Ex Parte Egawa et al

Board of Patent Appeals and Interferences

Jan 15, 2009

10034751 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte REN EGAWA and MICHAEL ROBERT HARRIS
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Appeal 2009-0101
Application 10/034,7511
Technology Center 2600
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Decided: January 15, 2009
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 21. We have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed December 27, 2001. The real party in interest is
STMicroelectronics, Inc.

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We reverse.
The Invention
Appellants’ claimed invention is directed to a method and apparatus
(Figs. 1, 2, and 7) for displaying a digital still image file 210 using a DVD
player 100 using an MPEG standard, the apparatus consisting of a controller
110 and an MPEG processor 120 (see claims 1, 10, and 19; Spec. 4; App.
Br. 6). The controller 110 divides the digital still image file 210 into a
plurality of sub-picture files (files A, B, and C in Fig. 3) for further
processing by the MPEG processor 120 (see claim 1; Spec. 4).
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. For use in a digital video player, an apparatus for displaying a digital
still image file using a Moving Picture Expert Group (MPEG) standard, the
apparatus comprising:

a controller capable of dividing the digital still image file into a
plurality of sub-picture files, the controller further capable of constructing an
MPEG video stream from the plurality of sub-picture files; and

an MPEG processor capable of decoding the MPEG video stream to
generate a plurality of decoded sub-pictures and scaling down the plurality
of decoded sub-pictures to a plurality of reduced size decoded sub-pictures.

The Rejections
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Werner US 6,151,074 Nov. 21, 2000
Demos US 6,728,317 B1 Apr. 27, 2004
(filed Apr. 7, 2000)

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The Examiner rejected claims 1 to 8, 10 to 17, 19, and 20 under 35
U.S.C. § 102(b) as being anticipated by the teachings of Werner.
The Examiner also rejected claims 9, 18, and 21 under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings of Werner and
Demos.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs2 and the Answer3 for their respective details.

ISSUE
The Examiner contends that Werner teaches or suggests dividing a
digital still image into a plurality of sub-picture files at column 5, lines 27 to
37 (Ans. 3-5).
Appellants contend that Werner fails to teach or suggest dividing a
digital still image file into a plurality of sub-picture files (hereinafter, the
“dividing …” feature), as recited in all of the claims on appeal (App. Br. 11-
13; Reply Br. 2).
The Examiner replies that the “dividing …” feature is inherent in
Werner (Ans. 7). The Examiner then asserts that “[t]here is no difference
between constructing an MPEG video from the plurality of sub-picture[s]
and constructing an MPEG video from [a] plurality of Marcroblock[s] since
sub-picture[s are][sic] made of [a] plurality of blocks” (Ans. 7).

2 We refer to the Appeal Brief filed July 16, 2007, and the Reply Brief filed
December 26, 2007, throughout this opinion.

3 We refer to the Examiner’s Answer mailed November 14, 2007,
throughout this opinion.
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The limitation of “dividing the digital still image file into a plurality
of sub-picture files” occurs in all independent claims 1, 10, and 19.
Appellants present specific arguments primarily as to claim 1 (App. Br. 10-
13; Reply Br. 2-4), relying on the arguments as to claim 1 to support
patentability of claims 2 to 21 (see App. Br. 13-14). We consider claim 1 to
be representative.
Accordingly, the issue is: Have Appellants shown that the Examiner
erred in determining that Werner teaches or suggests a controller or method
step for “dividing the digital still image file into a plurality of sub-picture
files,” as required by all of the claims on appeal?

FINDINGS OF FACT
The findings of fact throughout this Decision are supported by a
preponderance of the evidence of record.
Appellants’ Disclosure
1. Appellants describe and claim a method and apparatus (Figs. 1 and
7) for displaying a digital still image file 210 (see Fig. 2) using an MPEG
standard including using a controller 110/115 to divide the digital still image
file 210 into a plurality of sub-picture files (see sub-picture files A, B, and C
in Fig. 3) for further processing (e.g., MPEG decoding and image resizing)
by an MPEG processor 120 (see claims 1, 10, and 19; Spec. 4 and 8-12).
2. Appellants recognize it is known in the art that MPEG (Moving
Picture Expert Group) is a video compression and decompression standard
or format, and that JPEG (Joint Photographic Experts Group) is a digital still
image compression and decompression standard or format (Spec. 2:5-11).
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Appellants recognize that digital still image (i.e., JPEG) standards are not
compatible with video or moving picture standards (i.e., MPEG) (Spec.
2:11-12), and that there is a need to display digital still images using DVD or
MPEG processors (Spec. 2:12-14).
3. Although Appellants recognize that one solution for displaying
JPEG images on a DVD player having an MPEG processor is to simply add
a JPEG processor to the DVD player (Spec. 2:15-18), Appellants also
recognize that this solution (adding a JPEG processor to the DVD player) is
costly (Spec. 2:17-18).
Werner
4. Werner describes a video processing unit 13 that “receives an input
signal carrying compressed video data” (col. 2, ll. 35-37), and “decodes
compressed video data and resizes the image represented by the video data”
(Abs.). Werner discloses that the input signals are digital bitstreams of
compressed data (col. 3, ll. 26-29), and that the preferred method of data
compression is the MPEG standard (col. 3, ll. 31-32). Werner’s claimed
invention is directed to “[a] digital video processing unit that decompresses
an input signal carrying compressed video data and resizes the image
represented by the data” (see independent claim 1 at col. 6, ll. 51-53), and a
“video display system” which “receives a compressed video signal” and
decompresses the compressed video signal (see claim 8 at col. 7, ll. 28-33).
5. Werner teaches video processing method and apparatus including a
video processing unit 13 having a memory 23, a decoding engine 24, and a
scaling engine 25 (Figs. 1 and 2; col. 2, ll. 35-45; col. 3, ll. 6-15; col. 4, ll.
37-46). Werner teaches JPEG and/or MPEG decoding of input data using
either still or full-motion decompression algorithms appropriate to the input
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signal format (see discussion of decoding engine 24 at col. 5, ll. 28-35), but
is silent as to transcoding (encoding using one format and decoding using a
different format).
6. Werner describes the operation of decoding engine 24 as follows:
Decoding engine 24 is a processor programmed to
decompress the video data. It may be programmed to support
various compression standards, such as the JPEG, MPEG,
MPEG2, Px64, CCITT, etc. The programming can be for either
still or full-motion decompression algorithms. Decoding
engine 24 could be a multi-format decoding engine, switchable
between decompression algorithms to perform whatever
decompression method is appropriate for the input signal.

(Col. 5, ll. 27-35).
7. Werner does not teach dividing a digital still image file into a
plurality of sub-picture files, nor does Werner teach processing sub-picture
files from a digital still image file using an MPEG decoder. Werner fails to
provide any description or discussion of dividing a still image into sub-
picture or sub-image files for construction of an MPEG video stream and
subsequent MPEG processing.
Demos
8. Demos teaches an MPEG video processing method and apparatus
for processing moving pictures using an overlapped block motion
compensation technique. (Abs.; col. 43, ll. 56-59).
9. Demos does not teach dividing a digital still image file into a
plurality of sub-picture files, nor does Demos teach processing sub-picture
files from a digital still image file using an MPEG decoder.

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PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).

ANALYSIS
Appellants contend that Werner fails to teach dividing a digital still
image file into a plurality of sub-picture files (hereinafter, the “dividing …”
feature) (App. Br. 11-13; Reply Br. 2). Appellants also contend that Werner
and Demos, taken singly or in combination, fail to teach or suggest this
“dividing …” feature (App. Br. 13-14). Based on Findings of Fact 4 to 7
and 9, and the reasons that follow, Appellants’ arguments are persuasive.
The Examiner finds that the “dividing …” feature is inherent in
Werner’s discussion at column 5, lines 27 to 37 (Ans. 7). We do not find
that the evidence supports this finding. Werner fails to teach dividing a
digital still image file into a plurality of sub-picture files (Finding of Fact 7).
Anticipation is established only when a single prior art reference (i.e.,
Werner) discloses each and every limitation of the claimed invention (i.e.,
the “dividing …” feature of claims 1 to 21). Atlas Powder Co. v. IRECO,
Inc., 30 F.3d at 1347; Paulsen, 30 F.3d at 1478-79. Because Werner does
not teach the “dividing …” feature of the claims on appeal, Werner lacks at
least one feature of claims 1 to 8, 10 to 17, 19, and 20 and cannot anticipate.
The portion of Werner’s disclosure relied on by the Examiner as
inherently teaching the “dividing …” feature fails to even suggest the
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“dividing …” feature (see Finding of Fact 6). Specifically, even if column
5, lines 29 to 32 teaches processing and decompressing an input signal
carrying a compressed digital still image (i.e., JPEG), lines 32 to 36 of that
same column merely suggest decoding or decompressing the JPEG image
using a JPEG decoder. Werner does not teach or suggest transcoding –
using an MPEG processor to process and decode an input JPEG (i.e., digital
still image), nor does Werner suggest dividing a digital still image in
multiple sub-pictures for processing. Accordingly, Werner fails to suggest
dividing a digital still image file into a plurality of sub-picture files as
recited in claims 1 to 21.
For similar reasons discussed above with respect to claim 1, we are
persuaded by Appellants’ arguments with respect to the rejection of claims
9, 18, and 21 under § 103(a) over Werner and Demos (see App. Br. 13-14).
Neither Werner nor Demos teaches or suggests dividing a digital still image
file into a plurality of sub-picture files, and then processing sub-picture files
from a digital still image file using an MPEG decoder (Findings of Fact 7
and 9).
In view of the foregoing, Appellants have shown that the Examiner
erred in determining that Werner teaches or suggests “dividing the digital
still image file into a plurality of sub-picture files.” Therefore, Werner fails
to expressly or inherently teach all of the structural limitations of
independent claims 1, 10, and 19 on appeal. The same holds true for
dependent claims 2 to 8, 11 to 17, 19, and 20 because they include the noted
“dividing …” limitation, and for dependent claims 9, 18, and 21 because
Werner and Demos fail to teach or suggest the noted “dividing …”
limitation.
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CONCLUSION OF LAW
For the foregoing reasons, Appellants have shown that the Examiner
erred in determining that Werner teaches or suggests a controller or method
step for “dividing the digital still image file into a plurality of sub-picture
files.”

ORDER
We reverse the Examiner’s anticipation rejection of claims 1 to 8, 10
to 17, 19, and 20 under § 102(b).
We also reverse the Examiner’s obviousness rejection of claims 9, 18,
and 21 under § 103(a).

REVERSED

KIS

LISA K. JORGENSON
STMICROELECTRONICS, INC.
1310 ELECTRONICS DRIVE
CARROLLTON, TX 75006