Ex parte BRUSEWITZ

Board of Patent Appeals and Interferences

Nov 20, 1998

08249081 (B.P.A.I. Nov. 20, 1998)

Application for patent filed May 25, 19941
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARALD BRUSEWITZ

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Appeal No. 95-3811
Application 08/249,0811
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HEARD: November 3, 1998
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Before URYNOWICZ, THOMAS and FLEMING , Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealED to the Board from the examiner
Appeal No. 95-3811
Application No. 08/249,081
2
final rejections of claims 3-6 and 13, which constitute all
the claims remaining in the application.
Representative claim 13 is reproduced below:
13. A method for image coding a video signal having a known
frame rate comprising the steps of:
coding and quantising the video signal to effect
digitalisation and compression of the signal to form a bit
stream having a bit rate determined by the transmission line
on which the bit stream is to be transmitted;
storing the bit stream in a buffer store such that
(GOB - 1 + MB/33)/12 x (k1 + g) R/fo + bR/for
where GOB is the number of the block group,
MB is the number of the macroblock, k1 is the number
of skipped frames, which are determined by the coder,
fo is the frame rate of video signal,
R is the bit stream rate,
g takes into account when the coding is terminated,
and bR/fo is the minimum allowed content in the
buffer;
monitoring the content of the buffer store;
sensing the rate of the bit stream at the output of the buffer
store, calculating the ideal buffer store content, and
adjusting the step height in the quantiser as a function of
the difference between the monitored and ideal buffer store
contents.
There are no references relied by the examiner.
Appeal No. 95-3811
Application No. 08/249,081
3
Claims 3-6 and 13 stand rejected under 35 U.S.C. 112, first
paragraph, as being based upon a nonenabling disclosure.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for
the respective details thereof.
Opinion
We reverse this rejection.
Generally speaking, “[t]he test of enablement is whether
one reasonably skilled in the art could make or [sic and] use
the invention from the disclosures in the patent coupled with
information known in the art without undue experimentation.”
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988), citing Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,
94 (Fed. Cir. 1986). The specification need not disclose what
is well known in the art. In re Buchner, 99 F.2d 660, 18 USPQ
2d 1331, 1332
[Fed. Cir. 1991].
It appears that the examiner had reasonably basis for
questioning the adequacy of the disclosure upon our review of
Appeal No. 95-3811
Application No. 08/249,081
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the prosecution history of this application. However, the
examiner has made no effort to provide a nexis of the
enumerated deficiencies noted in the answer to the subject
matter of the present claims on appeal. As disclosed, the
context of the implementation of the disclosed and closed
invention is the formats and standards provided by the
International Consultative committe for Telegraphs and
Telephones ‘CCITT’ H. 261 video standard. The examiner does
not appear to appreciate the impact that such standards have
upon the level of enablement necessary to meet the first
paragraph of U.S.C. 112.
It is not neccessarily fatal that appellant may albeit,
as has been done during the prosecution of this application,
that certain errors occured in the original filing of the
translation or even the original priority document itself.
What is significant is that the standard of judging such a
disclosure remains that under expermintation must be necessary
for the artist to make and use the claimed invention for such
a rejection to be sustained. While some degree of
experimentation is permited in order for a specification to be
considered enabling under 35 U.S.C. 112, first paragraph, that
Appeal No. 95-3811
Application No. 08/249,081
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level of experimentation must not be “undue.” In re Wright, 99
Fd 2 1557, 1561, 27 USPQ 2d 1510, 1513 (Fed. Cir. 1993): In re
Back, 949 Fd2 488, 495, 20 USPQ 2D 1438, 1444 (Fed. circuit
1991). Obviously, this must be determined on a case-by-case
basis. Appellant has provided an inital and supplemental
declaration from someone other than himself recognizing the
noted errors in the specification as filed and deficiences
therein and offering opinion and factual evidence and commen
sense in the art from an artisan’s in perspective how the
artisan would have reacted or does react to these noted
deficiences Over all, to the extent we find a direct
relationship of the noted deficiences in the specification by
the examiner to the presently claimed subject matter, the
weight of the evidence clearly indicates that the overall
specification and drawings would not have led the artisan to
conduct undue experimentation but only a reasonable degree of
routine experimentation in order to make and use the presently
claimed subject matter. Therefore, the decision of the
examiner rejecting claims 3-6 and 13 under the first paragraph
35 U.S.C. 112 is reversed.
Appeal No. 95-3811
Application No. 08/249,081
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REVERSED
)
Stanley M. Urynowicz )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
James Thomas )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Michael R. Fleming )
Administrative Patent Judge )
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