Ex Parte Kaul et al

Patent Trial and Appeal Board

Jun 7, 2018

13649560 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/649,560 10/11/2012
47795 7590 06/11/2018
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
FIRST NAMED INVENTOR
Himanshu Kaul
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.
ITL.2777US (P44212) 9937
EXAMINER
TARKO,ASMAMAWG
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
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Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIMANSHU KAUL, MARK A. ANDERS, and
RAM K. KRISHNAMURTHY
Appeal2018-000572
Application 13/649,560 1
Technology Center 2400
Before SALLY C. MEDLEY, JONI Y. CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.
ZECHER, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-25. See generally App. Br. 6-8; Reply Br. 1-5.2 We
have jurisdiction under 35 U.S.C. § 6. We reverse.
1 According to Appellants, the real party in interest is Intel Corp. App. Br.
3.
2 Our decision will make reference to Appellants' Appeal Brief ("App. Br.,"
filed April 6, 2017), Appellants' Reply Brief ("Reply Br.," filed October, 23,
2017), the Examiner's Answer ("Ans.," mailed September 15, 2017), and the
Final Action ("Final Act.," mailed September 8, 2016).
Appeal2018-000572
Application 13/649,560
Appellants' Invention
Appellants purportedly invented a method, non-transitory computer
readable media, and circuit that reduces the computational complexity of
motion estimation algorithms that use Haar, sum of absolute differences, and
Hadamard transforms. Abstract. According to Appellants, this reduction in
computational complexity is achieved by reducing the number of
summations compared to existing techniques and replacing the existing
summations with compare operations. Id.
Illustrative Claim
Claims 1, 11, and 21 are independent claims and these claims are
directed to "[a] method," "[ o ]ne or more non-transitory computer readable
media," and "[a] motion estimation circuit," respectively. App. Br. 10-12
(Claims Appendix). Claims 2-9 depend directly or indirectly from
independent claim 1; claims 12-20 depend directly or indirectly from
independent claim 11; and claims 22-25 depend directly or indirectly from
independent claim 21. Independent claim 1 is illustrative of the disclosed
invention and is reproduced below:
1. A method comprising:
using a computer to perform motion estimation by
subtracting pixel values in current frames from pixel values in a
reference frame to generate subtraction results, and adding the
subtraction[] results to generate first sums and summing said
first sums to generate second sums, and comparing said first
sums.
Id. at 10 (Claims Appendix).
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Application 13/649,560
Prior Art Relied Upon
Chen U.S. Patent Application Pub. No. October 23, 2003
2003/0198295 Al
Auwera U.S. Patent Application Pub. No. July 1 7, 2003
2003/0133500 Al
Chao U.S. Patent Application Pub. No. June 11, 2009
2009/0147103 Al
Krishnan U.S. Patent Application Pub. No. June 30, 2011
2011/0158317 Al
Rejections on Appeal
Claims 1, 3-6, 8-16, and 18-20 stand rejected as unpatentable under
35 U.S.C. § 103(a) over the combined teachings of Krishnan and Chao.
Fin. Act. 4---6; Ans. 3-5.
Claims 2, 7, and 17 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over the combined teachings of Krishnan, Chao, and Auwera.
Fin. Act. 6-7; Ans. 5---6.
Claims 21-25 stand rejected as unpatentable under 35 U.S.C. § 103(a)
over the combined teachings of Krishnan, Chao, and Chen. Fin. Act. 7-8;
Ans. 6-7.
Examiner's Findings
The Examiner finds that Krishnan teaches most of the limitations of
independent claims 1 and 11 because it teaches a method of using a
computer to perform motion estimation that includes obtaining the sum of
absolute transformed differences by summing a first, second, and third
absolute sum, and then adding the subtraction results to generate first sums
and summing said first sums to generate second sums, and comparing said
3 For clarity and ease of reference, we only list the first named inventor.
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Application 13/649,560
first sums. Final Act. 4--5 (citing Krishnan, [57], i-fi-124, 25, 45, 48, Fig. 7);
Ans. 3 (citing the same). The Examiner, however, finds that Krishnan fails
to teach adding and subtracting pixel values. Final Act. 5; Ans. 3. The
Examiner then turns to Chao to teach subtracting pixel values in current
frames from pixel values in a reference frame to generate subtraction results,
followed by adding the subtraction results to generate the sums. Final Act. 5
(citing Chao i-fi-131, 33, 50, Figs. 2, 3); Ans. 3 (citing the same). According
to the Examiner, it would have been obvious to a person of ordinary skill in
the art to use Chao's difference summation with Krishnan's motion
estimation to "increase energy efficiency and speed" and "increase the area
or energy efficiency." Final Act. 5; Ans. 4 (citing Chao i-fi-126, 31-33, Figs.
2, 3).
Appellants ' Contentions
Appellants contend, among other things, that the Examiner provides
no support for its rationale to combine the teachings of Krishnan and Chao.
App. Br. 6. Appellants assert that the Examiner fails to explain why a
person of ordinary skill in the art would use Chao's difference summation,
which only applies to flicker detection, to improve the energy efficiency or
speed of Krishnan's motion estimation. Id. at 6-7. In their Reply Brief,
Appellants reiterate that the Examiner does not provide a sufficient rationale
to combine the teachings of Krishnan and Chao. Reply Br. 4.
II. ISSUE
The dispositive issue before us is whether the Examiner presents a
sufficient rationale to combine the teachings of Krishnan and Chao that
would support a conclusion of obviousness?
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III. ANALYSIS
§ 103 Rejection Based on the Combined Teachings of Krishnan and Chao
Claims 1 and 11
Based on the record before us, we discern error in the Examiner's
obviousness rejection of independent claims 1 and 11.
At the outset, we note that an invention "composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art." KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). Instead, a determination of
unpatentability on a ground of obviousness must include "'articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."' Id. (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The obviousness evaluation "should be made explicit," and it "can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." Id. With these principles in mind, we tum to
the merits of the Examiner's obviousness rejection.
In this case, although the Examiner demonstrates where each element
of independent claims 1 and 11 was, independently, taught by either
Krishnan or Chao, we are not persuaded that the Examiner has presented a
sufficient rationale to combine the teachings of these references. Contrary to
the citations provided in the Answer, the Examiner's articulated reasoning-
namely, to "increase energy efficiency and speed" and "increase the area or
energy efficiency"-is conclusory. See In re Nuvasive, 842 F.3d 1376, 1383
(Fed. Cir. 2016) (noting that "'conclusory statements' alone are insufficient
and, instead, the finding must be supported by a 'reasoned explanation"')
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(quoting In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)); see also
Active Video Networks, Inc., v. Verizon Communications, Inc., 694 F.3d
1312, 1328 (Fed. Cir. 2012) (noting that "[t]he testimony is generic and
bears no relation to any specific combination of prior art elements").
Notably, Chao's stated objective is "to provide an automatic flicker
detection and correction apparatus and method in a video capture device,
which can effectively detect an oblique line in a chromatic mixture signal"-
not to provide energy savings or speed increase. Chao i-f 8 (emphasis added).
The Examiner does not explain, nor can we discern, how using Chao's
difference summation with Krishnan's motion estimation would "increase
energy efficiency and speed" and "increase the area or energy efficiency."
Such a conclusory statement is insufficient to establish persuasively that a
person of ordinarily skill in the art would have recognized some deficiency
in Krishnan or had some other reason to look to Chao and combine its
teachings with those of Krishnan.
Rather, the Examiner appears to engage in impermissible hindsight
reconstruction by gleaning its rationale to combine the teachings of Krishnan
and Chao from Appellants' own Specification. Indeed, when describing the
embodiment illustrated in Figure 3 (circuit diagram), the Specification states
that "the compare operations are more area and energy efficient, because
they use fewer gates." Spec. i-f 21 (emphasis added). The U.S. Court of
Appeals for the Federal Circuit has cautioned that "[c]are must be taken to
avoid hindsight reconstruction by using 'the patent in suit as a guide through
the maze of prior art references, combining the right references in the right
way so as to achieve the result of the claims in suit."' Grain Processing
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Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. I988) (quoting
Orthopedic Equip. Co. v. U.S., 702 F.2d I005, IOI2 (Fed. Cir. I983)).
Even if we were to assume that the Examiner did not glean the
rationale to combine the teachings of Krishnan and Chao from Appellants'
own Specification, asserting that the combined teachings of these references
would "increase energy efficiency and speed" and "increase the area or
energy efficiency," without more, is no different than merely stating this
proffered combination "would have been obvious." Such a conclusory
assertion with no explanation is inadequate to support a finding that there
would have been a sufficient rationale to combine. This type of finding
tracks the ex post reasoning KSR warned of and fails to identify a specific
reason as to why one of ordinary skill in the art would have combined the
teachings of Krishnan and Chao in the manner required by independent
claims I and I 1. See KSR, 550 U.S. at 4I8, 421.
We need not reach the merits of Appellants' other arguments because
the Examiner has not presented a sufficient rationale to combine the
teachings of Krishnan and Chao. It follows that the Examiner has erred in
determining that the combined teachings of Krishnan and Chao renders the
subject matter of independent claims I and I I unpatentable.
Claims 3-6, 8-10, 12-16, and 18-20
We discern error in the Examiner's obviousness rejection of
dependent claims 3---6, 8-I 0, I 2-I 6, and I 8-20 for the same reason set forth
above in our discussion of independent claims I and I I-namely, the
Examiner does not present a sufficient rationale to combine the teachings of
Krishnan and Chao. It follows that the Examiner has erred in determining
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that the combined teachings of Krishnan and Chao renders the subject matter
of dependent claims 3-6, 8-10, 12-16, and 18-20 unpatentable.
§ 103 Rejection Based on the Combined Teachings of
Krishnan, Chao, and Auwera
Claims 2, 7, and 17
Each of claims 2, 7, and 17 depend from at least one of independent
claims 1 and 11. As applied by the Examiner, Auwera does not remedy the
deficiency in the Examiner's proffered combination of Krishnan and Chao
identified above. Therefore, for the same reasons discussed above with
respect to independent claims 1 and 11, the Examiner has erred in
determining that the combined teachings of Krishnan, Chao, and Auwera
renders the subject matter of dependent claims 2, 7, and 17 unpatentable.
§ 103 Rejection Based on the Combined Teachings of
Krishnan, Chao, and Chen
Claims 21-25
Independent claim 21 recites "[a] motion estimation circuit" that
comprises "a compressor tree" and "a parallel adder tree coupled to said
compressor tree" that executes the same limitations recited in independent
claims 1 and 11. App. Br. 12. To account for the additional structural
limitations recited in independent claim 21, the Examiner relies on Chen's
compressor tree and parallel adder tree. Final Act. 8 (citing Chen i-fi-f 13, 29,
Fig. 5); Ans. 7 (citing the same). The Examiner, however, relies on
essentially the same rationale to combine Chen's compressor tree and
parallel adder tree with the combined teachings of Krishnan and Chao as
discussed above in the context of independent claims 1 and 11. That is, the
Examiner asserts that it would have been obvious to a person of ordinary
skill in the art to use Chen's compressor tree and parallel adder tree with the
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combined teachings of Krishnan and Chao to "increase the area and
efficiency by using fewer gates." Final Act. 8; Ans. 7. For the same reason
set forth above in our discussion of independent claims 1 and 11, the
Examiner does not present a sufficient rationale to combine the teachings of
Krishnan, Chao, and Chen.
Each of dependent claims 22-25 depend from independent claim 21.
We discern error in the Examiner's obviousness rejection of these dependent
claims for the same reason set forth above-namely, the Examiner does not
present a sufficient rationale to combine the teachings of Krishnan, Chao,
and Chen. It follows that the Examiner has erred in determining that the
combined teachings of Krishnan, Chao, and Chen renders the subject matter
of claims 21-25 unpatentable.
IV. CONCLUSION OF LAW
For the foregoing reasons, the Examiner has erred in rejecting claims
1-25 as unpatentable under§ 103(a).
V. DECISION
We reverse the Examiner's decision to reject claims 1-25.
REVERSED
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