Ex Parte Takishima et al

Board of Patent Appeals and Interferences

Jan 30, 2004

08893379 (B.P.A.I. Jan. 30, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 29

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YASUHIRO TAKISHIMA, SHIGEYUKI SAKAZAWA,
and MASAHIRO WADA
__________

Appeal No. 2002-0745
Application 08/893,379
___________

ON BRIEF
___________

Before JERRY SMITH, BARRETT and LEVY, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. ' 134
from the examiner=s rejection of claims 1-7, 9, 13-19 and 21.
Claims 8, 10-12, 20 and 22-24 have been allowed by the examiner.
The disclosed invention pertains to a method and
apparatus for second or later generation coding of a video signal
in the field of tandem stage coding. The invention is disclosed
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Application 08/893,379

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as providing a solution which will enable the encoding of a video
signal which considers the coding history of the video signal
when the actual coding parameters are not available.
Representative claim 1 is reproduced as follows:
1. A method for second or later generation coding of a
video signal in tandem stage coding which includes a previous
stage coding process and a later stage coding process which are
separately and sequentially executed, comprising the steps of:

estimating at least one coding parameter used in the
previous stage coding process in accordance with picture
properties of the video signal coded by said previous stage
coding process; and

secondly coding the video signal coded by said previous
stage coding process, based upon the estimated coding parameter.

The examiner relies on the following references:
Trew 4,941,044 July 10, 1990
Fuchigama et al. (Fuchigama) 5,079,547 Jan. 07, 1992
Murakami et al. (Murakami) 5,367,335 Nov. 22, 1994
Tahara 5,412,428 May 02, 1995
Lin et al. (Lin) 5,485,214 Jan. 16, 1996

The following rejections are on appeal before us:
1. Claims 1 and 13 stand rejected under 35 U.S.C.
' 102(b) as being anticipated by the disclosure of Murakami.
2. Claims 9 and 21 stand rejected under 35 U.S.C.
' 103(a) as being unpatentable over the teachings of Murakami
taken alone.
3. Claims 2, 4-6, 14 and 16-18 stand rejected under
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35 U.S.C. ' 103(a) as being unpatentable over the teachings of
Murakami in view of Lin.
4. Claims 3 and 15 stand rejected under 35 U.S.C.
' 103(a) as being unpatentable over the teachings of Murakami and
Lin in view of Fuchigama and Tahara.
5. Claims 7 and 19 stand rejected under 35 U.S.C.
' 103(a) as being unpatentable over the teachings of Murakami and
Lin in view of Trew.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants= arguments set forth in the briefs along with the
examiner=s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner=s answer.

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It is our view, after consideration of the record before
us, that the evidence of record does not support any of the
examiner=s rejections which are on appeal. Accordingly, we
reverse.
We consider first the rejection of claims 1 and 13 under
35 U.S.C. ' 102(b) as being anticipated by the disclosure of
Murakama. Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to claims 1 and 13, the examiner has
indicated how he reads the two steps of claim 1 and the two means
of claim 13 on the disclosure of Murakami [Office action mailed
on March 21, 2000]. Appellants argue that Murakami fails to
disclose the limitation of [means for] estimating at least one
coding parameter used in the previous stage coding process.
Specifically, appellants argue that Murakami uses actual coding
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parameters and does not disclose estimating coding parameters.
Appellants also argue that Murakami discloses a single stage
coding process and does not relate to tandem stage coding as
claimed. Appellants assert that since Murakami is directed to
single stage coding which provides the actual previous stage
coding, there would be no need to estimate a previous stage
coding as claimed [brief, pages 25-28]. The examiner responds
that Murakami teaches updating at least one past coding
parameter. The examiner notes that since the past coding
parameter was slightly wrong, the examiner considers it an
estimate within the meaning of claims 1 and 13. The examiner
asserts that it is the motion detection information which is
estimated and which constitutes the coding parameter [answer,
pages 5-6]. Appellants respond that Murakami only discloses
updating actual coding parameters and not estimating past coding
parameters. Appellants repeat the argument that past coding
parameters are available in Murakami so that there is no need to
estimate them as asserted by the examiner [first reply brief,
pages 6-7].
We will not sustain the examiner=s rejection of claims
1 and 13. We essentially agree with all of appellants= arguments
directed to the rejection of these claims. First, it must be
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noted that the invention of claims 1 and 13 relates to tandem
stage coding in which the stages execute the process separately
and sequentially. The coding process of Murakami does not relate
to tandem stage coding of this type. Second, the later stage
coding process must estimate at least one coding parameter used
in the previous stage coding process in accordance with picture
properties of the video signal coded by the previous stage coding
process. The process of Murakami uses the actual coding
parameters and measurements of motion in one frame of information
to code subsequent frames of information. Thus, as noted by
appellants, Murakami relies on actual data from previous
calculations to code subsequent frames of data. Although the
coding in Murakami may not be completely accurate, each stage of
calculation in Murakami relies on the actual data from a previous
stage of calculation rather than an estimate of a coding
parameter used in the previous stage of calculation. Therefore,
we agree with appellants that Murakami does not disclose every
feature recited in claims 1 and 13.
We now consider the various rejections under 35 U.S.C.
' 103. In rejecting claims under 35 U.S.C. ' 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
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837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden
then shifts to the applicant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative
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persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and
In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976).
Each of the claims rejected under 35 U.S.C. ' 103 depends
from claim 1 or claim 13. All of the examiner=s rejections under
35 U.S.C. ' 103 rely primarily on the teachings of Murakami as
discussed above. The examiner=s findings with respect to
Murakami are erroneous for reasons discussed above. None of the
additionally applied references against these claims overcomes
the deficiencies in Murakami discussed above. Therefore, each of
the examiner=s rejections under 35 U.S.C. ' 103 fails to
establish a prima facie case of obviousness for at least the
limitations recited in claims 1 and 13. Accordingly, we do not
sustain any of the examiner=s rejections under 35 U.S.C. ' 103.

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Application 08/893,379

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In summary, we have not sustained any of the examiner=s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-7, 9, 13-19 and 21 is reversed.

REVERSED

Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Lee E. Barrett )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Stuart S. Levy )
Administrative Patent Judge )

Appeal No. 2002-0745
Application 08/893,379

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