Talstra, Joop Cornelis. et al.

Patent Trials and Appeals Board

Dec 5, 2019

15582789 - (D) (P.T.A.B. Dec. 5, 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.
15/582,789 05/01/2017 Joop Cornelis Talstra 2009P00389US 1881
24737 7590 12/05/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
CHANG, DANIEL
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
12/05/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JOOP CORNELIS TALSTRA,
GERARDUS WILHEIMUS VAN DER HEIJDEN,
and PHILIP STEVEN NEWTON
_____________

Appeal 2019-000368
Application 15/582,789
Technology Center 2400
______________

Before ERIC S. FRAHM, JENNIFER S. BISK, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to twice reject claims 1–9 and 17–27 (see Non-Final
Office Action mailed February 16, 2018, hereinafter “Non-Final Act.”),
which constitute all the claims pending in this application. Claims 10–16

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” Appellant identifies the real party in
interest as Koninklijke Philips Electronics N.V. (Appeal Br. 2).
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have been canceled (see Final Act. 2; Appeal Br. 2; Appeal Br. 19, Claims
App.). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention concerns a method and
device for transmitting three-dimensional display signals (e.g., from a
remote server, set-top box, or DVD/BluRay player) to a three-dimensional
display device (see Title; Spec. 1:1–11; claims 1, 9, 17; Abstr.; Fig. 1).
More specifically, Appellant’s invention relates to such a method/system
that performs three-dimensional display signal transmission using a High
Definition Multimedia Interface (HDMI) (Spec. 114–22). Claims 1, 9, and
17 are independent. Apparatus claim 1 is illustrative,2 and is reproduced
below with emphases and bracketed material added to the key disputed
limitations:
1. A source device for transferring three-dimensional
image data to a three-dimensional display device, comprising:
an input circuit that receives the three-dimensional image
data;
a processor circuit that:
generates a three-dimensional display signal that
comprises a sequence of frames corresponding to the three-
dimensional image data in a three-dimensional video transfer
format;
wherein the sequence of frames comprises units, each
unit corresponding to a number of frames arranged according to
a multiplexing scheme for composing video information that

2 Remaining independent claims 9 (display device) and 17 (method) recite
commensurate, disputed limitations (as pertains to obviousness under 35
U.S.C. § 103(a)) as claim 1 (see claims 9, 17).
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forms each three-dimensional image that is to be displayed on
the display device;
[A] wherein the three-dimensional video transfer format
comprises [1] a video data period during which pixels of video
data are transmitted and [2] a data island period during which
auxiliary data is transmitted;
[B] wherein the auxiliary data includes three-
dimensional transfer information comprising at least
information about the multiplexing scheme, including the
number of frames in a next unit in the sequence of frames,
thereby enabling the display device to determine the number of
frames in the next unit and correspondingly form a next three-
dimensional image for display on a three-dimensional display;
and
wherein, for at least one 30 image unit, the number of
image frames in the next 30 image unit is greater than a number
of camera views that form the next 30 image unit, and
an output circuit that provides the three-dimensional
display signal for use by the three-dimensional display device.

Appeal Br. 17, Claims App. (emphases and bracketed material added).
The Examiner’s Rejections
(1) The Examiner rejected claims 1–9 and 21–27 under 35 U.S.C.
§ 112, first paragraph, as failing to provide adequate written description of
the claimed invention so as to reasonably convey to one skilled in the
relevant art that the inventors had possession of the claimed invention at the
time the application was filed (Final Act. 7–8; Ans. 4–5). The Examiner
determined that the Specification fails to provide adequate written
description support for (i) the “input circuit” and “output circuit” recited in
claim 1 (Final Act. 8; Ans. 4); and (ii) the “input circuit” recited in claim 9
(Final Act. 8; Ans. 4–5). Specifically, the Examiner determines that the
Specification’s description of an input unit 51 and an output interface unit 12
at page 7, lines 13 through 15 of the Specification, and as shown in Figure 1,
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fails to provide sufficient description of these elements and thus claims 1
and 9, as well as claims 2–8 and 21–27 depending respectively therefrom,
fail to comply with the written description requirement (see Final Act. 8;
Ans. 4–5). The Examiner also determines the use of “input circuit” and
“output circuit” in claims 1 and/or 9 are new matter (Final Act. 8; Ans. 4–5,
30–31).
(2) The Examiner rejected claims 1, 7, 9, 17, 18, and 26 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Suzuki (US
2007/0296859 A1; published Dec. 27, 2007), Yu et al. (US 2007/0008575
A1; published Jan. 11, 2007) (hereinafter, “Yu”), and Ogawa et al. (US
2009/0220213 A1; published Sep. 3, 2009 and filed Jan. 15, 2009)
(hereinafter, “Ogawa”). Final Act. 9–21; Ans. 5–17.
(3) The Examiner rejected claims 2–6, 8, 19–25, and 27 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Suzuki, Yu, Ogawa, and
HDMI Licensing, LLC, High-Definition Multimedia Interface Specification
Version 1.3a (Nov. 10, 2006) (hereinafter, “HDMI”). Final Act. 21–33;
Ans. 18–30.
Issues Presented on Appeal
First Issue: Written Description
Based on Appellant’s arguments (Appeal Br. 8–10; Reply Br. 2–4),
the following written description issue is presented:
(1) Did the Examiner err in rejecting claims 1–9 and 21–27 as lacking
written description support for the recitations of “input circuit” (claims 1 and
9) and “output circuit” (claim 1) on the basis that the Specification as filed
did not reasonably convey to one skilled in the relevant art that the inventor
had possession of the claimed invention?
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Second Issue: Obviousness
Based on Appellant’s arguments (Appeal Br. 11–15; Reply Br. 4–11),
the following obviousness issue is presented:3
(2) Did the Examiner err in rejecting claims 1–9 and 17–27 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over the base combination of
Suzuki, Yu, Ogawa, because Yu, and thus the base combination, fails to
teach or suggest limitation [B] recited in representative claim 1?

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 8–
22; Reply Br. 2–11), the Examiner’s rejections made in the Non-Final Office
Action mailed February 16, 2018 (Non-Final Act. 7–33; Ans. 3–30), and the
Examiner’s response (Ans. 30–37) to Appellant’s arguments in the Appeal
Brief. As to both the written description and obviousness issues, we agree
with Appellant’s arguments.
First Issue: Written Description
We agree with Appellant’s arguments that the Examiner erred in
rejecting claims 1–9 and 21–27 under 35 U.S.C. §112, first paragraph, as
failing to provide an adequate written description of the invention recited in
claims 1–9 and 21–27. See Appeal Br. 8–10; Reply Br. 2–4. We also agree

3 Based on Appellant’s arguments (Appeal Br. 11–15; Reply Br. 4–11) with
regard to the obviousness rejections of (i) claims 1, 7, 9, 17, 18, and 26; and
(ii) claims 2–6, 8, 19–25, and 27, over the same base combination of Suzuki,
Yu, and Ogawa, we select claim 1 as representative of the group of claims
consisting of claims 1, 7, 9, 17, 18, and 26, and we decide the outcome of
the rejection of claims 2–6, 8, 19–25, and 27 on the same basis as provided
for claims 1, 9, and 17 from which claims 2–6, 8, 19–25, and 27 respectively
depend.
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with Appellant’s contention that “[t]he use of the term ‘circuit’ in the
claims particularly points out and distinctly claims the subject matter
that the applicants view as the invention” (Reply Br. 3). And, we decline
to accept the Examiner’s invitation (see Ans. 31) to undertake a means-plus-
function analysis of the terms input and output circuit and determine
whether the claims are indefinite under 35 U.S.C. § 112, second paragraph,
as the record before us does not indicate (i) the claims were interpreted in
the Office Action appealed from, or (ii) any claims were rejected under
35 U.S.C. § 112, second paragraph, as being indefinite in their recitation of
the input and output circuits.
Under 35 U.S.C. § 112, first paragraph, to satisfy the written
description requirement, “the disclosure of the application relied upon
[must] reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991) (“ [T]he applicant must . . . convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention.”). “And while the description requirement does
not demand any particular form of disclosure, or that the specification recite
the claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Ariad Pharm, 598 F.3d
at 1352 (citation omitted). Thus, “[i]t is not sufficient for purposes of the
written description requirement of § 112 that the disclosure, when combined
with knowledge in the art, would lead one to speculate as to modifications
that the inventor might have envisioned, but failed to disclose.” Lockwood
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v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). In other words,
the Examiner has the initial burden of presenting evidence or reasons why
persons skilled in the art would not recognize in an applicant’s disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 265 (CCPA 1976).
As to the sufficiency of written description, our reviewing court, has
recognized that, under a narrow set of circumstances, the written description
requirement may be satisfied without an explicit disclosure if the claimed
features are necessarily inherent in what is expressly described. See
Allergan, 796 F.3d 1293, 1309 (Fed. Cir. 2015) (“A claim that recites a
property that is necessarily inherent in a formulation that is adequately
described is not invalid as lacking written description merely because the
property itself is not explicitly described.”); Yeda Research & Dev. Co. v.
Abbott GmbH & Co. KG, 837 F.3d 1341, 1345 (Fed. Cir. 2016) (“Under the
doctrine of inherent disclosure, when a specification describes an invention
that has certain undisclosed yet inherent properties, that specification serves
as adequate written description to support a subsequent patent application
that explicitly recites the invention’s inherent properties.”); see also MPEP
§ 2163 (9th ed. Rev. 3, Jan. 2018) (recognizing that inherency may satisfy
the written description requirement).
In the instant case, the Examiner has not met this burden (see Non-
Final Act. 7–8; Ans. 4–5, 30–31) by merely concluding that the
Specification does not provide support for the recitations in independent
claims 1 and 9 of “an input circuit” (claims 1 and 9) and “an output circuit”
(claim 1). See In re Wertheim, 541 F.2d at 265. And, we agree with
Appellant (Appeal Br. 10) that the input unit 51, input interface unit 14, and
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output interface unit 12 inherently contain electronic circuitry to perform the
functions defined in the Specification and claims, and thus one of ordinary
skill in the art would clearly recognize Appellant had possession of the
claimed input and output circuits. See Allergan, 796 F.3d at 1309; Yeda
Research & Dev. Co., 837 F.3d at 1345.
Appellant provides a description of (1) input circuit 51 and output
circuit 12 shown in Figure 1, and recited in claim 1, at page 7, lines 2
through 27 of the Specification; and (2) an input interface unit 14 shown in
Figure 1, and recited in claim 9, at page 8, lines 16 through 18 of the
Specification. Originally filed claims 1 and 9 (see Spec. 25–27) also
describe the input circuits and an output unit. More specifically, with regard
to claim 1, the input circuit (i.e., input unit 51) operates to receive three-
dimensional image data (see Spec. 7:5; 25:3, claim 1), and the output circuit
(i.e., output interface unit 12 or originally recited output unit) operates to
transfer a three-dimensional display signal 56 to the display device 13 (see
Spec. 7:13–15, 25–27; 25:20–21). And, with regard to claim 9, the input
circuit (i.e., input interface unit 14) operates to receive the three-dimensional
display signal 56 (see Spec. 8:16–18; 26:26–28).
Therefore, we cannot agree with the Examiner’s findings (Non-Final
Act. 8; Ans. 4, 30) that Appellant’s originally filed Specification does not
describe (inherently or expressly) any corresponding structure for, or recite,
an input/output unit or input/output circuit. Although the description of the
input and output units in the Detailed Description of the originally-filed
Specification (see Spec. 7–8) may not use the terms “input circuit” and
“output circuit” in describing the functions of these elements in haec verba,
originally filed claims 1 and 9 specifically used the term “input circuit.”
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Therefore, we agree with Appellant that (1) the Specification discloses a
sufficient description (see Spec. 7–8; see also Spec. 25–27, claims 1 and 9)
of the input unit 51, output interface unit 12, and input interface unit 14
shown in Figure 1; (2) one of ordinary skill in the art would understand that
circuitry is used to perform the functions of the input unit 51, output
interface unit12, and input interface unit 14 described as supporting the
recited input and output circuits; and (3) the originally filed Specification
reasonably conveys to one of ordinary skill in the art that Appellant had
possession of the disputed limitations recited in independent claims 1 and 9.
Because the originally-filed disclosure of the instant application
(namely, Figure 1, pages 7 through 8 of the Specification, and claims 1 and 9
as originally filed) reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date,
we do not sustain the Examiner’s written description rejection of claims 1–9
and 21–27.

Second Issue: Obviousness
The Examiner (Non-Final Act. 11–12; Ans. 7–8, 31–34) relies on Yu
as teaching limitation [B] recited in representative claim 1. Limitation [B]
sets forth the following:
wherein the auxiliary data includes three-dimensional
transfer information comprising at least information about the
multiplexing scheme, including the number of frames in a next
unit in the sequence of frames, thereby enabling the display
device to determine the number of frames in the next unit and
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correspondingly form a next three-dimensional image for
display on a three-dimensional display

Appeal Br. 17, Claims Appendix (emphasis added). Thus, limitation [B] of
claim 1 requires the 3D transfer information include “information about the
multiplexing scheme” that includes “the number of frames in a next unit in
the sequence of frames” (claim 1). Appellant discloses that the number of
frames in a next unit in a sequence of frames differs depending upon the
type of multiplexing scheme used for transmitting the three-dimensional
image data to the display device (see Spec. 11–12, 19–22–20:6; Fig. 7).
Specifically, the number of frames N can be either 2, 3, or 4 depending on
the type of multiplexing scheme used (see Fig. 7; Spec. 19:28–30).
In determining that Yu teaches or suggests limitation [B], the
Examiner points to Figure 1 and paragraphs 29 through 33 of Yu as teaching
the disputed limitation (see Non-Final Act. 11–12; Ans. 7–8). Specifically,
the Examiner relies on Yu’s transport stream structure shown in Figure 1,
including the image characteristic parameters 102 in header 100, as teaching
or suggesting the auxiliary data including three-dimensional transfer
information recited in limitation [B] of claim 1 (see Ans. 31–33). More
specifically, the Examiner finds (see Ans. 32), and we agree, that Yu’s
disclosure of display format information 102c in header 100 teaches or
suggests the recited “multiplexing scheme.” However, we do not find any
disclosure in Yu that supports image characteristic parameters 102 as
“including the number of frames in a next unit in the sequence of frames” as
recited in limitation [B] of claim 1. “The Examiner reads Yu’s number of
camera viewpoints as the number of frames in a next 3-D image unit” (Ans.
32), and determines that Yu therefore “teaches of the number of frames in a
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next 3-D image unit in the sequence of frames that is included in the
transport stream structure” (Ans. 33). Here, we cannot agree.
Although Yu discloses camera viewpoint number information 102b is
one of the image characteristic parameters 102 included in header 100, and
camera viewpoint number information 102b is described by Yu as
information regarding the number of camera viewpoints for a 3D image (see
Yu, ¶ 30), Yu is silent as to how or if the number of camera viewpoints
constitutes or is related to “the number of frames in a next unit in the
sequence of frames,” as set forth in limitation [B] (clam 1 (emphasis
added)).
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In this light, the Examiner has not articulated a satisfactory
explanation as to how/why the combination of Suzuki, Yu, and Ogawa
teaches or suggests limitation [B] in claim 1, and the commensurate
limitations recited in claims 9 and 17. Specifically, we agree with Appellant
(Appeal Br. 10, 12, 17, 23–25, 28–30; Reply Br. 9–10) that the Examiner
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has not adequately shown that Suzuki, Yu, and Ogawa, taken individually or
in combination, teach or suggest the transmission of auxiliary data including
three-dimensional transfer information “about the multiplexing scheme,
including the number of frames in a next unit in the sequence of frames”
(claim 1, limitation [B]), where a sequence of frames of three-dimensional
image data makes up a three-dimensional display signal and comprises units
that correspond to the number of frames arranged according to the
multiplexing scheme used for displaying the three-dimensional image data
on a three-dimensional display device (see e.g., claim 1).
At best, the Examiner’s proposed combination leaves us to speculate
as to how or why one of ordinary skill in the art would modify the
combination of Suzuki, Yu, and Ogawa to meet the disputed “number of
frames” recited in limitation [B] of claim 1, and as commensurately recited
in claims 9 and 17. The Examiner has not adequately explained how or why
Yu’s number of camera viewpoints 102b is the same as the number of
frames recited in limitation [B] of claim 1. We will not resort to speculation
or assumptions to cure the deficiencies in the Examiner’s fact finding and
reasoning. See In re Warner, 379 F.2d at 1017; Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review
authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . .
invite[s] the [B]oard to examine the application and resolve patentability in
the first instance.”). As such, based on the record before us, we find that the
Examiner (i) improperly relies upon the combination of Suzuki, Yu, and
Ogawa to teach or suggest limitation [B] in claim 1, and the commensurate
limitations recited in claims 9 and 17; and thus, (ii) has not properly
established factual determinations and articulated reasoning with a rational
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underpinning to support the legal conclusion of obviousness for claims 1, 9,
and 17, resulting in a failure to establish a prima facie of obviousness.
In view of the foregoing, we agree with Appellant that Yu, and thus
the base combination, fails to teach or suggest limitation [B] recited in
representative claim 1. Appellant has shown the Examiner erred in rejecting
claims 1, 9, and 17, as well as claims 2–8 and 18–27 depending respectively
therefrom as being unpatentable under 35 U.S.C. § 103(a) over the base
combination of Suzuki, Yu, and Ogawa.
Therefore, based on the record before us, we cannot sustain the
Examiner’s obviousness rejection of independent claims 1, 9, and 17, as well
as claims 7, 18, and 26 depending respectively therefrom, over the
combination of Suzuki, Yu, and Ogawa. For similar reasons as provided for
claims 1, 9, and 17 from which claims 2–6, 8, 19–25, and 27 respectively
depend, we also cannot sustain the Examiner’s obviousness rejections of
claims 2–6, 8, 19–25, and 27, which are also rejected over the same base
combination of Suzuki, Yu, and Ogawa.

CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 21–27 112(1) Written
Description

1–9, 21–27
1, 7, 9, 17,
18, 26
103(a) Suzuki, Yu, Ogawa 1, 7, 9, 17,
18, 26
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2–6, 8, 19–
25, 27
103(a) Suzuki, Yu,
Ogawa, HDMI
2–6, 8, 19–
25, 27
Overall
Outcome
1–9, 17–27

REVERSED