Ex Parte Nakagami et al

Patent Trial and Appeal Board

Mar 27, 2017

14471108 (P.T.A.B. Mar. 27, 2017)

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.
14/471,108 08/28/2014 Ohji NAKAGAMI 1946-0308A 1067
60803 7590 03/27/2017
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
EXAMINER
JEBARI, MOHAMMED
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
03/27/2017 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 OHJI NAKAGAMI, JUNICHI TANAKA, and
YOICHI YAGASAKI
____________________

Appeal 2016-006722
Application 14/471,1081
Technology Center 2400
____________________

Before LARRY J. HUME, CARL L. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 9–21, which constitute all the claims
pending in this application. Appellants canceled claims 1–8. The Examiner
indicates "[c]laims 10–13 are objected to . . . but would be allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims, and if they overcome the double-patenting
rejection." Ans. 11 (emphasis added).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Sony Corp. App.
Br. 3.
Appeal 2016-006722
Application 14/471,108

2
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "relate[] to an image
processing apparatus, an image processing method, and a program." Spec.
¶ 1.
Exemplary Claim
Claim 9, reproduced below, is representative of the subject matter on
appeal (emphasis added):
9. An image processing apparatus, comprising:
a receiving unit configured to receive first video data
containing a plurality of frames having a first resolution and
second video data containing a plurality of frames having a
second resolution higher than the first resolution;
a motion prediction unit configured to detect a motion
vector between the frames contained in the first video data
received by the receiving unit;
[L1] a difference amount calculation unit configured to
calculate a difference amount between a frame of the first video
data and a frame of the second video data, wherein the
difference amount is a value representing a difference between
the frame of the first video data and the frame of the second
video data; and
[L2] an image generation unit configured to generate,
based on the frame of the second video data and the motion
vector detected by the motion prediction unit, motion
compensated image data having a same resolution as the

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 28, 2015); Reply Brief ("Reply Br.," filed June 20, 2016); Examiner's
Answer ("Ans.," mailed Apr. 19, 2016); Final Office Action ("Final Act.,"
mailed June 30, 2015); and the original Specification ("Spec.," filed
Aug. 28, 2014).
Appeal 2016-006722
Application 14/471,108

3
second video data if the difference amount calculated by the
difference amount calculation unit is smaller than a
predetermined value, wherein the receiving unit, the motion
prediction unit, the difference amount calculation unit, and the
image generation unit are each implemented via at least one
processor.
Prior Art3
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Kellas et al.
("Kellas")
US 5,142,616 Aug. 25, 1992
Yadid-Pecht
("Yadid")
US 2002/0106129 A1 Aug. 8, 2002
Yachida et al.
("Yachida")
US 2005/0219642 A1 Oct. 6, 2005
Suzuki et al.
("Suzuki")
US 2006/0126952 A1 June 15, 2006
Nakagami et al.
("Nakagami '716")
US 8,885,716 B2 Nov. 11, 2014
Rejections on Appeal
R1. Claims 9–21 stand rejected under the judicially-created doctrine
of non-statutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 1–12 of Nakagami '716. Ans. 4.4

3 We note Nakagami '716 is not prior art to the present application, but is
listed herein due to the OTDP Rejection R1 of claims 9–21.
4 Appellants do not present any arguments against Rejection R1 of
claims 9–21 (App. Br, 11), nor do they list claims 10–13 in the Claims
Appendix to the Appeal Brief. App. Br. 20 et seq.
Appeal 2016-006722
Application 14/471,108

4
R2. Claims 9 and 15–21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Yachida and Suzuki. Ans.12.
R3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Yachida, Suzuki, Kellas, and Yadid.
Ans. 15.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 12–18), we decide the
appeal of obviousness Rejection R2 of claims 9 and 15–21 on the basis of
representative claim 9.
We address OTDP Rejection R1 of claims 9–21, not argued
separately, infra.
The appeal of obviousness Rejection R3 of claim 14, not argued
separately with specificity, stands or falls with independent claim 9 from
which it depends.5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellants' arguments with respect to claims 9–21,
and we incorporate herein and adopt as our own: (1) the findings and

5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2016-006722
Application 14/471,108

5
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 9 for
emphasis as follows.
1. OTDP Rejection R1 of Claims 9–21
Issue 1
Appellants state "in regards to the rejection of claims 9-21 on the
ground of nonstatutory obviousness-type double patenting, Appellants
respectfully defers filing a Terminal Disclaimer at this time." App. Br. 12;
Reply Br. 4.
Because Appellants do not contest the rejection on the merits and
merely imply they may file a Terminal Disclaimer to overcome this
rejection, we pro forma sustain the Examiner's OTDP Rejection R1 of
claims 9–21. We note arguments not made are waived.6 See 37 C.F.R.
§ 41.37(c)(1)(iv).
2. § 103 Rejection R2 of Claims 9–21
Issue 2
Appellants argue (App. Br. 12–17; Reply Br. 4–5) the Examiner's
rejection of claim 9 under 35 U.S.C. § 103(a) as being obvious over the

6 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) ("When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.").
Appeal 2016-006722
Application 14/471,108

6
combination of Yachida and Suzuki is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus that includes, inter alia, limitations L1 and L2, as
recited in claim 9?
Analysis
Appellants contend "[t]he comparison between frames being
performed by the prior art, particularly as disclosed in the Yachida reference,
is different than the claimed comparison of Appellant's claims, at least
because the types of frames being compared is different." App. Br. 12.
Further,
Yachida's estimated difference image is not a difference
between two frames found in the HRI image stream 52 and the
LRI image stream 54. As such, Yachida is performing a
process that is quite different than calculating a difference
amount between a frame of a first video data having a first
resolution and a frame of a second video data having a second
resolution higher than the first resolution.
App. Br. 13.
Yachida is clearly deficient because Yachida's generated
difference is between (1) image data of the frame that is not
included in the second image data stream (i.e., a target frame
that also has a higher resolution) and (2) image data of a frame
that is included in the second image data stream (i.e., also a
higher resolution frame).
App. Br. 14.
Appellants further argue:
Furthermore, Yachida's generated difference is disclosed to be a
"difference image," which is not a "difference amount" being a
Appeal 2016-006722
Application 14/471,108

7
value representing a difference between the frame of the first
video data and the frame of the second video data. That is,
Yachida's "difference image" is not a "value" representing a
difference between frames of different resolutions.
App. Br. 15. In addition, Appellants contend, "Yachida's estimated
difference image is not a difference between two frames found in the HRI
image stream 52 and the LRI image stream 54 . . . . [and] Suzuki does not
remedy the deficiencies of Yachida." App. Br. 13 and 16. (emphasis added).
In the Answer, the Examiner summarizes Appellants' arguments
(Ans. 17), and provides a response to Appellants' arguments, particularly
regarding the alleged distinction between Yachida's disclosed "difference
image" and the claimed "difference amount." Ans. 18; and see Final Act. 11
and Ans. 13.
Any special meaning assigned to a term "must be sufficiently clear in
the specification that any departure from common usage would be so
understood by a person of experience in the field of the invention."
Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer
and assign to a term a unique definition that is different from its ordinary
and customary meaning; however, a patentee must clearly express that intent
in the written description.").
The Examiner finds, "[f]irst, Yachida clearly states that the difference
image is a value, by disclosing inter-frame difference value in (paragraph
[0100]). Also all digital images are made of pixels which each have a
numeric value representing the brightness and or color. Subtracting two
Appeal 2016-006722
Application 14/471,108

8
images will leave a difference value for each pixel." Ans. 18. We find the
claimed "difference amount" reads on the disclosed difference image. We
therefore adopt the Examiner's findings and legal conclusions herein as our
own.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 9, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 9, and grouped
claims 15–21 which fall therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claim 14
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claim 14 under § 103 (see App. Br. 17–18),
we sustain the Examiner's rejection of this claim. Arguments not made are
waived.7
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4–6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised

7 Appellants merely argue, "[i]nasmuch as the asserted references, alone or
in combination, lack all of the claimed elements of independent claim 9 . . .
prima facie obviousness under 35 U.S.C. §103(a) cannot be established.
Claim 14 is a dependent claim that is also patentably distinguished . . . at
least in view of its dependency as well as for its additionally recited
elements." App. Br. 18.
Appeal 2016-006722
Application 14/471,108

9
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) Appellants did not show the Examiner erred with respect to
OTDP Rejection R1 of claims 9–21, and we pro forma sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 9 and 14–21 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 9–21.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED