Ex Parte Loo

Patent Trial and Appeal Board

Mar 5, 2014

11333159 (P.T.A.B. Mar. 5, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/333,159 01/17/2006 Patrick Loo 14528.00315 6343
16378 7590 03/05/2014
BGL/Broadcom
P.O. Box 10395
Chicago, IL 60610
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
MAIL DATE DELIVERY MODE
03/05/2014 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 PATRICK LOO
____________

Appeal 2011-011015
Application 11/333,159
Technology Center 2600
____________

Before CAROLYN D. THOMAS, BRUCE R. WINSOR,
and LINZY T. McCARTNEY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-30, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).

1 The real party in interest identified by Appellant is Broadcom Corporation.
App. Br. 2.
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We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2011).

STATEMENT OF THE CASE
Appellant’s disclosure “relate[s] to mobile multimedia
communication[,] [m]ore specifically, . . . image editing in a mobile
multimedia processor using an integrated image editor with plug-in
capabilities.” Spec ¶ 0004. Claim 1, which is illustrative, reads as follows:
1. A method for processing information in a
communication device, the method comprising:
editing image data within a mobile multimedia chip, the
mobile multimedia chip comprising an image editor integrated
within the mobile multimedia chip, said editing utilizing at least
one plug-in that interfaces with said image editor.
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Montgomery (US 2005/0187756 A1; Aug. 25, 2005) and Laux (US
2003/0119386 A1; June 26, 2003). Ans. 3-6.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Feb. 7, 2011; “Reply Br.” filed June 20, 2011) and the Answer
(“Ans.” mailed Apr. 29, 2011) for the respective positions of Appellant and
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues presented by Appellant’s contentions are as follows:
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Does the combination of Montgomery and Laux teach or suggest
“editing image data within a mobile multimedia chip, the mobile multimedia
chip comprising an image editor integrated within the mobile multimedia
chip, said editing utilizing at least one plug-in that interfaces with said image
editor,” as recited in claim 1?
Does the combination of Montgomery and Laux teach or suggest
“loading said at least one plug-in in on-chip memory within said mobile
multimedia chip comprising said integrated image editor,” as recited in
claim 2?
Does the combination of Montgomery and Laux teach or suggest
“communicating one or both of a read instruction and/or a write instruction
to said at least one plug-in that interfaces with said image editor,” as recited
in claim 4?
Does the combination of Montgomery and Laux teach or suggest
“acquiring status information from said at least one plug-in for said editing
of said image data by said at least one plug-in that interfaces with said image
editor,” as recited in claim 9?

ANALYSIS
CLAIM 1
Appellant contends as follows:
Montgomery discloses that the alleged “image editor
integration” (i.e., the editing instructions stored within the
computer chip module (74)) and the alleged “editing image
data” functions (i.e., by the processor (76)), take place in two
separate modules or chips, and not within the same module or
chip.
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Accordingly, the Appellant maintains that Montgomery
does not disclose or suggest “editing image data within a
mobile multimedia chip, the mobile multimedia chip
comprising an integrated image editor ...,” as recited in
Appellant’s claim 1.
App. Br. 14 (ellipsis in original). Even accepting arguendo Appellant’s
understanding of Montgomery’s teaching, it does not persuade us of error.
Appellant’s argument is based on an implicit claim construction that requires
the “mobile multimedia chip” to be a single integrated circuit.2 See id. The
Examiner’s position is implicitly based on a broadest reasonable
construction of “mobile multimedia chip” that encompasses a “mobile
multimedia chip” implemented using a plurality of integrated circuits, such
as Montgomery’s module 74 and processor 76 within device 70
(Montgomery, ¶¶ 0034-0035). See Ans. 8-9. Appellant admits (App. Br.
14) that Montgomery teaches that an editor is implemented in the
Montgomery’s module 74 together with Montgomery’s processor 76.
We agree with the Examiner’s implicit claim construction. Although
the singular indefinite article (“a”) is used to identify “mobile multimedia
chip,” our reviewing court
“has repeatedly emphasized that an indefinite article ‘a’ or ‘an’
in patent parlance carries the meaning of ‘one or more’ in open-
ended claims containing the transitional phrase ‘comprising.’”
KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.
Cir. 2000). That “a” or “an” can mean “one or more” is best
described as a rule, rather than merely as a presumption or even

2 We construe “chip” to be synonymous with “integrated circuit”: “chip n.
See integrated circuit,” MICROSOFT COMPUTER DICTIONARY 98 (5th ed.
2002); “integrated circuit n. A device consisting of a number of circuit
elements, such as transistors and resistors, fabricated on a single chip of
silicon crystal or other type of semiconductor material. . . . Also called:
chip,” id. at 271.
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a convention. The exceptions to this rule are extremely limited:
a patentee must “evince[ ] a clear intent” to limit “a” or “an” to
“one.” Id. The subsequent use of definite articles “the” or
“said” in a claim to refer back to the same claim term does not
change the general plural rule, but simply reinvokes that non-
singular meaning.
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir.
2008). The Specification discloses the following:
One embodiment of the present invention may be
implemented as a board level product, as a single chip,
application specific integrated circuit (ASIC), or with varying
levels integrated on a single chip with other portions of the
system as separate components. The degree of integration of
the system will primarily be determined by speed and cost
considerations.
Spec. ¶ 0092 (emphasis added). In light of this disclosure, we find that
Appellant has not evinced a clear intent to limit “a” “mobile multimedia
chip” to one “mobile multimedia chip.” See Baldwin, 512 F.3d at 1342.
Nor does the use of the word “integrated” change our claim construction.
We construe “integrated” to mean that the “image editor” is incorporated in
the one or more integrated circuits that make up the “mobile multimedia
chip.” Accordingly, we find that the passages of Montgomery relied on by
the Examiner (Ans. 3-4, 7-10 (citing Montgomery, ¶¶ 0002-0003, 0008,
0012, 0021-0022, 0034 )) explicitly teach “editing image data within a
mobile multimedia chip, the mobile multimedia chip comprising an image
editor integrated within the mobile multimedia chip,” as recited in claim 1.
In view of the foregoing, we do not reach Appellant’s contentions
regarding inherency (see App. Br. 14-16).
Even if we were to agree with Appellant’s implicit claim construction
(which we do not) we note “that the use of a one piece construction instead
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of the structure disclosed in [the prior art] would be merely a matter of
obvious engineering choice,” In re Larson, 340 F.2d 965, 968 (CCPA 1965)
(citing In re Fridolph, 309 F.2d 509 (CCPA 1962)), absent evidence that the
use of one piece construction shows “insight [that] was contrary to the
understanding and expectations of the art,” Carl Schenck, A.G. v. Nortron
Corp., 713 F.2d 782, 785 (Fed. Cir. 1983) (citing United States v. Adams,
383 U.S. 39 (1966)). Appellant’s Specification reinforces the conclusion
that the use of one or a plurality of integrated circuits to implement the
“mobile multimedia chip” is merely a matter of obvious engineering choice.
See Spec. ¶ 0092 (“The degree of integration of the system will primarily be
determined by speed and cost considerations.”).
Appellant further contends as follows:
Laux discloses that the “plug-in” 226 works in
connection with a larger application, such as a browser
application 222, which is executed by a CPU 212 (a limitation
not recited in Appellant’s claim 1). In other words, Laux does
not disclose or suggest that the “plug-in” interfaces with an
alleged “image editor”, let alone disclose or suggest that it
interfaces with the alleged “image editor integrated within the
mobile multimedia chip”.
App. Br. 19. Appellant’s contention is unpersuasive.
The rejection of claim 1 is based on a combination of Laux with
Montgomery. See Ans. 3-4. “[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Examiner relies on Montgomery, not Laux, to teach an image editor
integrated into a mobile multimedia chip, a finding with which, as discussed
above, we agree. See Ans. 3-4. The Examiner relies on Laux to teach plug-
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ins to use with a larger application. Ans. 4; see generally Laux. The
Examiner then concludes as follows:
It would have been obvious to one of ordinary skill in
the art at the time of the invention to include in the mobile
multimedia chip having an image editor as disclosed by
Montgomery, the plug in to work with the larger application as
disclosed by Laux, to support translation of complex
multimedia messages that cannot be performed by the image
editor of the given mobile device.
Ans. 4. We agree with the Examiner.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425 (citations omitted).
In the context of Appellant’s claim 1, the recited “image editor” is a
“larger application” analogous to those taught by Laux. See Laux, ¶ 0043.
One of ordinary skill in the art would have learned from Laux that an
application program’s (e.g. an image editor’s) capabilities may be expanded
by the use of plug-ins. Thus, the combined teachings of Laux and
Montgomery would have suggested to those of ordinary skill in the art
“editing image data within a mobile multimedia chip, the mobile multimedia
chip comprising an image editor integrated within the mobile multimedia
chip, said editing utilizing at least one plug-in that interfaces with said image
editor,” as recited in claim 1.
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Appellant contends as follows:
In this regard, the Examiner at least has failed to support
a rejection under 35 U.S.C. 103, by providing “articulated
reasoning with some rationale underpinning to support the legal
conclusion of obviousness” in the detailed manner described in
[KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)].
Instead, the Office Action appears to be proposing the
combination based solely on improper hindsight. The generic
benefit of “to support translation of complex multimedia
messages that cannot be performed by the image editor of the
given mobile device” is not an articulated reasoning with a
rational underpinning, as required by the MPEP.
App. Br. 19-20. We disagree.
The rationale articulated by the Examiner has rational underpinnings
drawn from Montgomery and Laux and not from hindsight. Montgomery
teaches an image editor that is used to translate complex multimedia
messages (see, e.g., Montgomery, ¶ 0008) and Laux teaches the use of plug-
ins to expand the capability of a larger application (Laux, ¶ 0043).
Accordingly, we are unpersuaded of error. For emphasis, we note that the
combination articulated by the Examiner is no more than an obvious
“combination of familiar elements according to known methods . . . [that]
does no more than yield predictable results,” KSR, 550 U.S. at 416, that
would improve Montgomery’s image editor in the same way it improves
Laux’s larger application, see id. at 417, and is a predictable variation that
can be implemented by a person of ordinary skill in the art, id.
Appellant has failed to persuade us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of (1) claim 1; (2) claims 11 and 21,
which were argued together with claim 1 (App. Br. 21); and (2) claims 5, 7,
8, 15, 17, 18, 25, 27, and 28, which were argued based on their dependency
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from claims 1, 11, or 21 (id.), but were not otherwise separately argued with
particularity.
CLAIM 2
Appellant contends as follows:
Laux [at ¶ 0042] . . . clearly discloses that the plug-ins
are stored in the memory (216), which is a host memory (i.e.,
not on-chip memory within the mobile multimedia chip) which
runs the application. In addition, Laux does not even disclose
or suggest the alleged “mobile multimedia chip”. Montgomery
clearly does not disclose the alleged “plug-in”, let alone
discloses “loading said at least one plug-in in on-chip memory,”
as recited in Appellant’s claim 2.
App. Br. 22. Appellant’s argument assumes that the “mobile multimedia
chip” recited in claim 1, from which claim 2 depends, is limited to a single
chip implementation. As discussed above, we construe the “mobile
multimedia chip” to encompass implementation as a single chip or as a
plurality of chips. Accordingly, we are unpersuaded of error in view of our
claim construction discussed above regarding claim 1. Accordingly, we
sustain the rejection of (1) claim 2; (2) claims 12 and 22, which were argued
together with claim 2 (App. Br. 22); and (2) claims 3, 13, and 23, which
were argued based on their dependency from claims 2, 12, and 22
respectively (id.), but were not otherwise separately argued with
particularity.
CLAIM 4
Appellant argues that the combination of Montgomery and Laux does
not teach or suggest “communicating one or both of a read instruction and/or
a write instruction to said at least one plug-in,” as recited in claim 4, relying
on the arguments made for claim 1. App. Br. 23. More particularly,
Appellant relies on the argument that Laux’s plug-ins interface with a
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“larger application” and not with an “image editor.” Id. We find this
argument unpersuasive for the reasons discussed above regarding claim 1.
Accordingly, we sustain the rejection of (1) claim 4; (2) claims 14 and
24, which were argued together with claim 4 (App. Br. 23); (2) claim 6,
which was argued based on its dependency from claim 4 (id.), but was not
otherwise separately argued with particularity; and (3) claims 16 and 26,
which were argued together with clam 6.3
CLAIM 9
New Ground of Rejection
The Examiner finds as follows:
Regarding claim 9, Laux discloses acquiring status information
from said at least one plug-in for said editing of said image data
by said at least one plug-in that interfaces with said image
editor (paragraph 0065, the client identifies the plug-in and is
allowed to modify the plug-in to update to a newer version of
the plug-in).
Ans. 6; see also Laux, ¶¶ 0066-0068. Appellant contends the cited passage
of Laux does not teach or suggest that the plug-in identity (i.e., the “status
information”) is used to edit image data as recited in claim 9, but rather is
used to update the plug-in itself. See App. Br. 24; Reply Br.19.
Claim 9 reads as follows, with emphasis added:
9. The method according to claim 1, comprising
acquiring status information from said at least one plug-in for
said editing of said image data by said at least one plug-in that
interfaces with said image editor.

3 Appellant mistakenly asserts claims 16 and 26 depend from claims 14 and
24, respectively. App. Br. 23. However, claim 16 depends from claim 15
(App. Br. 29), not claim 14, and claim 26 depends from claim 25 (App. Br.
31), not claim 24.
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Implicit in the Examiner’s findings is a claim interpretation that
construes “for said editing of said image data” as modifying the noun phrase
“at least one plug-in.” Similarly, implicit in Appellant’s argument is a claim
interpretation that “for said editing of said image data” modifies the noun
phrase “status information.” We conclude the Examiner’s and Appellant’s
claim interpretations are both plausible. On the one hand, the Examiner’s
implicit reading of the claim is consistent with standard English syntax, in
which the phrase would modify the adjacent noun. On the other hand,
Appellant’s implicit reading of the claim, although at variance with standard
syntax, finds support in the Specification. See Spec. ¶ 0023 (“Status
information may be acquired for the editing of the image data by the plug-in
that interfaces with the image editor.”).
[W]hen reviewing a pending claim for indefiniteness[,] . . . . if
[the] claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant
to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C.
§112, second paragraph, as indefinite.
Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Because we conclude that claim 9 is amenable to at least two plausible
claim constructions, we further conclude that claim 9 is indefinite. Claims
19 and 29 include recitations that are similar to claim 9 and are indefinite for
similar reasons. Claims 10, 20, and 30 depend from claims 9, 19, and 29,
respectively, and are indefinite because they depend from indefinite claims.
Accordingly, we institute a new ground of rejection of claims 9, 10, 19, 20,
29, and 30 under 35 U.S.C. ¶ 112, second paragraph, as indefinite for failing
to particularly point out and distinctly claim the subject matter that
Appellant regards as his invention.
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Rejection under § 103(a)
As discussed above, we conclude that claims 9, 10, 19, 20, 29, and 30
are indefinite. We are, therefore, unable to ascertain the scope of the
indefinite claims. Accordingly, we find the Examiner’s rejection under 35
U.S.C. § 103(a) of the indefinite claims is necessarily based on speculation
as to the scope of the claims. “[W]e do not think a rejection . . . should be
based on . . . speculations and assumptions. . . . [I]t is essential to know what
the claims do in fact cover.” In re Steele, 305 F.2d 859, 862 (CCPA 1962).
Accordingly, we decline pro forma to sustain the rejection under 35 U.S.C.
§ 103(a) of claims 9, 10, 19, 20, 29, and 30.
It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect the adequacy or the inadequacy of the prior art evidence applied in
support of the rejection before us. Once definite claims are presented, the
Examiner is free to apply the same, different, or additional prior art if the
Examiner so chooses.

ORDER
The decision of the Examiner to reject claims 1-8, 11-18, and 21-28 is
affirmed.
The decision of the Examiner to reject claims 9, 10, 19, 20, 29, and 30
is reversed pro forma.
We enter a new ground of rejection for claims 9, 10, 19, 20, 29, and
30 under 35 U.S.C. § 112, second paragraph.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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