Ye-Kui Wang et al.

Patent Trials and Appeals Board

Jul 1, 2020

2018007066 (P.T.A.B. Jul. 1, 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.
13/753,278 01/29/2013 Ye-Kui WANG 1212-135US01/121236U1 5842
15150 7590 07/01/2020
Shumaker & Sieffert, P. A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
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 YE-KUI WANG and YING CHEN
Appeal 2018-007066
Application 13/753,278
Technology Center 2400
Before ALLEN R. MACDONALD, IRVIN E. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 5, 8, 9, 13–16, 21, 23, 24, 28–31, 36,
38, 39, 43–47, 52, 54, 55, 59–62, 67, 69, 70, 74–77, 82, 84, 85, and 89–96,

1 We refer to the Specification, filed January 29, 2013 (“Spec.”); Final
Office Action, mailed November 16, 2017 (“Final Act.”); Appeal Brief, filed
March 15, 2018 (“Appeal Br.”); Examiner’s Answer, mailed May 4, 2018
(“Ans.”); and Reply Brief, filed June 28, 2018 (“Reply Br.”).

2 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 Qualcomm
Incorporated. Appeal Br. 3.
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Application 13/753,278
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which are all of the pending claims. See Final Act. 1 (continuation sheet).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to coding video and storing video content.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of generating a video file including coded video
content, the method comprising:
obtaining, by processing circuitry of a computing device,
a plurality of slices of coded video content;
obtaining, by the processing circuitry of the computing
device, a first plurality of parameter sets associated with the
plurality of slices of the coded video content and a second
plurality of parameter sets associated with the plurality of slices
of the coded video content, wherein each parameter set of the
first plurality is of a picture parameter set (PPS) type, and
wherein each parameter set of the second plurality is of a
sequence parameter set (SPS) type;
generating, by the processing circuitry of a computing
device, a plurality of access units of a video bitstream, such that
the plurality of access units encapsulate the plurality of slices of
the coded video content;
generating, by the processing circuitry of the computing
device, a plurality of samples in a file track associated with the
video file, such that the plurality of samples encapsulate the
plurality of access units that encapsulate the plurality of slices of
the coded video content;
based on each parameter set of the first plurality being
associated with the PPS type, encapsulating, by the processing
circuitry of the computing device, the first plurality of parameter
sets within the generated plurality of samples of the coded video
content included in the video file;
generating, by the processing circuitry of the computing
device, a sample description that includes metadata that applies
to the plurality of samples of the file track associated with the
video file;
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based on each parameter set of the second plurality being
associated with the SPS type, encapsulating, by the processing
circuitry of the computing device, the second plurality of
parameter sets in the sample description, wherein the sample
description is signaled separately from the plurality of samples,
based on the sample description including the metadata; and
signaling, by the processing circuitry of the computing
device, the sample description in the video bitstream separately
from the plurality of samples associated with the video file.
REFERENCE AND REJECTIONS
Claims 46, 77, 92, 96 stand rejected under 35 U.S.C. 112(b) or 35
U.S.C. 112 (pre-AIA), second paragraph, “as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention.” Ans. 3; see also Final Act. 11–13.
Claims 46, 92, and 96 stand rejected under 35 U.S.C. 112(a) or 35
U.S.C. 112 (pre-AIA), first paragraph, because “the specification, while
being enabling for application of software on a processor, does not
reasonably provide enablement for the full scope of other embodiments
reading on the claims or otherwise suggested in the Specification. The
specification does not enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make the invention
commensurate in scope with these claims.” Ans. 3; Final Act. 11–13.
Claims 1, 5, 8, 9, 13–16, 21, 23, 24, 28–31, 36, 38, 39, 43–47, 52, 54,
55, 59–62, 67, 69, 70, 74–77, 82, 84, 85, and 89–96 stand rejected under 35
§ U.S.C. 101 as being directed toward non-statutory subject matter. Ans. 3.
Claims 1, 5, 8, 9, 13–16, 21, 23, 24, 28–31, 36, 38, 39, 43–47, 52, 54,
55, 59–62, 67, 69, 70, 74–77, 82, 84, 85, and 89–96 stand rejected under pre-
AIA 35 U.S.C. 103(a) “as being unpatentable over Applicant Admitted Prior
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Art (“AAPA”) as described or referenced in the Specification in view of
ISO/IEC 14496-15 2nd edition 2010-06-01 Part 15: Advanced Video
Coding (AVC) file format (“AVC15”) as provided in an IDS and referenced
as prior art in Specification.” Ans. 4.
ANALYSIS
35 U.S.C. § 112
The Examiner rejects claims 46, 77, 92, and 96 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre- AIA), second paragraph as being
indefinite. Final Act. 11–13. The Examiner rejects claims 46 and 92, and
96 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as
follows:
the specification, while being enabling for application of
software on a processor, does not reasonably provide enablement
for the full scope of other embodiments reading on the claims or
otherwise suggested in the Specification. The specification does
not enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make the invention
commensurate in scope with these claims.
Final Act. 11–12.
Regarding claim 46, the Examiner finds as follows:
Claim 46 recites "means for obtaining a plurality of slices ...
means for obtaining a first plurality of parameter sets ... means
for generating ... means for encapsulating ... " which are
limitations that seem to invoke 35 U.S.C. 112(f) or 35 U.S.C. 112
(pre-AIA), sixth paragraph. However, the written description
fails to disclose the corresponding and differentiated structure,
material, or acts for each claimed function. Written description
further fails to enable every conceivable means for achieving the
stated purpose, or how to achieve the stated purpose by all the
possible means suggested in Specification Paragraphs 121 and
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163 including "any suitable processing unit or processing
circuitry, such as, for example ... "
Final Act. 12.
Regarding claim 77, the Examiner finds as follows:
Claim 77 recites "instructions ... that cause the one or more
processors to receive a sample description of the file track
separately from the plurality of samples of the coded video
content of the video file" however it is indefinite how
instructions can cause an outside signal to have a different
format. Examiner suggests clarifying this language, such as
where instructions may enable reception of such a signal rather
than cause the signal itself.
Id.
Regarding claim 92, the Examiner finds as follows:
Claim 92 recites "means for receiving a file ... means for
receiving a sample description of the file track ... means for
decapsulating the plurality of samples ... means for
decapsulating the plurality of access units ... means for
decapsulating the plurality of samples to form a first
plurality of parameter sets ... means for decapsulating the
sample description ... " which are limitations that seem to
invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA), sixth
paragraph. However, the written description fails to disclose the
corresponding and differentiated structure, material, or acts for
each claimed function. Written description further fails to enable
every conceivable means for achieving the stated purpose, or
how to achieve the stated purpose by all the possible means
suggested in Specification Paragraphs 121 and 163 including
"any suitable processing unit or processing circuitry, such as, for
example ... "
Id. at 12–13. The Examiner rejects claims 96 for essentially the same reason
as claim 92 from which it depends. Id. at 13.
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Regarding claims 46, 92, and 96, we cannot sustain the rejection
because the basis of the rejection is unclear. The Examiner explanation of
the findings does not align with the statement of the rejection. To wit, the
explanation is directed to 35 U.S.C. § 112(f), while the statement of the
rejections allege that the basis of the rejection states that the rejections are
under 35 U.S.C. §§ 112 (a) and (b). Should further prosecution ensure, the
Examiner is advised to consider clarifying the basis of the rejections.
Regarding claim 77, we find the Examiner has not adequately
explained what renders the claim indefinite. Should further prosecution
ensure, the Examiner should consider clarifying the nature of the rejection
and the supposed indefinite feature.
Accordingly, on this record, we cannot sustain the rejections under 35
U.S.C. §112.
35 U.S.C. § 101
The Examiner rejects all pending claims “under 35 U.S.C. § 101 as
being directed toward non-statutory subject matter.” Final Act. 15.
With respect to this rejection, we select claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(iv). Appellant does not separately argue the claims.
Except for our ultimate decision, we limit our review of the § 101 rejection
to claim 1.
A. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101 under the Alice/Mayo
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Framework.3 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).4 “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

3 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(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.
2019 Revised Guidance, 84 Fed. Reg. at 56.
B. Examiner’s § 101 Rejection - Alice/Mayo - Part 1
2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner rejects the claims as
follows:
Claims 1, 5, 8-9, 13-16, 21, 23-24, 28-31, 36, 38-39, 43-
47, 52, 54-55, 59-62, 67, 69-70, 74-77, and 82, 84-85, 89-96 are
rejected under 35 U.S.C. 101 as being directed toward non-
statutory subject matter. Based upon analysis of the present
claims, the claims appear to be directed toward formatting image
data in a file or data stream, an abstract idea, which is not
considered statutory as defined in In re Prater; Gottschalk v.
Benson, 409 U.S. 63, 175 U.S.P.Q. 673 (1972) (conversion of
numerical information is ineligible); TL/ Communications LLC
v. AV Automotive LLC, (Fed Cir. May 17, 2016) (recording,
transmitting and administering digital images is ineligible);
Digitech Image Techs., LLC v Electronics for Imaging, Inc., 758
F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014) (Using profiles
in a digital image processing system is ineligible); In re Lowry,
32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994);
In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed.
Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,
404 (Fed. Cir. 1983) (Nonfunctional descriptive material cannot
lend patentability to an invention that would have otherwise been
anticipated or rendered obvious over the prior art); McRO, Inc.
dba Planet Blue v. Bandai Namco Games America Inc., 120
USPQ2d 1091 (Fed. Cir. 2016) (Presenting intended results
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without a particular automation beyond what is well-understood,
routine, or conventional is ineligible); in view of Alice. The
elements of the present claims, when considered individually and
in combination, are not directed toward significantly more than
an abstract idea itself; that is processing and computing is applied
to formatting data at a high level of generality (obtaining inputs
or generating outputs based on inputs) in a well understood and
conventional way computing is used in this field to generate
formatted data based on various types of input data. Further,
there are no limitations directed toward judicially recognized
improvements to another technology or technical field;
improvements to the functioning of the computer itself; or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment, such as
data manipulation applied to a video file. The claims should be
amended to include limitations toward the technical field.
Final Act. 15–16
C. Panel’s Analysis
2019 Revised Guidance Step 2A – Prong 1
Under the Revised Guidance:
To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) identify the specific limitation(s)
in the claim under examination (individually or in combination)
that the examiner believes recites an abstract idea; and
(b) determine whether the identified limitation(s) falls within the
subject matter groupings of abstract ideas enumerated in
Section I of the 2019 Revised Patent Subject Matter Eligibility
Guidance.
2019 Revised Guidance, 84 Fed. Reg. at 54.
Even though the Examiner’s Final Action was issued prior to the 2019
Revised Guidance, we follow the 2019 Revised Guidance in our review to
determine whether the Final Action provides sufficient articulated reasoning
as to why claim 1 recites an abstract idea or other patent-ineligible concept
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(e.g., a law of nature). That is, we ask whether the rejection adequately
address both (a) and (b) supra.
We conclude, the § 101 rejection on appeal does not sufficiently
articulate how any claim limitation(s) fall within one of the three groupings
of abstract ideas identified in the 2019 Revised Guidance or otherwise recite
an abstract idea. Therefore, we do not sustain the rejection of claim 1 under
35 U.S.C. § 101.
35 U.S.C. § 103
Appellant’s arguments (Appeal Br. 29–46; Reply Br. 7–9) persuade us
of error in the Examiner’s obviousness rejections (Final Act. 19–31) of all
pending claims. Notably, the Examiner responds only to Appellant’s
arguments regarding claim 1 and, even in that case, does not persuasively
address the arguments Appellant raises. See Ans. 7–10.
For instance, Appellant argues as follows regarding claim 1:
Independent claim 1 recites a method of generating a video file,
where the method includes "based on each parameter set of the
first plurality being associated with the PPS type, encapsulating
the first plurality of parameter sets within the generated plurality
of samples" and "based on each parameter set of the second
plurality being associated with the SPS type, encapsulating the
second plurality of parameter sets in the sample description."
Independent claim 1 also sets forth that "the sample description
is signaled separately from the plurality of samples based on the
sample description including the metadata" and that the "sample
description that includes metadata that applies to the plurality of
samples of the file track associated with the video file"
. . .

AVC fails to even recognize the video coding aspects
addressed by the features of claim l, much less does AVC
contemplate the particular solution provided by the combination
of features recited in Appellant's claim 1. For at least these
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reasons, AVC fails to disclose or suggest the combination of
features set forth in claim 1, as required for rejection under pre-
AIA 35 U.S.C. § 103(a). In support of the rejection, the Examiner
relied on sections 1 and 5 of AVC. However, AVC entirely fails
to disclose the combination of features recited in claim 1.
Moreover, as in further detail discussed below, the AVC
disclosure teaches away from the combination of features recited
in claim 1.
For instance, the AVC disclosure states that parameter sets
are stored either in the sample descriptions of the video stream
or in the parameter set stream, but never in both. A direct quote
from the "parameter sets" portion of section 5.2.2 of AVC is:
"NOTE Parameter sets are stored either in the sample
descriptions of the video stream or in the parameter set stream,
but never in both." The cited portions clearly illustrate that
according to AVC, all parameter sets must, by definition, be
included in only one of the sample descriptions or the parameter
set stream. The AVC techniques are subject to this limitation,
regardless of the type of parameter sets being processed. Indeed,
section 5.2.2 of AVC, which includes a subsection titled
"parameter sets," makes no distinction between PPS-type and
SPS-type parameter sets in stating that "[p]arameter sets are
stored either in the sample descriptions of the video stream or in
the parameter set stream, but never in both" . Thus, A VC
explicitly precludes the inclusion of an SPS-type parameter set in
the sample description in conjunction with the inclusion of a
PPS-type parameter set in the parameter set track.
Appeal Br. 31–33 (footnotes and some emphasis omitted).
The Examiner responds as follows:
Cumulatively, Applicant's proposed distinction to the
industry standards is embodied in the claim 1 language:
"encapsulating the first plurality of parameter sets within the
generated plurality of samples of the coded video ...
encapsulating the second plurality of parameter sets in the
sample description, wherein the sample description is signaled
[[out of band with respect to]] separately from the plurality of
samples."
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Prior art, AVC15, teaches an embodiment of this
language: ““implementations may choose to map parameter sets
to in-band parameter set NAL units ... or use some out-of-band
delivery mechanism.”” AVC, page 6, third paragraph. Thus a
person of skill in the art would know to choose parameters in a
set and the data unit to which it is attached, and thus can choose
another parameter set and data unit to which that set is attached,
and so on in a very predictable fashion. This is the definition of
obviousness.
Appellant proposes an additional embodiment that the
claimed parameter sets are stored (redundantly) in both the
sample description and another description. The claims are not
limited to this embodiment, and providing an additional
embodiment within the scope of the claim does not address the
rejection of another embodiment within the scope of the claims:
Substantially, every claim includes within its breadth or scope
one or more variant embodiments that are not disclosed in the
application, but which would anticipate the claimed invention if
found in a reference. The claim must be so analyzed and any such
variant encountered during the search should be recognized. See,
MPEP 904.0l(a).
Further note that prior art provides in a footnote that both
embodiments are known in the art but one is preferred:
“[p]arameter sets are stored either in the sample descriptions of
the video stream or in the parameter set stream, but never in both”
on AVC15 page 6. This statement indicates that both
embodiments (piecemeal storage of parameter sets and
redundant storage of parameter sets in both signal locations) are
known in the art, however redundant storage (in both locations)
is not preferred in the art of video compression, because
redundancy increases file size and reduces compression gains.
Ans. 8–9 (emphasis omitted; brackets in original).
We are persuaded of error because the prior art quoted above by the
Examiner specifically states “[p]arameter sets are stored either in the sample
descriptions of the video stream or in the parameter set stream, but never in
both.” The use of “never” here indicates that the prior art disclaims what
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Appellant claims. Moreover, the Examiner has not persuasively established
a factual basis for the following findings:
the claims are largely directed to a format of a video signal which
is admitted as prior art as embodied by the published HEVC
industry standard. Additional format details are cited in AVC15
which is an even older industry standard. Note that a signal
content cannot lend patentability to an apparatus (i.e. computer)
or method that would otherwise be unpatentable
Ans. 7.
Because we find the Examiner not to have complied with MPEP
§ 1207.02(2),6 on this record, we cannot sustain the Examiner’s obvious
rejections of the pending claims.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
46, 92, 96 112(a) Enablement 46, 92, 96
46, 77, 92, 96 112(b) Indefiniteness 46, 77, 92, 96
1, 5, 8, 9, 13–16,
21, 23, 24, 28–
31, 36, 38, 39,
43–47, 52, 54,
55, 59–62, 67,
69, 70, 74–77,
82, 84, 85, 89–96
101 Eligibility 1, 5, 8, 9, 13–
16, 21, 23, 24,
28–31, 36, 38,
39, 43–47, 52,
54, 55, 59–62,
67, 69, 70, 74–
77, 82, 84, 85,
and 89–96

6 “Response to Argument. A statement of whether the examiner disagrees
with each of the arguments of appellant in the brief with respect to the issues
presented and an explanation of the reasons for disagreement with any such
argument. The examiner must use headings and subheadings paralleling the
headings and subheadings utilized in the appellant’s brief.”
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Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 5, 8, 9, 13–16,
21, 23, 24, 28–
31, 36, 38, 39,
43–47, 52, 54,
55, 59–62, 67,
69, 70, 74–77,
82, 84, 85, 89–96
103 AAPA 1, 5, 8, 9, 13–
16, 21, 23, 24,
28–31, 36, 38,
39, 43–47, 52,
54, 55, 59–62,
67, 69, 70, 74–
77, 82, 84, 85,
89–96
Overall
Outcome:
1, 5, 8, 9, 13–
16, 21, 23, 24,
28–31, 36, 38,
39, 43–47, 52,
54, 55, 59–62,
67, 69, 70, 74–
77, 82, 84, 85,
89–96

REVERSED