Kim, Hyung Joon. et al.

Patent Trials and Appeals Board

Jun 8, 2020

13548100 - (D) (P.T.A.B. Jun. 8, 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.
13/548,100 07/12/2012 Hyung Joon Kim TI-72592 1544
23494 7590 06/08/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
JEAN BAPTISTE, JERRY T
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
06/08/2020 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HYUNG JOON KIM, MINHUA ZHOU,
AKIRA OSAMOTO, and HIDEO TAMAMA
____________________

Appeal 2019-001056
Application 13/548,100
Technology Center 2400
____________________

Before JENNIFER S. BISK, BETH Z. SHAW, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claim 22. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse the rejection, and enter a new ground of rejection under
37 C.F.R. § 41.50(b).

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed July 12, 2012, which claims the benefit of a provisional
application; “Final Act.” for the Final Office Action, mailed Sept. 25, 2017;
“Appeal Br.” for Appellant’s Appeal Brief, filed May 30, 2018; “Ans.” for
Examiner’s Answer, mailed Sept. 21, 2018; and “Reply Br.” for Appellant’s
Reply Brief, filed Nov. 19, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is Texas
Instruments Incorporated. Appeal Br. 2.
Appeal 2019-001056
Application 13/548,100

2
BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
“fast motion estimation for hierarchical coding structures in video coding.”
Spec. ¶ 2. Claim 22 is the only claim at issue on appeal, and it recites:
22. A method comprising:
refining, with one or more processors, a motion vector
selected for a child coding unit (CU) of a parent CU to
determine a motion vector for a PU of the parent CU, the parent
CU including all pixel values of the child CU.
Appeal Br. 9 (Claims App.).
REJECTION
Claim 22 stands rejected under 35 U.S.C. § 103 as obvious over Song
(US 6,208,692 B1, issued March 27, 2001), Sjoberg (US 2012/0140832 A1,
published June 7, 2012), and Shi (US 2011/0170596 A1, published July 14,
2011). Final Act. 7, 14.3
ANALYSIS
The Examiner’s Obviousness Rejection of Claim 22
The Examiner rejected claim 22, finding that: Shi discloses
“refining . . . a motion vector selected for a child coding unit (CU) of a
parent CU to determine a motion vector for a [partition unit (PU)] of the
parent CU,” and Song teaches or suggests “the parent CU includ[es] all pixel

3 The Final Office Action also rejected claims 1–21 and 23 (Final Act. 1, 5–
17), but these claims were subsequently canceled by Appellant (see
Amendment, filed May 30, 2018; Advisory Action, mailed June 26, 2018).
Appeal 2019-001056
Application 13/548,100

3
values of the child CU.” Final Act. 4 (citing Shi ¶ 63; Song, 6:26–30); see
also id. at 7, 10, 14; Ans. 15–17.
Appellant argues that the rejection is in error because Song fails to
teach or suggest a “parent CU including all pixel values of the child CU,” as
required by claim 22 (referred to in this Decision as the “disputed
limitation”). Appeal Br. 4–5. In particular, Appellant submits that Song
derives a “parent pixel value . . . by taking an average of the children pixel
values.” Appeal Br. 5. As a result, Appellant contends that, in Song, “the
children pixel values are specifically omitted from the parent level,” and
Song uses “the average value of the children pixel values” instead of
including a child’s values in the parent, as required by the disputed
limitation. Id.
The Examiner responds that Song generates a single parent pixel
value from four children pixel values. Ans. 16–17 (citing Song, Fig. 3,
6:10–15). The Examiner states that this indicates “that all of the children
values are used or are included in the parent coding unit.” Id. at 17. In its
reply, Appellant argues that the Examiner fails to explain “how generating a
single [parent] value from multiple [child] values discloses, teaches, or
suggests ‘including all pixel values of the child CU.’” Reply Br. 2.
We are persuaded of error in the Examiner’s finding that Song teaches
or suggests the disputed limitation. Appellant and the Examiner agree that
Song uses four child pixels from an original image to calculate a single
parent pixel in a higher level; the child pixels themselves are not included in
the higher level. See Appeal Br. 5; Ans. 16–17; see also Song, 6:1–19
(referring to the calculated pixel as the “parent” and the four input pixel as
the “children”). The Examiner appears to have interpreted the disputed
Appeal 2019-001056
Application 13/548,100

4
limitation such that “including” encompasses using the child’s pixel values
to calculate a value for the parent. See Ans. 17 (explaining that child’s
values “are used or are included in the parent coding unit” (emphases
added)). However, such an interpretation is not reasonable.4 First, the plain
language of the disputed limitation requires the parent CU to include the
child CU’s values, not a value derived therefrom. Second, the Specification
consistently describes a parent CU and its children CUs in the context of the
hierarchical relationship between them. E.g., Spec., Figs. 4A–4C. The
Examiner identifies (and we perceive) no disclosure in Song of a parent CU
that includes all pixel values of a child CU. Accordingly, we are persuaded
of error in the Examiner’s reliance on Song to teach or suggest the disputed
limitation.
Consequently, because we find error in the Examiner’s reliance on
Song for the disputed limitation, we are constrained to reverse the
Examiner’s rejection of claim 22.
New Ground of Rejection
In the Final Office Action, the Examiner pointed to the disclosure of
Sjoberg for a limitation similar to (but narrower than) the disputed

4 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Appeal 2019-001056
Application 13/548,100

5
limitation. See Final Act. 8 (rejecting independent claim 1, subsequently
canceled) (citing Sjoberg ¶¶ 5, 38). However, the Examiner did not address
Sjoberg in the rejection of claim 22. See generally Final Act.; Ans.
We find that Sjoberg discloses the disputed limitation. In particular,
Sjoberg discloses a parent CU and four child CUs, where the parent CU
includes all pixel values of the four child CUs. Sjoberg ¶¶ 5, 37–39.
Accordingly, Sjoberg discloses “the parent CU including all pixel values of
the child CU,” as required by the disputed limitation of claim 22.
Because the Examiner did not rely upon Sjoberg to teach the disputed
limitation, we exercise our discretion under 37 C.F.R. § 41.50(b) to enter a
new ground of rejection for claim 22. This new rejection relies upon our
finding that Sjoberg discloses the disputed limitation (see Sjoberg ¶ 5, 37–
39), and it incorporates the Examiner’s findings and analysis from the Final
Office Action and the Answer regarding Shi’s disclosure (see Final Act. 4,
9–10; Ans. 15–16)5 and the motivation to combine the cited references (see
Final Act. 8–10).6
Consequently, we enter a new ground of rejection against independent
claim 22 under 35 U.S.C. § 103 as unpatentable over Song, Sjoberg, and Shi.

5 In response to Appellant’s arguments (see Appeal Br. 7), the Answer
provides additional findings, analysis and explanation in support of the
Examiner’s finding that Shi discloses “refining . . . a motion vector selected
for a child coding unit (CU) of a parent CU to determine a motion vector for
a PU of the parent CU.” See Ans. 15–16 (citing Shi ¶ 63, Figs. 6–8).
Appellant does not respond to these findings (see generally Reply Br.), and
consequently, we are not persuaded of error in them.
6 In the Appeal Brief, Appellant asserts, without sufficient explanation or
support, that “there is not a sufficient rationale to support a combination of
references.” Appeal Br. 7. This conclusory argument, which fails to address
the Examiner’s findings or rationale, does not persuade us of error.
Appeal 2019-001056
Application 13/548,100

6
CONCLUSION
In summary:
Claim
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
22 103 Song, Sjoberg, Shi 22
22 103 Song, Sjoberg, Shi 22

This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the [E]xaminer, in which event the prosecution
will be remanded to the [E]xaminer. The new ground of
rejection is binding upon the [E]xaminer unless an amendment
or new Evidence not previously of Record is made which, in
the opinion of the [E]xaminer, overcomes the new ground of
rejection designated in the decision. Should the [E]xaminer
reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
Appeal 2019-001056
Application 13/548,100

7
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th ed.
2018).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

REVERSED
37 C.F.R. § 41.50(b)