DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 5-6 recite “the processing circuitry comprises a conditional negate unit” however Specification does not describe processing circuitry as comprising distinct hardware that performs this functionality. Specification discusses the two concepts separately.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4 are rejected as being directed toward patent ineligible subject matter under 35 U.S.C. 101, under the “Revised Patent Subject Matter Eligibility Guidance” issued on January 7, 2019 (Federal Register, Vol. 84, No. 4, 50).
The claims are directed to statutory categories of methods, apparata. (under Step 1).
Upon analysis of the present claims under the broadest reasonable interpretation (under Step 2A, prong one), the claims appear to recite a judicial exception, an abstract idea directed to mathematical concepts and functions of “12-bit input value is a function of at least a first sample value … producing a signed 19-bit output value that is equal to iv x 2n x (a+ 1), … produce a filtered sample value … producing the signed 19-bit output value by shifting … using an adder that adds the first and second signed 14-bit values … ” This is consistent with the decision in Ex parte Desjardins, 2024-000567.
Upon consideration of the record (under Step 2A, prong two), Examiner did not find that the additional elements of the present claims integrate the judicial exception into a practical application of that judicial exception “in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
The additional elements, when considered individually or in a claim as a whole, do not seem to reflect a substantive improvement in the functioning of a computer, or an improvement to other technology or technical field under the standards of the present judicial guidance; (using a computer to perform numerical operation does not improve the structure of the computer); do not seem use a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim (general purpose processing circuitry is not a particular machine); do not seem to effect a transformation or reduction of a particular article to a different state or thing (conversion of a numerical value from one format to another is not a physical transformation).
This is further evidenced in that the additional elements, merely recite the words ‘‘apply it’’ (or an equivalent producing, using) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; adds insignificant extra-solution activity to the judicial exception (i.e. obtaining, analyzing, transforming, or outputting information for use with the judicial exception as in CyperSource and Mayo); do no more than generally link the use of a judicial exception to a particular technological environment or field of use (i.e. linked to a computer or other well-established activities in the art).
The additional claim elements do not change the nature of the abstract idea, as being directed to: information (signed 12-bit input value, signed 19-bit output value, signed 15-bit value, signed 14-bit value), collecting information (obtaining, inputting, producing); outputting information (producing, using to produce, ), and/or analyzing information at a high degree of algorithmic generality (value associated with the image, is either 2 or 4, n is an integer greater than or equal to 0, either equal to the first signed 15-bit value of the negative of the first signed 15-bit value). These categories have been identified as abstract ideas by the Federal Circuit as summarized in Electric Power Group, LLC v. ALSTOM SA, 830 F. 3d 1350, 1354 (Fed. Cir. 2016):
Information as such is an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12, 127 S.Ct. 1746, 167 L.Ed.2d 737 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. 1354*1354 v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). In a similar vein, we have treated 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. See, e.g., TLI Commc'ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed.Appx. 950, 955 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Mayo, 132 S.Ct. at 1301; Parker v. Flook, 437 U.S. 584, 589-90, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Finally, the claimed elements, when considered individually and in combination (under step 2B), do not seem to provide an Inventive Concept that is “significantly more” than the ineligible subject matter. The claims simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception, at a high level of generality (such as comprising: memory; and processing circuitry or using the signed 19-bit output value to produce a filtered sample value).
The claims should be amended to include meaningful limitations within the technical field.
Claim Construction
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed by a method claim, or by claim language that does not limit an apparatus claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. M.P.E.P. 2111.04. Other examples are where the claim passively indicates that a function is performed or a structure is used without requiring that the function or structure is a limitation on the claim itself. The clause may be given some weight to the extent it provides "meaning and purpose” to the claimed invention but not when “it simply expresses the intended result” of the invention. In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005). Further, during prosecution, claim language that may or may not be limiting should be considered non-limiting under the standard of the broadest reasonable interpretation. See M.P.E.P. 904.01(a); In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997).
Prior art which teaches a range overlapping, approaching, or touching the claimed range anticipates if the prior art range discloses the claimed range with “sufficient specificity.” MPEP 2131.03(II). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); MPEP 2144.05(I). Prior art which teaches a range overlapping, approaching, or touching the claimed range renders the claim obvious, if the claimed range is not critical to enable the process to operate effectively, or if one of ordinary skill would not expect the process to operate differently outside the claimed range. MPEP 716.02; ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 1345 101 USPQ2d 1773 (Fed. Cir. 2012) (Court held a claim requiring alkalinity below 50 ppm to be anticipated by prior art teaching alkalinity of 150 ppm or less, and not patentable because “there is no allegation of criticality or any evidence demonstrating any difference across the range.”); Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006). Thus, to rebut an obviousness rejection, applicant must (i) demonstrate that prior art does not disclose the claimed range with “sufficient specificity,” (ii) provide evidence that claimed range is “critical” to enable the process to operate effectively, and (iii) evidence that one of ordinary skill would have expected the claimed process to operate differently outside the claimed range.
Changes to the dimensions of prior art structures are considered obvious absent persuasive evidence that the particular changes would produce non-obvious results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) (the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20040123079 to Bosshart (“Bosshart”) in view of US 20090284663 to Washburn (“Washburn”).
Regarding Claim 1: “A method for decoding an image, the method comprising:
wherein the signed 12-bit input value is a function of at least a first sample value associated with the image; (For example, “the coefficients therefore require 12 bits during processing,” Washburn, Paragraph 49. Also note that the input value can comprise any number of significant bits represented in “a 32-bit data value” with zeroes or ones filling insignificant bits. See Bosshart , Paragraph 51.)
using the signed 19-bit output value to produce a filtered sample value.” (“Normalize 104 the filter coefficients so that the maximum computed 103 input level times the filter coefficient summation will be the maximum signed input value usable in the D-to-A conversion process,” Washburn, Paragraph 48. Washburn does not provide example bit numbers, but Bosshart indicates that a number of significant bits can be shifted by a value R-L to be represented by a larger number of bits, such as 16 significant can be shifted by 8 bits to be represented by 24 bits. Bosshart , Paragraph 52. As described in Bosshart , Paragraphs 51-54, the numbers of significant bits and R-L can vary within the range of 1-32 bits which includes the claimed 12-bit input and 6-bit shift value of the claim. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to shift bits such that a 12 bit number can be represented using 19 bits or any other number of bits.)
obtaining a signed 12-bit input value, (For example, “the coefficients therefore require 12 bits during processing,” Washburn, Paragraph 49. Coefficients may also have a sign bit. Washburn, Paragraph 46 and similarly in Bosshart, Paragraph 52.)
producing a signed 19-bit output value that is equal to iv x 2n x (a+ 1), where iv is the signed 12-bit input value, n is an integer greater than or equal to 0, and a is either 2 or 4; and (“multiplying the trellis magnitude [a+1] after addition of the desired carrier insertion offset [n of 2n] by the desired FIR tap weights,” Washburn, Paragraph 40. Washburn does not provide example bit numbers, but Bosshart indicates that a number of significant bits can be shifted by a value R-L [which can be represented as 2n x (a+ 1)] to be represented by a larger number of bits, such as 16 significant can be shifted by 8 bits to be represented by 24 bits. Bosshart , Paragraph 52. As described in Bosshart , Paragraphs 51-54, the numbers of significant bits and R-L can vary within the range of 1-32 bits which includes the claimed 12-bit input and 6-bit shift value of the claim. Also note that “these two shifts can be used with additional operations, such as arithmetic or logical operations with another data argument, in order to achieve an intended result,” thus (a+1) can be any desired number. Bosshart, Paragraph 5.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to shift bits such that a 12 bit number can be represented using 19 bits or any other number of bits.)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to supplement the teachings of varying the number of bits representing image filter coefficients in Washburn to vary the number of bits using common ALU operations described in Bosshart, in order to implement shift operations using contemporary processors . Bosshart, Paragraph 5.
Finally, in reviewing the present application, there does not seem to be objective evidence that the claim limitations are particularly directed to: addressing a particular problem which was recognized but unsolved in the art, producing unexpected results at the level of the ordinary skill in the art, or any other objective indicators of non-obviousness.
Regarding Claim 2: “The method of claim 1, wherein producing the signed 19-bit output value comprises:
inputting a first signed 15-bit value into a conditional negate unit that outputs a second signed 15-bit value, wherein the second 15-bit value is either equal to the first signed 15-bit value of the negative of the first signed 15-bit value; and (As described in Bosshart , Paragraphs 51-54, the numbers of significant bits can vary within the range of 1-32 bits which includes the claimed 15-bit input, and they can also include a sign bit. Cumulatively, Bosshart also teaches that numbers can be inverted [negative of the number]. Bosshart, Paragraphs 57, 79. See statement of motivation in Claim 1.)
producing the signed 19-bit output value by shifting the second signed 15-bit value n times.” (Bosshart indicates that a number of significant bits can be shifted by a value R-L [which can be represented as 2n x (a+ 1)] to be represented by a larger number of bits, such as 16 significant can be shifted by 8 bits to be represented by 24 bits. Bosshart , Paragraph 52. As described in Bosshart , Paragraphs 51-54, the numbers of significant bits and R-L can vary within the range of 1-32 bits which includes the claimed 15-bit input and 4-bit shift value of the claim. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to shift bits such that a 15 bit number can be represented using 19 bits or any other number of bits. See statement of motivation in Claim 1.)
Regarding Claim 3: “The method of claim 2, wherein producing the signed 19-bit output value further comprises:
producing a fist signed 14-bit value using the 12-bit input value (iv), wherein the first signed 14-bit value is equal to: iv x a; (Bosshart indicates that a number of significant bits can be shifted by a value R-L [which can be represented as 2n x (a+ 1)] to be represented by a larger number of bits, such as 16 significant can be shifted by 8 bits to be represented by 24 bits. Bosshart , Paragraph 52. As described in Bosshart , Paragraphs 51-54, the numbers of significant bits and R-L can vary within the range of 1-32 bits which includes the claimed 12-bit input and 2-bit shift value of the claim. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to shift bits such that a 12 bit number can be represented using 14 bits or any other number of bits. See statement of motivation in Claim 1.)
producing a second signed 14-bit value using the 12-bit input value (iv); and (Bosshart indicates that a number of significant bits can be shifted by a value R-L [which can be represented as 2n x (a+ 1)] to be represented by a larger number of bits, such as 16 significant can be shifted by 8 bits to be represented by 24 bits. Bosshart , Paragraph 52. As described in Bosshart , Paragraphs 51-54, the numbers of significant bits and R-L can vary within the range of 1-32 bits which includes the claimed 12-bit input and 2-bit shift value of the claim. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to shift bits such that a 12 bit number can be represented using 14 bits or any other number of bits. See statement of motivation in Claim 1.)
producing the first signed 15-bit value using an adder that adds the first and second signed 14-bit values.” (Note that an addition of two equal 14-bit values represented as (iv x 2a) x (iv x 2a) equals to (iv x 2a+1) with iv being a 12 bit number, a =2 and is identical to shifting the number by 3 (or by 2 then by 1). Bosshart indicates that a number of significant bits can be shifted by a value R and a value L equal to shifting by R-L. Bosshart , Paragraph 52. “these two shifts can be used with additional operations, such as arithmetic or logical operations with another data argument, in order to achieve an intended result.” Bosshart, Paragraph 5. See statement of motivation in Claim 1.)
Claim 4: “An apparatus for decoding an image, … wherein the apparatus is configured to perform a method comprising …” is rejected for reasons stated for Claim 1, and because prior art teaches:
“the apparatus comprising: memory; and (For example, read-only memory in Washburn, Paragraph 55. See similarly in Bosshart, Paragraphs 3, 58.)
processing circuitry,” (“electronic circuits, more specifically electronic circuits used in the processing of digital television signal processing” Washburn, Paragraph 1. See similarly in Bosshart, Paragraph 3.)
Claim 5 is rejected for reasons stated for Claim 2 in view of the claim 4 rejection, and because prior art teaches:
“the processing circuitry comprises a conditional negate unit,” (See “reversing the binary value of each FIR tap when required. This has the same effect as if the input had been reversed in polarity. The invention accomplished this effect by applying an XOR ( exclusive-OR) bitwise operation” in Washburn, Paragraph 41 and similarly in Bosshart, Paragraphs 79, 89. These examples correspond to Specification, Figs. 9 and 11.)
Claim 6 is rejected for reasons stated for Claim 3 in view of the Claim 5 rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20150301826 to Siders (“Siders”) teaches application of shifting operations in the context of image processing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIKHAIL ITSKOVICH whose telephone number is (571)270-7940. The examiner can normally be reached Mon. - Thu. 9am - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached at (571)272-7383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MIKHAIL ITSKOVICH/Primary Examiner, Art Unit 2483
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