Ex Parte Beisner

Board of Patent Appeals and Interferences

Aug 28, 2007

09847093 (B.P.A.I. Aug. 28, 2007)

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for publication and is not binding precedent of the Board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

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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
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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."
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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).
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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
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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
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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.
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DECISION AND ORDER
The Examiner's rejection of claims 8-13 under 35 U.S.C. § 112
(second paragraph) is Reversed.

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REVERSED

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HENRY M. BEISNER
11904 TILDENWOOD DRIVE
ROCKVILLE MD 20852
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