Ex Parte Gordon

Patent Trial and Appeal Board

Nov 24, 2014

11412669 (P.T.A.B. Nov. 24, 2014)

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.
11/412,669 04/27/2006 Stephen Gordon 14528.00104 7912
16378 7590 11/24/2014
BGL/Broadcom
P.O. Box 10395
Chicago, IL 60610
EXAMINER
RAO, ANAND SHASHIKANT
ART UNIT PAPER NUMBER
2486
MAIL DATE DELIVERY MODE
11/24/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN GORDON
____________________

Appeal 2012-007185
Application 11/412,669
Technology Center 2400
____________________

Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007185
Application 11/412,669

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.

Exemplary Claim
Exemplary claim 1under appeal reads as follows:
1. A system for reconstructing pixels, said system
comprising:
a first circuit for reconstructing pixels from residuals,
wherein the residuals encode video data in accordance with a
first encoding standard; and
a second circuit for reconstructing pixels from residuals,
wherein the residuals encode video data in accordance with a
second encoding standard.

Prior Art Relied Upon
Hsu US 7,369,709 B2 May 6, 2008
(filed Aug. 31, 2004)

Intel Corp./Envivio Inc., H.264 & IPTV Over DSL--Enabling
New Telco Revenue Opportunities, White Paper (May 15, 2004)
(hereinafter “White Paper”).

SMPTE, Proposed SMPTE Standard for Television: VC-l
Compressed Video Bitstream Format and Decoding Process
(Aug. 23, 2005) (hereinafter “SMPTE”).1

1 We note that the present application (Serial No. 11/412,669) claims priority
to US Provisional Application 60/675,166, filed on April 27, 2005, and thus,
the present application is entitled to priority dating back to April 27, 2005.
(Continued on next page)
Appeal 2012-007185
Application 11/412,669

3
Rejections
The Examiner rejected claims 1, 4–8, 11, 12, 15, and 16 under
35 U.S.C. § 102(e) as being anticipated by Hsu. Ans. 5–11.
The Examiner rejected claims 2, 3, 9, 10, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Hsu, White Paper, and SMPTE. Id.

Appellant’s Contentions
1. Appellant contends the Examiner erred in rejecting claims 1, 8,
and 12 because Hsu does not disclose a “reconstructing pixels from
residuals,” as recited in independent claim 1, and similarly recited in
independent claims 8 and 12. App. Br. 6–7; Reply Br. 1–2.
2. Appellant also contends the Examiner erred in rejecting claims
6, 8, and 12 because Hsu does not disclose “an encoding standard,” as
recited in independent claim 8, and similarly recited in claims 6 and 12.
App. Br. 8–9; Reply Br. 2.
3. Appellant also contends the Examiner erred in rejecting claim
16 because Hsu does not disclose a “wherein said portion is operable to add
9-bit signed to 8-bit unsigned values,” as recited in dependent claim 16.
App. Br. 11.
4. Appellant further contends the Examiner erred in rejecting
claims 2, 3, 9, 10, 13, and 14 because SMPTE “does not qualify as prior art.”
App. Br. 9–10; Reply Br. 3. In particular, Appellant contends:
The alleged new matter identified by the Examiner is the
specific 8-bit length of unsigned residuals and 10-bit length of

However, SMPTE is dated August 23, 2005, and as such, SMPTE does not
qualify as prior art, as asserted by Appellant (App. Br. 9-10; Reply Br. 3).
Appeal 2012-007185
Application 11/412,669

4
signed residuals. But those features are not claimed subject
matter. (See application claims, Examiner's Answer of
02/06/2012, p. 17). Instead, Appellant submits that the features
that actually are claimed are adequately disclosed in Provisional
Application No. 60/675,166 in accordance with 35 U.S.C.
§§ 112 and 119(e). For example, Figures 3, 4, 5, and 6 and
their corresponding text support the presently claimed subject
matter as required under section 112. Thus, the Appellant
asserts the claims of the present application are entitled to the
April 27, 2005 priority date, thus disqualifying the Proposed
SMTE Standard reference as prior art.
Reply Br. 3.

Issues on Appeal
Did the Examiner err in rejecting claims 1, 4–8, 11, 12, 15, and 16 as
being anticipated by Hsu?
Does SMPTE qualify as prior art for the obviousness rejection of
claims 2, 3, 9, 10, 13, and 14?

ANALYSIS
Section 102 rejection of claims 1, 4-8, 11, 12, 15, and 162
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred.
Further, we have reviewed the Examiner’s response to Appellant’s
arguments. The Examiner has provided a comprehensive response to each
argument presented by the Appellant on pages 11–16, and 20 of the Answer.
We have reviewed this response and concur with the Examiner’s findings

2 Appellant did not provide separate arguments for dependent claims 4, 5, 7,
11, and 15.
Appeal 2012-007185
Application 11/412,669

5
and conclusions. We agree with the Examiner and adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 6–8) and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 11–
16, 20).
The Examiner correctly points out that Hsu explicitly discloses
reconstructing residuals. Ans. 6 (citing Hsu, col. 6, ll. 55–65). Appellant
contends reconstruction of pixel data is different from generating prediction
residuals in Hsu. App. Br. 7. Claim 1 recites reconstructing pixels from
residuals. We agree with the Examiner’s finding (Ans. 13–15) that
Appellant’s arguments about prediction residuals are not commensurate with
the scope of the claim because claim 1 does not preclude such a reading.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We also agree with the Examiner’s analysis (Ans. 15–16) in response
to Appellant’s arguments. The Examiner correctly points out the “coding
standard information would be included in Hsu’s ‘profile’ information
block” because “this profile contains the required syntax elements to
transmit video bitstreams conformant to this standard into generic systems,
such as MPEG-2 Transport or Program Streams (ISO/1EC 13818-2) (Hsu:
column 1, lines 60-65), or the Windows Media Window format discussed in
the reference (Hsu: column 4, lines 15-25).” Ans. 16. We also agree Hsu
discloses “a single bit overlap mode signal (i.e. a bit overhead)” and “the use
of 9 bits pixels” (Id. (citing Hsu, col. 14, ll. 60–65)).
Accordingly, we agree with the Examiner’s finding in the Answer.
Thus, we sustain the rejection of claims 1, 4–8, 11, 12, 15, and 16 under
35 U.S.C. § 102.
Appeal 2012-007185
Application 11/412,669

6
Section 103 rejection of claims 2, 3, 9, 10, 13, and 14
As to claims 2, 3, 9, 10, 13, and 14, we agree with the Appellant.
Accordingly, because the Examiner improperly relied upon SMPTE as prior
art, we cannot sustain the Examiner’s rejections of claims 2, 3, 9, 10, 13, and
14 under 35 U.S.C. § 103(a) as being unpatentable over Hsu, White Paper,
and SMPTE.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 4–8, 11, 12, 15, and 16
under 35 U.S.C. § 102(e) as being anticipated by Hsu.
The Examiner erred in rejecting claims 2, 3, 9, 10, 13, and 14 under
35 U.S.C. § 103(a) as being unpatentable over Hsu, White Paper, and
SMPTE.

DECISION3
We affirm the Examiner’s § 102 rejection of claims 1, 4–8, 11, 12, 15,
and 16.
We reverse the Examiner’s § 103 rejections of claims 2, 3, 9, 10, 13,
and 14.

3 We note claim 12 recites a machine-readable storage. However,
Appellant’s Specification does not define machine-readable storage to
exclude transitory media. Should there be further prosecution of this
application (including any review for allowance), the Examiner may wish to
review the claims for compliance under 35 U.S.C. § 101 in light of the
recently issued preliminary examination instructions on patent eligible
subject matter. See “Preliminary Examination Instructions in view of the
Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank
International, et al.,” Memorandum to the Examining Corps, June 25, 2014.
Appeal 2012-007185
Application 11/412,669

7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

msc