QUALCOMM Incorporated

Patent Trials and Appeals Board

Sep 20, 2021

2020001589 (P.T.A.B. Sep. 20, 2021)

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.
14/585,041 12/29/2014 Adarsh Krishnan Ramasubramonian 1414-770US01/141513U2 7358
15150 7590 09/20/2021
Shumaker & Sieffert, P. A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
JEAN BAPTISTE, JERRY T
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
09/20/2021 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):
ocpat_uspto@qualcomm.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte ADARSH KRISHNAN RAMASUBRAMONIAN,
FNU HENDRY, and YE-KUI WANG
_______________

Appeal 2020-001589
Application 14/585,041
Technology Center 2400
_______________

Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 4, 5, 7, 10, 11, 13, 16, 17, 19, 22, and 23. Appellant has canceled
claims 2, 3, 6, 8, 9, 12, 14, 15, 18, 20, 21, and 24. See Amdt. 2–7 (filed
Aug. 30, 2018). We have jurisdiction over the remaining pending claims
under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
QUALCOMM Incorporated as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to video
coding and compression techniques. Spec. ¶ 2. More particularly,
Appellant describes a video coding scheme to maintain a reference picture
set (RPS) associated with a picture of a coded video sequence. Spec. ¶¶ 4,
20. “The RPS for a given picture contains a set of reference pictures
including all reference pictures prior to the associated picture in decoding
order that may be used for inter prediction of the associated picture or any
picture following the associated picture in decoding order.” Spec. ¶¶ 20,
140. In a disclosed embodiment, a video encoder determines whether a
current picture within the video information is discardable. Spec. ¶ 6.
According to the Specification, a picture may be determined to be
discardable if “it is not used for reference for inter-layer prediction nor for
inter prediction by any other picture.” Spec. ¶ 20. Appellant describes that
conventional coding techniques may still allow such a picture (i.e., one
identified as discardable) to be included in an RPS. Spec. ¶ 20. However, in
a disclosed embodiment, a picture that is determined to be discardable (as
discussed above) may include a flag to indicate a discardable status. Spec.
¶ 146. In a claimed embodiment, pictures associated with a discardable flag
indication are disallowed from being included in the RPS (either an inter-
layer RPS or a temporal RPS). Spec. ¶ 148.
Claims 1 and 7 are representative of the subject matter on appeal and
are reproduced below with the disputed limitations emphasized in italics:
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1. A method for encoding video information of a multi-layer
bitstream, comprising:
determining, by an encoding device, whether a current
picture of the video information is: i) not used for inter-layer
prediction and ii) not used for inter prediction by all other
pictures in the video information;
in response to determining that the current picture is i) not
used for inter-layer prediction and ii) not used for inter prediction
by all other pictures in the video information, determining, by the
encoding device, that the current picture is a discardable picture;
determining, by the encoding device, to exclude the
current picture in a reference picture set (RPS) based on: i) the
determination that the current picture is a discardable picture and
ii) a constraint defined in a coding scheme that specifies that
discardable pictures are disallowed from being included in the
RPS;
excluding, by the encoding device, the current picture
from inclusion in the RPS based on:
the determination, by the encoding device, that the
current picture is a discardable picture that is not used for
inter-layer prediction and that is not used for inter
prediction, and
a determination, by the encoding device, that the
current picture is disallowed from being included in the
RPS based on current picture being subject to the
constraint; and
encoding, by the encoding device, the video
information based at least in part on the RPS from which
the current picture has been excluded.

7. A device for encoding video information of a multi-layer
bitstream, comprising:
a storage device configured to store the video information;
and
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an encoder in communication with the storage device and
configured to:
determine whether a current picture of the video
information is: i) not used for inter-layer prediction and ii) not
used for inter prediction by all other pictures in the video
information;
in response to the determination that the current picture is
i) not used for inter-layer prediction and ii) not used for inter
prediction by all other pictures in the video information,
determine that the current picture is a discardable picture;
determine to exclude the current picture in a reference
picture set (RPS) based on: i) the determination that the current
picture is a discardable picture and ii) a constraint defined in a
coding scheme that specifies that discardable pictures are
disallowed from being included in the RPS;
exclude the current picture from inclusion in the RPS
based on:
the determination that the current picture is a
discardable picture that is not used for inter-layer
prediction and that is not used for inter prediction, and
a determination that the current picture is
disallowed from being included in the RPS based on
current picture being subject to the constraint; and
encode the video information based at least in part
on the RPS from which the current picture has been
excluded.

The Examiner’s Rejection
Claims 1, 4, 5, 7, 10, 11, 13, 16, 17, 19, 22, and 23 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hendry et al. (US
2015/0334399 A1; Nov. 19, 2015) (“Hendry”); Ugur et al. (US
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2014/0092964 A1; Apr. 3, 2014) (“Ugur”); and Chen et al. (US
2012/0230409 A1; Sept. 13, 2012) (“Chen”). Final Act. 3–13.2

ANALYSIS3
Claims 1, 4, and 5
We begin our analysis noting that claim construction is an important
step in a patentability determination. A legal conclusion that a claim is
obvious involves a two-step inquiry wherein first, the claims are properly
construed, and second, the properly construed claims are compared to the
prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003); see also In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Conditional steps employed in a method claim need not be found in the prior
art if, under the broadest reasonable construction, the method need not
invoke the steps. Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792, at *3–6 (PTAB April 28, 2016) (concluding the broadest
reasonable interpretation of a claim encompassed situations in which
conditional method steps “need not be reached”) (precedential).

2 In the statement of rejection, we note the Examiner inadvertently identified
claims 8, 9, and 20 as also being rejected. See Final Act. 3. However,
Appellant had previously canceled claims 8, 9, and 20. See Amdt. 6.
Appellant has not asserted any prejudice due to the Examiner’s
misidentification of claims 8, 9, and 20 as being rejected. Accordingly, we
treat the Examiner’s inadvertent inclusion of these claims in the statement of
rejection as a harmless typographical error.
3 Throughout this Decision, we have considered the Appeal Brief, filed
July 9, 2019 (“Appeal Br.”); the Reply Brief, filed December 24, 2019
(“Reply Br.”); the Examiner’s Answer, mailed November 1, 2019 (“Ans.”);
and the Final Office Action, mailed January 10, 2019 (“Final Act.”), from
which this Appeal is taken.
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Independent claim 1 recites a method for encoding video information
of a multi-layer bitstream. One of the recited steps is determining “whether
a current picture of the video information is: i) not used for inter-layer
prediction and ii) not used for inter prediction by all other pictures in the
video information.” Claim 1 (emphasis added). If the result of the
determination whether a current picture is not used for inter-layer prediction
and inter prediction by all other pictures in the video information (i.e., in
response to determining that the current picture is not used for inter-layer
prediction or inter prediction by all other pictures in the video information),
then the picture is determined to be discardable and is excluded and
disallowed from the reference picture set (RPS).
Thus, as a matter of claim construction, we conclude that the
limitations of claim 1 recited after the step of “determining, by an encoding
device, whether a current picture of the video information is: i) not used for
inter-layer prediction and ii) not used for inter prediction by all other
pictures in the video information” are conditional—that is they are
conditioned on a determination that the current picture information is not
used for inter-layer prediction and is not used for inter prediction by all other
pictures in the video information. More to the point, if a current picture of
the video information were to be used for, for example, inter-layer
prediction, the remaining steps would not be performed.
Because the broadest reasonable interpretation of the claim does not
require performing the conditional method steps recited after the step of
determining whether the current picture is not used for inter-layer prediction
of inter prediction by all other pictures in the video information, the
Examiner does not need to present evidence of obviousness for these steps.
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See Schulhauser, 2016 WL 6277792, at *4 (“The Examiner did not need to
present evidence of the obviousness of the remaining method steps of claim
1 that are not required to be performed under a broadest reasonable
interpretation of the claim.”); see also Ex parte Katz, No. 2010-006083,
2011 WL 514314, at *4–5 (BPAI Jan. 27, 2011).4
Appellant’s arguments are directed to whether the prior art teaches the
conditional step of “determining, by the encoding device, to exclude the
current picture in a reference picture set (RPS) based on . . . ii) a constraint
defined in a coding scheme that specifies that discardable pictures are
disallowed from being included in the RPS.” See Appeal Br. 10–12
(emphasis omitted); Reply Br. 4–5. Thus, because Appellant’s arguments
are directed to conditional limitations, they are not persuasive of Examiner
error. See Schulhauser, 2016 WL 6277792, at *4.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. In addition, we sustain the Examiner’s rejection of claims 4 and 5,
which depend directly or indirectly therefrom and were not argued
separately. See Appeal Br. 12; see also 37 C.F.R. § 41.37(c)(1)(iv).

4 See also Applera Corp.–Applied Biosystems Group v. Illumina, Inc., 375 F.
App’x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s
interpretation of a method claim as including a step that need not be
practiced if the condition for practicing the step is not met); Cybersettle, Inc.
v. Nat’l Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007)
(unpublished) (“It is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed.”).
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Claims 7, 10, 11, 13, 16, 17, 19, 22, and 23
Independent claim 7 is an apparatus claim that encodes video
information by, inter alia, determining whether a current picture of the video
information is not used for inter-layer prediction and not used for inter
prediction by all other pictures in the video information. See claim 7. If so,
the picture is determined to be discardable and is excluded from inclusion in
the RPS based on both the determination of being discardable and a
constraint in the coding scheme that specifies that discardable pictures are
disallowed from being included in the RPS. See claim 7.
Appellant relies on the same arguments as those advanced with
respect to claim 1. See Appeal Br. 13. That is, Appellant asserts that Chen,
as relied on by the Examiner, fails to teach “determining, by the encoding
device, to exclude the current picture in a reference picture set (RPS) based
on . . . ii) a constraint defined in a coding scheme that specifies that
discardable pictures are disallowed from being included in the RPS.” See
Appeal Br. 10–12 (emphasis omitted); Reply Br. 4–5. In particular,
Appellant argues Chen merely teaches constraints to identify pictures as
being either usable or unusable as a reference picture, but fails to teach a
constraint that pictures identified as unusable are further disallowed from
being included in an RPS. Appeal Br. 11–12; Reply Br. 4–5.
Moreover, Appellant asserts that “the identification of a picture as
unusable is completely separate from a determination that the [picture] is
also disallowed from being included in an RPS based on the picture being
subject to a constraint.” Appeal Br. 12. In addition, Appellant argues that to
the extent Chen contemplates that a picture that is no longer used for inter
prediction “may be” removed from a reference picture window, such a
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contemplation still suggests that the reference picture may also remain in the
reference picture window. Reply Br. 5. In other words, Appellant asserts
that Chen does not disallow the unusable picture from being included in an
RPS, as claimed. Reply Br. 5.
Our reviewing court has explained that under 35 U.S.C. § 103, the
question “is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made.” Merck & Co. v. Biocraft Labs, Inc., 874 F.2d 804,
807–808 (Fed. Cir. 1989)(internal quotation omitted); see also In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976); In re Bell, 991 F. 2d 781, 785
(Fed. Cir. 1993).
Chen is generally directed to “video encoding and decoding, and more
particularly, to managing a decoded picture buffer.” Chen ¶ 2. Chen
describes a video coding method that includes “coding a picture with
reference to one or more reference pictures stored in a decoded picture
buffer (DPB).” Chen ¶ 5. Chen teaches that the DPBs may store one or
more pictures that may be used for inter prediction purposes. Chen ¶ 44. In
a disclosed embodiment, Chen describes determining whether to indicate a
picture is usable or unusable as a reference picture for inter prediction
purposes. Chen ¶¶ 4–6; see also Chen ¶¶ 45–46. Based on the
determination, Chen describes pictures stored in the DPB may be marked as
“used for reference” if it may be used for inter predicting, or “unused for
reference” if the picture may not be used for inter predicting. Chen ¶¶ 46,
50.
Moreover, as identified by the Examiner (see Final Act. 6–7; see also
Ans. 16–17), Chen discloses: “If there is a reference picture that should no
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longer be used for inter-prediction, its identifier may be removed from the
reference picture window, and the identifier for the current picture may be
placed into the window.” Chen ¶ 51.
As the Examiner explains, Chen teaches determining whether a
picture is usable or unusable for inter prediction purposes. See Ans. 16
(citing Chen ¶¶ 4, 50–51). If the picture is determined to be unusable for
inter predicting, it is marked unused for reference. See Chen ¶¶ 45–46. As
Chen describes, if a picture is not used for inter predicting (i.e., marked as
unused for reference), it may be removed from the reference picture window
(i.e., RPS). See Chen ¶ 51; see also Ans. 16. The Examiner finds that
Chen’s teaching of removing a picture marked as unused for reference from
the reference picture window teaches or reasonably suggests a constraint of
the coding scheme that specifies pictures indicated as unused for reference
are removed (discarded) from the reference picture window. Ans. 16–17.
That is, Chen first determines the usability of the current picture, and if it is
not usable for inter predicting, the picture is indicated as unused for
reference. See Chen ¶¶ 45–46. Further, Chen describes a coding scheme
that teaches the pictures indicated as unused for reference are removed from
the reference picture window. See Ans. 16–17; Chen ¶ 51.
Thus, we find the Examiner’s findings are supported by a
preponderance of evidence.
Appellant’s argument (see Reply Br. 5) regarding Chen’s description
that pictures indicated as unused for reference “may be” removed from the
reference picture window suggests that Chen does not teach a coding scheme
that specifies that the pictures unused for reference are disallowed from
inclusion in an RPS is unavailing. Rather, in the embodiments in which a
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picture determined to be unusable for reference is removed (i.e., discarded)
from the reference picture window, we find Chen teaches or reasonably
suggests that a constraint in the coding scheme is used to indicate that the
pictures marked as unused for reference are removed. See Ans. 16–17.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 7. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 13 and 19, for which Appellant relies on the same
arguments as those advanced with respect to independent claim 1. See
Appeal Br. 13; see also 37 C.F.R. § 41.37(c)(1)(iv). In addition, we sustain
the Examiner’s rejection of claims 10, 11, 16, 17, 22, and 23, which depend
directly or indirectly therefrom and were not argued separately. See Appeal
Br. 13; see also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 4, 5, 7, 10, 11,
13, 16, 17, 19, 22, and 23 under 35 U.S.C. § 103.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7,
10, 11, 13,
16, 17, 19,
22, 23
103 Hendry, Ugur, Chen 1, 4, 5, 7,
10, 11, 13,
16, 17, 19,
22, 23

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TIME PERIOD FOR RESPONSE
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