Valens Semiconductor Ltd.

Patent Trials and Appeals Board

Sep 16, 2020

2019003028 (P.T.A.B. Sep. 16, 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.
14/834,661 08/25/2015 Eyran Lida Va_DRTC3 1099
16759 7590 09/16/2020
Active Knowledge Ltd.
P.O. Box 294
Kiryat Tivon, 36011
ISRAEL
EXAMINER
DOBBS, KRISTIN SENSMEIER
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
ari@activekn.com
gil@activekn.com
tal@activekn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EYRAN LIDA
Appeal 2019-003028
Application 14/834,661
Technology Center 2400
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
DONNA M. PRAISS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Valens
Semiconductor Ltd. Appeal Br. 3.
Appeal 2019-003028
Application 14/834,661
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CLAIMED SUBJECT MATTER
The claims are directed to dynamic real-time compression. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A compression system configured to maintain parameters
related to uncompressed video (PRTUV) while changing video
compression ratios on-the-fly, comprising:

a video transmitter configured to receive in real-time
incoming high definition uncompressed video (HD-UV)
characterized by the following PRTUV: uncompressed timing
requirements, uncompressed number of video lines, and
uncompressed number of video pixels per video line;

the video transmitter is further configured to compress the
incoming HDUV into a first compressed video having a first
compression ratio of between 1:1 and 5:1, and to send the first
compressed video over a communication link to a video receiver;

the video transmitter is further configured to receive a
command to smoothly change on-the-fly the compression of the
incoming HD-UV to a second compressed video having a second
compression ratio of between 2:1 and 10:1, and to send the
second compressed video over the communication link to the
video receiver, without interrupting continuous flow of the
incoming HD-UV; wherein the difference between the ratios of
the first and second compressed videos is at least 25%; and

the video receiver is configured to decompress the first or
second compressed videos to an outgoing HD-UV;

wherein the outgoing HD-UV maintains the PRTUV
before, during, and after the change from the first compressed
video to the second compressed video.

Appeal Br. 21 (Claims Appendix) (paragraph indentations added).
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Application 14/834,661
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REFERENCES
The prior art relied upon by the Examiner is:
Ramasubramanian et al. US 6,172,672 B1 Jan. 9, 2001
Sevin US 2014/0089516 A1 Mar. 27, 2014
Labosco et al. US 2015/0288919 A1 Oct. 8, 2015

REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ramasubramanian, in view of Sevin, and further in view
of Labosco.
OPINION
Claims 1–20
Appellant indicates that claims 1–8 are appealed and that the
Examiner did not provide a separate rejection of independent claim 12.2
Appeal Br. 6, 13.
Appellant contends that the Ramasubramanian reference discloses a
digital video delivery system that is based on a server that stores an entire
video file and then transmits the stored video file using a video transmitter
which is different than a video transmitter configured to receive in real-time
incoming high-definition uncompressed video. Appeal Br. 7. Appellant
further contends that the Ramasubramanian reference discloses a very low
bandwidth and thus cannot transmit 1:5 compression “high definition video”

2 We note that the Examiner indicated that independent claim 12 was
rejected for the same reason as independent claim 1. Final Act. 14.
Appellant also indicates the same arguments apply to claim 12. Appeal Br.
13. Therefore, we interpret Appellant’s arguments to be directed to rejected
claims 1–20.
Appeal 2019-003028
Application 14/834,661
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which requires more than 200 Megabytes per second (Mbps baud rate)
which is approximately 7000 times faster than the 28.8 Kilobytes per second
(Kbps baud rate). Appeal Br. 8–9. Appellant further contends that the three
different speeds (normal rate speed to slow playback to pause) of the
Ramasubramanian reference are not “high definition video,” having a
compression ratio between 2:1 and 10:1 and does not “smoothly change on-
the-fly the compression of the incoming HD-UV to a second compressed
video having a second compression ratio.” Appeal Br. 9–10.
With regards to the Sevin reference, Appellant contends that the Sevin
reference cannot maintain the parameters related to uncompressed video
(PRTUV [parameters related to uncompressed video]: uncompressed timing
requirements, uncompressed number of video lines, and uncompressed
number of video pixels per video line, Spec. ¶ 74), as the Examiner finds,
which directly contradicts Sevin’s main idea of assigning higher priority to
the more important packets, which means that Sevin cannot maintain the
claimed PRTUV. Appeal Br. 11–12.
Appellant further contends that neither Ramasubramanian nor Sevin
describes maintaining the claimed PRTUV, and the combination definitely
does not maintain the PRTUV before, during, and after the change from the
first compressed video to the second compressed video. Appeal Br. 12.
Appellant further argues that the Labosco reference does not teach the
claimed “wherein the difference between the ratios of the first and second
compressed videos is at least 25%” because this limitation must be
interpreted in conjunction with the claimed limitation of “the outgoing HD-
UV maintains the PRTUV before, during, and after the change from the first
compressed video to the second compressed video,” which requires
maintaining the uncompressed number of video lines and uncompressed
Appeal 2019-003028
Application 14/834,661
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number of video pixels per video line. Appeal Br. 12. Appellant also argues
that converting the 4K60 (4:4:4) video signal timing into 1080p60 video
signal timing (as disclosed in paragraph 0171 cited by the Examiner) does
not maintain the PRTUV, and thus the combination of Ramasubramanian in
view of Sevin in further view of Labosco cannot result in the claimed
invention that maintains the PRTUV before, during, and after the change
from the first compressed video to the second compressed video. Appeal Br.
12.
In response to Appellant’s arguments, the Examiner maintains that:
Ramasubramanian teaches in Figs. 2A, 2B, 2C, for example, and
col. 7, lines 28-39 that digital data may be uncompressed or pre-
compressed and on-the-fly compression may be performed to
send video to the client for normal-speed, realtime playback. In
addition, Ramasubramanian teaches in col. 7, line 28-col. 8, line
11 that block 204 generally represents a steady state in which the
video data is compressed (step 206), sent to the client (step 208).
The compression ratio (X:1) is used to compress the data at step
206 is determined based on the bandwidth between the server
and the client and the specific frame transmission rate. The
retrieved video data is not compressed using the same
compression ratio X:1 as was used at step 206, but rather, at step
222 the retrieved video data for the selected frame is compressed
using a compression ratio X/Y:1, where Y> 1.
Ans. 15; see also Final Act. 3–7.
We note that Examiner’s responses to Appellant’s arguments
essentially repeat portions of the grounds of rejection without substantively
addressing the merits of the arguments. Moreover, we further find the
Ramasubramanian reference does not specifically disclose or mention “high
definition” video data, as claimed, but, rather, the Ramasubramanian
reference discloses digital video data (1:29–30 “most digital viewing devices
support resolutions of 640 by 480 and above”; 2:39 making the video data
Appeal 2019-003028
Application 14/834,661
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“higher quality image”; 6:67–7:2 “a still ‘snapshot’ of the specified frame
that has a much higher resolution and quality than when the same frame was
delivered to client 110 in real time;” 8:25 “high resolution image”).
Consequently, we do not agree with the Examiner that the
Ramasubramanian reference discloses “high definition” video data, but
higher quality images than previously available at the time of filing in 1996.
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)).
[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. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A rejection based on section 103 clearly must rest on a factual basis.
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id.
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Appeal 2019-003028
Application 14/834,661
7
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
the claimed invention is rendered obvious.” Fritch, 972 F.2 at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
We disagree with the Examiner as to the specific teachings and
suggestions of each of the prior art references, and we agree with Appellant
that even if the prior art references were combined as proffered by the
Examiner, they would not teach or suggest the combination as recited in
independent claim 1 and independent claim 12. We find that the Examiner’s
rejection is based upon references which individually teach portions of the
text of the claimed invention, but are not necessarily combinable to achieve
the claimed invention because the Ramasubramanian reference is not
directed to uncompressed high definition video data and the
Ramasubramanian reference mentions “on the fly” with respect to higher
quality images, but does not pertain to “high definition uncompressed video
(HD-UV).”
Additionally, the Sevin reference is directed to uncompressed data,
but performs no compressing of the uncompressed data, and the Labosco
reference discloses compressing a high definition signal with a 4:1 ratio, but
does not perform a change of compression “on-the-fly.” Therefore, the
Labosco reference does not teach or suggest a transition from a high
Appeal 2019-003028
Application 14/834,661
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definition uncompressed video (HD-UV) to a compressed signal and
switching between them “on the fly.”
Consequently, we find the Examiner resorted to speculation,
unfounded assumptions and hindsight reconstruction to supply deficiencies
in the factual basis of the prior art references used in the combination. Each
of the prior art references has its individual deficiencies and the Examiner
has used the claimed invention as an instruction manual or ‘template’ to
attempt to piece together the teachings of the prior art so that the claimed
invention is rendered obvious. We find each of the prior art references has
individual differences from the claimed invention and the Examiner has not
sufficiently explained how the skilled artisan would have appreciated those
individual differences and addressed them in the combination. As a result,
we agree with Appellant that even if the prior art references were combined,
as the Examiner proffers, the combination would not have taught or
suggested the invention as recited in independent claim 1 and independent
claim 12. Therefore, we cannot sustain the rejection of illustrative
independent claim 1.

Dependent claims 2–8
Appellant sets forth separate arguments for patentability of each
dependent claim. The Examiner’s rejection of dependent claims 2–8 does
not identify how the additional teachings of the prior art references remedy
the noted deficiency above. As a result, we cannot sustain the Examiner’s
rejections for the same reasons as independent claim 1 and need not reach
Appellant’s additional arguments.

Appeal 2019-003028
Application 14/834,661
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Claims 9–20
Because the Examiner’s rejection of dependent claims 9–11 contains
the same deficiencies, we cannot sustain the rejection of dependent claims
9–11. Independent claim 12 and its dependent claims contain a similar
claim limitation addressed above with respect to claim 1. Therefore, we
cannot sustain the rejection of claims 12–20 for the same reasons discussed
above.

CONCLUSION
The Examiner’s obviousness rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–20 103 Ramasubramanian,
Sevin, Labosco
1–20

REVERSED