Reply to Office Action of October 1, 2018
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`Application No. 15/172,023
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`Reconsideration of this Application is respectfully requested.
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`Remarks
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`Claims 1-20 are pending in this Application, with claims
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`1, 10, and 19 being the
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`independent claims. None of the claims are sought to be amended. Based on the following remarks,
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`Applicant respectfully requests that the Examiner reconsider all outstanding rejections and that they
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`be withdrawn. Throughout the Remarks, Applicant reminds the Examiner that the claims are given
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`their broadest reasonable meaning in view of the specification, and any paraphrasing of the claim
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`features is not to be interpreted as reading any features into, or characterizing of, the claims.
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`Rejections under 35 U.S.C. § 101
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`Claims 1-20
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`Claims 1-20 stand rejected under 35 U.S.C. § 101 as allegedly being directed to a judicial
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`exception without significantly more. Applicant respectfully overcomes the rejection and provides
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`the following arguments to support patentability.
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`In the “Response to Arguments” section,
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`the Office Action references Recogicorg v.
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`Nintendol 855 F.3d 1322l Fed. Cir. 2016) in order to support the subject matter rejection. However,
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`a comparison of respective claims reveals no similarities in subject matter when the claims of this
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`Application are “viewed as a whole” as required by subject matter analysis. (See, Recogicorg, at
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`1327, "Rather, the focus is on the claim as a whole") The representative claim 1 of US. Patent No.
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`8,005,303 (herein '3 03 patent) at issue in Recognicorp that was analyzed by the Court is as follows:
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`A method for creating a composite image, comprising:
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`displaying facial feature images on a first area of a first display via a
`first device associated with the first display, wherein the facial feature
`images are associated with facial feature element codes,
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`selecting a facial feature image from the first area of the first display
`via a user interface associated with the first device, wherein the first
`deVice incorporates the selectedfacial feature image into a composite
`image on a second area of the first display, wherein the composite
`image is associated with a composite facial image code haVing at least a
`facial feature element code, and wherein the composite facial image
`code is derived by performing at least one multiplication operation on a
`facial code using one or more code factors as input parameters to the
`multiplication operation, and
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`reproducing the composite image on a second display based on the
`composite facial image code.
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`('303 patent, claim 1 (emphasis added).)
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`As can be seen, the subject matter of the claims in the '303 patent bears no similarity to the
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`claims in this Application. The '303 claims recite displaying and selecting facial feature images that
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`require user input to perform the selecting. The Court focused on the user input aspect and
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`indicated that the '803 claims recite "a method whereby a user displays images on a first display,
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`assigns image codes to the images through an interface using a mathematical formula, and then
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`reproduces the image based on the codes." (Recognicorp, at 1326) The District Court analogized
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`this process to "paint by the numbers." (Recognicorp, at 1324). The claims in Recogicorg, thus
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`require significant user input to select an image for insertion into a composite image that is
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`reproduced for display. As can be seen, the claims in Recogicorg, when Viewed "as a whole" bear
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`no relationship or similarity to the claims of this Application, and, therefore, cannot be relied on to
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`find an abstract idea in the present claims.
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`Further, the Interim Guidelines issued on December 16, 2014 (“Interim Guidelines”) for
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`examining subject matter eligibility under 35 U.S.C. §101 outlines a subject matter eligibility test
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`for determining patent eligible subject matter. (79 Fed. Reg. 74618, 74621 (December 16, 2014).)
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`Step 2A of this subject matter eligibility test “[d]etermine[s] whether the claim is directed to. .. an
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`Application No. 15/172,023
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`abstract idea.” (79 Fed. Reg. 74618 at 74622 (emphasis in original).) This “‘directed to’ inquiry...
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`cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every
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`routinely patent-eligible claim involving physical products and actions involves a law of nature
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`and/or natural phenomenon—after all, they take place in the physical world.” (Enfish, LLC v.
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`Microsoft Corp. (Fed. Cir. 2016), p. 10.) Rather, this “‘directed to’ inquiry applies a stage-one filter
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`to claims, considered in light of the specification, based on whether ‘their character as a whole is
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`directed to excluded subject matter.”’ (Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), p. 10 (citing
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`Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015))) As to be
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`discussed below, independent claims 1, 10, and 19 are directed toward a “specific implementation
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`of a solution to a problem” and are not directed toward an abstract
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`idea.
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`(See, USPTO
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`Memorandum: Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and
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`TLL Communications LLC v. A. VAutomotive, LLC), May 19, 2016.)
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`In the Amendment and Reply Under 37 C.F.R. § 1.111 that was filed on July 24, 2018
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`(“Non-Final Reply”), Applicant describes a technical problem, namely, glitching in the video and/or
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`audio data occurring when transitioning between different codecs, that is solved by the inventions as
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`recited by the claims of this Application.
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`(See, Non-Final Reply, pp. 9-12) Specifically,
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`the
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`“inventions as recited by the independent claims of this Application provide ‘advance warning’ to
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`decoders to allow these decoders to ‘anticipate the change in codecs and [to] properly decode the
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`video and/or audio data.’ (Non-Final Reply, p. 10 citing Specification, 1 [0032].) As described in the
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`Non-Final Reply:
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`[t]he encoders of this Application ‘insert supplemental information’ into the video
`and/or audio data to signal ‘a change in a video and/or audio codec’ within the data.
`(Specification, 1 [0032].) This ‘supplemental information may indicate the location of
`the transition between different codecs within the data’ and provides ‘advance
`warning’ of a pending transition between the different codecs.
`(Specification, 1
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`[0032].) This ‘advance warning’ allows the decoders of this Application to ‘anticipate
`the change in codecs and properly decode the video and/or audio data’ in accordance
`with the different codecs. (Specification, 1 [0032].) This anticipation of a pending
`change in codecs by the decoders of this Application avoids the glitches occurring in
`the video and/or audio data as these decoders transition between different codecs. The
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`information’ to determine ‘a
`decoders of this Application use the ‘supplemental
`transition point after which a different codec is to be used to decode the video and/or
`audio data.’ (Specification, 1 [0039].) This transition point is determined ‘before
`receiving the video and/or audio data that is encoded in accordance with the different
`codec’ to enable these decoders to configure themselves to decode such video and/or
`audio data in advance. (Specification, 1 [0039].)
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`(Non-Final Reply, p. 11)
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`Applicant respectfully reminds the Examiner that claims are not directed toward an
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`abstract idea, when they are “directed to a specific implementation of a solution to a problem “such
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`as an improvement in the functioning of a computer.” Enfzsh, LLC v. Microsoft Corp, 822 F.3d
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`1327, 1338-39 (Fed. Cir. 2016). As described above, independent claims 1, 10, and 19 represent a
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`technical solution which provides “advance warning” of transitions, to a technical problem, i.e.,
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`glitching in the video and/or audio data occurring with transitioning between different codecs. The
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`inventions as recited by these independent claims utilize the “supplemental information,” which
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`“indicates a transition point after which the encoded data transitions to the second portion,” to
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`provide “advance warning” of transitions between different codecs within the data as described
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`above. In other words, independent claims 1, 10, and 19 represent a new technological tool that
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`provides “advance warning” of transitions between different codecs to allow the video and/or audio
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`data to be properly decoded without glitches. As such the inventions as recited by independent
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`claims 1, 10, and 19 are directed toward a “specific implementation of a solution to a problem” and
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`are not directed toward an abstract idea.
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`(See, USPTO Memorandum: Recent Subject Matter
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`Eligibility Decisions (Enfish, LLC v. A/[icrosoft Corp. and TLL Communications LLC v. A. V
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`Automotive, LLC), May 19, 2016.)
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`In response, the Office Action alleges:
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`Applicant cites a plethora of paragraphs from the instant application to support the
`argument that the claim is not abstract. It is noted that the features upon which
`applicant relies (i.e., advanced warnings, details about the specific encoders, details
`about the supplemental information) are not recited in the rejected claim(s).
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`(Office Action, p. 3)
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`The portions of the Specification cited in the Non-Final Reply and as summarized above clearly
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`describe the technical problem,
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`i.e., glitching in the video and/or audio data occurring with
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`transitioning between different codecs. The “inventions as recited by the independent claims of this
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`Application provide the solution to this problem, utilizing the “supplemental information,” which
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`“indicates a transition point after which the encoded data transitions to the second portion,” to
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`provide “advance warning” of transitions between different codecs within the data as described
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`above. Accordingly, “claims 1-20 are directed toward a ‘specific implementation of a solution to a
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`problem’ and are not directed toward an abstract idea.” (Non-Final Reply, p. 14.)
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`Moreover, Applicant
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`respectfully reminds
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`the Examiner
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`to “be careful
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`to avoid
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`oversimplifying the claims because “[a]t some level, ‘all inventions... embody, use, refiect, rest
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`upon, or apply laws of nature, natural phenomena, or abstract ideas.’” (Alice Corp. Pty. Ltd. v. CLS
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`Bank lnt’l, 134 S. Ct. 2347, 2354 ((quoting Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
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`132 S. Ct. 1289, 1293 (2012)).) Even the Federal Circuit in RecogniCorp, which is relied on by in
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`the Office Action, “warn[s] that ‘describing the claims at such a high level of abstraction and
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`untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the
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`rule.’” Recognicorp, LLC. v. Nintendo Co., No. 2016-1499 (Fed. Cir. April 28, 2017) (citing Enfish,
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`LLC v. A/[icrosofl Corp, 822 F.3d 1327, 1337 (Fed. Cir. 2016). Here,
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`the Office Action
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`oversimplifies the claims to merely include “the steps of receiving data, decoding data, determining
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`data, and additional decoding.” (Office Action, p. 3.) This impermissible high level of abstraction of
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`the claims in the Office Action has even removed the solution to the technical problem, as described
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`above, from its analysis. The solution to this technical problem as described above, namely, the
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`“supplemental
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`information,” which “indicates a transition point after which the encoded data
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`transitions to the second portion” has been abstracted out of the claims in the Office Action. The
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`inventions as recited by the independent claims of this Application recited significantly more than
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`“receiving data, decoding data, determining data, and additional decoding” as alleged in the Office
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`Action.
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`Furthermore, the Office Action once again alleges independent claim 1
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`is “directed to a
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`method of receiving data, decoding data, determining data has information, and further decoding
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`data, which are well-understood, routine, conventional activities that do not necessarily require any
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`specific machine to perform and thus are abstract ideas” and the “claims does not include additional
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`elements that are sufficient to amount to significantly more than the judicial exception because the
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`recited steps are generic functions that are well understood, routine, and conventional activities
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`previously known to the industry.” (Office Action, pp. 4.) The Office Action similarly alleges
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`independent claim 10 “disclose[s] an encoder, which is also well understand, and add[s] no
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`additional elements which are significantly more.” (Office Action, p. 4.) The Office Action likewise
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`alleges independent claim 19 “merely add[s] storage, which is also routine and conventional, and
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`does not add significantly more because it is recited as performing generic computer functions
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`routinely used in computer applications.” (Office Action, p. 4.) However, the question of whether
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`these aforementioned features as recited by independent claims 1, 10, and 19 are “well-understood,
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`routine, conventional activit[ies]” is a “factual determination.” (See, USPTO Memorandum:
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`Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
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`Eligibility Decision (Berkheimer v. HP, Inc.), April 19, 2018.) The “mere fact that something is
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`disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and
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`conventional.” Berkheimer v. HP Inc, 881 F.3d 1360, 1369 (Fed. Cir. 2018). These aforementioned
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`features as recited by independent claims 1, 10, and 19 are “not well-understood, routine or
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`conventional unless the examiner finds, and expressly supports a rejection in writing with, one or
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`more of the following:
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`A citation to an express statement in the specification or to a statement made
`1.
`by an applicant during prosecution that demonstrates the well-understood, routine,
`conventional nature of the additional element(s). ..
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`A citation to one or more of the court decisions discussed in MPEP §
`2.
`2106.05(d)(II) as noting the well-understood, routine, conventional nature of the
`additional element(s). .
`.
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`A citation to a publication that demonstrates the well-understood, routine,
`3.
`conventional nature of the additional element(s). .. [or]
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`A statement that the examiner is taking official notice of the well-understood,
`4.
`routine, conventional nature of the additional element(s).” (USPTO Memorandum:
`Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent
`Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), April 19, 2018.)
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`Here, the Office Action once again fails to provide any of the required factual findings required to
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`support its conclusion that these aforementioned features as recited by independent claims 1, 10,
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`and 19 are “old, routine, or conventional computer components.” As such, the Office Action fails to
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`clearly and adequately demonstrate these aforementioned features as recited by independent claims
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`1, 10, and 19 do not qualify as being “significantly more” than the alleged abstract idea.
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`Accordingly, claims 1-20 are directed toward a “specific implementation of a solution to a
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`problem” and are not directed toward an abstract idea. And, even assuming arguendo claims 1-20
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`are directed toward an abstract idea, the features recited by claims 1-20 are “significantly more”
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`than the alleged abstract idea, therefore, these claims are patent eligible. Accordingly, Applicant
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`respectfully requests the rejection of claims 1-20 under 35 U.S.C. § 101 be reconsidered and
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`withdrawn.
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`Rejections under 35 U.S.C. § 102
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`Claims 1-3 7 8 and 19
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`Claims 1-3, 7, 8, and 19 stand rejected under 35 U.S.C. § 102(a)(1) as allegedly being
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`anticipated by United States Patent Publication No. 2016/0261877 to Wang (“Wang”). Applicant
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`respectfully traverses the rejection and provides the following arguments to support patentability.
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`According to Wang, its Video encoder “may output a bitstream that includes a sequence of
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`bits that forms a representation of coded pictures and associated data.” (Wang, 1 [0054].) Wang
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`describes this bitstream as including “a sequence of network abstraction layer (NAL) units” with
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`“[e]ach of the NAL units include[ing] a NAL unit header and encapsulat[ing] a raw byte sequence
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`payload (RBSP).” (Wang, 1 [0054].) As described in Wang, “[d]ifferent types of NAL units may
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`encapsulate different types of RBSPs.” (Wang, 1 [0055].) As an example, a “third type of NAL unit
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`may encapsulate a RBSP for Supplemental Enhancement Information (SE1) .” (Wang, 1 [0055].) As
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`described in the Non-Final Reply,
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`the mere mentioning of the RBSP “for Supplemental
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`Enhancement Information (SEI)” in Wang does not disclose Applicant’s “supplemental information
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`that indicates a transition point after which the encoded data transitions to the second portion” as
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`recited by independent claim 1 and as similarly recited by independent claim 19. (Non-Final Reply,
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`pp. 15-16.)
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`In response, the Office Action alleges the “SEI message contains information about the
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`removal time after the exact number of bits,
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`i.e., a transition point.” (Office Action, p. 3.) As
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`described in Wang, a video data memory “may form a coded picture buffer (CPB) that stores
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`encoded video data from an encoded video bitstream.” (Wang, 1 [0175].) This encoded video
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`“bitstream may be checked for conformance by a hypothetical reference decoder (HRD).” (Wang, 1
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`[0173].) According to Wang, the “exact number of bits in the CPB at the removal time of each
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`picture may depend on which buffering period SEI message is selected to initialize the HRD.”
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`(Wang, 1 [0126].)
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`Based upon these passages of Wang, the Office Action alleges “the SEI message contains
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`information about the removal time after the exact number of bits, i.e., a transition point.” (Office
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`Action, p. 3.) This is not correct. There is no teaching or suggestion in Wang that the SEI message
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`contains this alleged information about the removal time as alleged in the Office Action. The
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`removal time, namely, the alleged “transition point”, represents a time at which bits are removed
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`from the coded picture buffer (CPB). As described above, Wang discloses SEI messages as being
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`included with the encoded video bitstream. And Wang describes “appropriate buffering period,
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`picture timing, and decoding unit information SEI messages” as being “conveyed to the decoder in
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`a timely manner, either in the bitstream (by non-VCL NAL units), or by an external system.”
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`(Wang, 1 [0143] (emphasis added).) But nowhere does Wang ever teach or suggest that these SEI
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`messages contain “information about the removal time after the exact number of bits” as alleged in
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`the Office Action. Moreover, even assuming arguendo the SEI message of Wang includes this
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`alleged “transition point” as alleged in the Office Action, nowhere does Wang teach or suggest the
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`encoded video bitstream transitions from the first portion that is encoded in accordance with a first
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`codec to the second portion that is encoded in accordance with a second codec after this alleged
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`transition point, namely, the alleged information about the removal time after the exact number of
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`bits, as recited by independent claim 1 and as similarly recited by independent claim 19.
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`As discussed above, Wang does not disclose “supplemental information that indicates a
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`transition point after which the encoded data transitions to the second portion” as recited by
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`independent claim 1 and as similarly recited by independent claim 19. Consequentially, Wang
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`cannot disclose at least the features of “determining that the decoded data includes supplemental
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`information that indicates a transition point after which the encoded data transitions to the second
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`portion” and “decoding the second portion of the encoded data in accordance with the second codec
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`based on the supplemental information” as recited by independent claim 1 and as similarly recited
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`by independent claim 19. Accordingly, Wang cannot anticipate independent claims 1 and 19.
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`Dependent claims 2, 3, 7, and 8 are likewise not anticipated by Wang for at least the same reasons
`
`as the independent claim from which they depend and further in view of their own respective
`
`features. Accordingly, Applicant respectfully requests the rejection of claims 1-3, 7, 8, and 19 under
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`35 U.S.C. § 102(a)(1) be reconsidered and withdrawn.
`
`Rejections under 35 U.S.C. § 103
`
`Claims 4-6 9 and 20
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`Claims 4-6, 9, and 20 stand rejected under 35 U.S.C. § 103 as allegedly being unpatentable
`
`over Wang in view of one or more of the following:
`
`United States Patent Publication No. 2013/0322628 to Rhyu et al. (“Rhyu”), and
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`United States Patent Publication No. 2016/0381385 to Uger (“Uger”).
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`Applicant respectfully traverses the rejection and provides the following arguments to
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`support patentability.
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`As discussed above, Wang does not teach or suggest each and every feature of independent
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`claims 1 and 19. Rhyu and Uger alone, or any combination thereof, do not provide the missing
`
`teachings or suggestions with respect to these independent claims nor does the Office Action so
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`allege. Therefore, a combination of Wang and one or more of Rhyu and Uger does not render
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`independent claims 1 and 19 obvious. Dependent claims 4-6, 9, and 20 are likewise not rendered
`
`obvious by the combination of Wang and one or more of Rhyu and Uger for at least the same
`
`reasons as the independent claim from which they respectively depend and further in view of their
`
`own respective features. Accordingly, Applicant respectfully requests the rejection of claims 4-6, 9,
`
`and 20 under 35 U.S.C. § 103 be reconsidered and withdrawn.
`
`Claims 10-17
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`Claims 10-17 stand rejected under 35 U.S.C. § 103 as allegedly being unpatentable over
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`Wang in view of United States Patent Publication No. 2013/0287123 to Rusert et al. (“Rusert”).
`
`Applicant respectfully traverses the rejection and provides the following arguments to support
`
`patentability.
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`As discussed above, Wang does not teach or suggest at least the features of “supplemental
`
`information that indicates a transition point after which the encoded data transitions to the second
`
`portion” as recited by independent claim 1 and as similarly recited by independent claim 19.
`
`Independent claim 10 recites substantially similar features as recited by independent claims 1 and
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`19 that are likewise not taught or suggested by Wang. Rusert does not provide the missing teachings
`
`or suggestions with respect to independent claim 10 nor does the Office Action so allege. Therefore,
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`a combination of Wang and Rusert does not render independent claim 10 obvious. Dependent
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`claims 11-17 are likewise not rendered obvious by the combination of Wang and Rusert for at least
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`WAN el a].
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`the same reasons as the independent claim from which they respectively depend and further in View
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`of their own respective features. Accordingly, Applicant respectfully requests the rejection of
`
`claims 10-17 under 35 U.S.C. § 103 be reconsidered and withdrawn.
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`Conclusion
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`All of the stated grounds of objection and rejection have been properly traversed,
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`accommodated, or rendered moot. Applicant therefore respectfully requests that the Examiner
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`reconsider all presently outstanding rejections and that they be withdrawn. Applicant believes that a
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`full and complete reply has been made to the outstanding Office Action and, as such,
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`this
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`Application is in condition for allowance. If the Examiner believes, for any reason, that personal
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`communication will expedite prosecution of this Application, the Examiner is invited to telephone
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`the undersigned at the number provided.
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`Prompt and favorable consideration of this Reply is respectfully requested.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
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`/Michael R. Malek, Reg. No.: 65,211/
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`Michael R. Malek
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`Attorney for Applicant
`Registration No. 65,211
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`Date:
`
`
`December 31 2018
`
`1100 New York Avenue, NW.
`Washington, DC. 20005-3934
`(202) 371-2600
`
`1014665571.d0cx
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`Atty. Dkt. No. 5875.1930002
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