Sony Corporation

Patent Trials and Appeals Board

Mar 3, 2020

14394834 - (D) (P.T.A.B. Mar. 3, 2020)

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.
14/394,834 10/16/2014 James Alexander Gamei 442021US8X PCT 1814
22850 7590 03/03/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LOTFI, KYLE M
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES ALEXANDER GAMEI, NICHOLAS SAUNDERS,
KARL JAMES SHARMAN, and PAUL JAMES SILCOCK
____________

Appeal 2018-007136
Application 14/394,834
Technology Center 2400
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
MICHAEL J. STRAUSS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22–26 and 28–43. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on
February 25, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Sony
Corporation. Appeal Br. 2.
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Application 14/394,834

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The present invention relates generally to video coding by dividing
image data into transform units. See Abstr.
Independent claim 22, reproduced below, are representative of the
appealed claims:
22. A method of video coding, comprising:
dividing, by circuitry, image data into transform units;
when a transform unit is a non-square transform unit,
splitting the non-square transform unit into square blocks and
applying a spatial frequency transform to the square blocks to
generate corresponding sets of spatial frequency coefficients; and
associating, by the circuitry, intra-prediction mode angles
for square prediction units with different intra-prediction mode angles
for non-square prediction units.

Appellant appeals the following rejections:
R1. Claims 22–26 and 28–31 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 4; and
R2. Claims 22–26 and 28–43 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over at least Wang (WO 2013/067174 A1, May 10,
2013) in combination with various other prior art. See Final Act. 5–12.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
Claims 22–26 and 28–31
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”). For example, concepts determined to
be abstract ideas, and thus patent ineligible, include certain methods of
organizing human activity, such as fundamental economic practices (Alice,
573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker
v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v.
Benson, 409 U.S. 63, 69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Updated
by USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
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(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). Revised
Guidance, 84 Fed. Reg. at 51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 22, the Examiner
determines that the claims are directed to “an ‘idea of itself’” (Final Act. 4),
which we conclude are mental processes, which is a type of abstract idea.
The Examiner also determines that the claims are directed to “a
mathematical operation” (Ans. 4), which we conclude is another type of
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abstract idea, i.e., mathematical concepts. For at least the following reasons,
we are persuaded that representative claim 22 recites plural abstract ideas.
Claim 22 recites at least the following limitations: (1) “dividing . . .
image data into transform units,” (2) “applying a spatial frequency transform
to the square blocks,” and (3) “associating . . . intra-prediction mode angles
for square prediction units with different intra-prediction mode angles for
non-square prediction units.” See claim 22.
These limitations, under their broadest reasonable interpretation,
recite mental processes because the limitations all recite mental processes
that can be performed in the human mind. A claim recites a mental process
when the claim encompasses acts people can perform using their minds or
pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps
can be performed in the human mind, or by a human using a pen and paper”
is directed to an unpatentable mental process). This is true even if the claim
recites that a generic computer component performs the acts. See, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”); see also Revised
Guidance, 84 Fed. Reg. at 52 n.14 (emphasis omitted) (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”).
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Here, these limitations encompass acts people can perform using their
minds or pen and paper because people can perform the “dividing” and
“splitting” steps by simply looking at the image data and recognizing a non-
square shape of transform units and using pen and paper to apply a Haar
transform. See Spec. 13:17–21; 14:6–12. People can also perform the
“applying a spatial frequency transform,” step by recognizing the square
blocks and using pen a paper to apply said transform. Id. at 12:3–6. Finally,
people can perform the “associating” step by observing which intra-
prediction mode angles are for square and non-square prediction units.
For example, Appellant’s Specification indicates:
In many encoding methods including HEVC, such data is
transformed into the spatial frequency domain using an integer
cosine transform (ICT), and typically some compression is then
achieved by retaining low spatial frequency data and discarding
higher spatial frequency data according to the level of
compression desired.
Id. at 12:3–6.
As discussed above, the splitting may comprise applying
a Haar transform. Alternatively, in the case that the non-square
transform unit is rectangular, the splitting may comprise
selecting respective square blocks either side of a centre axis of
the rectangular transform unit. Alternatively, in the case that
the non-square transform unit is rectangular, the splitting may
comprise selecting alternate rows or columns of samples of the
transform unit.
Id. at 13:17–21.
Upon reviewing the Specification and the claim as a whole, as
summarized above, we agree with the Examiner that the rejected claims
recite a judicial exception because they are directed to processes or functions
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that can be performed by a human using a pen and paper. See Ans. 4;
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (“[W]e continue to ‘treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.”’) (citation
omitted).
Although independent claim 22 recites “circuitry,” it recites similar
features that can be otherwise performed using pen and paper. The
dependent claims are directed to similar processes or functions, and
Appellant has not shown such claims are directed to other non-abstract
functions or processes. See claims 23–26 and 28–31.
To the extent that such steps noted supra cannot practically be
performed mentally (although Appellant has not directed our attention to any
such evidence in Appellant’s Specification), we conclude that some of these
limitations, under their broadest reasonable interpretation, also recite
mathematical concepts because claim 22 broadly recites “dividing . . .
applying a spatial frequency transform . . . [and] generating corresponding
sets of spatial frequency coefficients.” As drafted, these limitations recite
mathematical concepts because “dividing,” “applying a spatial frequency
transform,” and “generating spatial frequency coefficients” are mathematical
calculations. See October 2019 Update: Subject Matter Eligibility, 4 (Oct.
17, 2019) (“A claim that recites a numerical formula or equation will be
considered as falling within the ‘mathematical concepts’ grouping. In
addition, there are instances where a formula or equation is written in text
format that should also be considered as falling within this grouping. For
example, the phrase ‘determining a ratio of A to B’ is merely a textual
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replacement for the particular equation (ratio = A/B).”); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1165, 1167 (Fed. Cir. 2018) (A claim
reciting “performing a resampled statistical analysis” was directed to a
mathematical concept.). Accordingly, we further conclude the claim recites
another abstract idea, i.e., mathematical concepts.
Although Appellant contends that the Examiner’s “assertions are in
contrast to a proper § 101 examination procedure” (see Appeal Br. 6–7,
citing July 2015 Update and May 2016 Memo), we respectfully point out
that the Revised Guidance, noted supra, dictates the proper section 101
examination procedure, which is being followed. In any case, Appellant
does not directly challenge whether the claims are directed to an abstract
idea, but instead make arguments more directly related to integrating the
judicial exception into a practical application. Such arguments are addressed
below.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 22 recites an abstract idea, which we conclude are
mental processes and/or mathematical concepts.
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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We have discern additional element (or combination of elements)
recited in Appellant’s representative claim 22 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “circuitry,” “a splitter,” and “a spatial frequency transformer”) do
improve the functioning of a computer or other technology. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Specifically, Appellant contends that “the claims are directed to a
specific implementation of a solution to a problem in the field of video
coding/decoding” . . . “[f]or example, the utilization of non-square transform
units, inter alia, (1) reduces high frequency artifacts . . . (2) improve the
color prediction accuracy and (3) increase efficiency by containing less
information.” Appeal Br. 8–9.
Appellant’s Specification discloses:
Having non-square chroma TUs, and hence fewer TUs,
may be more efficient as they are likely to contain less
information.
Spec. 7:12–13.
Hence more generally, for the 4:2:2 scheme, in NSQT the
TU block sizes are selected to align with the asymmetric PU
block layout. Consequently the NSQT usefully allows TU
boundaries to align with PU boundaries, which reduces high
frequency art[i]facts that may otherwise occur.
Id. at 8:6–9. In other words, as highlighted by Appellant, “such claim
features address the processing of non-square transform units and provide
improvements over the first versions of the HEVC H.265 standard.” See
Appeal Br. 11.
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As such, Appellant has directed our attention to an improvement in
video coding/decoding technology when dealing with the processing of non-
square transform units. For at least these reasons, we determine the
additional recitations of claim 22 do integrate the recited patent-ineligible
subject matter into a practical application. As a result, our analysis ends
here.
For at least the above reasons, the Examiner’s rejection of claims 22–
26 and 28–31 under 35 U.S.C. § 101 is reversed.

Rejections under § 103(a)
The Examiner relies on Wang as prior art for the claims. Wang
claims the benefit of U.S. Provisional Patent Application Serial Number
61/554,273, filed November 1, 2011, but Appellant contends:
[Appellant’s] perfected priority date pre-dates the filing date of
Wang [because] . . . US 61/554,273 does not support the
disclosure in Wang that is relied upon in the Office Action. In
particular, US 61/554,273 does not support at least Fig. 6 and
[0067]-[0068], [0085] and [0095] of Wang, which the Office
Action relies upon to assert that Wang describes the claimed
features.
Appeal Br. 12.
Appellant emphasizes that “Wang is not entitled to the filing dates of
US 61/554,273. Thus, Wang is not prior art.” Appeal Br. 13. In other
words, Appellant contends that because Wang’s provisional application (i.e.,
US 61/554,273) does not disclose or teach Figure 6 and paragraphs 67–68,
85, and 95 as disclosed in the non-provisional application, the effective data
accorded to the subject matter of Wang relied upon for the rejection must be
the filing data of Wang’s non-provisional (i.e., November 1, 2012), which
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date does not antedate the priority date of the instant application (i.e., GB
1207459.7 – April 26, 2012).
Appellant’s arguments have persuaded us of error. The Wang’s non-
provisional application does not antedate Appellant’s application without
relying upon the filing data of Wang’s provisional application. Our
reviewing court has said: In Dynamic Drinkware, we clearly explained that
for a non-provisional application to claim priority to a provisional
application for prior art purposes, “the specification of the provisional
[application] must contain a written description of the invention . . . in such
full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to
practice the invention claimed in the non-provisional application.” Amgen
Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017) (alteration in original)
(quoting Dynamic Drinkware, LLC v. National Graphics Inc., 800 F.3d
1375, 1378 (Fed. Cir. 2015).
Stated differently, the non-provisional application can rely upon the
filing date of the provisional application only if at least one of the claims in
the non-provisional application is supported by the written description of the
provisional application in compliance with pre-AIA 35 U.S.C. § 112, first
paragraph. MPEP 2136.03 (III) (citing Dynamic Drinkware, 800 F.3d at
1381) (finding insufficient the combination of: (1) a comparison between
the claims of the patent-in-suit and the disclosure of the prior art patent; and
(2) a comparison between a claim of the patent-in-suit and the provisional
application upon which the prior art patent’s priority claim is based).
Thus, regardless of whether the Examiner’s rejection relies upon the
limitations of the claims in the Wang non-provisional application, for the
Examiner to rely upon the filing date of the Wang provisional application, at
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least one claim of the published application (non-provisional application)
must be supported by the provisional application. Here, the Examiner has
not made any findings in this regard. See Ans. 7.
Instead, the Examiner finds that “figure 6 is cited for showing a 4:2:2
subsampling pattern . . . because it is the pattern itself, and Wang’s use of it,
which is being cited.” Ans. 7. The Examiner further finds that “both the
provisional and non-provisional applications [of Wang teach] that this
subsampling pattern existed in the art.” Id. The Examiner also finds that
“several citations (e.g. [0091], [0097]) were made to the Wang provisional
application . . . but no response to these citations and their explanations was
given in the Appeal Brief.” Id.
However, it is insufficient to merely compare the provisional
application to (1) the written description of the non-provisional child, or (2)
the claims of the application alleged to be invalid. Dynamic Drinkware, 800
F.3d at 1381. What is needed, and is missing, is the Examiner’s finding that
at least one claim in Wang’s non-provisional application is supported by the
written description of the provisional application in compliance with pre-
AIA 35 U.S.C. § 112, first paragraph. Accordingly, we are therefore
constrained by the record before us to find that the Examiner erred in
rejecting claims 22–26 and 28–43 under at least Wang.

CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claims 22–26 and 28–31 as being unpatentable under 35 U.S.C. § 101.
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Appellant also has demonstrated that the Examiner erred in rejecting
claims 22–26 and 28–43 as being unpatentable under 35 U.S.C. § 103 over
at least Wang.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22–26, 28–31 101 Eligibility 22–26, 28–31
22–26, 28–43 103 (at least) Wang 22–26, 28–43
Overall
Outcome
22–26, 28–43

REVERSED