Xin Fang et al.

Patent Trials and Appeals Board

Sep 6, 2019

13009083 - (D) (P.T.A.B. Sep. 6, 2019)

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.
13/009,083 01/19/2011 Xin Fang QC101914 1078
12371 7590 09/06/2019
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
EXAMINER
LE, PETER D
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN FANG, WEI SHI, and GERALD PAUL MICHALAK
Appeal 2018-007762
Application 13/009,083
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1, 2, 4–8, 10–14, 16–20, and 22–30.
Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We decided
a previous appeal, 2014-009445, on August 11, 2016, affirming the rejection
of all then-pending claims.
We reverse.

1 We use the word “Appellants” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellants identify the real party in interest as
QUALCOMM Incorporated. Appeal Br. 3.
Appeal 2018-007762
Application 13/009,083
2
CLAIMED SUBJECT MATTER
The claims are directed to dynamic video switching. Spec. Title.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A dynamic codec allocation method, comprising:
receiving a plurality of datastreams;
determining a respective codec loading factor for each
datastream in the plurality of datastreams;
assigning the plurality of datastreams to a hardware codec,
in order by the respective codec loading factor and starting with
the highest respective codec loading factor, until the hardware
codec is loaded to substantially maximum capacity;
assigning the remaining datastreams of the plurality of
datastreams to a software codec, based on the hardware codec
being loaded to substantially maximum capacity;
receiving a new datastream;
determining a codec loading factor for the new datastream;
and
reassigning, based on reception of the new datastream, at
least one datastream of the plurality of datastreams that was
previously assigned to the hardware codec to the software codec
based on the codec loading factor of the new datastream being
higher than the codec loading factor of the at least one
datastream.
App. Br. 26 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Yan US 2009/0324108 Al Dec. 31, 2009
Nishimaki US 2010/0325638 Al Dec. 23, 2010
Chiang, Hardware/Software Real-Time Relocatable Task
Scheduling and Placement in Dynamically Partial
Reconfigurable Systems, June 2007, National Chung Cheng
University.
Appeal 2018-007762
Application 13/009,083
3
REJECTIONS2
Claims 1, 7, 13, and 193 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the applicant regards as the invention. Non-Final Act. 5–7;
Ans. 5–6.
Claims 1, 2, 5–8, 11–14, 17–20, and 23–30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Nishimaki and Chiang. Non-
Final Act. 7–18; Ans. 7–18.
Claims 4, 10, 16, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nishimaki, Chiang, and Yan. Non-Final Act. 19–
20; Ans. 19–20.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We agree with Appellants’ conclusions
as to the rejections of the claims.
35 U.S.C. § 112
According to the Examiner,
the following limitation renders [claims 1, 7, 13, and 19]
indefinite (emphasis added): “reassigning, . . . , at least one
datastream of the plurality of datastreams that was previously
assigned to the hardware code to the software codec based on
the codec loading factor of the new datastream being
higher . . . .”

2 The rejection of claims 1, 7, 13, and 19 (Non-Final Act. 4–5) under 35
U.S.C. § 101 has been withdrawn (Ans. 21).
3 Although not enumerated among the rejected claims, for purposes of this
Appeal we consider the rejection of base independent claims 1, 7, 13, and 19
to extend to dependent claims 2, 4–6, 8, 10–12, 14, 16–18, 20, and 22–30
that would inherit the alleged indefiniteness of their respective base claims.
Appeal 2018-007762
Application 13/009,083
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Non-Final Act. 6. The Examiner finds the limitation indefinite because, in
the situation wherein the codec loading factor is based on a battery energy
level, a new datastream requiring a higher battery energy would replace a
datastream requiring a lower battery energy level presently assigned to a
hardware codec. Id. However, the Examiner finds a replacement increasing
power consumption is contrary to the action that should be taken. Id. That
is, according to the Examiner:
It is understood by one ordinarily skilled in the art that when the
codec loading factor based on a battery energy level for a new
datastream is higher than a previously assigned data stream (i.e.
a new datastream requires a higher battery energy than
previously assigned datastream), reassigning the previously
assigned datastream to software codec should not be performed
to make room for the new datastream requiring higher battery
energy (because a datastream requiring lower battery energy
level should run on a hardware codec so as to save battery energy
of the hardware codec).
Id. (emphasis added). The Examiner concludes the term “higher” is
rendered indefinite by the contradiction between the language of the claims
and what one skilled in the art would understand to be a desired action under
the recited conditions. Id. at 6–7.
Appellants argue there is no contradiction because it is not necessarily
true that a reassignment resulting in increased battery energy requirement
should be avoided. App. Br. 15.
[E]ven if there may be situations where a new datastream has
both a higher codec loading factor and a higher battery energy
consumption, it may be desirable to assign the new datastream to
a hardware codec because of the preference for increased system
performance regardless of any energy efficiency of assigning the
datastream to a software codec.
Id. at 15–16.
Appeal 2018-007762
Application 13/009,083
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Appellants’ argument is persuasive of Examiner error. The Examiner
provides insufficient explanation of why an increased battery energy
requirement is undesirable under all conditions such that it is at odds with
requirements set forth by the claims. Furthermore, even if a claim were to
require an operation that one skilled in the art would prefer to avoid, there is
no requirement a claim cover only improvements that are advances in the
art. The claims are not rendered indefinite because, according to the
Examiner, the scope of the claims include an undesirable operation. We find
no contradiction internal to the claims; the claims do require decreasing a
battery energy requirement. Accordingly we conclude the claims are not
indefinite and we do not sustain the rejection under 35 U.S.C. § 112, second
paragraph.

35 U.S.C. § 103
According to the Examiner, a broad but reasonable interpretation of
the claimed loading factor of a datastream includes a priority of the
datastream. Non-Final Act. 8. Applying this interpretation, the Examiner
finds Nishimaki’s resource priority calculation step ST59 responsive to an
execution request teaches determining a loading factor for a new datastream.
Id. at 9. The Examiner relies on Nishimaki’s disclosure of task assignment
among codecs in combination with Chiang’s disclosure of reducing power
consumption by switching a hardware task to a software task for teaching
the step of:
reassigning, based on reception of the new datastream, at least
one datastream of the plurality of datastreams that was
previously assigned to the hardware codec to the software codec
based on the codec loading factor of the new datastream being
Appeal 2018-007762
Application 13/009,083
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higher than the codec loading factor of the at least one
datastream.
Id. at 10.
Appellants contend, rather than assigning a loading factor to a
datastream as required by claim 1, Nishimaki discloses assigning a priority
to a resource capable of executing an application, not to the application
executed by the codec. App. Br. 21; Reply Br. 5–6.
The Examiner responds:
Nishimaki, Table 4 teaches Application 51-3 having the lower
priority is (re-)assigned to Software codec 81-1 in view of
Chiang Sect. 1.3, p. 5: disclosing ‘Dynamic Hardware-Software
Switching’ to teach the reassigning of the datastream 51-1
(previously assigned to hardware codec 14-1) to software codec
81-1 based on the respective codec loading factor in mid-stream.
Ans. 27 (emphasis omitted).
Appellants reply, arguing Nishimaki’s Table 4 shows that priority
assignments are associated with resources, not applications or, as recited by
the claims, datastreams. Reply Br. 5–6. In particular, Appellants direct
attention to Software codec 81-2 of Table 4 having an assignment priority
value of 2 although no application is assigned to the codec. Id. at 6. Thus,
Appellants argue “[t]here is simply no disclosure or suggestion in Nishimaki
that [priority] is assigned to, or determined for, an application in Nishimaki,
such as Application 51-1, 51-2, or 51-3.” Id.
Appellants’ argument is persuasive of reversible Examiner error. The
Examiner has failed to explain why Nishimaki’s resource priority teaches or
suggests determining a codex loading factor of a new datastream and
reassigning a datastream from a hardware codec to a software codec based
on the codec loading factor of the new datastream being higher than the
Appeal 2018-007762
Application 13/009,083
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codec loading factor of the datastream being reassigned. Because we agree
with at least one of the arguments advanced by Appellants, we need not
reach the merits of Appellants’ other arguments.
Accordingly, we do not sustain the rejection of independent claim 1 or,
for the same reasons, the rejection of independent claims 7, 13, and 19 under
35 U.S.C. § 103(a) or the rejection of dependent claims 2, 5, 6, 8, 11, 12, 14,
17, 18, 20, and 23–30. Furthermore, we do not sustain the rejection of
claims 4, 10, 16, and 22 under 35 U.S.C. § 103(a) as the Examiner’s
application of the Yan reference fails to cure the deficiency in the base
rejection addressed above.

DECISION
We reverse the Examiner’s rejections under 35 U.S.C. §§ 103(a) and
112.

REVERSED