NXP USA, INC.

Patent Trials and Appeals BoardAug 2, 2021

2020001368 (P.T.A.B. Aug. 2, 2021)

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. 15/842,061 12/14/2017 ZHONGLI HE WM10160TS-US05 5386 23125 7590 08/02/2021 NXP USA, INC. LAW DEPARTMENT 6501 WILLIAM CANNON DRIVE WEST TX30/OE62 AUSTIN, TX 78735 EXAMINER LEE, Y YOUNG ART UNIT PAPER NUMBER 2419 NOTIFICATION DATE DELIVERY MODE 08/02/2021 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): ip.department.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHONGLI HE and YONG YAN Appeal 2020-001368 Application 15/842,061 Technology Center 2400 Before ERIC B. CHEN, NABEEL U. KHAN, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 39, 41, 42, 49, 53, and 54. Claims 40, 43–48, 50–52, and 55–62 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as of the application on this appeal is NXP USA, Inc. Appeal Br. 3. Appeal 2020-001368 Application 15/842,061 2 RELATED PROCEEDINGS Appellant identifies the following related appeal: In the Parent Application (11/539,522 issued as US Patent 9,883,202) to this Instant Application, an appeal was filed on June 6, 2015. In a decision issued March 27, 2017 in the appeal in the Parent Application, the Patent Trial and Appeal Board (PTAB) reversed . . . on all claims. Appeal Br. 4. We further note that the decision referenced by Appellant was issued in Appeal No. 2016-003738, and we will refer to this decision infra as “the Prior Decision.” CLAIMED SUBJECT MATTER The claims are directed to “[a] method of scaling complexity of a video processing system including determining a power saving factor based on an operating parameter and adjusting processing of video information based on the power saving factor to reduce computation complexity.” Spec. Abstract. Claim 39, reproduced below, is illustrative of the claimed subject matter: 39. A method of processing video information comprising: processing video information by a video processing system based on a power saving factor, the processing video information includes processing video information at a frame size, frame rate, and a frame type; determining a change in the power saving factor and adjusting the processing video information by the video processing system in response to the change, wherein the adjusting includes changing the computation complexity of the processing video information while maintaining the frame size, the frame rate and the frame type, wherein the adjusting the processing video information comprises: Appeal 2020-001368 Application 15/842,061 3 performing prediction error adjustment to adjust an amount of sub-pixel interpolation. Appeal Br. (Claims Appendix). REFERENCE The Examiner relies on the following as prior art: Name Reference Date Ju US 2006/0215755 A1 Sept. 28, 2006 REJECTIONS Claims 39, 41, 42, 49, 53, and 54 stand rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter. Final Act. 2–3. Claims 39, 41, 42, 49, 53, and 54 stand rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Ju. Final Act. 3. ISSUES First Issue: Has the Examiner erred in concluding the claims are patent-ineligible under 35 U.S.C. § 101? Second Issue: Has the Examiner erred in finding Ju discloses “wherein the adjusting includes changing the computation complexity of the processing video information while maintaining the frame size, the frame rate and the frame type,” as recited in claim 39? ANALYSIS First Issue—Patent Eligibility The Examiner rejects the claims for lack of subject matter eligibility. In so doing, the Examiner determines as follows: Claims 39, 41, 42, 49, 53, and 54 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all Appeal 2020-001368 Application 15/842,061 4 claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of a mathematical relationship. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than mere instructions to implement the idea on a computer, and recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. Final Act. 2–3. In January 2019, the USPTO published revised guidance on the application of § 101 consistent with the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), and subsequent Federal Circuit decisions. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), updated by USPTO, October 2019 Update: Subject Matter Eligibility (available at https:// www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf) (“October 2019 Guidance Update”). Under the Guidance, the Office must first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (referred to Step 2A, prong 1 in the Guidance); and Appeal 2020-001368 Application 15/842,061 5 (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (referred to Step 2A, prong 2 in the Guidance). See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then move to Step 2B of the Guidance. There, the Office looks to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. The final Office Action under appeal was issued subsequent to the Guidance. As such, the Examiner was required to apply the Guidance in formulating the rejection under 35 U.S.C. § 101. Here, the Examiner’s analysis did not sufficiently apply the Guidance. For example, although the Examiner determines that the claims recite a judicial exception of a mathematical concept, the Examiner does not identify the specific claim limitations that recite the judicial exception. Instead, the Examiner merely states that the claims “are directed to the abstract idea of a mathematical relationship.” Final Act. 2. This analysis is insufficient to meet the requirements of Step 2A, prong 1. Nor does the Examiner identify the additional limitations, or perform the necessary analysis under Step 2A, prong 2 to determine whether the identified additional limitations integrate any recited abstract idea into a practical application. Finally, the Examiner’s analysis under Step 2B is also deficient because it finds that the additional Appeal 2020-001368 Application 15/842,061 6 limitations in the claim (which, as we note above, were not identified with specificity) “perform generic computer functions that are well-understood, routine, and conventional activities,” but does not provide evidence to support this finding. Id. Although the Examiner provides additional explanation in the Answer (see Ans. 3–4), this additional explanation is insufficiently detailed to fulfill the requirements of the Guidance. Accordingly, we do not sustain the rejection of the claims under 35 U.S.C. § 101. Second Issue—Anticipation The Examiner rejects claim 39 as anticipated by Ju. Relevant to this issue, the Examiner finds Ju discloses “changing the computation complexity of the processing video information while maintaining the frame size, the frame rate and the frame type.” Ans. 5 (citing Ju ¶ 19). The Examiner finds that “Ju discloses the concepts of such common process of maintaining at least the I frame type (size and rate are unchanged in this scenario).” Ans. 5. Appellant argues that the Examiner’s findings are contrary to the findings of the Board made in the Prior Decision. Appeal Br. 19–20. We agree. In the Prior Decision, we found persuasive Appellant’s argument that “Ju does not adjust processing of video information to reduce computation complexity other than by changing one of picture type (frame type), picture size (frame size) or picture rate (frame rate).” Prior Decision 4. We explained that Ju describes “adjusting picture (i.e., frame) type (Ju Fig. 5), size (Ju Fig. 6), and rate (Ju Fig. 7) in response to available power level, but do not show any adjustment to video information processing while all three Appeal 2020-001368 Application 15/842,061 7 of picture type, size, and rate are held in their existing state, i.e. maintained.” Prior Decision 7. The Examiner states that the findings in the Prior Decision do not dictate the outcome here because “the Board explicitly stated that the claims in the parent application require the additional limitations of maintaining the frame type for a ‘given power level’” (Ans. 5). We disagree because our finding in the Prior Decision did not rely on any requirement that the frame type be maintained for a given power level. Rather, our finding was based on the fact that the claim required that all three of picture type, size, and rate be maintained when computation complexity is changed. That same requirement is in the claims before us on this appeal. As such, we agree with Appellant that the Examiner erred in finding Ju discloses the argued limitation, and we do not sustain the rejection of claim 39 under 35 U.S.C. § 102(e). Remaining Claims The remaining claims depend from claim 39. As a result, they stand together with claim 39, and we do not sustain their rejections for the reasons discussed above. CONCLUSION We reverse the Examiner’s decision to reject the claims. Appeal 2020-001368 Application 15/842,061 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 39, 41, 42, 49, 53, 54 101 Eligibility 39, 41, 42, 49, 53, 54 39, 41, 42, 49, 53, 54 102 Ju 39, 41, 42, 49, 53, 54 Overall Outcome 39, 41, 42, 49, 53, 54 REVERSED