Dolby Laboratories Licensing Corporation

Patent Trials and Appeals Board

Mar 24, 2021

2020005973 (P.T.A.B. Mar. 24, 2021)

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.
16/433,228 06/06/2019 Neil W. Messmer 23156-0025004 1826
143308 7590 03/24/2021
FISH & RICHARDSON P.C. (Dolby)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
CASCHERA, ANTONIO A
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
03/24/2021 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):
PATDOCTC@fr.com
mguo@dolby.com
patents@dolby.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEIL W. MESSMER, ROBIN ATKINS,
STEVE MARGERM, and PETER W. LONGHURST
____________________

Appeal 2020-005973
Application 16/433,2281
Technology Center 2600
____________________

Before ERIC S. FRAHM, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2–7. Appellant has canceled claim 1. Appeal Br. 12. Oral
arguments were heard on March 3, 2021. A transcript of the hearing will be
placed in the record in due course. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b).
We affirm.

1 This application claims priority to Application No. 15/979,212, which is
the subject of pending Appeal No. 2019-006191, and Application No.
14/740,862, which was the subject of Appeal No. 2019-001393. Our
decision in Appeal No. 2019-001393 was mailed on July 7, 2020.
2 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies
Dolby Laboratories Licensing Corporation as the real party in interest.
Appeal Br. 1.
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Application 16/433,228
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed invention generally relates to image processing
(i.e., color management) of content such that the image displayed on a target
display is rendered “with the same or substantially the same fidelity as it was
intended by the creator of the images or video.” Spec. 1:9–11, 20–22, 3:22–
24. In a disclosed embodiment, source video may be color graded for
various attributes (e.g., luminance or contrast) using a reference display
device, the reference display device having certain characteristics (e.g., a
gamma response curve). Spec. 4:3–8. The target display and the reference
display may have different characteristics that may result in a less than
desirable rendering of the content. See Spec. 4:22–5:32. According to the
Specification, metadata may be used to capture parameters associated with
the color graded content and transmitted along with the content for use by
the target display. Spec. 6:10–7:32.
Appellant’s claimed invention generally relates to the processing of a
received bitstream. Claim 2 is representative of the subject matter on appeal
with the disputed limitation emphasized in italics:
2. A method for processing a bitstream through metadata
associated with the bitstream, said method comprising:
receiving image data as the bitstream at a destination
device, wherein:
content encoded in the bitstream is produced on a
reference display device, characteristics of the reference display
device being identified in the bitstream by a set of one or more
parameters, and
the image data is associated with corresponding image
metadata;
decoding the bitstream;
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determining, by the destination device, if the image
metadata includes a first set of metadata associated with a portion
of the image data, wherein the first set of metadata includes a
representation of the one or more parameters; and
determining, by the destination device, if the image
metadata includes a second set of metadata associated with video
content characteristics of the same portion of the image data,
wherein the second set of metadata includes at least a luminance
level,
wherein the first set of metadata includes:
a. a white point for the reference display,
b. three primaries for the reference display,
c. a first luminance level for the reference display, and
d. a second luminance level for the reference display, and
wherein determining if the second set of metadata is
received is independent of determining if the first set of metadata
is received.
The Examiner’s Rejections
1. Claims 2–6 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Dougall et al. (WO 2010/128962 A1; Nov. 11, 2010)
(“Dougall”). Final Act. 2–6.
2. Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dougall and Myers (US 2010/0073390 A1;
Mar. 25, 2010). Final Act. 7–9.
3. Claims 2–7 stand provisionally rejected under the doctrine of
nonstatutory obviousness-type double patenting over the claims of co-
pending Application No. 15/979,212. Final Act. 10–11.
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ANALYSIS3
Provisional rejection under doctrine of nonstatutory obviousness-type
double patenting
Appellant does not respond to the Examiner’s provisional rejection of
claims 2–7 under the doctrine of nonstatutory obviousness-type double
patenting over the claims of co-pending Application No. 15/979,212.
Appeal Br. 5. Appellant has not filed a terminal disclaimer, nor has the
Examiner withdrawn the rejection. See Ans. 3.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground
of rejection to the Board, . . . the Board may treat any argument with respect
to that ground of rejection as waived.”). Additionally, “[i]f a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner’s answer.” Manual of Patent Examining Procedure
(“MPEP”) § 1205.02 (9th ed., Rev. 10.2019, June 2020)
Accordingly, we summarily sustain the Examiner’s provisional
rejection of claims 2–7 under the doctrine of nonstatutory obviousness-type
double patenting.

3 Throughout this Decision, we have considered the Appeal Brief, filed
April 16, 2020 (“Appeal Br.”); the Reply Brief, filed August 19, 2020
(“Reply Br.”); the Examiner’s Answer, mailed June 19, 2020 (“Ans.”); and
the Final Office Action, mailed October 29, 2019 (“Final Act.”), from which
this Appeal is taken.
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Rejection under pre-AIA 35 U.S.C. § 102(b)
Appellant asserts that Dougall, as relied on by the Examiner, fails to
disclose “receiving image data as the bitstream at a destination device,
wherein: content encoded in the bitstream is produced on a reference display
device, characteristics of the reference display device being identified in the
bitstream by a set of one or more parameters.” Appeal Br. 5–9; Reply Br. 3–
5. In particular, Appellant argues the bitstream transmitted in Dougall
comprises parameter display settings optimized for the intended destination
display device rather than comprising characteristics of the reference display
on which the encoded content was produced. Appeal Br. 6–9; Reply Br. 3–
5. Moreover, Appellant asserts that in addition to not expressly disclosing
characteristics of the reference display being identified in the bitstream by a
set of one or more parameters, Dougall fails to inherently disclose that
characteristics of the reference display are identified in the bitstream by a set
of one or more parameters. Appeal Br. 9–10; Reply Br. 5–6.
We begin our analysis with a review of claim 2. Claim 2 relates to
processing a bitstream through metadata associated with the bitstream.
More particularly, claim 2 recites (i) receiving image data4 as the bitstream
at a destination device; (ii) decoding the bitstream; (iii) determining if the
image metadata includes a first set of metadata associated with a portion of
the image data; and (iv) determining if the image metadata includes a second
set of metadata associated with video content characteristics of the same
portion of the image data. Claim 2 further recites that the determination of
whether the second set of metadata is received is independent of the
determination of whether the first set of metadata is received. In addition,

4 Claim 2 recites that the image data is associated with corresponding image
metadata.
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claim 2 recites particular content included in the first and second sets of
metadata. Still further, claim 2 recites “content encoded in the bitstream is
produced on a reference display device, characteristics of the reference
display device being identified in the bitstream by a set of one or more
parameters.”
However, we note that claim 2 does not recite using the contents of
the first set of metadata or the second set of metadata. Additionally, claim 2
does not recite using the characteristics of the reference display device (i.e.,
a set of parameters identifying characteristics of the reference display). That
is, rather than using the specific data to, for example, make adjustments to
the display of decoded content based on the data, claim 2 generally recites
receiving a bitstream, decoding a bitstream, and determining if two different
sets of metadata are present.
Claim construction is an important step in a patentability
determination. A legal determination that a claim is anticipated or obvious
involves a two-step inquiry wherein first, the claims are properly construed,
and second, the properly construed claims are compared to the prior art. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); see also
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
“Claim limitations directed to printed matter are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied.” Praxair Distribution, Inc.
v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018)
(emphasis added). Our reviewing court has also explained that this printed
matter doctrine is not strictly limited to “printed” materials. Mallinckrodt,
890 F.3d at 1032. More specifically, “a claim limitation is directed to
printed matter ‘if it claims the content of information.’” Mallinckrodt,
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890 F.3d at 1032 (quoting In re DiStefano, 808 F.3d 845, 848 (Fed. Cir.
2015)).
In addition, our reviewing court has held that non-functional
descriptive material cannot lend patentability to an invention that would
have otherwise been unpatentable. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004); see also In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). The content of non-functional descriptive
material is not entitled to weight in the patentability analysis. Cf. In re
Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely
the information content of a memory”).
In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008)
(precedential), the Board held that the nature of the information being
manipulated by the computer should not be given patentable weight absent
evidence that the information is functionally related to the process “by
changing the efficiency or accuracy or any other characteristic” of the steps.
See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-
precedential) (holding “wellness-related” data stored in a database and
communicated over a network was non-functional descriptive material as
claimed because the data “does not functionally change” the system).
As discussed above, Appellant’s claims do not use either (i) the
particular content encoded in the bitstream (i.e., characteristics of the
reference display device being identified in the bitstream by a set of one or
more parameters); (ii) the content included in a first set of metadata; or
(iii) the content included in a second set of metadata. Instead, claim 2
merely claims the content of various pieces of information. See
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Mallinckrodt, 890 F.3d at 1032. We find that the content of the bitstream
and sets of metadata—each being the underlying substrate for the recited
content, respectively—is not functionally related to the bitstream or the sets
of metadata themselves. Moreover, we find that the content does not change
the method of claim 2 (or the non-transitory memory of independent claim
7) of receiving and decoding a bitstream, and determining whether two
distinct sets of metadata are present. Accordingly, the contents of (i) the
bitstream (specifically, characteristics of the reference display device being
identified in the bitstream by a set of one or more parameters); (ii) the first
set of metadata; and (iii) the second set of metadata are merely non-
descriptive material that do not distinguish the claims from the prior art in
terms of patentability.5 See Ngai, 367 F.3d at 1339.
Having determined independent claim 2 recites non-functional
descriptive matter, we are mindful to read the claim as a whole in our
analysis. See Gulack, 703 F.2d at 1385 (“[T]he board cannot dissect a claim,
excise the printed matter from it, and declare the remaining portion of the
mutilated claim to be unpatentable. The claim must be read as a whole.”)
(footnote omitted).
Based on the foregoing discussion, claim 2 is interpreted as follows:
2. A method for processing a bitstream through metadata
associated with the bitstream, said method comprising:

5 The pending claims are distinguishable from those in Lowry in which data
structures stored in memory contained both information used by application
programs and information regarding their physical interrelationships within
a memory. Lowry, 32 F.3d at 1583. Unlike in Lowry, we find the content of
the set of metadata is descriptive and does not relate to the structure of any
claimed element. See Lowry, 32 F.3d at 1583.
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receiving image data as the bitstream at a destination
device, wherein:
content encoded in the bitstream is [non-functional
descriptive material] and
the image data is associated with corresponding image
metadata;
decoding the bitstream;
determining, by the destination device, if the image
metadata includes a first set of metadata associated with a portion
of the image data, wherein the first set of metadata includes [non-
functional descriptive material]; and
determining, by the destination device, if the image
metadata includes a second set of metadata associated with video
content characteristics of the same portion of the image data,
wherein the second set of metadata includes [non-functional
descriptive material],
wherein the first set of metadata includes [non-functional
descriptive material] and
wherein determining if the second set of metadata is
received is independent of determining if the first set of metadata
is received.
In light of our construction of claim 2, Appellant’s arguments are not
persuasive of Examiner error at least because they are directed to the non-
functional descriptive material portion of claim 2, which, as discussed
above, does not patentably distinguish over the prior art. See Ngai, 367 F.3d
at 1339.
Accordingly, we sustain the Examiner’s rejection of independent
claim 2 under pre-AIA 35 U.S.C. § 102(b). In addition, we sustain the
Examiner’s rejection under pre-AIA 35 U.S.C. § 102(b) of claims 3–6,
which depend directly or indirectly therefrom and were not argued
separately. See Appeal Br. 9; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Rejection under pre-AIA 35 U.S.C. § 103(a)
Independent claim 7 is an apparatus claim and recites similar
limitations to those recited in independent claim 2 as they relate to a
bitstream and first and second sets of metadata. Claim 7 further recites that
the bitstream (including the first and second sets of metadata) is stored on a
non-transitory memory. Similar to our analysis with respect to independent
claim 2, we find that the contents of the bitstream (and the sets of metadata)
are not used, not functionally related to the underlying bitstream or
metadata, and not functionally related to the claimed apparatus or memory
(i.e., the non-transitory memory is merely storing data).
Regarding the Examiner’s rejection of independent claim 7, Appellant
relies on the same arguments as those advanced with respect to claim 2. See
Appeal Br. 5–10. For similar reasons, Appellant’s arguments are not
persuasive of Examiner error at least because they are directed to the non-
functional descriptive material portion of claim 7, which, as discussed
above, does not patentably distinguish over the prior art. See Ngai, 367 F.3d
at 1339.
Accordingly, we sustain the Examiner’s rejection of independent
claim 7 under pre-AIA 35 U.S.C. § 103(a).

CONCLUSION
We affirm the Examiner’s decision provisionally rejecting claims 2–7
under the doctrine of nonstatutory obviousness-type double patenting.
We affirm the Examiner’s decision rejecting claims 2–6 under pre-
AIA 35 U.S.C. § 102(b).
We affirm the Examiner’s decision rejecting claim 7 under pre-AIA
35 U.S.C. § 103(a).
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–7 Nonstatutory
obviousness-type
double patenting
2–7
2–6 102(b) Dougall 2–6
7 103(a) Dougall, Myers 7
Overall
Outcome
2–7

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED