Ex Parte Aylward

Board of Patent Appeals and Interferences

Mar 18, 2003

08796285 (B.P.A.I. Mar. 18, 2003)

1 The rejection o claims 31 and 32 under 35 U.S.C. § 103(a) has been
withdrawn b the examiner. Claims 31 and 32 have been indicated (answer, page
5) as being objected to as dependent from a rejected base claim.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte J. RICHARD AYLWARD
____________
Appeal No. 2002-1689
Application No. 08/796,285
____________
HEARD: MARCH 5, 2003
____________
Before FLEMING, SAADAT, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 30-321.
BACKGROUND
Appellants' invention relates to surround sound channel
encoding and decoding. An understanding of the invention can be
derived from a reading of exemplary claim 30, which is reproduced
as follows:
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Application No. 08/796,285
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30. Decoding apparatus comprising,
a first decoder having a first input for receiving a first
transmitted signal and a second input for receiving a second
transmitted signal, a first output for normally providing a first
output signal, a second output for normally providing a second
output signal and a third output for normally providing a third
output signal, and
a second decoder having a first input for normally receiving
a first transmitted signal coupled to the first output of said
first decoder, a second input for normally receiving a second
transmitted signal coupled to the second output of said first
decoder, a first output for providing a second first output
signal, a second output for providing a second second output
signal and a third output for providing a second third output
signal.
The prior art reference of record relied upon by the
examiner in rejecting appealed claim 30 is:
Embree 5,642,423 June 24, 1997
Claims 30-32 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claim 30 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Embree.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 22, mailed
June 5, 2001) for the examiner's complete reasoning in support of
the rejections, and to appellant's brief (Paper No. 21, filed
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Application No. 08/796,285
Page 3
March 23, 2001) and reply brief (Paper No. 26, filed August 16,
2001) for appellants' arguments thereagainst. Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered. See 37 CFR
1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of indefiniteness and
anticipation relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellant's arguments
set forth in the briefs along with the examiner's rationale in
support of the rejections and arguments in rebuttal set forth in
the examiner's answer.
We begin with the rejection of claims 30-32 under 35 U.S.C.
§ 112, second paragraph. The second paragraph of 35 U.S.C. § 112
requires claims to set out and circumscribe a particular area
with a reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In
making this determination, the definiteness of the language
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Application No. 08/796,285
Page 4
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.
Id. The examiner's position (answer, pages 3 and 4) is that:
It is not clear[ly] whether a plurality of the
first transmitted signals claimed in claims 30-32
are the same first transmitted signal. If it [is] the
case then the same first transmitted signal would
be connected to the first input of the first decoder,
the first output of the first decoder and the first
input of the second decoder. Therefore, the first
decoder would be bypassed because the same first
transmitted signal [would be] connected to both the
input and the output. This remark is also applied to
the second input and output of the first decoder, the
second decoder, the third decoder and the fourth
decoder. Secondly, it is not clearly what type of
decoder is [being claimed].”
Appellant responds (reply brief, page 2) that “Claims 30-32 are
readable upon the apparatus of FIGS. 17 and 18. These claims do
not recite a plurality of first transmitted signals. These
claims recite decoders with inputs and outputs corresponding to
what is disclosed FIG. 17. Each recited decoder has first and
second inputs for receiving or normally receiving transmitted
signals, these inputs labeled with a subscript t. The decoders
in FIG. 17 are characterized by having first, second and third
outputs.” We agree. We find that claim 30 does not recite a
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Application No. 08/796,285
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plurality of first transmitted signals, but rather that each
decoder has two inputs and three outputs. In addition, we agree
with appellant that page 28, line 9 et seq. of the specification
defines the decoder system of figure 17 as a multiple axis
decoding system that uses stereo decoders. We therefore find
claim 30 to be definite, and accordingly reverse the rejection of
claims 30-32 under 35 U.S.C. § 112, second paragraph.
We turn next to the rejection of claim 30 under 35 U.S.C.
§ 102(e) as anticipated by Embree. .To anticipate a claim, a
prior art reference must disclose every limitation of the claimed
invention, either explicitly or inherently. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The
examiner (answer, page 4) relies upon 406 of Embree as the first
decoder, 448 of Embree as the second decoder, and additionally
relies upon figure 6 and the abstract of Embree. Appellant
asserts (brief, page 6) that claim 30 recites that each decoder
provides "a greater number of outputs than number of inputs."
The examiner argues (answer, page 5) that “[i]n response to
Appellant’s argument that the references fail to show certain
features of applicant’s invention, it is noted that the features
upon which applicant relies (i.e., claim 30 calls for surround
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sound decoding apparatus having cascaded decoders expanding the
number of channels, that is to say, each decoder provides a
greater number of outputs than number of inputs) are not recited
in the rejected claim(s). Although the claims are interpreted in
light of the specification, limitations from the specification
are not read into the claims. See In re Van Geuns, 988 F.2d
1181, 26 USPQ2d 1057 (Fed. Cir. 1993).” Appellant acknowledges
(brief, page 6) that as shown in figure 6 of Embree, sum-
difference matrix 406 could be considered a decoder having two
input channels and four output channels, but that adaptive matrix
448 does not provide an increase in the number of channels as
required by claim 30.
We find that in Embree (figure 6) adaptive matrix 448
receives 4 inputs L, R, C, S from sum-difference matrix 406, and
four inputs from Look Up Tables (LUTS) 440, 442, 444, and 446).
Adaptive matrix 448 has four outputs; i.e., Lout, Rout, Cout, and
Sout. Thus, we find that adaptive matrix 448 does not have more
outputs than inputs, as required by claim 30, which recites that
each of the decoders has two inputs and three outputs.
Accordingly, we find that Embree does not anticipate claim 30, as
advanced by the examiner. The rejection of claim 30 under 35
U.S.C. § 102(e) is therefore reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
30-32 under 35 U.S.C. § 112, second paragraph, is reversed. The
decision of the examiner to reject claim 30 under 35 U.S.C.
§ 102(e) is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/gjh
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Application No. 08/796,285
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CHARLES HIEKEN
FISH & RICHARDSON
225 FRANKLIN STREET
BOSTON, MA 02110-2804