Ex Parte Bruls et al

Board of Patent Appeals and Interferences

Mar 23, 2012

10493267 (B.P.A.I. Mar. 23, 2012)

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.
10/493,267 04/21/2004 Wilhelmus Hendrikus Bruls NL 021042 8816
7590 03/26/2012
U S Philips Corporation
Intellectual Property Department
P O Box 3001
Briarcliff Manor, NY 10510
EXAMINER
ANYIKIRE, CHIKAODILI E
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
03/26/2012 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 WILHELMUS HENDRIKUS ALFONSUS BRULS
and REINIER BERNARDUS MARIA KLEIN GUNNEWIEK
________________

Appeal 2009-009511
Application 10/493,267
Technology Center 2600
________________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
BRUCE R. WINSOR, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-30, all the claims pending in the application:
1. Claims 1 and 22-30 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Shin (US 6,493,387 B1; issued Dec. 10, 2002);
2. Claims 6 and 17-21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Shin in view of Chen (US 2002/0034248 A1;
published Mar. 21, 2002);
3. Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as obvious
over Shin and van der Schaar (Mihaela van der Schaar, A Hybrid
Temporal-SNR Fine-Granular Scalability for Internet Video, IEEE
Transactions On Circuits And Systems For Video Technology,
Vol. II, No. 3, (Mar. 2001), pp. 318-331); and
4. Claims 7-16 stand rejected under 35 U.S.C. § 103(a) as obvious
over Shin in view of Chen and van der Schaar.
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection. Independent claim 1 is rejected under 35 U.S.C.
§ 102(e) as anticipated by Shin.

STATEMENT OF THE CASE
Appellants describe their invention as follows:
An apparatus for efficiently performing spatial scalable
compression of an input video stream is disclosed. A base
encoder encodes a base encoder stream. Modifying means
modifies content of the base encoder stream to create a plurality
of base streams. An enhancement encoder encodes an
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enhancement encoder stream. Modifying means modifies
content of the enhancement encoder stream to create a plurality
of enhancement streams.
(Abstract).
Independent claim 1 is illustrative of the claimed subject matter:
1. An apparatus for efficiently performing spatial scalable
compression of an input video stream, comprising:
a base encoder for encoding a base encoder stream;
a first modifying device for modifying content of the
base encoder stream to create a plurality of base streams;
an enhancement encoder for encoding an enhancement
encoder stream; and
a second modifying device for modifying content of the
enhancement encoder stream to create a plurality of
enhancement streams.

ANALYSIS
I. The § 102(e) rejection of claims 1 and 22-30 and the § 103(a) rejections
of Claims 2-17
In concluding that Shin teaches the limitations of claim 1, the
Examiner relies on Shin’s base layer coder 120 as corresponding to the
claimed “a base encoder for encoding a base encoder stream,” Shin’s first
signal-to-noise ratio (SNR) scalable architecture generator 126 as
corresponding to the claimed “a first modifying device for modifying
content of the base encoder stream to create a plurality of base streams,” and
the video stream that inputs to Shin’s first SNR generator 126 as
corresponding to “the base encoder stream” (Ans. 3, 12; Shin Fig. 2).

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Appellants contend that Shin’s first SNR generator 126 cannot
correspond to “the first modifying device” recited in claim 1 because Shin’s
first SNR generator 126 does not modify the base encoder stream that is
encoded by the base encoder 120 (Reply Br. 2; App. Br. 9-10). Instead,
Shin’s first SNR generator 126 modifies the residual textual information
from the input video stream (id.).
Appellants’ arguments are persuasive. Claim 1 recites, inter alia, “a
base encoder for encoding a base encoder stream; a first modifying device
for modifying content of the base encoder stream to create a plurality of base
streams.” The broadest reasonable interpretation of this claim language
requires a first modifying device for modifying content of the base encoder
stream that was encoded by the base encoder, not merely the first modifying
device modifying any content existing in the base encoder. The Examiner
has provided insufficient evidence to find that Shin’s residual textual
information, which inputs into the first SNR generator 126, constitutes
“content of the base encoder stream.”
Accordingly, we do not sustain the Examiner’s rejection of claim 1, or
the rejections of claims 6, 17, 22, 25, and 29, which have similar limitations
as claim 1. We, likewise, do not sustain the Examiner’s rejections of claims
2-5, 7-16, 23, 24, 26-28, and 30, which depend from claims 1, 6, 22, 25, and
29. The additionally cited references of Chen and/or van der Schaar do not
cure the deficiency of the obviousness rejections of the claims 2-17.

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The § 103(a) rejections of Claims 18-21
Claim 18 recites the following:
18. A decoder for decoding a plurality of coded video streams,
comprising:
a plurality of decoders, one for each video stream, for
decoding said video streams;
a first arithmetic unit for combining said decoded video
streams;
an inverse quantization device for performing an inverse
quantization operation on quantization coefficients in the
combined decoded video stream to produce DCT coefficients;
an inverse DCT device for performing an inverse DCT
operation on the DCT coefficients to produce a first signal;
a motion compensation unit for producing predicted
pictures;
a second arithmetic unit for combining the first signal
and the predicted pictures to produce an output signal.
In concluding that the combination of Shin and Chen teaches or
suggests the limitations of claim 18, the Examiner relies on Shin’s first SNR
scalable architecture decoder 223 (col. 7, ll. 19-24; Fig. 3; “Shin’s decoder
embodiment”) as corresponding to the claimed “first arithmetic unit for
combining said decoded video streams,” and relies on Shin’s textural
decoder 124 (col. 8, ll. 5-10; Fig. 2; “Shin’s encoder embodiment”) as
corresponding to the claimed “an inverse quantization device for performing
an inverse quantization operation on quantization coefficients in the
combined decoded video stream to produce DCT coefficients” (Ans. 7-8).
Appellants argue that “[t]he input to the referenced inverse
quantization device at column 8, lines 5-10 is not the combined decoded
video stream from Shin's arithmetic unit at column 7, lines 19-24” because
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Shin’s first SNR scalable architecture decoder 223 and Shin’s textural
decoder 124 are from separate embodiments (App. Br. 14).
Again, we are persuaded by Appellants’ arguments. The Examiner
does not provide sufficient evidence or reasoning to connect the “decoded
video streams” from Shin’s first SNR scalable architecture decoder 223 of
the decoder embodiment to Shin’s textural decoder 124 of the encoder
embodiment. Moreover, the Examiner does not respond to Appellants’
arguments (see Ans. 12-13).
Accordingly, we do not sustain the Examiner’s rejection of claim 18
or the rejection of claim 21, which has similar limitations as claim 18. We
likewise, do not sustain the Examiner’s rejections of claims 19 and 20,
which depend from claim 18.

NEW REJECTION UNDER 35 U.S.C. § 102
Rejection of claim 1 under 35 U.S.C. § 102(e) as anticipated by Shin
We reject claim 1 under 35 U.S.C. § 102(e) as anticipated by the same
prior art that was applied by the Examiner, but for different reasons.
Because this panel’s rationale does differ substantially from the Examiner’s
rationale, we designate our decision as containing a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
Shin’s Figure 2 (see, e.g., col. 5, l. 22 to col. 6, l. 57) depicts and
discloses an apparatus for efficiently performing spatial scalable
compression of an input video stream. Elements 121 to 125 of Shin’s base
layer coder 120 (all elements in 120 except for first SNR scalable
architecture generator 126) collectively correspond to the claimed “a base
encoder for encoding a base encoder stream.” Shin’s base layer bitstream
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(BL) corresponds to the “base encoder stream.” Shin’s first SNR scalable
architecture generator 126, in combination with the plural adders “”
(located between BSL(i) and BSNR(i)), correspond to “a first modifying
device for modifying content of the base encoder stream to create a plurality
of base streams.” Shin’s bitstreams BSNR(0) to (n) correspond to the
“plurality of base streams.”
Similarly, elements 131 to 135 of Shin’s enhancement layer coder 130
(all elements in 130 except for second SNR scalable architecture generator
136) collectively correspond to the claimed “an enhancement encoder for
encoding an enhancement encoder stream.” Shin’s enhancement layer
bitstream (EL) (col. 4, l. 63) corresponds to the claimed “an enhancement
encoder stream.” Shin’s second SNR scalable architecture generator 136 , in
combination with the plural adders “” (located between bitstreams ESL(i)
and ESNR(i)), correspond to the claimed “a second modifying device for
modifying content of the enhancement encoder stream to create a plurality of
enhancement streams.” Shin’s bitstreams ESNR(0) to ESNR(n) correspond
to the claimed “plurality of enhancement streams.”
Specifically, Shin’s first SNR scalable architecture generator 126 and
adders “” (between BSL(i) and BSNR(i)) together modify content of the
base layer bitstream (BL) (base encoder stream) by adding content BSL(0)
through BSL(n) to BL to create a plurality bitstreams BSNR(0) to (n)
(“plurality of base streams”).
Shin’s second SNR scalable architecture generator 136 and adders
“” (between bitstreams ESL(i) and ESNR(i)) together modify content of
the enhancement layer bitstream (EL) (enhancement encoder stream) by
adding ESL(0) through ESL(n) to the enhancement layer bitstream (EL) to
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create a plurality of bitstreams ESNR(0) to ESNR(n) (“plurality of
enhancement streams”).
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that we have not found
the remaining claims to be patent eligible under § 102. Rather, we leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

DECISION
The Examiner’s decision rejecting claims 1-30 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 1 under 35 U.S.C. § 102(e).
Regulation 37 C.F.R. § 41.50(b) (2007) states that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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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.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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