Ex Parte Nguyen et al

Board of Patent Appeals and Interferences

Jun 18, 2009

10374777 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte HUNGVIET NGUYEN, XIAOPING HU,
KUEI-CHUNG TU and YAN LIU
________________

Appeal 2009-000795
Application 10/374,777
Technology Center 2600
________________

Decided:1 June 18, 2009
________________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from the Examiner’s
final rejection of claims 13-17 and 24-26. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We reverse the rejections of record. We enter new
grounds of rejection as to pending claims 16, 17, and 24-26 pursuant to our
authority under 37 C.F.R. § 41.50(b).

A. Appellants’ invention
Appellants’ invention relates to a method and system for minimizing
bus traffic in an MPEG-2 video decoder that decompresses or decodes a
stream of a compressed or encoded video data. The present invention is
contrasted to prior-art video decoders that are implemented entirely in
hardware or alternatively, entirely in software. The present invention
obtains a video stream and uses software to perform Variable Length Coding
(VLC) decoding on the video stream. The present invention further uses a
software-based instructions assembler to receive information comprising
data and instructions from a host. The instructions assembler encodes this
information by compressing it into packed data form and forwards this
encoded information for storage in a command queue of a hardware-based
frame buffer. A hardware-based command queue manager then unpacks the
data contained in the frame buffer, decodes the commands, and sends
appropriate signals to corresponding hardware devices. The corresponding
hardware devices are capable of performing dequantization, Inverse Discrete
Cosine Transform (IDCT), motion compensation, display format conversion,
color space conversion, scaling and interpolation, and video overlay to
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complete the decoding process (Spec. 1-6; fig. 1). This video decoding
process is shown in Figure 1 reproduced below:

Reproduction of Figure 1 of Appellants’ Specification Showing a Video
Decoding Process Including VLC Decoding Step 20 and Instructions
Assembler 22, Both Implemented in Software 10.
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B. The claims
Illustrative claims 13 and 16 read as follows:2
13. A method for selectively controlling at least one hardware device
within a video decoder, the method comprising:
performing machine-executable instructions for VLC decoding of a
video stream;
performing machine-executable instructions for encoding a plurality
of instructions to control at least one hardware device within the video
decoder, the plurality of instructions being encoded within the video stream;
decoding in a hardware command queue manager each one of the
plurality of instructions; and
controlling at least one hardware device within the video decoder in
response to the plurality of instructions.
16. An apparatus for selectively controlling at least one hardware device
within a video decoder, the apparatus comprising:
means for performing machine-executable instructions for VLC
decoding of a video stream;
means for performing machine-executable instructions for encoding a
plurality of instructions to control at least one hardware device within the
video decoder, the plurality of instructions being encoded within the video
stream;
a hardware command queue manager for decoding each one of the
plurality of instructions; and

2 Appellants argue all of claims 13-17 and 24-26 together as a single group.
See App. Br. 3-7. For the reasons set forth below, we select independent
claim 13 as representative of claims 13-15; claim 16 as representative of
claims 16, 25 and 26; and claim 17 as representative of claims 17 and 24.
See 37 C.F.R. § 41.37(c)(1)(vii).
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means for controlling at least one hardware device within the video
decoder in response to the each one of the plurality of instructions.

C. The references and rejections

The Examiner relies on the following prior art references to show
unpatentability:
Woo US 5,781,788 July 14, 1998

Claims 13-17 and 24-26 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Woo.
Rather than repeat the arguments of the Appellants or the Examiner,
we refer to the Brief and the Answer for their respective details.3 In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUES
Appellants argue that the first limitation of method claim 13 means
the following: performing machine-executable instructions that VLC decode
a video stream. That is, the software-based machine instructions themselves
perform the VLC decoding. See App. Br. 3-6; Reply Br. 1-2. Appellants

3 We refer to (1) the Appeal Brief filed July 18, 2007; (2) the Examiner’s
Answer mailed Sep. 25, 2007; and (3) the Reply Brief filed Nov. 19, 2007
throughout this opinion.

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similarly argue that the second limitation of claim 13 requires that additional
software-based machine-executable instructions themselves encode an even
further, “plurality of instructions.”
The Examiner does not dispute whether claim 13 could be interpreted
in the manner urged by Appellants. Rather, the Examiner contends that
these two claim limitations may reasonably be alternatively interpreted more
broadly to mean: performing machine-executable instructions that enable a
further device to VLC decode and encode a plurality of instructions,
respectively. See Ans. 4. The Examiner further contends that these further
devices that actually carry out the decoding and encoding may respectively
be either software-based or hardware-based. Id. The Examiner’s prior art
rejection of the claims is based upon this alternative, broader interpretation.
See generally, Ans. 3-5.
The Appellants and the Examiner also assert similar respective
positions regarding the two limitations of product claim 16 that recite
“means for performing machine-executable instructions for…”
The issues before us then, are:
I. Have Appellants shown that the Examiner erred in interpreting the
language of claim 13, “performing machine-executable instructions for…”?
II. Have Appellants shown that the Examiner erred in finding that the
cited prior art teaches performing machine-executable instructions for
encoding a plurality of instructions to control at least one hardware device
within the video decoder, the plurality of instructions being encoded within
the video stream, as required by claim 13?
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III. Regarding the “means-plus-function” limitations of claims 16 and 17:
(i) means for performing machine-executable instructions for VLC decoding
of a video stream; and (ii) means for performing machine-executable
instructions for encoding a plurality of instructions to control at least one
hardware device within the video decoder, the plurality of instructions being
encoded within the video stream, does Appellants’ Specification set forth
sufficient corresponding structures so as to satisfy the requirements of 35
U.S.C. § 112 ¶ 6?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Woo’s VLC 98 compresses video information from a video input
source 14 and transmits the compressed video data out on a transmit
channel 20. Woo, col. 3, ll. 45-48; figs. 1-3.
2. Appellants’ Specification states:
In the following description, a preferred embodiment of
the invention is described with regard to preferred process steps
and data structures. However, those skilled in the art would
recognize, after perusal of this application, that embodiments of
the invention may be implemented using a set of general
purpose computers operating under program control, and that
modification of a set of general purpose computers to
implement the process steps and data structures described
herein would not require undue invention.
[The MPEG-2 decoder of the present invention]
comprises hardware and software to provide greater versatility
than [prior art] hardwired decoders. Referring first to FIG. 1, a
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data flow diagram of an MPEG-2 decoder according to a
presently preferred embodiment of the present invention is
illustrated. The MPEG-2 decoder is partitioned into software
10 and hardware 12. The front end of the decoding process
comprises software, while the back end comprises hardware. A
system stream 14 comprises an audio stream 16 and a video
stream 18. Once the system stream 14 is split, Variable Length
Coding (VLC) decoding 20 is performed on the video stream
18. Next, an instructions assembler 22, receives information
comprising data and instructions from a host. This information
is then compressed into a packed data format and stored in a
command queue stored in a frame buffer 22.
(Spec. 5-6).
3. Figure 1 of Appellants’ Specification depicts black-box
representations of the invention’s software processes, VLC Decoding
20 and Instructions Assembly 22.

PRINCIPLES OF LAW
1. “[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim…” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference
of any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).
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2. Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).
3. “Before considering the rejections…, we must first [determine the
scope of the] claims….” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
4. The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which that applicant regards as his invention.

35 U.S.C. § 112, second paragraph.
5. The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
6. An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.

35 U.S.C. § 112, sixth paragraph.
7. The sixth paragraph of 35 U.S.C. § 112 has just as much application
during proceedings before the U.S. Patent and Trademark Office as it does
in district court cases for infringement matters. In re Donaldson Co., Inc.,
16 F.3d 1189, 1194 (Fed. Cir. 1994) (en banc).
8. When a claim uses the term “means” to describe a limitation, a
presumption inheres that the inventor used the term to invoke § 112, ¶ 6.
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Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This
presumption can be rebutted when the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its
entirety.” Id.
Once a court concludes that a claim limitation is a means-plus-
function limitation, two steps of claim construction remain: 1) the court must
first identify the function of the limitation; and 2) the court must then look to
the specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003).
As set forth in Default Proof:
“[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.” In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc).
“The specification must be read as a whole to determine the
structure capable of performing the claimed function.” Budde
v. Harley-Davidson, Inc., 250 F.3d 1369, 1379 (Fed.Cir.2001).
A structure disclosed in the specification qualifies as
“corresponding” structure only if the specification or
prosecution history clearly links or associates that structure to
the function recited in the claim. B. Braun Med. v. Abbott
Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997). This duty to link or
associate structure to function is the quid pro quo for the
convenience of employing § 112, ¶ 6. See O.I. Corp. v. Tekmar
Co., 115 F.3d 1576, 1583 (Fed.Cir.1997). “Fulfillment of the
§ 112, ¶ 6 trade-off cannot be satisfied when there is a total
omission of structure.” Atmel, 198 F.3d at 1382. While
corresponding structure need not include all things necessary to
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enable the claimed invention to work, it must include all
structure that actually performs the recited function. See
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
1119 (Fed.Cir.2002).
Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d
1291, 1298 (Fed. Cir. 2005).
“If there is no structure in the specification corresponding to the
means-plus-function limitation in the claims, the claim will be found invalid
as indefinite.” Biomedino, LLC v. Waters Technologies Corp., 490 F.3d
946, 950 (Fed. Cir. 2007).
“While the specification must contain structure linked to claimed
means, this is not a high bar: ‘[a]ll one needs to do in order to obtain the
benefit of [§ 112, ¶ 6] is to recite some structure corresponding to the means
in the specification, as the statute states, so that one can readily ascertain
what the claim means and comply with the particularity requirement of
[§ 112,] ¶ 2.’ Atmel, 198 F.3d at 1382.” Biomedino, 490 F.3d 946, 950
(Fed. Cir. 2007).
In a means-plus-function claim in which the disclosed structure is a
computer or microprocessor programmed to carry out an algorithm, the
Specification need not “produce a listing of source code or a highly detailed
description of the algorithm to be used to achieve the claimed functions in
order to satisfy 35 U.S.C. § 112 ¶ 6.” Aristocrat Tech. Australia Pty. Ltd. v
Inter. Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008). However, the
Specification must “at least disclose the algorithm that transforms the
general purpose microprocessor to a “special purpose computer programmed
to perform the disclosed algorithm.” Id., citing WMS Gaming, Inc. v.
International Game Technology, 184 F.3d 1339, 1349 (Fed. Cir. 1999).
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For a patentee to claim a means for performing a
particular function and then to disclose only a general purpose
computer as the structure designed to perform that function
amounts to pure functional claiming. Because general purpose
computers can be programmed to perform very different tasks
in very different ways, simply disclosing a computer as the
structure designated to perform a particular function does not
limit the scope of the claim to “the corresponding structure,
material, or acts” that perform the function, as required by
section 112 paragraph 6.
Aristocrat, 521 F.3d at 1333.
The proper inquiry for purposes of section 112 paragraph 6
analysis is to ‘look at the disclosure of the patent and determine
if one of skill in the art would have understood that disclosure
to encompass software [to perform the function] and been able
to implement such a program, not simply whether one of skill
in the art would have been able to write such a software
program.’

Id. at 1337, citing Medical Instrumentation, 344 F.3d at 1212 (emphasis in
Medical Instrumentation). If a person of ordinary skill in the art recognizes
the patent as not disclosing any algorithm at all, the means-plus-function
limitation lacks sufficient disclosure of structure under 35 U.S.C. § 112 ¶ 6
and is therefore indefinite under 35 U.S.C. § 112 ¶ 2. Aristocrat, 521 F.3d at
1338.

ANALYSIS
I.
We first address whether Appellants have shown that the Examiner
erred in broadly interpreting the language of claim 13, “performing machine-
executable instructions for…” See Geerdes, 491 F.2d at 1262 (instructing
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that before considering the Examiner’s rejection, we must first determine the
scope of the claims). It is well settled that during examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Moreover, although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appellants do not argue why the Examiner’s broader interpretation of
the claim language, “performing machine-executable instructions for…” is
unreasonable or otherwise improper. See App. Br. 3-6; Reply Br. 1-2.
Rather, Appellants solely argue that the prior art does not disclose the
limitations in accordance with the Appellants’ narrower interpretation. Id.
Since Appellants have asserted no basis, much less any evidence, for why
the Examiner’s broader interpretation was unreasonable, we find no reason
to question the Examiner’s interpretation. See In re Kahn, 441 F.3d at 985-
86 (noting that Appellants have the burden on appeal to the Board to
demonstrate error in the Examiner’s position).

II.
We now address whether Woo discloses every element of claim 13 in
accordance with the Examiner’s broader claim construction. See King, 801
F.2d at 1326. We find that Woo does not.
The second limitation of claim 13 recites: “performing machine-
executable instructions for encoding a plurality of instructions to control at
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least one hardware device within the video decoder, the plurality of
instructions being encoded within the video stream.” Although the
Examiner’s rejection is not a model of clarity, we understand the Examiner’s
position in the rejection to be that the run length coder 92, multiplexer
(MUX) 94 and VLC coder 98 of Woo’s VLC/VLD 36 perform machine-
executable instructions to generate decoder instructions that control the VLD
decoder 108 of VLC/VLD 36. Ans. 3, 5. Assuming that this is, in fact, the
Examiner’s position, the rejection of claim 13 cannot be sustained. Woo’s
VLC 98 compresses or “encodes” video information from a video input
source 14 and transmits the compressed video data out on a transmit channel
20. FF 1. The VLC 98 does not encode data to generate decoder
instructions that control the decoder 108.
Accordingly, we reverse the Examiner’s rejection of representative
claim 13 and dependent claims 14 and 15 which fall with claim 13.

III.
Claims 16 and 17 are apparatus claims, both including the following
two “means-for” limitations: (1) “means for performing machine-executable
instructions for VLC decoding of a video stream;” and (2) “means for
performing machine-executable instructions for encoding a plurality of
instructions to control at least one hardware device within the video decoder,
the plurality of instructions being encoded within the video stream.” The
Appellants’ use of “means” raises a presumption that the associated
limitations are means-plus-function claim terms, falling within the purview
of 35 U.S.C. ¶ 6. Altiris, Inc. v. Symantec Corp., 318 F.3d at 1375. We
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therefore look to Appellants’ Specification to identify the structures
corresponding to the claimed functions. Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d at 1210.
Appellants assert that these two means limitations find support from
the following portions of the Specification:
means for performing machine-executable instructions for VLC
decoding of a video stream (Fig. 1, element 20; page 6, lines 9-
12); means for performing machine-executable instructions for
encoding a plurality of instructions to control at least one
hardware device within the video decoder, the plurality of
instructions being encoded within the video stream (Fig. 1,
element 22; page 6, lines 12-15)[.]

App. Br. 2-3. We note, however, that these referenced portions of the
Specification merely indicate that software constitutes the structures
associated with the two means. See FF 2. The cited passage does not
set forth any algorithm or structure for the software that performs the
claimed means. Further, we find no algorithms or structures for the
claimed software means anywhere else within the Specification either.
Rather, Appellants’ Specification merely states that “embodiments of
the invention may be implemented using a set of general purpose
computers operating under program control, and that modification of a
set of general purpose computers to implement the process steps and
data structures described herein would not require undue invention.”
FF 2. The Specification’s drawings do not provide any additional
insight into the structure of the claimed software means either. Figure
1 merely depicts black-box representations of the invention’s software
processes, VLC Decoding 20 and Instructions Assembly 22. FF 3.
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In short, Appellants’ Specification only describes the software
associated with the two claimed means by the software’s function. The
Specification does not provide the corresponding algorithm or structure that
is required by 35 U.S.C. 112 ¶ 6 for claiming software in means-plus-
function form. Accordingly, we find claims 16 and 17 to be indefinite under
35 U.S.C. 112 ¶ 2. See Aristocrat, 521 F.3d at 1338. We likewise find
dependent claims 24-26 to be indefinite as well.

PRIOR ART REJECTION OF CLAIMS 16, 17, and 24-26
For the reasons expressed in this opinion, claims 16, 17, and 24-26 are
indefinite. Therefore, the prior art rejection must fall, pro forma, because it
necessarily is based on speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be
understood, however, that our decision to reverse the Examiner’s prior art
rejection of claims 16, 17, and 24-26 is based solely on the indefiniteness of
the claimed subject matter and does not reflect on the adequacy of the prior
art evidence applied in support of the rejection of these claims.

CONCLUSION OF LAW
I. Appellants have not shown that the Examiner erred in interpreting the
language of claim 13, “performing machine-executable instructions for…”?
II. Appellants have shown that the Examiner erred in finding that the
cited prior art teaches performing machine-executable instructions for
encoding a plurality of instructions to control at least one hardware device
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within the video decoder, the plurality of instructions being encoded within
the video stream, as required by claim 13. Accordingly, Appellants have
shown that the Examiner erred in rejecting claims 13-15 under § 102.
III. Regarding the “means-plus-function” limitations of claims 16 and 17,
Appellants’ Specification does not set forth sufficient corresponding
structures so as to satisfy the requirements of 35 U.S.C. § 112 ¶ 6.4

DECISION
(1) We do not sustain the Examiner's rejection with respect to all pending
claims on appeal. Therefore, the Examiner’s rejection of claims 13-17 and
24-26 is reversed.
(2) We reject claims 16, 17 and 24-26 under 35 U.S.C. § 112 ¶ 2 as being
indefinite.
(3) Since we have entered a new ground of rejection, our decision is not a
final agency action.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b)(2007). This regulation states “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review.” Furthermore 37 C.F.R. § 41.50(b) also provides that Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must

4 We decline to further decide whether the language of method claim 13—
“performing machine-executable instructions for…”—similarly constitutes
“step-plus-function” language under 35 US.C. § 112 ¶ 6.
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exercise one of the following two options with respect to the new grounds 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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED
37 C.F.R. § 41.50(b)

KIS

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