Apple Inc.

Patent Trials and Appeals Board

Jul 9, 2020

2019005323 (P.T.A.B. Jul. 9, 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.
13/893,906 05/14/2013 David W. Singer 082438.025603 1058
139020 7590 07/09/2020
BakerHostetler / Apple Inc.
Washington Square, Suite 1100,
1050 Connecticut Ave, NW
WASHINGTON, DC 20036-5304
EXAMINER
PEREZ FUENTES, LUIS M
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID W. SINGER, ALEXANDROS TOURAPIS,
ATHANASIOS LEONTARIS, and XIAOSONG ZHOU
____________

Appeal 2019-005323
Application 13/893,906
Technology Center 2400
____________

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
JAMES B. ARPIN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–33. We have jurisdiction over the
appeal 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. Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 2.
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The present invention relates generally to parallel encoding and
decoding of serially-coded data. See Spec., Abstract.
Claim 1 is illustrative:
1. A method, comprising:
coding a plurality of data items as serially-coded
data sequences,
building a transmission sequence from the serially-
coded data sequences,
building a table having a plurality of entries
representing decoding parameters to be applied during decoding
of the respective coded data sequences, and
transmitting the transmission sequence and the
table in a channel, wherein the transmission sequence precedes
the table in transmission order.

Appellant appeals the following rejections:
R1. Claims 1, 8, 16, 23, 31, and 32 are rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, for failing to comply
with the written description requirement. Non-Final Act. 5–6; see also
Final Act. 2 and Ans. 4–5.
R2. Claims 16 and 23 are rejected under 35 U.S.C. § 112, sixth
paragraph. Non-Final Act. 6–7, see also Final Act. 2 and Ans. 5–6.
R3. Claim 1 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Applicant Admitted Prior Art (AAPA) and Harada (US
8,558,724 B2, Oct. 15, 2013) (called “Noburu” by the Final Rejection);
Final Act. 5–6.
R4. Claims 2–33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Harada, and Suh (US 8,098,741 B2, Jan. 17,
2012). Final Act. 6–10.
We review the appealed rejections for error based upon the issues
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identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph, enablement
Claims 1, 8, 16, 23, 31, and 32
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by the claim is not adequately enabled by
the description of the invention provided in the specification of
the application.
In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
The enablement requirement is often more indulgent than the
written description requirement. The specification need not
explicitly teach those in the art to make and use the invention;
the requirement is satisfied if, given what they already know,
the specification teaches those in the art enough that they can
make and use the invention without “undue experimentation.”
Amgen, Inc., v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed.
Cir. 2003).
The Examiner notes that the rejection of claims 1, 8, 16, 23, 31, and
32 under 35 U.S.C. § 112, first paragraph, is maintained (see Final Act. 2),
however, the Examiner fails to list/describe this rejection in the Final Action.
See generally Final Action. In the Answer, the Examiner appears to provide
a verbatim copy of the § 112 rejection from the Non-Final Action (mailed
Nov. 22, 2017). See Ans. 4–5 (Claims 1, 8, 16, 23, 31, and 32 are rejected
under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph,
“because [the] cited claims are directed to a device/method for
encoding/decoding video data, that while being briefly enabled in the
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drawings, it does not reasonably provide the required functional scope for
every component . . . and instead describes a single functional element.”).
Appellant contends that “the specification provides an adequate
written description of the claimed invention.” Appeal Br. 9. Appellant
further contends that “[w]ith respect to the encoding engine, decoding
engine, controller and transmitter elements, FIGS. 2 and 7[,] and their
accompanying description[,] illustrate these elements arranged in the manner
claimed: . . . [Appellant] had possession of this subject matter.” Id.
In essence, Appellant’s arguments simply attempt to show
“possession” of the claimed subject matter (see generally Appeal Br. 8–11),
as opposed to demonstrating that the Specification teaches those in the art
enough to make and use the invention without “undue experimentation,” i.e.,
enablement. See also Reply Br. 2.
As a result, we are constrained by the record before us to affirm the
Examiner’s enablement rejection under § 112, due in part to Appellant’s
lack of an appropriate rebuttal thereto.

Rejection under 35 U.S.C. § 112, sixth paragraph
Claims 16 and 23
When an inventor has not signaled an intent to invoke § 112, sixth
paragraph, by using the term “means,” the presumption against its
invocation is strong, but can be overcome if “the claim term fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)
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(internal quotation marks omitted) (citation omitted)). A claim limitation
that “essentially is devoid of anything that can be construed as structure” can
overcome the presumption. Flo Healthcare Solutions, LLC v. Kappos, 697
F.3d 1367, 1374 (Fed. Cir. 2012).
The presumption may be overcome by a claim limitation that uses a
nonstructural term that is “simply a nonce word or a verbal construct that is
not recognized as the name of structure” but is merely a substitute for the
term “means for” associated with functional language. Lighting World, 382
F.3d at 1360. There are numerous terms that may merely substitute for the
term “means for” associated with functional language such that the
presumption against invoking § 112, sixth paragraph, may be overcome.
Here, the Examiner finds that, in claim 16, Appellant merely
substitutes “coding engine” and “transmitter” for the term “means for” (see
Ans. 6), and in claim 23, substitutes “decoding engine” for the term “means
for.” Id. In each case, the Examiner “interprets such language as a non-
structural term . . . Therefore, it is believe[d] that claims (16 and [23])
invoke 35 U.S.C. § 112, sixth paragraph.” Id.
Appellant contends that “[e]lements such as coding engines, decoding
engines, and transmitters are recognized to refer to structure. . . . Second,
even if the claims were construed as means elements, the specification
provides adequate description of the structure(s) that perform the respective
functions.” Appeal Br. 12, citing FIGS. 2 and 7, Spec. ¶¶ 22–23.
Here, Appellant does not adequately support its argument that the
elements refer to structure. Instead, Appellant appears to concede that if
§ 112, sixth paragraph, is invoked, then the recited structure in FIGS. 2 and
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7 and paragraphs 22–23 of the Specification are sufficient to overcome the
rejection.
As a result, based on the record in this appeal, the Examiner’s finding
that the phrases “coding engine,” “decoding engine,” and “transmitter,” as
used in the context of claims 16 and 23 do not convey adequate structure,
thereby invoking the sixth paragraph of § 112, is not adequately challenged.
Accordingly, we affirm the Examiner’s interpretation of “coding
engine,” “decoding engine,” and “transmitter,” under 35 U.S.C. § 112, sixth
paragraph.
Rejection under 35 U.S.C. § 103(a)
Appellant contends that the AAPA’s “table includes only the index
positions of the entropy coded data so that those locations may be identified
on receipt; the specification never states that any such table contains data
‘representing decoding parameters to be applied during decoding of the
respective coded data sequences.’” Appeal Br. 14 (citing Spec. ¶ 5).
In the Answer, the Examiner newly finds that Harada (called Noboru
in Answer) teaches the aforementioned claimed feature (see Ans. 13),
although the Examiner initially relied on AAPA in the Final Action. See
Final Act. 6. Appellant fails to rebut this new finding in the Reply Brief.
See generally Reply Br. As a result, we find unavailing Appellant’s first
argument regarding AAPA, given that the Examiner made an uncontested
new finding regarding Harada.
Appellant also contends that although Harada illustrates code tables,
“[t]here is no disclosure that the tables ever are transmitted between devices,
much less that the tables are transmitted after a transmission sequence.”
Appeal Br. 15. In other words, Appellant stresses that, because Harada
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never discloses transmitting tables between devices, Harada cannot possibly
disclose tables being transmitted after a transmission sequence.
However, in the Reply Brief, Appellant backs away from emphasizing
that Harada does not teach transmitting tables between devices (i.e.,
Appellant concedes that Harada outputs/transmits a code table). Reply
Br. 4. Instead, Appellant now emphasizes that Harada “does not disclose
output ‘transmitting the transmission sequence and the table in a channel’ as
in the claims” (Reply Br. 5), and, consequently, “does not teach the specific
order ‘wherein the transmission sequence precedes the table in transmission
order.” Id. In other words, Appellant emphasizes that because Harada does
not teach transmitting the transmission sequence and the table in a channel,
consequently, Harada cannot teach the transmission sequence precedes the
table in transmission order.
We note that not only is this a newly presented argument, but also the
Examiner appears to rely on AAPA for the claimed “transmitting the
transmission sequence and the table in a channel,” not Harada. See Final
Act. 6 (citing Spec. ¶ 5 (AAPA)). Appellant fails to rebut the Examiner’s
reliance on AAPA for teaching transmitting the transmission sequence and
the table in a channel. See generally Briefs.
In any case, Appellant cannot show non-obviousness by attacking
references individually, where the rejections are based on combinations of
references. Here, Appellant’s argument against Harada separately from
AAPA does not persuasively rebut the combination made by the Examiner.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 425–26 (CCPA 1981).
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Furthermore, Appellant fails to explain what good cause there might
be to consider this new argument regarding a channel. See Ex parte
Borden, 93 USPQ2d 1473 (BPAI 2010) (informative) (“[T]he reply brief [is
not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant’s arguments regarding the Examiner’s rejection of independent
claims 1, 16, 23, 31, 32, and 33 rely on the substantially same arguments as
for claim 1, and Appellant does not argue separate patentability for the
dependent claims. See generally, Appeal. Br. We, therefore, also sustain
the Examiner’s rejection of claims 2–33.
CONCLUSION
The Examiner’s rejection of claims 1, 8, 16, 23, 31, and 32 under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, is affirmed.
The Examiner’s rejection of claims 16 and 23 under 35 U.S.C. § 112,
sixth paragraph, is affirmed.
The Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of AAPA and Harada is
affirmed.
The Examiner’s rejection of claims 2–33 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of AAPA, Harada, and Suh
is affirmed.
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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 16, 23,
31, 32
112, first
paragraph
Enablement 1, 8, 16,
23, 31, 32

16, 23 112, sixth
paragraph
Means plus
function
16, 23
1 103(a) AAPA, Harada 1
2–33 103(a) AAPA, Harada,
Suh
2–33
Overall
Outcome
1–33
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED