Ex Parte Kobayashi

Patent Trial and Appeal Board

May 18, 2016

12388065 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/388,065 02/18/2009 Seiji Kobayashi
22852 7590 05/20/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
09812.1551 1811
EXAMINER
SOSANYA, OBAFEMI OLUDAYO
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI KOBAYASHI
Appeal2014-009050
Application 12/388,065
Technology Center 2400
Before THU A. DANG, LARRY H. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) of the Final Rejection of
claims 1, 3-12, 18-20, and 24--26. Claims 2, 13-17, and 21-23 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-009050
Application 12/388,065
A. THE INVENTION
According to Appellant, the disclosed and claimed invention relates to
"an image-capturing apparatus that realizes speeding up of an image
compressing process" (Spec. 1, 11. 14--18).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. An image processing apparatus comprising:
a time subband splitting unit configured to generate a low-
frequency sub band split signal formed of low frequency
components at a frame rate lower than a frame rate of an image
signal and to generate a high-frequency subband split signal
formed of high frequency components by performing a sub band
splitting process in a time direction on the image signal,
wherein the low-frequency subband split signal is generated by
an addition process of two adjacent frames of an image
captured data and the high frequency subband split signal is
generated by determining the difference between two adjacent
frames of an image captured data, and is moving image data
such that a pixel value exists in only the area of a moving
subject;
a first encoding unit configured to compress the low-
frequency subband split signal, wherein the low-frequency
subband split signal is directly outputted to only the first
encoding unit; and
a second encoding unit configured to compress the high-
frequency subband split signal, wherein the first encoding unit
and the second encoding unit perform different encoding
processes, wherein the second encoding unit has a compression
efficiency that is lower than a compression efficiency of the
first encoding unit, and wherein the second encoding unit
compresses the high-frequency subband split signal.
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Application 12/388,065
C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Han
Terao
Kimoto
US 2005/0195899 Al
US 2006/0072841 Al
US 2008/0049835 Al
Sept. 8, 2005
Apr. 6, 2006
Feb.28,2008
Claims 1, 3-9, 11, 12, 18-20, and 24--26 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kimoto and Han.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kimoto and Terao.
II. ISSUES
The issues before us are whether the Examiner erred in finding the
combination of Kimoto and Han teaches or suggests: 1) a "time sub band
splitting unit" configured to generate a "low-frequency subband split signal"
that is "generated by an addition process of two adjacent frames of an image
captured data" and a "high-frequency subband split signal," 2) a ''first
encoding unit configured to compress the low-frequency subband split
signal," and 3) a "second encoding unit configured to compress the high-
frequency subband split signal" which "has a compression efficiency that is
lower than a compression of the first encoding unit" (claim 1 (emphasis
added)).
III. ANALYSIS
Although in the Final Rejection the Examiner finds "[t]he addition of
the two frames [in motion compensation set forth in Kimoto i-f 50] yields a
difference signal" (Final Rej. 2), Appellant contends "Kimoto explicitly
teaches 'generating a difference signal between a non-reference signal,
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Appeal2014-009050
Application 12/388,065
which is contained in said moving image signal, and said predicted signal"'
(App. Br. 12, citing Kimoto i-f 50). According to Appellant, "[t]he Examiner
does not explain why one of ordinary skill in the art when viewing the
disclosures of Kimoto would have understood that 'addition of two frames'
would generate 'a difference signal,' as asserted by the Examiner" (App.
Br. 13). Although the Examiner responds in the Answer by pointing to
Figure 21 of Kimoto and finding "[t]he low-band subband signals 2041
and 2042 are synthesized (i.e. added/combined together) to generate a time
low-band subband signal 2044 ... "(Ans. 22), Appellant contends "[the
cited portion] of Kimoto is directed to a decoding processing ... " wherein
the decoding "is not 'an image captured data"' as recited (Reply Br. 4).
Appellant further contends that, although the Examiner finds Kimoto
discloses that "coding efficiency is either high or low depending on a lot of
different coding parameters" (App. Br. 13, citing Final Rej. at 6), the
Examiner fails to prove that one of ordinary skill in the art "would have been
motivated to modify Kimoto" to arrive at "that 'the second encoding unit
[which is configured to compress the high-frequency subband split signal]
has a compression efficiency that is lower than a compression efficiency of
the first encoding unit [which is configured to compress the low-frequency
subband split signal]"' as recited (App. Br. 13). According to Appellant,
"[ w ]hile Kimoto discusses the relationship between coding efficiency and
delay, and the possibility of employing a low rate in consideration of the
delay," the coding efficiency, one decided, "is identical in the bitstream in
all different resolutions and at all different frame rates" (Reply Br. 4--5).
After reviewing the record on appeal, we find the preponderance of
evidence supports the Appellant's position. We are not persuaded by the
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Application 12/388,065
Examiner's finding that the cited portions of Kimoto, even combined with
Han, contain a teaching or suggestion of a "low-frequency subband split
signal" that is "generated by an addition process of two adjacent frames of
an image captured data," as required by claim 1 (emphasis added). As
Appellant points out, we are unsure how one of ordinary skill in the art
"when viewing the disclosures of Kimoto would have understood that
'addition of two frames' would generate 'a difference signal,' as asserted
by the Examiner" (App. Br. 13). We agree with Appellant that Figure 21 of
Kimoto, as cited "is directed to a decoding processing ... " and thus Kimoto
fails to disclose or suggest an addition process of two adjacent frames "of an
image captured data," as recited (Reply Br. 4).
The Examiner bears the initial burden of showing a prima facie case
of obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). Only
when a prima facie case of obviousness is established by the Examiner, does
the burden then shift to the applicant to come forward with evidence and/or
argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed.
Cir. 2002). However, the prima facie burden has not been met and the
rejection does not adhere to the minimal requirements of 35 U.S.C. § 132
"when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection." Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Furthermore, although we agree with the Examiner that Kimoto
teaches and suggests that, "[d]epending on the coding parameters, ... the
coding efficiency is determined to be high or low ... " (Final Rej. 6), as
Appellant points out, we are unsure how one of ordinary skill in the art
"would have been motivated to modify Kimoto" to arrive at "that 'the
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Application 12/388,065
second encoding unit [which is configured to compress the high-frequency
subband split signal] has a compression efficiency that is lower than a
compression efficiency of the first encoding unit [which is configured to
compress the low-frequency subband split signal]'" as recited (App. Br. 13).
To affirm the Examiner's proffered modification of Kimoto would require
us to resort to speculation, unfounded assumptions, or hindsight
reconstruction, which we decline to do. See In re Warner, 379 F.2d 1011,
1017(CCPA1967).
Therefore, on this record, we cannot affirm the Examiner's § l 03
rejection of independent claim 1, claims 18 and 20 standing therewith (App.
Br. 14), and claims 3-9, 11, 12, 19, and 24--26 respectively depending
therefrom, over Kimoto and Han. Similarly, we also reverse the Examiner's
§ 103 rejections of claim 10 over Kimoto in further view of Terao.
IV. CONCLUSION AND DECISION
We reverse the Examiner's rejection of claims 1, 3-12, 18-20, and
24--26 under 35 U.S.C. § 103(a).
REVERSED
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