Imagination Technologies Limited

Patent Trials and Appeals Board

Apr 23, 2020

13721286 - (D) (P.T.A.B. Apr. 23, 2020)

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.
13/721,286 12/20/2012 Stephen MORPHET 2645-0161US01 7627
104840 7590 04/23/2020
Imagination Technologies
c/o Potomac Law Group PLLC
8229 Boone Boulevard Suite 430
Vienna, VA 22182
EXAMINER
SPINKS, ANTOINETTE T
ART UNIT PAPER NUMBER
2698
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
Eofficeaction@appcoll.com
Patents@potomaclaw.com
vdeluca@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN MORPHET
Appeal 2018-007552
Application 13/721,286
Technology Center 2600
Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, 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 1–16. An oral hearing was held on
April 15, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as
Imagination Technologies Limited of Kings Langley, United Kingdom.
Appeal Br. 2.
Appeal 2018-007552
Application 13/721,286
2
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for controlling
overshoot in a video enhancement system. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for enhancing an edge transition in a video
signal comprising:

receiving a video signal including an edge transition;

measuring maximum and minimum amplitudes of the
received video signal within a predefined pattern of pixels
adjacent to the edge transition;

generating a correction signal for the edge transition;

applying the correction signal to the received video signal
to produce a corrected signal;

calculating the difference between the maximum and
minimum amplitudes of the received video signal within the
predefined pattern of pixels; and

restricting the amplitude of the corrected signal to extend
between extended maximum and minimum signal amplitude
limits that are calculated in dependence on the difference
between the maximum and minimum amplitudes of the received
video signal within the predefined pattern of pixels.

REFERENCES

The prior art relied upon by the Examiner is:
Name Reference Date
Hongu et al. US 4,198,650 Apr. 15, 1980
Parker et al. US 5,369,446 Nov. 29, 1994
Vlahos et al. US 6,363,526 B1 Mar. 26, 2002
Lin et al. US 2003/0107678 A1 June 12, 2003

Appeal 2018-007552
Application 13/721,286
3
REJECTIONS
Claims 1, 2, 6–9, 13, and 14 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Lin in view of Vlahos and further in
view of Parker.
Claims 3–5 and 10–12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lin, Vlahos, and Parker as applied to claim 1 above,
and further in view of Hongu.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable Lin, Vlahos, and Parker as applied to claim 1 above, and
further in view of Examiner’s Official Notice.
OPINION
35 U.S.C. § 103(a)
Claims 1, 2, 6–9, 13, and 14
“‘On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’” In
re Kahn, 441 F.3d 977, 985-86 (Fed.Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed.Cir. 1998)).
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 2018-007552
Application 13/721,286
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“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re
Lee, 277 F.3d 1338, 1343-46 (Fed. Cir. 2002); In re Rouffet, 149 F.3d 1350,
1355-59 (Fed. Cir. 1998)). “To facilitate review, this analysis should be
made explicit.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 401 (2007).
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984))
Appellant argues that the pending claims to have been changed
significantly since the prior appeal, Appellant has submitted a declaration by
the inventor under 37 CFR § 1.132 explaining the difficulty in combining
the references, and the arguments in this Appeal Brief are not the same as
those previously made in the prior appeals. Appeal Br. 6–7; see generally
Reply Br. 1–4. Appellant argues that the Lin, Vlahos, and Parker references
fail to disclose or suggest calculating extended maximum and minimum
signal amplitude limits in dependence on a difference between maximum
and minimum amplitudes of received signal within a pre-defined patterns of
pixels. Appeal Br. 8–9. Appellant further argues that one of skill in the art
Appeal 2018-007552
Application 13/721,286
5
would not combine the teachings of Lin, Vlahos, and Parker as suggested in
the rejection. Appeal Br. 10. Specifically, Appellant contends that the
proposed modification would change the principle of operation of Lin
(Appeal Br. 11–12); the proposed modification would render Lin
unsatisfactory for its intended purpose (Appeal Br. 12); and the rejection
fails to give proper weight and consideration to the 37 CFR § 1.132
declaration (Appeal Br. 13–16).
We agree with Appellant that, on this administrative record, the
Examiner did not substantively consider and address Appellant’s arguments
and declarative evidence that the Lin reference teaches and suggests
removing overshoot. Consequently, this removal of the overshoot obviates
the need for controlling overshoot by the teachings and suggestions of the
Vlahos and Parker references.
In response to Appellant’s arguments, the Examiner provides general
responses relying upon prior Board decisions which considered arguments
presented in a different light to a different set of claims and addressing
different arguments and evidence. Final Act. 2–4; Ans. 6–9. We find the
Examiner’s responses to the arguments do not address the thrust of
Appellant’s current arguments regarding the combination and the
Examiner’s responses do not specifically address Appellant’s declarative
evidence on the record.
As a result, we cannot sustain the Examiner’s rejection of illustrative
independent claim 1 and independent claim 8 which contains similar
limitations.

Appeal 2018-007552
Application 13/721,286
6
Claims 3–5, 10–12, 15, and 16
Appellant relies upon the arguments advanced with respect to
illustrative independent claim 1 for the dependent claims and the Examiner
has not specifically addressed the noted deficiencies with regards to the
additional prior art references as they relate to the dependent claims. As a
result, we cannot sustain the Examiner’s obviousness rejections of
dependent claims 3–5, 10–12, 15, and 16 for the same reasons.
CONCLUSION
The Examiner’s obviousness rejections are reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 6–9,
13, 14
103(a) Lin, Vlahos, Parker 1, 2, 6–9,
13, 14
3–5, 10–12 103(a) Lin, Vlahos,
Parker, Hongu
3–5, 10–12
15, 16 103(a) Lin, Vlahos,
Parker, Official
Notice
15, 16
Overall
Outcome
1–16

REVERSED