10410481 (B.P.A.I. Sep. 13, 2010)

Ex Parte Boyce

Board of Patent Appeals and InterferencesSep 13, 2010

10410481 (B.P.A.I. Sep. 13, 2010)

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. 10/410,481 04/09/2003 Jill MacDonald Boyce PU020340 6987 7590 09/14/2010 JOSEPH S. TRIPOLI Thomson Licensing Inc. 2 INDEPENDENCE WAY, SUITE #2 P. O. BOX 5312 PRINCETON, NJ 08543-5312 EXAMINER CZEKAJ, DAVID J ART UNIT PAPER NUMBER 2621 MAIL DATE DELIVERY MODE 09/14/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JILL MACDONALD BOYCE ____________________ Appeal 2009-004653 Application 10/410,4811 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge, and ROBERT E. NAPPI and MARC S. HOFF, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL2 1 The real party in interest is THOMSON LICENSING S.A. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004653 Application 10/410,481 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s invention concerns a system and method for adaptive weighting of reference pictures in video decoders. The subject decoder includes a reference picture weighting factor unit for determining a weighting factor corresponding to the particular reference picture index. The reference picture index independently indicates, without use of another index, one of a plurality of reference pictures from which a current one of the plurality of motion blocks is predicted, as well as a weighting factor for the current one of the plurality of motion blocks (Spec. 2, 7). Claim 1 is exemplary of the claims on appeal: 1. A video decoder for decoding video signal data for a picture having a plurality of motion blocks, the decoder comprising: a reference picture weighting factor unit for receiving at least one reference picture index, each of the at least one reference picture index for independently indicating, without use of another index, one of a plurality of reference pictures from which a current one of the plurality of motion blocks is predicted and a weighting factor from a set of weighting factors for the current one of the plurality of motion blocks. The Examiner relies upon the following prior art in rejecting the claims on appeal: Pearlstein US 5,767,907 Jun. 16, 1998 Yamaguchi US 6,292,514 B1 Sep. 18, 2001 Yoshihiro Kikuchi et al. (Kikuchi), “Multi-frame interpolative prediction with modified syntax,” Joint Video Coding Experts Group (JVT), pp. 1-13 (2002). 2 Appeal 2009-004653 Application 10/410,481 Claims 18-20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1 and 10 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Kikuchi. Claims 2 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kikuchi in view of Yamaguchi. Claims 3-9 and 12-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kikuchi in view of Yamaguchi and Pearlstein. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed January 26, 2007), the Reply Brief (“Reply Br.,” filed July 12, 2007) and the Examiner’s Answer (“Ans.,” mailed June 1, 2007) for their respective details. ISSUES The Examiner, in rejecting claims 18-20 under § 101, asserts that the claims are nonstatutory because a program storage device is merely a storage medium for holding a set of instructions capable of being executed by a computer (Ans. 6-7). Appellant argues that recitation of the program of instructions as tangibly embodied on the program storage device defines structural and functional relationships which permit the program’s functionality to be realized, rendering the claim statutory (App. Br. 12-13). With respect to the § 102 rejection of claims 1 and 10, as well as the § 103 rejections of claims 2-9 and 11-20, Appellant argues that Kikuchi does not teach a reference picture index that indicates, without use of another index, (both) one of a plurality of reference pictures from which a current 3 Appeal 2009-004653 Application 10/410,481 one of the plurality of motion blocks is predicted and a weighting factor for the current one of the plurality of motion blocks (App. Br. 16) Appellant’s contentions present us with the following issues: 1. Does a claim directed to “a program storage device readable by machine, tangibly embodying a program of instructions executable by the machine to perform program steps … the program steps comprising” recite patent-eligible subject matter? 2. Does Kikuchi teach a reference picture index that independently indicates, without the use of another index, one of a plurality of reference pictures from which a current one of the plurality of motion blocks is predicted and a weighting factor from a set of weighting factors for the current one of the plurality of motion blocks, as recited in independent claim 1? FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Kikuchi 1. Kikuchi teaches that “[i]n the original proposal of JVT-B075, a syntax based on the reference picture index (ref_idx) was used to indicate both the reference picture and the interpolation coefficient” (Kikuchi § 2, p. 3). 2. Kikuchi teaches that to generate a prediction signal, weighting factor W1=mfip_coeff_w1, and weighting factor W2=mfip_coeff_w2, both of which are obtained from the MFIP coefficient index mfip_coeff_idx (Kikuchi § 3.4, pp. 6-7). 4 Appeal 2009-004653 Application 10/410,481 PRINCIPLES OF LAW Computer programs and data structures are deemed “functional descriptive material,” which impart functionality when employed as a computer component. When functional descriptive material is recorded on some (tangible) computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (claim to data structure stored on a computer readable medium that increases computer efficiency held statutory) with In re Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994) (claim to computer having a specific data structure stored in memory held statutory product-by-process claim but claim to a data structure that referred to ideas reflected in nonstatutory process rather than referring to a physical arrangement of the contents of a memory held nonstatutory). “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)). On the issue of obviousness, the Supreme Court has stated that “the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. “One of the ways 5 Appeal 2009-004653 Application 10/410,481 in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of the invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Id. at 419- 420. ANALYSIS REJECTION OF CLAIMS 18-20 UNDER § 101 Independent claim 18 recites “[a] program storage device readable by machine, tangibly embodying a program of instructions executable by the machine” to perform certain video decoding steps. The Examiner concludes that “since a program storage device is merely a storage medium for holding a set of instructions capable of being executed by a computer,” claims 18-20 are deemed to contain nonstatutory subject matter (Ans. 6-7). We disagree with the Examiner’s conclusion. We find that the claimed “program of instructions” constitutes functional descriptive material. See Lowry, supra. Because that functional descriptive material is tangibly embodied on a computer-readable medium (i.e., the program storage device), we find that it is structurally and functionally interrelated to the medium, and that the technology permits the function of the descriptive material to be realized. See Id. We agree with Appellant’s argument that claim 18 recites patent- eligible subject matter (App. Br. 9-13). Accordingly, we will not sustain the Examiner’s § 101 rejection of claim 18, nor that of claims 19 and 20 dependent therefrom. 6 Appeal 2009-004653 Application 10/410,481 CLAIMS 1 AND 10 Independent claim 1 recites at least one reference picture index for independently indicating, without use of another index, one of a plurality of reference pictures from which a current one of the plurality of motion blocks is predicted and a weighting factor from a set of weighting factors for the current one of the plurality of motion blocks. (Independent claim 10 is of similar scope.) We are persuaded by Appellant’s arguments, supra, that the Examiner erred in rejecting claims 1 and 10. The Examiner finds that Kikuchi teaches that “[i]n the original proposal of JVT-B075, a syntax based on the reference picture index (ref_idx) was used to indicate both the reference picture and the interpolation coefficient” (FF 1, emphasis added). The Examiner admits, however, that Kikuchi’s interpolation coefficients W1 and W2 correspond to the claimed “weighting factor” (Ans. 3, 7). In section 3, Kikuchi teaches that weighting factor W1=mfip_coeff_w1, and weighting factor W2=mfip_coeff_w2, both of which are obtained from the MFIP coefficient index mfip_coeff_idx (FF 2). Thus, we find that Kikuchi teaches obtaining a weighting factor from an index (the MFIP coefficient index, mfip_coeff_idx) different from the index used to indicate a reference picture from which a current one of the plurality of motion blocks is predicted (the reference picture index, ref_idx). Consequently, Kikuchi does not teach all of the limitations of independent claims 1 and 10. Appellant has shown error in the Examiner’s rejection of claims 1 and 10, and we will not sustain the § 102 rejection. 7 Appeal 2009-004653 Application 10/410,481 CLAIMS 2-9 AND 11-17 Appellant does not present separate argument for the patentability of claims 2-9 and 11-17, implying that these claims are allowable for the reasons claims 1 and 10 are allowable (App. Br. 18). We have reviewed the secondary references (Yamaguchi and Pearlstein), and we find that they do not remedy the deficiencies of Kikuchi, explained supra. We therefore find error in the Examiner’s § 103 rejections of claims 2-9 and 11-17, and we will not sustain the rejections, for the same reasons expressed with respect to the rejection of claims 1 and 10, supra. REJECTION OF CLAIMS 18-20 UNDER § 103 Like independent claims 1 and 10, independent claim 18 recites receiving a reference picture index independently indicating, without use of another index, a reference picture from which the current motion block is predicted and a weighting factor from a set of weighting factors for the current block. We have reviewed Yamaguchi and Pearlstein and find that they do not supply a teaching of this claim element, which we find supra to be absent from Kikuchi. As a result, we find that the Examiner has not set forth a prima facie case of obviousness for claims 18-20, and we will not sustain the Examiner’s rejection of claims 18-20 under § 103. 8 Appeal 2009-004653 Application 10/410,481 CONCLUSIONS 1. A claim directed to “a program storage device readable by machine, tangibly embodying a program of instructions executable by the machine to perform program steps … the program steps comprising” recites patent- eligible subject matter. 2. Kikuchi does not teach a reference picture index that independently indicates, without the use of another index, one of a plurality of reference pictures from which a current one of the plurality of motion blocks is predicted and a weighting factor from a set of weighting factors for the current one of the plurality of motion blocks, as recited in independent claim 1. ORDER The Examiner’s rejection of claims 1-20 is reversed. 9 Appeal 2009-004653 Application 10/410,481 REVERSED ELD JOSEPH S. TRIPOLI THOMSON LICENSING INC. 2 INDEPENDENCE WAY, SUITE #2 P. O. BOX 5312 PRINCETON, NJ 08543-5312 10