Dolby Laboratories Licensing Corporation

Patent Trials and Appeals Board

Jul 7, 2020

2019001393 (P.T.A.B. Jul. 7, 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.
14/740,862 06/16/2015 Neil W. Messmer 23156-0025002 3535
143308 7590 07/07/2020
FISH & RICHARDSON P.C. (Dolby)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
TUNG, KEE M
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
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 2019-001393
Application 14/740,862
Technology Center 2600
____________________

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

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals from a Non-Final Rejection of claims 2–4 and 6–
12.2 Appellant has canceled claims 1 and 5. See Appeal Br. 15–17. Oral
arguments were heard on May 19, 2020. A transcript of the hearing was
placed in the record on June 8, 2020. We have jurisdiction over the

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Dolby Laboratories Licensing Corporation as the real party in interest.
Appeal Br. 1.
2 Subsequent to the Notice of Appeal, but prior to filing the Appeal Brief,
Appellant canceled claim 9. See Amdt 3 (filed Sept. 7, 2018). Because the
amendment was not entered into the record, the rejection of claim 9 is still
properly before the Board.
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remaining pending claims under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46
USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We affirm in part.

STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed 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 (i.e., 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.
Claim 2 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
2. A method for processing image data for a target display
through a set of metadata associated with the image data, said
method comprising:
receiving the image data as a bitstream at a destination
device, from a remote source of the image data;
decoding the image data;
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determining, by the destination device, if a set of metadata
associated with the image data is received, wherein the set of
metadata includes a representation of parameters of a reference
display used to color grade source content for the image data,
the metadata comprising a set of levels usable for color
management to tailor the source content for the target display in
accordance with differences between the reference display and
the target display; and
in response to determining that the set of metadata
associated with the image data is received, calculating, by the
destination device, using the parameters of the reference display
used to color grade the source content for the image data, color
management algorithm parameters for displaying the image data
at the target display, and
wherein the metadata includes at least:
a. a white point, represented as x,y chromaticity
coordinates for the reference display,
b. three primaries, each represented as x,y
chromaticity coordinates for the reference display,
c. a minimum luminance level for the reference
display, and
d. a maximum luminance level for the reference
display; and
in response to determining that a level of the set of levels
associated with the image data is not received in the bitstream,
processing the image data without using the level not received.

The Examiner’s Rejection
Claims 2–4 and 6–12 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Dougall et al. (US 2012/0054664 A1; Mar. 1,
2012) (“Dougall”); Bellis, II et al. (US 2007/0046826 A1; Mar. 1, 2007)
(“Bellis”); Myers (US 2010/0073390 A1; Mar. 25, 2010); and Hind et al.
(US 7,206,791 B2; Apr. 17, 2007). Non-Final Act. 3–12.
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ANALYSIS3
Claims 2–4 and 6–11
Appellant asserts that Dougall, as relied on by the Examiner fails to
teach a set of metadata associated with image data, wherein the set of
metadata includes a representation of parameters of a reference display used
to color grade source content for the image data, the metadata comprising a
set of levels usable for color management to tailor the source content for the
target display in accordance with differences between the reference display
and the target display. Appeal Br. 3–10; Reply Br. 1–4. In particular,
Appellant argues the parameter sets of Dougall do not relate to a reference
display but rather to particular display models being used on the receiving
end. Appeal Br. 4–7 (citing Dougal ¶¶ 29, 40, 73, Figs. 1, 4). In other
words, rather than providing a set of metadata that corresponds to a
reference display used to color grade the image, Dougall merely sends
metadata intended to optimize the display at the receiving end based on the
display being used at the receiving end. Appeal Br. 4–7. Moreover,
Appellant asserts that Dougall is silent with respect to using a reference
display at all. Appeal Br. 6.
In addition, Appellant argues claim 2 recites the metadata includes “a
set of levels usable for color management to tailor the source content” and
that the Examiner’s reliance on Bellis is misplaced. Appeal Br. 12. More
specifically, Appellant asserts Bellis describes controlling the intensity of

3 Throughout this Decision, we have considered the Appeal Brief, filed
September 12, 2018 (“Appeal Br.”); the Reply Brief, filed December 3, 2018
(“Reply Br.”); the Examiner’s Answer, mailed October 5, 2018 (“Ans.”);
and the Non-Final Office Action, mailed March 14, 2018 (“Non-Final
Act.”), from which this Appeal is taken.
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physical LED light sources by adjusting the current levels (i.e., not a set of
levels included in digital metadata) provided to the LEDs. Appeal Br. 12–13
(citing Bellis ¶¶ 18–19). Further, Appellant argues that an ordinarily skilled
artisan would not have been motivated to modify the metadata of Dougall to
include Bellis’s approach for controlling LED intensities. Appeal Br. 13.
Rather, Appellant argues the Examiner relies on improper hindsight
reasoning to support the proffered combination. Appeal Br. 13.
Claim construction is an important step in a patentability
determination. A legal conclusion that a claim is 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). Conditional steps employed in a method
claim need not be found in the prior art if, under the broadest reasonable
construction, the method need not invoke the steps. Ex parte Schulhauser,
No. 2013-007847, 2016 WL 6277792, at *3–6 (PTAB April 28, 2016)
(concluding the broadest reasonable interpretation of a claim encompassed
situations in which conditional method steps “need not be reached”)
(precedential).
As an initial matter of claim construction, we note that claim 2 recites,
inter alia, “in response to determining that the set of metadata associated
with the image data is received, calculating, by the destination device, using
the parameters of the reference display . . ., color management algorithm
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parameters for displaying the image data at the target display, . . . .” Claim 2
(emphasis added).4
The “in response to determining” limitation is a conditional limitation.
That is, the subsequent calculation is performed only if it has been
determined that the set of metadata associated with the image data has been
received. Because the broadest reasonable interpretation of the claim does
not require performing the conditional method steps of calculating color
management algorithm parameters for displaying the image data using the
specific received metadata, the Examiner does not need to present evidence
of obviousness for these steps. See Schulhauser, 2016 WL 6277792, at *4
(“The Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim.”); see also Ex parte
Katz, No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI Jan. 27, 2011).5

4 We note that the last limitation of claim 2 recites “in response to
determining that a level of the set of levels associated with the image data is
not received in the bitstream, processing the image data without using the
level not received.” We interpret this limitation to indicate that a set of
levels of metadata associated with the image data has been received, but that
a particular level was not included.
5 See also Applera Corp.–Applied Biosystems Group v. Illumina, Inc., 375 F.
App’x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s
interpretation of a method claim as including a step that need not be
practiced if the condition for practicing the step is not met); Cybersettle, Inc.
v. Nat’l Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007)
(unpublished) (“It is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed.”).
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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”).
Independent claim 2 also recites “determining, by the destination
device, if a set of metadata associated with the image data is received,
wherein the set of metadata includes a representation of parameters of a
reference display used to color grade source content for the image data, the
metadata comprising a set of levels usable for color management to tailor the
source content for the target display in accordance with differences between
the reference display and the target display.” Claim 2 (emphasis added).
However, because we conclude that, as presently drafted, the
limitations that use or process the particular type of metadata information are
conditional (and need not be performed), the description of the received
metadata (i.e., what the metadata represents) merely describes the content of
the information. In other words, the particular content of the set of metadata
does not affect any step or alter any structure recited in the claim.
Therefore, the content of the set of metadata is non-functional descriptive
material that does not distinguish the claim from the prior art in terms of
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patentability.6,7 See Ngai, 367 F.3d at 1339. Thus, as drafted, this step
merely requires determining if a set of metadata associated with the image
data has been received.
Having determined independent claim 2 recites non-functional
descriptive material (as well as conditional limitations), 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, we construe claim 2 as follows:
2. A method for processing image data for a target display
through a set of metadata associated with the image data, said
method comprising:
receiving the image data as a bitstream at a destination
device, from a remote source of the image data;
decoding the image data;
determining, by the destination device, if a set of metadata
associated with the image data is received, wherein the set of
metadata includes [non-functional descriptive material].

6 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.
7 In addition, “[a]n[ ]intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
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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.
In addition,8 we note that Dougall generally relates to “optimizing
multimedia content or a display of the media content in accordance with an
optimal or ideal picture.” Dougall, Abstract; see also Dougall ¶ 2. Dougall
describes a system in which a remote content server transmits multimedia
content along with parameters/parameter settings that may be used by a local
display device when displaying the content. Dougall ¶ 4. Figure 1 of
Dougall is illustrative and is reproduced below:

8 If Appellant amends the claims to resolve the conditional limitations and
non-functional descriptive material issues identified herein, in furtherance of
compact prosecution before the Office, we provide the following analysis of
the cited references.
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Figure 1 of Dougall is a block diagram of an exemplary content delivery
system for delivering optimized multimedia content from a remote server to
a local display device. Dougall ¶ 9.
In this embodiment, a receiver (104) connected to local display device
(106) can identify local parameters of the display device and send this
information via a communication channel (110) to a remote server (101).
Dougall ¶ 27. As shown, remote server (101) may comprise a controller
(102), content storage (116), content generator (114), a parameters database
(120), and an ideal picture database (118). Dougall describes the ideal
picture database (118) as “a predetermined optimal parameters model and
can specify parameter settings corresponding to the original intent of a
director such that the content can be displayed in a manner that is equivalent
to a theatrical setting.” Dougall ¶ 29.9 The parameter settings may relate to
display settings such as color setting, brightness, and contrast. Dougall ¶ 29;
see also Dougall ¶¶ 32, 47. Dougall also describes the parameters database
(120) may include similar parameters that correspond to particular types of
display devices. Dougall ¶ 29. “[T]he sets of parameter settings can be
generated so that they parallel the parameters in the ideal picture database . .
. ., for example the color specifications set by a director of the multimedia
content.” Dougall ¶ 64.
Further, each set of parameter settings can include metadata
indicating how the parameter controller 226, discussed further
below, in receiver 204 should adapt the media content
transmitted by the server to the display device 106. For example,
as discussed further below, such adaptation can include

9 Compare Dougall ¶ 29, with Spec. 3:22–24 (describing an aspect of the
invention is to render images or video “with the same or substantially the
same fidelity as it was intended by the creator of the images or video”).
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performing color transformations to tailor the content to the
display device capabilities.
Dougall ¶ 32
In a disclosed embodiment of Dougall, device parameters of a display
device (106) received by the controller (102) at the remote server (101) may
be matched with known parameters in the parameters database for the
identified display device (106) so that content generator (114) may tailor a
version of content for the identified display device (106). See Dougall
¶¶ 30, 33. Alternatively, instead of transmitting a tailored version of
content, Dougall describes that the remote server (101) can transmit the base
content and a set of parameter settings to the receiver. Dougall ¶ 32; see
also Dougall, Fig. 2. In yet another embodiment, Dougall describes that the
controller (402) at the remote server (401) can transmit content along with
“all of the sets of parameter settings.” Dougall ¶ 40, Fig. 4.
Based on our review of Dougall, we find Dougall teaches, inter alia, a
receiver (104) (i.e., a destination device) receiving image data as a bitstream
(over network (126)) from a remote source of the image data (i.e., remote
server (101)); the receiver (104) decoding the image data; and determining if
metadata associated with the image data is received (Dougall describes the
receiver selecting from a plurality of parameter settings/metadata to tailor
the received content (see, e.g., Dougall ¶ 32)). Moreover, we find Dougall
teaches, or reasonably suggests, that a set of parameters (such as when all
sets of parameters are transmitted) are transmitted that represent the ideal
picture database parameters—i.e., those parameter settings that correspond
to the original intent of a director (content originator) such that the content
can be displayed in a manner equivalent to a theatrical setting (i.e., a
reference display). See Dougall ¶ 29.
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In addition, we note that in describing various levels of metadata,
Appellant describes “Level 2 metadata may divide the luminance range of
the source content into specific luminance regions.” Spec. 16:30–17:2. As
relied on by the Examiner, Bellis teaches adjusting the intensity (i.e.,
luminance) of an LED by adjusting the current level to drive the LED. See
Bellis ¶ 20 (describing a color manager providing current control
information to a light source driver to provide a light source with selected
current levels).
As described above, Dougall teaches parameter settings including
metadata to indicate how received content should be tailored. Dougall ¶ 32;
see also Dougall ¶ 50 (describing the remote server sending color correction
metadata to be used by the destination device to tailor the content to be
displayed). We agree with the Examiner that “it would be obvious to one of
ordinary skill in the art at the time of invention to modify the method in
Dougall as modified above [(i.e., including Bellis’s set of levels to vary the
luminance of the display)] to provide metadata comprising a set of levels
usable for color management to tailor the source content for the target
display in accordance with differences between the reference display and the
target display and a level of the set of levels associated with the image data.”
Non-Final Act. 6.
Regarding Appellant’s hindsight argument (Appeal Br. 12–13),
Appellant has not identified knowledge gleaned only from the present
application that was not within the level of ordinary skill at the time the
claimed invention was made. See In re McLaughlin, 443 F.2d 1392 (CCPA
1971). As the Examiner further explains, Bellis, which includes a color
manager (see Bellis, Fig. 1), is relied on to teach a color manager sending
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control information such that the light source can adjust the current intensity
level of the current image. Ans. 9. “As such, the set of levels for the light
source is usable for the color management to adjust the source content.”
Ans. 9. Further, as discussed above, Dougall teaches sending parameter
settings that may be used to adjust the media content transmitted by the
remote server to the destination device, wherein such adjustment can include
performing color transformations to tailor the content. Ans. 9. The
Examiner finds the set of level adjustments (as taught by Bellis) can provide
appropriate color management to adjust the current source content for a user
(as taught by Dougall). Ans. 10.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 2 under pre-AIA 35 U.S.C. § 103(a). In addition, we sustain the
Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a) of claims 3, 4, and
6–11, which depend directly or indirectly therefrom and were not argued
separately. See Appeal Br. 10, 13; see also 37 C.F.R. § 41.37(c)(1)(iv).

Claim 12
Claim 12 depends from claim 2 and recites “the reference display
used to color grade the source content is located at the remote source.”
Appellant asserts that in rejecting independent claim 2, the Examiner
relies on the display device (106) of Dougall as teaching the recited
reference display, but that Dougall’s display device (106) is not located at
the remote source, as required by Appellant’s claim 12. Appeal Br. 10–11
(citing Dougall, Fig. 1).
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In response, the Examiner focuses on the location of the parameters
(i.e., ideal picture database (118) and parameters database (120)) that are
either transmitted to the local display device (106) or are used to generate
content before being transmitted. See Ans. 7–8 (citing Dougall ¶¶ 29, 54,
68). However, the Examiner does not provide persuasive evidence or
technical reasoning that a reference display (such as a display used to color
grade the content and generate the parameters that are stored in the ideal
picture database) is located at the remote site in Dougall.
On this record, we do not sustain the Examiner’s rejection under pre-
AIA 35 U.S.C. § 103(a) of claim 12.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 2–4, 6–11 under
pre-AIA 35 U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claim 12 under pre-AIA
35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 6–12 103(a) Dougall, Bellis,
Myers, Hind
2–4, 6–11 12
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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 IN PART