvious over the combination of Wang
and Cho. Wang's multiple partition modes teach "a plurality of nodes" that
each "represent[] a candidate partition from the plurality of candidate
partitions," as required by claim 12. Wang 3:36-43, Fig. 3. Wang teaches
the claimed "determining the partitioning scheme" by selecting the partition
mode with the minimum sum of absolute difference (SAD) (id. at 4: 10-20),
but Wang does not disclose generating a decision tree as part of this
determination. Cho teaches the claimed "partitioning decision tree" with a
plurality of nodes that each represent a potential partitioning of a block. See,
e.g., Cho ,r,r 3-7. When analyzing claim 13, the Examiner finds it would
have been obvious to a person of ordinary skill in the art to combine Wang's
partition mode selection with Cho' s decision tree traversal, and as explained
infra, we are not persuaded of error in this finding or the resulting
conclusion of obviousness of claim 13. Although the Board is authorized to
reject claims under 37 C.F.R. § 4I.50(b), no inference should be drawn
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Claim 19: "determining a prediction mode"
Claim 19 states generating fine motion estimation information
includes "determining a prediction mode for each partition from the
partitioning scheme." App. Br. 23 (Claims App'x).
The Examiner found Wang discloses this limitation because Wang's
block encoding is complaint with the H.264 standard and therefore includes
determining a prediction mode. Final Act. 8 (citing Wang, claim 2).
Appellant argues the H.264 standard is not a valid reference. App. Br. 14.
Appellant also alleges the Examiner failed to show determination of a
prediction mode as part of the claimed step of generating fine motion
estimation. Id. at 14--15; Reply Br. 7-8. In response, the Examiner
explained that one of skill in the art would recognize Wang inherently
discloses the disputed claim limitation, and the Examiner included an article
as objective evidence to support this finding. Ans. 8 ( citing Thomas
Wiegand, et al., Overview of the H264/AVC Coding Standard, IEEE
TRANSACTIONS ON CIRCUITS AND SYSTEMS FOR VIDEO TECHNOLOGY, July
2003, at 560 (the "Article")). 8
when the Board does not elect to do so. See MPEP § 1213.02 (9th ed.
2018).
8 In the context of claim 6, Appellant alleges error in the Examiner's use of
the Article. See App. Br. 12 n.1 (arguing the Examiner failed to "properly
cit[ e] the reference"); Reply Br. 3 ("[T]he Examiner's Answer still doesn't
actually cite to any document that the Appellant can access or review.").
Appellant does not include these arguments for claim 19, but we clarify that
these arguments would not persuade us of error. First, the Examiner
attached the article to both the Examiner's Answer and a prior Advisory
Action (mailed Oct. 26, 2017), so the Appellant's Appeal Brief and Reply
Brief have afforded Appellant the opportunity to respond to the Article.
Second, we are not persuaded by the implied argument that the Article
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To establish inherency, it must be clear that the missing element "is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill." In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999); Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1269 (Fed. Cir. 1991) ("Inherency ... may not be established by
probabilities or possibilities.").
Appellant's arguments do not persuade us of error. Initially, we note
Appellant does not contradict the Examiner's inherency assertion. For
example, Appellant does not assert that an H.264 compliant encoder may or
may not determine a prediction mode, and Appellant does not respond to the
cited Article. App. Br. 14--15; Reply Br. 7-8. Further, the Article explains
the H.264 standard encodes blocks of video data with intra-frame or inter-
frame prediction. Article at 568-70; see id. at 565 (noting this basic
approach has been used "in all prior ITU-T and ISO/IEC JTCl video
standards since H.261," and citing an article from 1990 in support). Thus,
we see no error in the Examiner's finding that one of skill in the art would
understand H.264 encoding, as disclosed by Wang, necessarily includes
"determining a prediction mode," as required by claim 19.
As Appellant notes, the claim also specifies that "generating fine
motion estimation" includes "determining a prediction mode," and Appellant
contends the Examiner fails to demonstrate Wang discloses this aspect of the
claim. App. Br. 14--15; Reply Br. 7-8. But Appellant identifies (and our
review reveals) no basis for restricting when the step of "generating fine
motion estimation" must begin or end, in relevant part, under the broadest
should have been designated as a prior art reference; we perceive no error in
the Examiner's citation to this evidence to support the finding of inherency.
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reasonable interpretation of claim 19. Further, Appellant fails to explain
why this limitation demonstrates error in the Examiner's findings. For
example, Appellant points to Wang's disclosure of encoding motion vectors
in step 408 as evidence that "Wang does not seem to determine a prediction
mode 'after partitioning and motion estimation"'; however, Appellant fails
to explain how the latter results from the former, or how this would support
Appellant's argument. Reply Br. 8. Also, Appellant does not identify any
potential scenario where, for Wang's H.264 compliant encoder, the
disclosed generating fine motion estimation information would not "include"
determining a prediction mode, as required by the claim.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to disclose the disputed limitation of claim 19, nor do we find
error in the Examiner's resulting finding of anticipation. Accordingly, we
sustain the Examiner's anticipation rejection of claim 19.
Obviousness Rejection Claims 13, 14, 16-18, and 20
Appellant argues claims 13, 14, 16-18, and 20 together as a group.
See App. Br. 15-16. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv), we limit our discussion to dependent claim 13. Claims 14
and 16-18 ( which all depend from claim 13 directly or indirectly) and
independent claim 20 stand or fall with claim 13.
Claim 13 recites: "determining the partitioning scheme includes
traversing the partitioning decision tree in a depth-first order." App. Br. 22
(Claims App'x). The Examiner found Cho teaches a process of pruning a
decision tree in a bottom-up depth-first order. Final Act. 9 (citing Cho ,r 6).
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The Examiner concluded it would have been obvious to incorporate Cho' s
decision tree traversal in Wang's partition mode selection process to adjust
the tradeoffbetween encoder processing requirements and quality. Id. at 9--
10 ( citing Cho ,r 9).
Appellant argues it would not have been obvious to combine Cho and
Wang. App. Br. 15-16. Specifically, Appellant reasons "Cho would not
have suggested to one skilled in the art the concept of bottom-up depth-first"
traversal generally, but rather one of skill would read Cho to require the
decision tree traversal in the context of the disclosed pruning process,
including both the comparison of rate-distortion values and the splitting
process used to obtain those values. Id. From this, Appellant alleges error
in the Examiner's rejection because "it is unclear how the splitting process
described in paragraph (0006) of Cho could be incorporated with Wang."
Id. at 16.
Appellant's arguments do not persuade us of error because we
disagree with Appellant's premise that Cho does not suggest "bottom-up
depth-first" traversal of a decision tree generally. The passage cited by the
Examiner appears in Cho's description of the "Background Art," suggesting
the decision tree traversal techniques are already known to those of skill in
the art. Final Act. 9 ( citing Cho ,r 6); Cho ,r 6 (identifying both top-down
depth-first order and bottom-up depth-first order). Appellant does not
provide argument or evidence to support the premise or explain why a
person skilled in the art would understand Cho' s decision tree traversal to
also require splitting and pruning the decision tree, as well as the specific
details Cho describes for those processes. See Lear Siegler Inc. v. Aeroquip
Corp., 733 F.2d 881, 889 (Fed. Cir. 1984) (The ordinary artisan is not
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"compelled to adopt every single aspect of [ a reference's] teaching without
the exercise of independent judgment."). Accordingly, we are not persuaded
that the Examiner erred in finding that a person of ordinary skill would
understand Cho to teach and suggest traversing a decision tree in a bottom-
up depth-first order, as required by the claim. As a result, we are not
persuaded by Appellant's remaining arguments, which contend that Cho's
splitting and pruning processes could not be incorporated into Wang. See In
re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.").
Further, Appellant contends the Examiner used "hindsight," but does
not address the reasoning provided except as noted above. App. Br. 16. By
not showing error in the reasoning provided, Appellant has not shown error
in the conclusion as to obviousness. See In re Cree, Inc., 818 F.3d 694, 702
n.3 (Fed. Cir. 2016) (viewing an "impermissible hindsight" argument as
"essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references").
Finally, although we reverse the Examiner's anticipation rejection of
claim 12 (see supra), we do not reverse the Examiner's obviousness
rejection of claim 13, which depends from claim 12. We found the
Examiner erred in rejecting claim 12 because Wang failed to expressly
disclose a partitioning decision tree; however, as also noted supra, Cho
teaches the claimed partitioning decision tree (Cho ,r,r 3-7, Figs. 1-3). The
Examiner found it would have been obvious to use Cho' s decision tree
traversal in Wang's partition mode selection (Final Act. 9-10), and we are
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persuaded of no error in this finding or the resulting legal conclusion of
obviousness.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 13, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of dependent
claim 13 and claims 14, 16-18, and 20, which fall therewith.
Written Description Rejection of Claim 22
Claim 22 recites: "omitting performing coarse motion searching for
blocks other than the plurality of basic blocks." App. Br. 26 (Claims App'x)
(referred to herein as the "omitting limitation").
The Examiner rejected claim 22 as failing to comply with the written
description requirement because the Specification does not contain support
for the omitting limitation. Final Act. 4. Specifically, the Examiner
explained the Specification does not state that "coarse motion searching is
only performed for basic blocks but omitted for blocks other than basic
blocks." Ans. 2-3; Final Act. 4.
Appellant argues one skilled in the art would recognize from the
Specification that Appellant had possession of the claimed subject matter. 9
App. Br. 6. Appellant explains the Specification discloses coarse motion
9 Appellant also argues the Examiner failed to establish a prima facie case.
App. Br. 8. We disagree because the Examiner found the Specification does
not describe the omitting limitation and explained why the only description
of omitting blocks does not provide the requisite support. Final Act. 4.
(citing Spec. ,r,r 52-54); see Spec. ,r 53.
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estimation for each basic block, but does not describe using any other
blocks. Id. at 6-7 (citing Spec. ,r,r 66, 67, 69). Because the Examiner does
not explain how the disclosure indicates that "coarse motion estimation"
extends to blocks other than basic blocks, Appellant reasons a person of skill
in the art would recognize Appellant's coarse motion estimation omits
searching for those other blocks. Id. at 7; Reply Br. 2. In effect, Appellant
contends the Specification's silence on the salient points shows error in the
Examiner's written description rejection. See Reply Br. 2.
We are not persuaded by Appellant's argument. In order to satisfy the
written description requirement, the specification must reasonably convey to
a person of ordinary skill in the art that the inventor had possession of the
claimed subject matter as of the filing date. Ralston Purina Co. v. Far-Mar-
Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). The specification need not
describe the claimed subject matter word-for-word. In re Wertheim, 541
F .2d 257, 262 (CCP A 197 6). "Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation." Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012).
The Examiner found the Specification includes no disclosure of the
omitting limitation. Appellant does not identify any passage of the
Specification that does disclose this limitation; rather, Appellant argues the
Specification's failure to discuss coarse motion searching/or other blocks
demonstrates Appellant was in possession of this limitation. We are not
persuaded by this argument.
Appellant relies on two cases, both of which are distinguishable.
Reply Br. 2 (citing Ex parte Parks, 30 USPQ2d 1234 (BPAI 1993), and
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Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015)). In Inphi,
substantial evidence supported a finding that a negative limitation had
written description support because the specification distinguished between
four different signal types and the negative limitation excluded three of these
four signal types. 805 F.3d at 1357. In Parks, 10 the claims were found to
have written description support because an expert confirmed one skilled in
the art would recognize the negative limitation from the specification's
disclosure. 30 USPQ2d 1234 (explaining the equation disclosed in the
specification would indicate to one skilled in the art that the reaction would
be conducted without a catalyst). However, unlike Inphi and Parks,
Appellant fails to identify any portion of the Specification that indicates
other blocks should be omitted, and Appellant fails to provide any evidence
that one skilled in the art would have understood these other blocks would
be omitted.
Accordingly, based on our review of the Specification, we see no
error in the Examiner's finding that a person of ordinary skill would not
understand the inventor to have had possession of this claimed subject
matter as of the filing date. Accordingly, we affirm the Examiner's rejection
of claim 22 as lacking written description support.
Written Description Rejection of Claims 23-25
The Examiner also rejected claims 23-25 as failing to comply with
the written description requirement. Final Act. 4. Appellant does not
reference these claims or this rejection in the Briefs. See generally App.
10 We also note Parks is non-precedential and thus a non-binding opinion of
our predecessor Board.
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Br. 6-17; Reply Br. 2-10. Under the circumstances, we deem Appellant to
have waived any arguments as to the rejection of these claims. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to
contest a ground of rejection to the Board, ... the Board may treat any
argument with respect to that ground of rejection as waived."); see also
37 C.F.R. § 4I.37(c)(l)(iv) (requiring an explanation of "why the examiner
erred as to each ground of rejection contested by appellant"). Accordingly,
we summarily sustain the Examiner's rejection of claims 23-25.
CONCLUSIONS
The Examiner did not err with respect to rejection RI of claim 22
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement, and we sustain that rejection. Appellant does not allege error
in the Examiner's rejection RI of claims 23-25 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement, and we
summarily affirm those rejections.
The Examiner did not err with respect to anticipation rejection R2 of
claims 6-11 and 19 under 35 U.S.C. § I02(a)(2), and we sustain that
rejection. However, the Examiner erred with respect to anticipation
rejection R2 of claim 12 under 35 U.S.C. § I02(a)(2), and we do not sustain
that rejection.
The Examiner did not err with respect to obviousness rejection R3 of
claims 13, 14, 16-18, and 20 under 35 U.S.C. § 103, and we sustain that
rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 6-11, 13, 14,
16-20, and 22-25.
We reverse the Examiner's decision rejecting claim 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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