Ye-Kui Wang

Patent Trials and Appeals Board

Sep 23, 2019

14029120 - (D) (P.T.A.B. Sep. 23, 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.
14/029,120 09/17/2013 Ye-Kui Wang 1212-604US01/124488U2 5073
15150 7590 09/23/2019
Shumaker & Sieffert, P. A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
ocpat_uspto@qualcomm.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YE-KUI WANG
Appeal 2018-000303
Application 14/029,120
Technology Center 2400
Before JOSEPH L. DIXON, THU A. DANG, AND JOHN P. PINKERTON,
Administrative Patent Judges.
DIXON, 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 1–8, 10–16, 18–25, 27–33, and 35–38,
which constitute all the claims pending in this application. Final Act. 1.
Claims 9, 17, 26, and 34 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
QUALCOMM Incorporated. App. Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to an indication of frame-packed stereoscopic
3D video data for video coding. Claims 1 and 10, reproduced below, are
illustrative of the claimed subject matter:
1. A method for decoding video data, the method
comprising:

receiving, with video decoder circuitry, video data;

receiving, with the video decoder circuitry, an
indication that indicates whether any pictures in the
received video data contain frame-packed stereoscopic 3D
video data, wherein the frame-packed stereoscopic 3D
video data is 3D video data that includes a half resolution
version of a right view frame and a half resolution version
of a left view frame, wherein the indication is received in
at least one of a profile syntax, a tier syntax, or a level
syntax, and wherein the profile syntax, the tier syntax, or
the level syntax specify limits on the capabilities needed to
decode the
video data;

decoding, with the video decoder circuitry, the
indication prior to decoding the received video data; and

decoding, with the video decoder circuitry, the
received video data in accordance with the received
indication and in accordance with a capability of the video
decoder circuitry to decode the frame-packed stereoscopic
3D video data, including:

decoding, with the video decoder circuitry, the
received video data in the case that the indication specifies
that there are one or more pictures in the received video
data that contain frame-packed stereoscopic 3D video data
and the video decoder circuitry is capable of decoding
frame-packed stereoscopic 3D video data.
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10. A method for encoding video data, the method
comprising:

encoding, with video encoder circuitry, video data;

generating, with the video encoder circuitry, an indication
that indicates whether any pictures in the encoded video data
contain frame-packed stereoscopic 3D video data, wherein the
frame-packed stereoscopic 3D video data is 3D video data that
includes a half resolution version of a right view frame and a half
resolution version of a left view frame, wherein the indication is
generated in at least one of a profile syntax, a tier syntax, or a
level syntax, and wherein the profile syntax, the tier syntax, or
the level syntax specify limits on the capabilities needed to
decode the video data; and
signaling the indication in an encoded video bitstream.
REFERENCES
The prior art relied upon by the Examiner is:
Yun et al. US 2003/0095177 A1 May 22, 2003
Kikuchi et al. US 7,010,032 B1 Mar. 7, 2006

REJECTIONS
Claims 18–36 stand rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention.2

2 We note that some of the indicated claims have been canceled. Also, the
Examiner withdrew the § 112, second paragraph, rejection of claims 18–34,
but maintains the rejection of claims 35 and 36. (Ans. 9).

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Claims 1–8, 10–16, 18–25, 27–33, and 35–38 stand rejected under 35
U.S.C. § 101 as being directed toward non-statutory subject matter.
Claims 1–8, 10–16, 18–25, 27–33, 35, and 36 stand rejected under
pre-AIA 35 U.S.C. § 102(b) or in the alternative under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Yun.
Claims 37 and 38 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Yun in view of Kikuchi.
OPINION
35 U.S.C. § 112, second paragraph
With respect to independent claims 35 and 36, the Examiner
maintains that independent claims 35 and 36 are drafted using functional
limitations and require interpretation of these functional limitations in view
of the corresponding structure, acts, or materials as disclosed in the
specification for a proper interpretation and to particularly point out and
distinctly claim to the claimed invention. The Examiner maintains that, the
written description fails to disclose the corresponding structure, acts, or
material for the claimed function and therefore do not particularly point out
and distinctly claim the invention. (Final Act. 8–10; see also Ans. 14 – 15).
Appellant concedes that the Examiner is correct with the
interpretation under 35 U.S.C. § 112, sixth paragraph.3 (App. Br. 15).
Appellant identified paragraph 45 of the Specification as providing written
description support for the corresponding “means” limitations in

3 We note that Appellant addresses the rejections based on post-AIA
statutes, but the application was filed on September 17, 2013 and tclaims the
benefit of two provisional applications filed in September 2012. Therefore,
the application in this appeal is evaluated under pre-AIA statutes.

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independent claims 35 and 36. Appellant contents that paragraph 45 of
Appellant’s Specification describes example circuits which may be used for
video decoder 30 and therefore, “at least one corresponding structure for
Appellant’s claimed means is a special purpose computer.” (App. Br. 16).
Appellant further argues that “Appellant’s specification clearly recites well
understood structures that may be configured to perform the features [of]
claim 35 (e.g., video decoder 30).”4 (App. Br. 16).
Accordingly, we look to Appellant’s Specification to determine
whether there is sufficient structure to support the recited functions. We
agree with the Examiner that a generic processor and disclosed does not
provide sufficient structure to perform each of the recited functions.
Appellant does not dispute the Examiner’s finding of functional
limitations, and Appellant also contends that the rejection of claims 35 and
36 under 35 U.S.C. § 112, sixth paragraph has been withdrawn. (Reply Br.
4).
The Examiner provides a further detailed response regarding
paragraph 45 of the Specification. (Ans. 14–15).
We have reviewed paragraph 45 of the Specification identified by
Appellant and disagree with the Appellant that the originally filed

4 We further note that with regards to the patent eligibility rejection,
Appellant contends “claim 1 recites more than well-understood, routine and
conventional elements and, instead, recites a specific technique that confines
the claim to a particular application without seeking to pre-empt all
techniques for analyzing and formatting data.” (App. Br. 28; see also Ans.
15). The Examiner maintains “Appellant argues that the claimed means
have a structure well understood in the art, then the claims are not eligible
under section [] 101 (abstract idea applied to what is well established in the
art) and under sections 102/103 (subject matter admitted as known in the
art).” (Ans. 15).
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Specification discloses the specific algorithm(s) for accomplishing the
various functional “means” recited in the language of independent claims 35
and 36.
In the Reply Brief, Appellant contends that its argument that “video
decoder” and “video decoder circuitry” are within a broad class of structures
that are well-understood in the art of video coding is not an admission that
the structures and processes recited in Appellant’s claims are known.
Appellant also contends that Appellant’s Specification and claims are replete
with a description of an algorithm that detail how video decoding circuitry
may be configured to decode video data, including how video decoding
circuitry may decode video data in accordance with the techniques of this
disclosure. Appellant also argues that the claims are directed to both
processes as well as a special purpose computer configured to implement the
disclosed algorithm. (Reply Br. 6–7).
But Appellant does not specifically identify where the video
decoding/encoding is specifically disclosed in the Specification so as to
make the processes special purpose computers. (See Reply Br. 6).
Appellant specifically identifies, in the Summary of the Claimed
Subject Matter, that “video decoder 30 as shown in FIG. 4 and described, for
example in paragraph [0045], [0098]-[0104], and [0109]-[0113] of
Appellant’s specification as filed.”5 (App. Br. 6).

5 Additionally, we note that Appellant’s corresponding disclosure for the
encoder in independent claim’s 36 corresponds to “the means for encoding
video data is video encoder 20 as shown in FIG. 3 and described, for
example in paragraph [0045], [0084]–[0097], and [0105]–[0108] of
Appellant’s Specification as filed. In addition, the disclosed structure
corresponding to the means for generating an indication is video encoder 20.
The disclosed structure corresponding to the means for signaling the
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We find these identified paragraphs contain a detailed block diagram
of numerous additional elements with none of their underlying
corresponding disclosures so as to determine whether all of the
corresponding blocks are necessary or whether any specific combination
thereof would be included in the claimed invention. Consequently,
Appellant’s correlation does not identify the corresponding structure, acts, or
materials to particularly point out and distinctly claim the invention.
We find Appellant provides a general argument and does not identify
how the claimed invention particularly points out and distinctly claims the
invention of claims 35 and 36. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence).
Alternatively, if we find that the claimed encoding and decoding were
conventional as Appellant contends, but the Specification does not further
detail any algorithm for these well-known functions, the use of the
functional claim language under 35 U.S.C. §112, sixth paragraph would still
be deficient because the skilled artisan would not know the scope of which
of any of the well-known corresponding algorithms to interpret the claim.
Additionally, if Appellant contends that the scope of the claim would cover
any and all known algorithms, then we find that the use of functional
claiming who would be inappropriate due to the lack of inclusion in the

indication is video encoder 20.” Therefore, all of the “means” limitations
correspond to the video encoder 20, which may have any combination of
black boxes shown in Figure 3 without further detail thereto.
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written description of the corresponding disclosure as required by § 112,
sixth paragraph.
However, the Federal Circuit has held that corresponding structure
may be sufficiently disclosed in the form of an algorithm. WMS Gaming,
Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348 (“A general purpose
computer, or microprocessor, programmed to carry out an algorithm creates
‘a new machine, because a general purpose computer in effect becomes a
special purpose computer once it is programmed to perform particular
functions pursuant to instructions from program software.’” (quoting In re
Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)). The Specification’s
disclosure that the system may be implemented using computer programs
suggests the claimed “means” may simply be software executing on generic
computer components, which, without specific programming, are not
capable of performing each of the recited functions. See Spec. ¶ 0116
“instructions may be executed by one or more processors, such as one or
more digital signal processors (DSPs ), general purpose microprocessors;”
28 “Source device 12 and destination device 14 may comprise any of a wide
range of devices, including desktop computers;” see also Spec. ¶¶ 13–15,
45, 114 discussing “processors.”
The “means” in claim 35 “recites ‘function without reciting sufficient
structure for performing that function,’” because Appellant’s system is
unable to perform the recited function without specific programming.
Williamson, 792 F.3d at 1349 (quoting Watts, 232 F.3d at 880). None of the
identified disclosures describe details (e.g., an algorithm or other
corresponding structure) on how to perform each of the recited functions.
Williamson, 792 F.3d at 1352 (“Even if the specification discloses
corresponding structure, the disclosure must be of ‘adequate’ corresponding
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structure to achieve the claimed function.”). Although a general purpose
computer may provide sufficient structure to perform functions that do not
require special programming, the same general purpose computer is
insufficient structure for performing specific functions that require special
programming. In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011). Therefore,
based on this record, we conclude the term “means” fails “to fulfill the
‘public notice function’ of 35 U.S.C. § 112 ¶ 2 by ‘particularly pointing out
and distinctly claiming’ the invention” and “exhibit the ‘overbreadth
inherent in open-ended functional claims.” Katz, 639 F.3d at 1315 (citing
Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008); quoting
Halliburton Energy Servs. v. M–I LLC, 514 F.3d 1244, 1256 n.7 (Fed. Cir.
2008)).
Therefore, we agree with the Examiner that the Specification does not
disclose the corresponding algorithm for the claimed “means” limitations to
particularly point out and distinctly claim the invention. For the above
reasons, we agree with the Examiner that independent claim 35 is indefinite
under 35 U.S.C. § 112, second paragraph, and we sustain the indefiniteness
rejection of claim 35 and claim 36 not separately argued.

35 U.S.C. § 101
With respect to independent claims 1, 10, 18, 27, 35, 36, 37, and 38,
Appellant sets forth separate groupings and headings, but Appellant does not
set forth separate arguments for patent eligibility of the claims. Rather,
Appellant relies upon the arguments advanced with respect to independent
claim 1 for each of the separate claim groupings. (App. Br. 30–34; “For the
same reasons discussed above for Group 5, Appellant contends claims 10-16
recite statutory subject matter under 35 U.S.C. § 101.”) Therefore, we select
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independent claim 1 as the representative claim for the group and will
address Appellant’s arguments thereto.6 See 37 CFR 41.37 (c)(1)(iv)
(2016).
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. (App. Br. 17–30). Appellant
does not specifically address the patent eligibility rejection in the Reply
Brief, but contends that the Examiner “omits, simplifies, and overly
abstracts.”7 (Reply Br. 5).

6 We determine that independent claim 10 is broader than independent claim
1 because it has only 3 steps of “encoding,” “generating,” and “signaling,”
but we address independent claim 1 which has been argued by Appellant.
Additionally, we note that claim 10 does not contain the “extra-solution
activity steps of “receiving” as in independent claim 1 and merely includes
the extra-solution activity of “signaling the indication in an encoded bit
stream” which does not necessarily even include the encoded video data
from the first step.

7 In the Reply Brief, Appellant changes the labels for the “Ground of
Rejection” where the Second Ground in the Reply Brief corresponds to the
First Ground in the Appeal Brief (indefiniteness) and the Third Ground of
rejection in the Reply Brief corresponds to the a discussion of “wherein”
limitations in the anticipation rejection. Appellant does not specifically
address the alternative rejection based upon obviousness in the Reply Brief.
In Appellant’s comments on the general response section of the Examiner’s
Answer, Appellant contends “By providing such an indication in the at least
one of the profile syntax, tier syntax or level syntax, and not in a
supplemental enhancement information (SEI) message, the techniques of
Appellant’s claims address the problem of allowing a decoder not
configured to decode SEI messages, to determine if the decoder has the
capability of decoding such video data before any actual decoding, thus
avoiding output of distorted video. (Reply Br. 6).

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The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016) (internal citations omitted). Per Office Guidance,
this first inquiry has two prongs of analysis: (i) does the claim recite a
judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim passes muster under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; 84 Fed. Reg. at 56.

Step 2A, Prong One
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For the reasons discussed below, we conclude Appellant’s claim 1
recites an abstract idea. Appellant’s claims generally recite a method for
decoding video data, the method comprising i) decoding the indication and
the received video data. This is consistent with how Appellant describes the
claimed embodiment of the invention. (See, e.g., Spec. ¶¶ 23–43, 70–72,
110). (See App. Br. 3–4 Summary of the Claimed Subject Matter).
Consistent with our Office Guidance and case law, we conclude that
a method for decoding video data, the method comprising decoding the
indication and the received video data is a mathematical concept, recited as
such in a claim limitation.8

8 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “An abstract
idea can generally be described at different levels of abstraction . . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).

Thus, the patentability analysis in this Appeal does not turn on exactly how
various limitations are characterized as being abstract, i.e., as either an
abstract “mathematical concept,” “mental process,” or “certain methods of
organizing human activity.” For example, the decoding limitation can
alternatively be characterized as mathematical concepts claimed at a high
level, and can be characterized as reciting mental processes. The end result
remains the same in this Appeal. The claim recites an abstract idea.

See also, SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations
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The Examiner maintains that “Appellant fails to cite a legal basis
under which decoding a desired signal is sufficient to overcome judicial
exceptions cited in the rejection. Digitech particularly states that decoding
according to a specified profile is ineligible.” 9 (Ans. 20).
In Digitech, “[t]he method in the [patent at issue] claims an abstract
idea because it describes a process of organizing information through
mathematical correlations and is not tied to a specific structure or machine.”
Digitech, 758 F.3d at 1350. Our reviewing court further held in Digitech:
The above claim recites a process of taking two data sets
and combining them into a single data set, the device profile. The
two data sets are generated by taking existing information—i.e.,
measured chromatic stimuli, spatial stimuli, and device response
characteristic functions—and organizing this information into a
new form. The above claim thus recites an ineligible abstract
process of gathering and combining data that does not require
input from a physical device . . . . the two data sets and the
resulting device profile are ineligible subject matter. Without
additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate
additional information is not patent eligible. “If a claim is
directed essentially to a method of calculating, using a

based on selected information’’ are directed to abstract ideas); Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed.
Cir. 2014) (holding that claims to a ‘‘process of organizing information
through mathematical correlations’’ are directed to an abstract idea);
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1280 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable
value protected life insurance policy by performing calculations and
manipulating the results’’ as an abstract idea).

9 Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014).
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mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory.”

Digitech, 758 F.3d at 1351 (quoting Parker v. Flook, 437 U.S. 584, 595
(1978) (internal quotations omitted)).
Moreover, the Federal Circuit holds that claims broadly covering data
collection, communication, and processing are directed to abstract ideas.
See, e.g., Univ. of Fla. Research Found., 916 F.3d at 1366–68; SAP Am.,
898 F.3d at 1164–67; Secured Mail Sols. LLC v. Universal Wilde, Inc., 873
F.3d 905, 907–08, 910–11 (Fed. Cir. 2017); Credit Acceptance, 859 F.3d
at 1047, 1054–56 & n.6; RecogniCorp, 855 F.3d at 1324, 1326–27;
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1339–
41 (Fed. Cir. 2017). As the Federal Circuit has explained, “[a] process that
start[s] with data, add[s] an algorithm, and end[s] with a new form of data
[is] directed to an abstract idea.” RecogniCorp, 855 F.3d at 1327.
Claim 1 is reproduced below and includes the following claim
limitations that recites a method for decoding video data, the method
comprising i) receiving video data, ii) receiving an indication, and iii)
decoding the indication and the received video data, emphasized in italics:

1. A method for decoding video data, the method
comprising:

receiving, with video decoder circuitry, video data;

receiving, with the video decoder circuitry, an
indication that indicates whether any pictures in the
received video data contain frame-packed stereoscopic 3D
video data, wherein the frame-packed stereoscopic 3D
video data is 3D video data that includes a half resolution
version of a right view frame and a half resolution version
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of a left view frame, wherein the indication is received in
at least one of a profile syntax, a tier syntax, or a level
syntax, and wherein the profile syntax, the tier syntax, or
the level syntax specify limits on the capabilities needed to
decode the
video data;

decoding, with the video decoder circuitry, the
indication prior to decoding the received video data; and

decoding, with the video decoder circuitry, the
received video data in accordance with the received
indication and in accordance with a capability of the video
decoder circuitry to decode the frame-packed stereoscopic
3D video data, including:

decoding, with the video decoder circuitry, the
received video data in the case that the indication specifies
that there are one or more pictures in the received video
data that contain frame-packed stereoscopic 3D video data
and the video decoder circuitry is capable of decoding
frame-packed stereoscopic 3D video data.

More particularly, the method of decoding video data comprises
decoding the indication and the received video data is a mathematical
concept and consistent with our Office Guidance and case law, we conclude
that decoding the indication and the received video data is a mathematical
concept and, thus, an abstract idea. See 84 Fed. Reg. at 52.

Step 2A, Prong Two

Because the claim recites an abstract idea, we next determine whether
the claim integrates the abstract idea into a practical application. 84 Fed.
Reg. at 54. To determine whether the judicial exception is integrated into a
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practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
recognized practical application. 84 Fed. Reg. at 54–55 (emphasis added);
see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–
(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitations of i) receiving, with video
decoder circuitry, video data and ii) receiving, with the video decoder
circuitry, an indication do not integrate the judicial exception into a practical
application. More particularly, the claims do not recite (i) an improvement
to the functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (ii) use a “particular machine” to apply or use the
judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation
of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any
other meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg.
at 55.
Rather, the steps of i) receiving, with video decoder circuitry, video
data and ii) receiving, with the video decoder circuitry, an indication are the
type of extra-solution activities (i.e., in addition to the judicial exception) the
courts have determined insufficient to transform judicially excepted subject
matter into a patent-eligible application. See MPEP § 2106.05(g); see also
Bilski v. Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power, 830
F.3d at 1355 (explaining that “selecting information, by content or source,
for collection analysis, and display does nothing significant to differentiate a
process from ordinary mental processes”); Elec. Power, 830 F.3d at 1354
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(recognizing “that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can., 771 F.Supp.2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed.
Cir. 2012) (explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. Receiving or sending information (e.g., i) receiving, with
video decoder circuitry, video data and ii) receiving, with the video decoder
circuitry, an indication) merely requires the well understood function of a
computer/computer network. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”). In addition, we note Appellant describes the the
components of the claimed invention at a high level of generality and the
components perform generic functions that are well-understood, routine, and
conventional. See e.g., Spec. ¶¶ 23–43, 70–72, and 110.
Also, the additional limitations merely recite “video decoder
circuitry,” without any further detail thereto. Although Figures 3 and 4
show black box diagrams of the encoder and decoder circuitry, Figures 5 and
6 show the high level methods which correspond to the claimed methods of
encoding and decoding without further detail thereto. We further determine
that independent claim 1 generally decodes “video data” and an “indication”
and uses that information in the decoding process, but the video decoder
circuitry is generically recited.
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We further note that the Specification discloses that the decoding may
be software based.
Video encoder 20 and video decoder 30 each may be
implemented as any of a variety of suitable encoder circuitry,
such as one or more microprocessors, digital signal processors
(DSPs), application specific integrated circuits (ASICs), field
programmable gate arrays (FPGAs), discrete logic, software,
hardware, firmware or any combinations thereof. When the
techniques are implemented partially in software, a device may
store instructions for the software in a suitable, non-transitory
computer-readable medium and execute the instructions in
hardware using one or more processors to perform the techniques
of this disclosure. Each of video encoder 20 and video decoder
30 may be included in one or more encoders or decoders, either
of which may be integrated as part of a combined
encoder/decoder (CODEC) in a respective device.

(See Spec. ¶ 45). Additionally, the claims do not address a problem
necessarily rooted in computer technology or a problem in the software arts.
(See App. Br. 29; see also MPEP § 2106.05(a)).
In DDR Holdings, the Federal Circuit determined “the claimed
solution amount[ed] to an inventive concept for resolving [a] particular
Internet-centric problem,” i.e., a challenge unique to the Internet. DDR
Holdings, 773 F.3d 1245, 1257–59 (Fed. Cir. 2014); see Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that
“[i]n DDR Holdings, we held that claims ‘directed to systems and methods
of generating a composite web page that combines certain visual elements of
a “host” website with content of a third-party merchant’ contained the
requisite inventive concept”). The Federal Circuit explained that the patent-
eligible claims specified “how interactions with the Internet are manipulated
to yield a desired result . . . that overrides the routine and conventional
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sequence of events ordinarily triggered by the click of a hyperlink.” DDR
Holdings, 773 F.3d at 1258. The court reasoned that those claims recited a
technological solution “necessarily rooted in computer technology” that
addressed a “problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257.
Here, unlike the claims at issue in DDR Holdings Appellant’s claims
do not address a specific problem arising in the realm of computer networks
(i.e., encoding or decoding “video data” and an “indication” does not arise in
the realm of computer networks where the encoding and decoding of video
data is not detailed in the claims), nor do they improve an existing
technological process, but rather merely use computers and computer
devices that operate in their normal, expected manner. See DDR Holdings,
773 F.3d at 1258–59; see also Enfish, 822 F.3d at 1335–36 (distinguishing
between claims wherein the focus of the claims is on an improvement in
computer capabilities and those that invoke a computer as a tool).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.

Step 2B
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
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Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional.10 As discussed above, sending or receiving information (e.g.,
i) receiving, with video decoder circuitry, video data and ii) receiving, with
the video decoder circuitry, an indication) merely requires the well-
understood function of a computer/computer network. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). Moreover, Appellant’s
recitation of the claim limitations and conclusory statement that the features
“amount to substantially or significantly more than simply the alleged
abstract idea” (see App. Br. 28–29) is not supported by persuasive evidence
or reasoning. It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see

10 As discussed above with respect to the indefiniteness rejection, we note
that the Specification discloses the encoding and the decoding at a very high
level with no disclosure of any underlying algorithms. As a result, we find
the Specification’s high level of disclosure to evidence the well-understood,
routine, and conventional nature of the encoding and decoding by those
skilled in the art. See e.g., Spec. ¶¶ 23–43, 70–72, and 110.
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also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
Additionally, to the extent Appellant contends the claims do not seek
to tie-up (i.e., preempt) an abstract idea (see App. Br. 27–28), we are
unpersuaded of Examiner error. “‘[W]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.’” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Further, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1–32
under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).

35 U.S.C. § 102(b)
With respect to the anticipation rejection, Appellant addresses
independent claim 1 and relies upon those arguments with respect to each of
the other independent claims. (App. Br. 34–41). We select independent
claim 10 as the representative claim for the group because we determine this
claim is broader than claim 1, and we address Appellant’s arguments thereto.
37 C.F.R. § 41.37(c)(1)(iv).
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The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner’s burden of production:
[A]ll that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.

In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
Here, the Examiner failed to make a prima facie case of anticipation
and obviousness in the Final Rejection. This is because the Examiner did
not make any specific findings regarding each of the limitations in the
above-noted claims.
With respect to independent claim 10, the Examiner has not shown
that the Yun reference discloses each of the three steps of the “method for
encoding video data.” Although the claimed invention uses known encoding
methodology, the claimed invention further recites “generating an
indication” and “signaling the indication.”
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Claim 10 requires:
an indication that indicates whether any pictures in the encoded
video data contain frame-packed stereoscopic 3D video data,
wherein the frame-packed stereoscopic 3D video data is 3D
video data that includes a half resolution version of a right view
frame and a half resolution version of a left view frame, wherein
the indication is generated in at least one of a profile syntax, a
tier syntax, or a level syntax, and wherein the profile syntax, the
tier syntax, or the level syntax specify limits on the capabilities
needed to decode the video data.

Thus, claim 10 requires a step of generating an indication that
indicates whether any pictures in the encoded video data contain frame-
packed stereoscopic 3D video data. The Examiner has not identified any
disclosure in the Yun reference regarding “frame packed stereoscopic 3D
video data.” As a result, any generated “indication” disclosed by the Yun
reference necessarily would not correspond to frame packed stereoscopic 3D
video data, as required. Additionally, the Examiner has not identified any
disclosure in the Yun reference regarding the claim limitation “the indication
is generated in at least one of a profile syntax, a tier syntax, or a level
syntax.”
The Examiner maintains that content of a signal cannot patentably
distinguish the claims from the prior art because it does not require
particular steps to be performed. (Ans. 23). The Examiner further maintains
that because the claim language resides inside a “wherein” clause Appellant
has indicated a non-limiting nature of the language under M.P.E.P. 2111.04.
(Ans. 23). As a result, the Examiner maintains:
Cumulatively, Yun codes substantially similar signal content:
“The syntax and semantics of the information added to the
stereoscopic/multiview 3D video data are defined in FIG. 12.”
Yun, Paragraph 85 and Figs. 13-15. And “an elementary stream
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(ES), which is characterized by variables determining ...
necessary decoder resources,” in Yun, Paragraph 8, and half-
resolution fields in Paragraph 18,
So the claims are anticipated or obvious over Yun.

Although we agree with the Examiner that the Yun reference discloses
encoding video data, we determine that the Examiner has not specifically
addressed the express limitations as recited in the language of independent
claim 10 regarding the “frame packed stereoscopic 3D video data” and
“generating… the indication.”
The Examiner maintains that the difference in the “indication” of the
content of the signal/data and the location of the indication in the encoded
bitstream/signal is merely nonfunctional descriptive material, which does not
change the function of the encoding, generating or signaling steps recited in
the language of independent claim 10. We disagree with the
Examiner and determine the Examiner has not made a proper finding of
anticipation based upon the Yun reference alone. (Ans. 23).
Additionally, with respect to independent claim 10, we find the
Examiner has not specifically addressed the claimed “indication” and its
relationship to the “frame packed stereoscopic data” in the anticipation
rejection.
Although, the Yun reference discloses the use of a flag as an
indication of 3D content in the video signal and the use thereof in encoding
information into the header signal, the Yun reference does not specifically
disclose the claimed “indication” and its relationship to the “frame packed
stereoscopic data”. (See generally Yun FIG. 12–15, ¶¶ 86, 116–119).
With respect to independent claim 1 regarding the decoding,
Appellant contends that:
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Yun fails to provide any teaching or suggestion of receiving any
indication “whether any pictures in the received video data
contain frame-packed stereoscopic 3D video data,” as is recited
in claim 1. While Yun teaches determining between stereoscopic
and mult[i]view video data, Yun does not teach or suggest any
determination related to “frame-packed stereoscopic 3D video
data.”

(App. Br. 37) (emphasis omitted).
We agree with Appellant that the Examiner has not identified any
specific disclosure in the Yun reference of a recognition or treatment of
“frame-packed stereoscopic 3D video data.”
We note that the Board is a reviewing body and not a place of initial
examination. Moreover, it is our view that the rigorous requirements of 35
U.S.C. § 102 essentially require a one-for-one mapping of each argued
limitation to the corresponding portion of the reference, which the Examiner
must identify with particularity.
Appellant further contends, with regards to the decoding, that the Yun
reference fails to teach or suggest that such an indication “in at least one of a
profile syntax, a tier syntax, or a level syntax.” (App. Br. 37). Appellant
further contends that the Yun reference does not relate to any indication of
whether any pictures in the received video data contain “frame-packed
stereoscopic 3D video data.” (App. Br. 37). Appellant further argues that
Figure 12 of the Yun reference only discloses one syntax element
(NumViewpoint) that represents the number of viewpoints of a video image
and another syntax element (2D 3DDispFlag) that determines the display
mode for a 3D video image. (App. Br. 37).
We agree with Appellant that the Yun reference does not specifically
disclose the location of the indication and determine that Appellant has
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identified various limitations in the language of independent claim 1 and in
independent claim 10 which the Examiner has not shown to be disclosed by
the Yun reference.
Specifically, the Examiner has not shown that the Yun reference
discloses frame packed data, and the Examiner has not shown that the Yun
reference discloses any of the recited three alternative syntaxes. The
Examiner merely maintains that “Claim 10 is rejected for reasons stated for
Claim 1 because the encoder of Claim 10 is directed to the same coding
format as the decoder of Claim 1, and because prior art teaches: “encoding
video data;” (“a three-dimensional object encoder” Yun, Paragraph 15.)”
(Final Act. 21) (emphasis omitted).
Additionally, the Examiner has not identified that these limitations of
the claimed invention are known in the MPEG-4 standard at the time of the
Yun disclosure in 2002/2003 time frame.11
Therefore, the Examiner has not provided a sufficient finding of
anticipation based upon the Yun reference alone for independent claims 1
and 10 regarding the decoding and encoding.
Because the Examiner’s anticipation rejection of independent claims 1
and 10 is deficient for the reasons set forth above, we similarly find the
Examiner’s rejection of independent claims 18, 27, 35, and 36 to be

11 In any further prosecution on the merits, we suggest that the Examiner
consider prior art regarding the High Efficiency Video Coding (HEVC)
standard or provide further line of reasoning for the extension of the MPEG
4 standard. (See http://iphome.hhi.de/wiegand/assets/pdfs/2012_12_IEEE-
HEVC-Overview.pdf IEEE TRANSACTIONS ON CIRCUITS AND
SYSTEMS FOR VIDEO TECHNOLOGY, VOL. 22, NO. 12, DECEMBER
2012.

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similarly deficient, and we find it deficient with respect to each of dependent
claims 2–8, 11–16, 19–25, and 28–33 because of their dependency from
their respective independent claims.

35 U.S.C. § 103(a)
With regards to the obviousness determination, the Examiner provides
a slightly more detailed discussion, but the Examiner does not provide any
specific factual findings regarding the profile syntax, the tier syntax, or the
level syntax or the frame-packed stereoscopic 3D video data is 3D video
data that includes a half resolution version of a right view frame and a half
resolution version of a left view frame. (See Final Act. 16–19).
Although Appellant provides a nominal response which relies upon
the arguments advanced with respect to the anticipation rejection, we find
the Examiner’s obviousness rejection to rely upon speculation and
unfounded assumptions regarding the frame packed stereoscopic video data
and the profile syntax, the tier syntax, or the level syntax.
In the grounds of rejection in the Final Action, the Examiner generally
interweaves the obviousness statements throughout the rejection. (Final Act.
16–19). We disagree with the Examiner that the person of ordinary skill in
the art would have been motivated to place the indication at any available
location in the header because the Examiner does not expressly address this
limitation in the statement of the rejection. In the Examiner’s Answer, the
Examiner maintains “a syntax structure is data and not a structure capable of
limiting an apparatus.” (Ans. 7).
Appellant’s arguments regarding obviousness rely upon the arguments
advanced with respect to the anticipation rejection. Specifically, Appellant
argues that the Yun reference fails to disclose or suggest all the features of
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independent claim 1 because Yun does not teach or suggest the use any of “a
profile syntax, a tier syntax, or a level syntax,” as is recited in claim 1.
(App. Br. 42). Appellant further contends that the Yun reference fails to
provide any teaching for the desirability to use one of such syntaxes for any
syntax elements, much less “an indication that indicates whether any
pictures in the received video data contain frame packed stereoscopic 3D
video data.” (App. Br. 42).
Here, the Examiner’s obviousness rejection is not well supported by
the express disclosure of the Yun reference. Accordingly, we agree with
Appellant the Examiner’s determination that the claimed invention would
have been obvious to a person of ordinary skill in the art is in error because
it is not supported by a preponderance of the evidence. See In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-
patentability is by a preponderance of the evidence); see also In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”). We will not resort to such speculation or assumptions to cure the
deficiencies in the factual basis in order to support the Examiner’s
obviousness rejection. Consequently, we cannot sustain the rejection of
independent claim 10 and its dependent claims based on obviousness.
Independent claims 1, 18, 27, 35, and 36 contain similar limitations, and we
cannot sustain the obviousness rejection of these claims and their dependent
claims for the same reasons.
With respect to the obviousness rejection of independent claims 37
and 38 over the combination of Yun in view of Kikuchi, Appellant contends
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that the applied references, alone or in any combination, fail to disclose or
suggest the features defined by Appellant’s claims, and there is no apparent
reason that would cause one of ordinary skill in the art to modify the applied
references to arrive at the claimed features. Appellant further relies upon the
arguments advanced with respect to the anticipation rejection. (App. Br. 43–
44).
Because the Examiner has not identified how the Kikuchi reference
remedies the noted deficiencies above with the Yun reference, the Examiner
has not shown how the combination renders obviousness independent claims
37 and 38.

DECISION
The Examiner’s indefiniteness rejection of claims 35 and 36 is
affirmed. The Examiner’s patent eligibility rejection of claims 1–8, 10–16,
18–25, 27–33, and 35–38 is affirmed. The Examiner’s anticipation rejection
of claims 1–8, 10–16, 18–25, 27–33, 35, and 36 is reversed. The Examiner’s
obviousness rejections of claims 1–8, 10–16, 18–25, 27–33, and 35–38 is
reversed.

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DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
35 and 36 § 112, second
para.
35 and 36 None
1–8, 10–16,
18–25, 27–
33, and 35–
38
§ 101 1–8, 10–
16, 18–25,
27–33, and
35–38
None
1–8, 10–16,
18–25, 27–
33, 35, and
36
§ 102 None 1–8, 10–
16, 18–25,
27–33, 35,
and 36
1–8, 10–16,
18–25, 27–
33, and 35–
38
§ 103 None 1–8, 10–
16, 18–25,
27–33, and
35–38
Overall
Outcome
1–8, 10–
16, 18–25,
27–33, and
35–38

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED