Ex Parte BeisnerDownload PDFBoard of Patent Appeals and InterferencesAug 28, 200709847093 (B.P.A.I. Aug. 28, 2007) Copy Citation The opinion in support of the decision being entered today was not written 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 for publication and is not binding precedent of the Board UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HENRY MICHAELS BEISNER ____________________ Appeal 2007-1083 Application 09/847,0931 Technology Center 3600 ____________________ Decided: August 28, 2007 ____________________ Before: TERRY J. OWENS, MURRIEL E. CRAWFORD, and DAVID WALKER, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection of claims 8-13. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appellant invented an adaptive filter to reduce multi-path (Specification 1.) 1 Application filed May 2, 2001. The real party in interest is the Appellant. Appeal 2007-1083 Application 09/847,093 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Claim 8 is representative of the invention and reads as follows: 8. A communication system comprising a radio transmitter transmitting a signal which is interfered with by fixed reflectors and moving reflectors, said system comprising an antenna, a receiver and a multipath reduction subsystem comprising an analog to digital converter, a real to complex converter, a whitening filter with complex coefficients and a multipath canceller comprising an array of complex delay-Doppler shift coefficients, delayers of one sample and shifters of one frequency increment, said array producing a residual from which the interferences from said fixed reflectors and said moving reflectors have been removed, said multipath canceller comprising a minimizer minimizing the mean square of said residual over the said whitening filter coefficients and the said multipath canceller delay-Doppler coefficients, said subsystem comprising a spectrum restoring filter utilizing the said whitening filter coefficients restoring said original signal The Examiner objects to the disclosure under 37 C.F.R. § 1.71. (See Final Rejection pp. 3-6.) The Examiner asserts (Answer 4) that the Specification is so incomprehensible as to preclude a reasonable search of the prior art. The reasoning by the Examiner is that it is unclear as to how the invention can be made or used. (Final Rejection 4.) The reasoning provided by the Examiner in both the Final Rejection and the Answer implies or suggests that the disclosure is non-enabling and/or lacking written description. The examples given by the Examiner are that there is no discussion of how the filter weights are calculated or applied. The Examiner contends (Final Rejection 4) that it is unclear where the removal of the multi-path is discussed. The Examiner additionally contends that the receiving and sampling of the signal is discussed, but that it is unclear as to 2 Appeal 2007-1083 Application 09/847,093 1 2 3 4 5 6 7 8 how this removes the multi-path from the signal or why it is important to the invention. It is additionally argued that pages 5 and 6 provide equations that appear to teach how the multi-path is removed, but that it is difficult to understand how and why these equations are applied without a written description as to their relation to the present invention. (Id.) Appellant asserts (Br. 1) that the original application is understandable by anyone with ordinary skill in the art of digital signal processing, and that the Examiner, obviously, does not have ordinary skill in the art. Appellant provided a textbook entitled Digital Signal Processing which contains what one of ordinary skill in the art should know. (Id.) It is argued (Br. 2) that "[a]ny fair-minded engineer would admit that if you understand the contents of the book, you can understand the original application." 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 ANALYSIS Notwithstanding the fact that the Examiner argues a lack of enablement and/or written description, the Examiner has not rejected the claims under the first paragraph of 35 U.S.C. § 112. If the Examiner believes that the description is non-enabling or does not provide an adequate written description of the claimed invention, the Examiner should enter a rejection under the first paragraph of 35 U.S.C. 112. Should the Examiner enter a rejection based upon lack of enablement, the Examiner should address the Wands factors, as appropriate. See In Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). 3 Appeal 2007-1083 Application 09/847,093 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Should the Examiner enter a rejection based upon a lack of written description, the Examiner should provide a reasonable basis for establishing that the inventor was not in possession of the invention at the time of filing the application for patent. In the Answer, the Examiner bases the rejection of claims 8-13 under 35 U.S.C. § 112 (second paragraph). The Examiner takes the position (Final Rejection 6) that “[c]laims are generally read in light of the specification and in this case, the specification is needed to interpret the claims. The claims are unclear and no examination is possible because the specification is incomprehensible." In the Answer (p. 5), the Examiner gives the example that “language such as ‘a whitening filter with complex coefficients . . , and an array of complex delay-Doppler shift coefficients . . . producing a residual . . .’ require an understanding of the specification to be understandable.” We are not persuaded by the Examiner's assertion because the fact that the language requires an understanding of the Specification, does not explain why an artisan in the Digital Signal Processing field would not understand the terms in the claim, as an artisan could understand the claim language simply from their knowledge of the Digital Signal Processing field. In addition, we note that Appellant submitted a textbook entitled "Digital Signal Processing" (Br. 1) and argues (Br. 2) to the effect that any fair minded engineer would admit that if you understand the contents of the book, you can understand the original application. Appellant goes on in the next two paragraphs of the Brief to point out relevant portions of the book to the Examiner. The Examiner's response (Answer 6-7) is that the original 4 Appeal 2007-1083 Application 09/847,093 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 objection was that the application of filter weights and removal of multi-path using the filter of the invention are not understood. Although the Examiner makes these assertions, the Examiner does not go beyond the assertions into the specific disclosure to explain why the language would have been considered incomprehensible to an artisan in the Digital Signal Processing field. In addition, we add that the Examiner does not specifically address the textbook provided or comment as to why the Examiner feels that an artisan understanding the textbook would not have been able to ascertain the metes and bounds of the claimed invention. The Examiner additionally asserts (Answer 6) that While language such as "a communication system comprising a radio transmitter transmitting a signal which is interfered with by fixed reflectors and moving reflectors, said system comprising an antenna, a receiver and a multipath reduction subsystem comprising an analog to digital converter, a real to complex converter..." is understood, any language which must be read in light of the specification is incomprehensible because the specification is incomprehensible. We are not persuaded by this argument because if the language would have been understandable to an artisan, the meets and bounds of the claim would be clear. In sum, the Examiner has not provided any convincing line of reasoning that would establish the indefiniteness of the claims. As we stated, supra, if the examiner believes the claims are based on a non- enabling disclosure or lacks written description, the Examiner should enter a rejection under the first paragraph of 35 U.S.C. § 112. Moreover, the fact that the Examiner cannot understand the purpose of the equations found on pages 5 and 6 of the Specification (Final rejection 5 Appeal 2007-1083 Application 09/847,093 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 4) does not go to the merits of the indefiniteness rejection because the equations on pages 5 and 6 of the Specification do not appear in the claims. Nor is it clear that understanding these equations is required for an understanding of the invention. In addition, the fact that the Examiner cannot understand the invention does not address whether an artisan in the Digital Signal Processing field could understand how to make and use the invention without undue experimentation. From all of the above, we hold that the Examiner has failed to establish a prima facie case of indefiniteness of the claims. In addition, because objections are petitionable and not normally decided on appeal, we need not decide the objection. (See MPEP § 1201.) CONCLUSION OF LAW On the record before us, the Examiner has failed to show that the claims are indefinite within the meaning of 35 U.S.C. § 112 (second paragraph). The rejection of claims 8-13 under 35 U.S.C. § 112 (second paragraph) is reversed. 6 Appeal 2007-1083 Application 09/847,093 1 2 3 4 DECISION AND ORDER The Examiner's rejection of claims 8-13 under 35 U.S.C. § 112 (second paragraph) is Reversed. 5 6 7 8 9 10 11 12 13 14 REVERSED vsh HENRY M. BEISNER 11904 TILDENWOOD DRIVE ROCKVILLE MD 20852 7 Copy with citationCopy as parenthetical citation