Ex Parte Curtis et al

Patent Trial and Appeal Board

Sep 28, 2018

14221852 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/221,852 03/21/2014
100462 7590 10/02/2018
Dority & Manning P.A. and Google LLC
Post Office Box 1449
Greenville, SC 29602
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Duncan John Curtis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GGL-1473 5432
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUNCAN JOHN CUR TIS and
ALEXANDER RUBEN STACEY MCCARTHY
Appeal2018---000887
Application 14/221,852
Technology Center 3700
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Duncan John Curtis and Alexander Ruben Stacey McCarthy
(Appellants)2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
to reject claims 1--40 under 35 U.S.C. § l 12(a) as failing to comply with the
1 The Examiner has withdrawn the rejection of claims 1--40 under 35 U.S.C.
§ 101. Examiner's Answer 4 (hereinafter "Ans.") (dated Sept. 7, 2017); see
also Final Office Action 6-8 (hereinafter "Final Act.") (dated Nov. 4, 2016).
2 The Appeal Brief identifies Google, Inc. as the real party in interest. Appeal
Brief 1 (hereinafter "Appeal Br.") (filed May 3, 2017).
Appeal2018---000887
Application 14/221,852
written description requirement. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 15, 21, and 3 5 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A method comprising:
receiving a gaming application;
selecting, with a processor, one or more video compression
techniques based on at least one or more of: which type of game the
gaming application is, an amount of repetitive content in the gaming
application, binary resources of the gaming application, pre-made
images of the gaming application, audio playback events of the gaming
application, a number of instructions and/ or files included in the gaming
application, and a complexity level of images and/or graphics displayed
in the gaming application;
creating a video codec customized for the gaming application,
the video codec being configured to use at least the one or more selected
video compression techniques;
providing the video codec to a device on which the gaming
application is installed; and
receiving, from the device, a compressed video of gameplay
within the gaming application, wherein the video of gameplay has been
compressed using the video codec for the gaming application.
ANALYSIS
Claim 1 recites, inter alia, the step of "creating a video codec
customized for the gaming application, the video codec being configured to
use at least the one or more selected video compression techniques." Appeal
Br. 11 (Claims App.). The Examiner determines that Appellants'
2
Appeal2018---000887
Application 14/221,852
Specification does not support this claim limitation. Final Act. 4. In
particular, the Examiner determines that "[t ]he [S]pecification fails to
explain what hardware and/or software (e.g., the necessary steps and/or
flowcharts) is used to accomplish said creation or customization." Id.
Appellants contend that multiple examples are provided in the subject
application "showing a variety of ways in which a suitable video
compression technique can be selected and applied to create a codec in
accordance with the claim" and that "[t]here is clear evidence that the
specification contemplates multiple ways of selecting and using multiple
types of compression techniques." Reply Br. 2 (hereinafter "Reply Br.")
(filed November 7, 2017) (citing Spec. ,r,r 23-28); see also Appeal Br. 7-10.
As an initial matter, we note that Appellants cite to MPEP 2164.03.
Reply Br. 2-3. That portion of the MPEP discusses the relationship of
predictability of the art and the enablement requirement. See MPEP
2164.03. 3 The Examiner correctly points out that "[t]he rejection is not
based on enablement, but rather [is] based on written description." Final
Act. 3 ( emphasis added).
"The written description requirement is separate and distinct from the
enablement requirement." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1340 (Fed. Cir. 2010) (en bane). To satisfy the written description
requirement, the specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the
3 Latest Revision January 2018 [R-08.2017].
3
Appeal2018---000887
Application 14/221,852
specification must describe the claimed invention in a manner
understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id. at 1562---63; Ariad, 598
F.3d at 1351.
To have "possession," "the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Ariad, 598 F.3d at 1351. In order to
satisfy the written description requirement, the Specification must describe a
sufficient number of species to claim the genus. Id. at 1349 ("the
specification must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus"). In addition, original claims may fail to satisfy
the written description requirement when the invention is claimed and
described in functional language but the specification does not sufficiently
identify how the invention achieves the claimed function. Id. ("[ A ]n
adequate written description of a claimed genus requires more than a generic
statement of an invention's boundaries.") ( citing Regents of the University of
California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)).
Further, MPEP 2161.01 (1) states:
[O]riginal claims may lack written description when the claims
define the invention in functional language specifying a desired
result but the specification does not sufficiently describe how the
function is performed or the result is achieved. For software, this
can occur when the algorithm or steps/procedure for performing
the computer function are not explained at all or are not
explained in su(ficient detail (simply restating the function
recited in the claim is not necessarily sufficient). In other words,
the algorithm or steps/procedure taken to perform the function
4
Appeal2018---000887
Application 14/221,852
must be described with sufficient detail so that one of ordinary
skill in the art would understand how the inventor intended the
function to be performed.
When examining computer-implemented functional claims,
examiners should determine whether the specification discloses
the computer and the algorithm (e.g., the necessary steps and/or
flowcharts) that perform the claimed function in sufficient detail
such that one of ordinary skill in the art can reasonably conclude
that the inventor possessed the claimed subject matter at the time
of filing. It is not enough that one skilled in the art could write
a program to achieve the claimed function because the
specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description
requirement. See, e.g., Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 681---683 (Fed. Cir. 2015)
(reversing and remanding the district court's grant of summary
judgment of invalidity for lack of adequate written description
where there were genuine issues of material fact regarding
"whether the specification show[ ed] possession by the inventor
of how accessing disparate databases is achieved").
MPEP 2161.01 (1) (italics with underlining added). 4
In this case, the Examiner correctly points out that:
A codec is a coder/ decoder that processes video and stores it in a
stream of bytes. Codecs use algorithms to effectively shrink the
size of an audio or video file, and then decompress it when
needed. For different codecs, this encoding occurs as either lossy
compression or lossless compression based on the algorithm
used. Thus, the algorithm or steps taken to compress the size of
the audio or video file and then decompress that file is the crux
of any codec.
4 Latest Revision January 2018 [R-08.2017].
5
Appeal2018---000887
Application 14/221,852
Ans. 6 ( emphasis added); see also Advisory Action 2 (hereinafter "Adv.
Act.") (dated Jan. 25, 2017).
Although we acknowledge that a skilled artisan "familiar with
programming codecs" could, most likely, "program a computer to perform
the processes as claimed" (see Appeal Br. 8), as discussed above, it is not
enough that a skilled artisan could write a program to achieve the claimed
function because the Specification must explain how the inventor intends to
achieve the claimed function to satisfy the written description requirement.
See, e.g., Vasudevan, 782 F.3d at 681---683; see also MPEP 2161.01(1) ("For
computer-implemented inventions, the determination of the sufficiency of
disclosure will require an inquiry into the sufficiency of both the disclosed
hardware and the disclosed software due to the interrelationship and
interdependence of computer hardware and software.").
Appellants contend that the application asset analysis of claims 4 and
5 and the statistical analysis of claims 8-10 of the subject application, and
the discussion of those analyses in paragraphs 18, 21, and 23-28 of the
Specification, provide written description support of examples of techniques
that may be selected and used to create a video codec. See Appeal Br. 7-10;
see also Reply Br. 2.
In this case, we agree with the Examiner that the portions of the
Specification cited by Appellants are silent "as to the steps or functions
involved in the claimed customization of the video codec" via either video
compression technique (i.e., statistical analysis or application asset analysis).
Ans. 9. Moreover, Appellants do not direct us to any language, steps or flow
charts in the disclosure to show particular hardware or an algorithm, such
that a skilled artisan would understand how to create the claimed
6
Appeal2018---000887
Application 14/221,852
customization of the video codec via either statistical analysis or application
asset analysis.
Absent from the Specification is any discussion as to the particular
steps, i.e., algorithm, necessary to perform the claimed functions. As such,
we agree with the Examiner that Appellants' Specification "does not
disclose a computer and algorithm in sufficient detail to demonstrate to one
of ordinary skill in the art that the inventor possessed the invention including
how to program the disclosed computer to perform the claimed functions."
Ans. 7. Stated differently, "the steps, procedure or algorithm taken to
perform the claimed functions [ are not] described in sufficient detail in
[Appellants'] [S]pecification to demonstrate that the inventor was in
possession of that knowledge." Id.
We note that Appellants cite to paragraphs 22 and 3 2 of the
Specification as support for the disclosure of the creating a video codec step
of method claim 1. See Appeal Br. 2; see also Spec. ,r,r 22, 32. Here, we
agree with the Examiner that those paragraphs provide "support for creating
a video codec for the gaming application based on or using one or a
combination of video compression techniques. However, neither of [those]
paragraphs explain[] the hardware and/or software (e.g., the necessary steps
and/or flowcharts) used to accomplish said creation or customization of the
video codec." Ans. 5. For the foregoing reasons, Appellants' disclosure
does not reasonably convey possession of the claimed subject matter.
As discussed above, Appellants' arguments regarding claims 1, 4, 5,
and 8-10 are not persuasive. Appellants do not present arguments for
independent claims 15, 21, and 35 and dependent claims 2, 3, 6, 7, 11-14,
16-20, 22-34, and 36-40 separate from those presented for claim 1. See
7
Appeal2018---000887
Application 14/221,852
Appeal Br. 6-10; Reply Br. 1-3; see also 37 C.F.R. § 4I.37(c)(l)(iv).
Accordingly, we sustain the Examiner's rejection of claims 1--40, as failing
to comply with the written description requirement.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1--40 as
failing to comply with the written description requirement.
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.
§ 1.13 6( a )(l)(iv ).
AFFIRMED
8