Ex Parte Jam et al

Patent Trial and Appeal Board

Nov 5, 2014

11117105 (P.T.A.B. Nov. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MEHRBAN JAM and BO SHEN
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Appeal 2012-005162
Application 11/117,105
Technology Center 2400
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Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
JASON J. CHUNG, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–4, 7–11, 13, 15–19, 21, and 22. Claims 6 and 12 are canceled.
Claims 5, 14, and 20 are objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to a transcoding transform data. Abst.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method for transcoding first transform data to second
transform data, said method comprising:
receiving a video input at a computer system;
partially decoding said video input into a input first
transform data block at said computer system wherein said
partially decoding comprises variable length decoding and
inverse quantization of said video input;
generating side information at a decoder of said computer
system wherein said side information comprises macroblock
coding information;
forwarding said side information to an encoder be reused
during encoding;
extracting a low-pass band block from said input first
transform data block at said computer system; and
transcoding said low-pass band block by performing a
matrix operation on said low-pass band block using a
transcoding matrix to generate a transcoded second transform
data block at said computer system wherein said transcoding
matrix is defined as:
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[ 1 0 0 0
0 a 0 b
0 0 1 0
0 -b 0 a ]

wherein a and b represent integers.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Xin US 2005/0265445 A1 Dec. 1, 2005
Lin US 7,180,944 B2 Feb. 20, 2007

REJECTIONS1
The Examiner rejected claims 1–4, 7–11, 13, 15–19, 21, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Xin and Lin. Ans. 4–9.

APPELLANTS’ CONTENTIONS
1. The output from Lin’s variable length decoder fails to teach or suggest
generating side information required by claim 1. App. Br. 12.
2. Neither Xin’s algorithms and kernels nor block diagram of Figure 8
teaches or suggests a circuit implementation as required by claim 17.
App. Br. 13.

1 Appellants argue the rejection of claims 1–4, 7–11, 13, 15, and 16 on the
basis of independent claim 1 (App. Br. 10–12) and the rejection of claims 8,
16–19, 21, and 22 on the basis of independent claim 17 (App. Br. 12–14),
and errors in the rejection of claims 8 and 16 based on arguments presented
in connection with both independent claims 1 and 17. Separate patentability
is not argued for claims 2–4, 7–11, 13, 15, 16, 18, 19, 21, and 22.
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Application 11/117,105

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ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 9–14)
and Reply Brief (Reply Br. 2–3), the issue presented on appeal is whether
the Examiner erred in concluding the disputed limitations are taught or
suggested by the applied art of record.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–9) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 9–11) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellants contend Lin’s variable length decoder 801 partially
decodes a video input into a first transform data block using variable length
decoding and inverse quantization of the video output but fails to teach or
suggest generating side information as required by claim 1. App. Br. 12.
Appellants further contend “705 of Fig. 8 in Lin does not demonstrate
‘forwarding said side information to an encoder be reused during encoding’
as recited by Claim 1.” Id. The Examiner responds by interpreting the
disputed side information to include a motion vector, citing to Appellants’
Specification: “[T]he side information may include macroblock coding
information . . . one type of macroblock coding information is the motion
vector coding type.” Ans. 10; Spec. 7, ll. 3–6. The Examiner finds Lin’s
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variable length decoder generates a motion vector (i.e., the disputed side
information), which is forwarded to encoder 705 to be reused for encoding.
Ans. 10; Lin Fig. 8.
We agree with the Examiner. Figure 8 of Lin depicts N2 motion
vectors from a variable length decoder supplied to encoder 705 by at least
two paths including (i) DCT-domain downscaling unit 703 and (ii) a re-
sampling motion vector process. Although Appellants assert Lin’s variable
length decoder does not teach or suggest generating side information (App.
Br. 12), Appellants neither provide evidence nor technical reasoning to
support such a conclusion nor do Appellants rebut the Examiner’s finding
that Lin’s motion vectors teach the disputed side information. See, e.g.,
Reply Br. 2. Accordingly, Appellants’ bald assertion unsupported by
sufficient evidence or technical reasoning is unpersuasive in view of the
Examiner's findings and analysis. Therefore, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) over Xin and Lin and, for the same
reasons, the rejection of claims 2–4, 7, 9–11, 13, and 15, which were not
separately argued.
In connection with claim 17 Appellants contend “‘fast algorithms and
integer approximations to compute these various conversions’ and ‘kernels,’
as disclosed by Xin, do not teach describe or suggest a ‘circuit for
transcoding first transform data to second transform data’ . . . as recited by
Claim 17.” App. Br. 13. Appellants argue the Examiner’s reliance on
Figure 8 of Xin is misplaced as the figure depicts “a block diagram and
makes no reference to a circuit or the component parts that would comprise a
circuit.” Id. Appellants further argue the terms circuit and computer are not
to be found in Xin. Id. The Examiner responds by finding Fig. 10A of Xin
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(not Figure 8 as argued) discloses transcoding, Xin further disclosing
transcoding being performed by a microcomputer. Ans.11; Xin ¶ 87. The
Examiner explains a microcomputer includes a plurality of circuits,
interconnections, and/or modules, thereby teaching the disputed circuit
limitation. Ans. 11. The Examiner further finds the interconnections
depicted in Xin’s Figure 10A imply a requirement for “some electronic or
electrical circuit as an interconnection to enable information transfer by any
software or algorithm between software or algorithm between modules or
other circuits to achieve transcoding.” Id. (citations omitted).
We agree with the Examiner. Even if, arguendo, the circuit recited in
the preamble of claim 17 were considered to be positive limitation, we agree
with the Examiner Xin’s microprocessors (Xin ¶ 87) teaches or suggests the
disputed circuit. We further agree one skilled in the art at the time of the
invention would have appreciated the functionality and structure taught by
the prior art, even if implemented in software, would require circuitry (e.g., a
computer such as microprocessor or microcomputer) for execution of the
software and implementation of the recited functionality. In contrast,
Appellants provide insufficient evidence to persuade us Xin’s
microprocessors fail to teach or suggest circuitry. We are also not persuaded
of error by Appellants’ contention “Xin, including paragraph 87 and Fig.
10A, do not imply nor teach or suggest a circuit dedicated for transcoding
first transform data to second transform data, claimed.” Reply Br. 3
(emphasis in original omitted, emphasis added). This argument is untimely
as presented for the first time in Appellants’ Reply Brief 2 and, in any case,

2 “Any bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
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is not commensurate in scope with claim 17 which does not require a
dedicated circuit. See In re Self, 671 F.2d at 1348 (CCPA 1982). Therefore,
we sustain the rejection of claim 17 under 35 U.S.C. § 103(a) over Xin and
Lin and, for the same reasons, the rejection of claims 8, 16, 18, 19, 21, and
22 which were not separately argued.

CONCLUSION
The Examiner did not err in concluding the disputed limitations are
taught or suggested by the applied art of record.

DECISION
The Examiner’s decision rejecting claims 1–4, 7–11, 13, 15–19, 21,
and 22 is affirmed.3

(BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam
Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.”) (citations and internal
quotation marks omitted).
3 Should prosecution be continued, we leave to the Examiner whether claim
17 should be rejected under 35 U.S.C. § 112, second paragraph, as an
improper mixed or hybrid claim. See IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (noting that when a claim recites
both a system and a method for using that system, it is unclear whether
infringement occurs when (1) one creates a system that allows a user to
perform the recited method (i.e., change predicted transaction information or
accept a displayed transaction), or (2) the recited method actually occurs (the
user actually uses an input means to perform these steps)); see also In re
Katz Interactive Call Proc. Pat. Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011)
(claims reciting an “interface means for providing automated voice messages
. . . to certain of said individual callers, wherein said certain of said
individual callers digitally enter data” held indefinite under § 112, second
paragraph); Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339
(Fed. Cir. 2011) (same for claims reciting (1) four apparatus elements
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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)(1)(iv).

AFFIRMED

msc

including a “trellis encoding means,” and (2) a final element reciting
“transmitting the trellis encoded frames”).