Ex parte DENT

Board of Patent Appeals and Interferences

Sep 22, 1999

07790618 (B.P.A.I. Sep. 22, 1999)

Application for patent filed November 8, 1991.1
1
Paper No. 18
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PETER R. DENT
______________
Appeal No. 1996-0452
Application 07/790,6181
_______________
ON BRIEF
_______________
Before THOMAS, FLEMING and HECKER, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 1996-0452
Application 07/790,618
2
This is a decision on the appeal from the examiner's
final rejection of claims 22 through 26 and 28, which
constitute all the claims remaining in the application.
Representative claim 22 is reproduced below:
22. Decoding apparatus for decoding received encoded
data comprising:
an input for receiving said encoded data;
a first comparator connected to said input for receiving
said encoded data therefrom and comparing said received data
with a predetermined value, said predetermined value being
defined in relation to an aberrant or probably aberrant datum
value;
an adaptive differential pulse code modulation decoder
connected to said input for receiving said encoded data
therefrom and providing a pulse code modulation signal as an
output;
second and third comparators having inputs connected to
the output of said adaptive differential pulse code modulation
decoder;
said second comparator comparing the pulse code
modulation signal provided from the output of said adaptive
differential pulse code modulation decoder to the low value of
a predetermined pulse code modulation value range;
said third comparator comparing the pulse code modulation
signal provided from the output of said adaptive differential
Appeal No. 1996-0452
Application 07/790,618
3
pulse code modulation decoder to the high value of said
predetermined pulse code modulation value range;
a combiner connected to the outputs of said first,
second, and third comparators for producing a single pulse
train output having a pulse rate indicative of the frequency
of aberrant data reception; and
filtering means connected to the output of said combiner
for producing an integrated filtered pulse train output
signal.
The following references are relied on by the examiner:
Fortuna et al. (Fortuna) 3,810,020 May 7,
1974
Jackson 4,968,902 Nov. 6, 1990
Claims 22 through 26 and 28 stand rejected under 35
U.S.C.
§ 103. As evidence of obviousness, the examiner relies upon
Fortuna in view of Jackson.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for
respective details thereof.
OPINION
We reverse since the examiner has not set forth a prima
facie case of obviousness within 35 U.S.C. § 103.
Appeal No. 1996-0452
Application 07/790,618
4
As set forth by appellant in the brief, the claimed
adaptive differential pulse code modulation decoder is not
taught or suggested in either of the two references relied
upon by the examiner. This element is recited in some manner
in each independent claim 22, 24 and 28 on appeal. The
element is critical to each independent claim since each of
these claims as a whole recites specific inputs to and outputs
from this decoder. Among other elements recited, the
examiner's view at page 5 of the answer is that this ADPCM
decoder was a well known standard component in the art, and
further presumptively begs the question by taking the
additional view that the artisan “could use” this
element in a variety of different configurations to accomplish
the stated objective of correct transmission of information.
The requirement within 35 U.S.C. § 103 for the examiner is to
provide evidence that it would have been obvious to the
artisan not that it could have been obvious to the artisan.
We also reverse the stated rejection because the
examiner's extensive arguments in the answer are to no avail
Appeal No. 1996-0452
Application 07/790,618
5
to persuade us of the proper combinability of Fortuna and
Jackson within
35 U.S.C. § 103. Fortuna's focus is to disclose an encoder to
encode PAM information into PCM information. It appears the
examiner views this basic conversion as a decoding operation
for purposes of the claimed invention. Even though Fortuna
does teach a comparator for comparing an input signal to a low
value range and a separate comparator for comparing the same
signal to a high value range, there is no rational basis
within 35 U.S.C.
§ 103 from the teachings of the references or even the
reasoning of the examiner to persuade us that the artisan
obviously would have provided any type of comparator-type
operation from Jackson into Fortuna's system. The examiner's
basic view is to add an additional or third comparator
function from Jackson's teachings to compare an input with
respective low and high threshold levels
to determine periods of instability of the signal. The
examiner does not persuade us, nor are we able to determine on
our own, why the artisan, let alone how the artisan, would
Appeal No. 1996-0452
Application 07/790,618
6
have combined the teachings of Jackson into Fortuna's system.
The examiner's view as to Jackson appears to be based upon
prohibited hindsight derived from the claimed invention.
Since we reverse the rejection of independent claims 22,
24 and 28, we also reverse the rejection of the respective
dependent claims 23, 25 and 26. Therefore, the decision of
the examiner rejecting claims 22 through 26 and 28 under 35
U.S.C. § 103 is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Stuart N. Hecker )
Administrative Patent Judge )
William E. Hiller
Appeal No. 1996-0452
Application 07/790,618
7
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