Ex Parte Bailleul

Board of Patent Appeals and Interferences

Dec 10, 2004

09400960 (B.P.A.I. Dec. 10, 2004)

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written for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NICOLAS BAILLEUL
_____________
Appeal No. 2004-0515
Application No. 09/400,960
______________
ON BRIEF
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Before RUGGIERO, DIXON, and GROSS, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1 and 2, which are all of the claims pending in the
present application.
The claimed invention relates to a method and apparatus for
modifying coded data which is coded to include a set of
parameters for decoding the coded data. The coded data is
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Application No. 09/400,960
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decoded, modified, and coded to obtain coded modified data. A
determination is made as to whether a satisfactory result will be
obtained by re-using the set of parameters, which had been
established for decoding the coded data, for decoding the coded
modified data. If so, the established set of parameters is added
to the coded modified data for decoding purposes. If a
satisfactory result will not be obtained by re-using established
parameters, a new set of parameters is added to the coded
modified data for decoding.
Claim 1 is illustrative of the invention and reads as
follows:
1. A method of modifying coded data (CD) which is
accompanied by a set of parameters (PAR) for decoding the
coded data (CD), the method comprising the steps of:
decoding (DEC1), at least partially, the coded data
(CD) so as to obtain decoded data (DD);
modifying (MOD) the decoded data (DD) so as to obtain
modified data (MD);
coding (ENC2) the modified data (MD) so as to obtain
coded modified data (CMD);
examining (EXAM) whether a satisfactory result will
be obtained, if the set of parameters (PAR) for decoding the
coded data (CD) is applied for decoding (DEC2) the coded
modified data (CMD); and
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adding (ADD) to the coded modified data (CMD) the set
of parameters (PAR) for decoding the coded data (CD) if the
result is satisfactory or, if the result is not
satisfactory, establishing (ADP) a new set of parameters
(APAR) and adding (ADD) the new set of parameters (APAR) to
the coded modified data (CMD).
The Examiner relies on the following prior art:
Rasky et al. (Rasky) 5,278,871 Jan. 11, 1994
Claims 1 and 2, all of the appealed claims, stand finally
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Rasky.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 12, filed
December 16, 2002) and Answer (Paper No. 13, mailed February 11,
2003) for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
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Application No. 09/400,960
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It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as recited in claims
1 and 2. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
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Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of appealed claims 1 and 2, Appellant asserts that the Examiner
has failed to establish a prima facie case of obviousness since
all of the claimed limitations are not taught or suggested by the
applied prior art reference. In particular, Appellant contends
(Brief, pages 3-5) that the applied Rasky reference does not
teach or suggest the claimed feature of “examining whether a
satisfactory result will be obtained, if the set of parameters
for decoding the coded data is applied for decoding the coded
modified data.”
After reviewing the arguments of record from Appellant and
the Examiner, we are in general agreement with Appellant’s
position as stated in the Brief. Although the Examiner asserts
(Answer, page 3) that, in Rasky, a decision is made in soft
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decision block 107 whether to continue decoding or to re-encode
the incoming data, we find no support in Rasky for such a
conclusion.
Rasky does indeed suggest (column 6, lines 33-40) that after
a number of iterations there will no longer be any errors left to
correct. There is no indication, however, as to how or where a
determination is made whether a satisfactory result will be
obtained if the original set of parameters used for decoding is
also used for decoding the coded modified data. In our view,
even assuming, arguendo, the Examiner’s summarization of the
operation of Rasky is correct, we fail to see how this would
satisfy the language of the claims on appeal. The Examiner must
not only make requisite findings, based on the evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the asserted conclusion. See In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002).
In view of the above discussion, in order for us to sustain
the Examiner’s rejection, we would need to resort to
impermissible speculation or unfounded assumptions or rationales
to supply deficiencies in the factual basis of the rejection
before us. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied,
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390 U.S. 1000 (1968). Accordingly, since all of the claim
limitations are not taught or suggested by the disclosure of
Rasky, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of appealed claims 1 and 2. Therefore, the decision of
the Examiner rejecting claims 1 and 2 is reversed.
REVERSED

)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JFR:hh
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