Ex parte Girod et al.

Board of Patent Appeals and Interferences

Jan 5, 2000

08125590 (B.P.A.I. Jan. 5, 2000)

The application was filed on September 23, 1993.1
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for publication in a law journal and (2) is not binding precedent of the Board.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
____________
Ex parte BERND GIROD
and STAFFAN ERICSSON
____________
Appeal No. 1997-2474
Application No. 08/125,5901
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-26, 28, 29, and 31. The
appellants filed an amendment after final rejection on
Appeal No. 1997-2474 Page 2
Application No. 08/125,590
September 11, 1995, which was denied entry. We affirm-in-
part.
BACKGROUND
The invention at issue implements a Discrete Cosine
Transform (DCT) and an Inverse Discrete Cosine Transform
(IDCT) in software. DCTs and IDCTs are used in the field of
image processing to represent signals in a compact format.
Because of the demands that arithmetic operations,
particularly multiplication operations, place on a computer,
conventional software implementations of DCTs and IDCTs have
been slower than hardware implementations.
The invention exploits symmetries of the DCT and IDCT to
improve the speed at which software can process signals using
the Transforms. Based on the symmetries, the DCT and IDCT are
performed using a combination of look-up tables and butterfly
operations, thus employing only a few additions and
subtractions and no multiplications.
Appeal No. 1997-2474 Page 3
Application No. 08/125,590
Claim 24, which is representative for our purposes,
follows:
24. A digital signal processing apparatus for
performing a forward discrete cosine transform,
comprising:
means for receiving a digital input signal
including a sequence of input signal amplitude
values; a memory containing look up tables
having a number of entries equal to a number of
possible input signal amplitude values, and
corresponding to values of Nth order forward
Discrete Cosine Transform basis functions stored at
memory addresses corresponding to input signal
amplitude values;
means for outputting a digital output signal
including a sequence of up to N output coefficient
values;
a central processing unit operatively connected
to the means for receiving, to the memory and to the
means for outputting; and
a control store of central processing unit
instructions connected so as to provide the
instructions to the central processing unit, the
control store containing instructions to address the
memory as a function of the input signal amplitude
values received by the means for receiving,
instructions to sum values obtained by addressing
the memory so as to form output coefficient values,
and instructions to provide the output coefficient
values to the means for outputting.
The references relied on in rejecting the claims follow:
Appeal No. 1997-2474 Page 4
Application No. 08/125,590
Duhamel 4,831,574 May 16, 1989
McMillan, Jr. et al. 5,224,062 Jun. 29, 1993
(McMillan)
Uramoto et al. 5,249,146 Sep. 28, 1993
(Uramoto) (filed Mar. 20,
1992).
Claims 1, 24, 26, and 28 stand rejected under 35 U.S.C.
§ 103 as obvious over McMillan. Claims 2, 3, and 25 stand
rejected under § 103 as obvious over McMillan in view of
Uramoto. Claims 4-23, 29, and 31 stand rejected under § 103
as obvious over McMillan in view of Uramoto further in view of
Duhamel. Rather than repeat the arguments of the
appellants or examiner in toto, we refer the reader to the
brief and answer for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections and evidence
advanced by the examiner. Furthermore, we duly considered the
arguments of the appellants and examiner. After considering
the totality of the record, we are not persuaded that the
examiner erred in rejecting claims 1-8, 24, 25, 28, 29, and
Appeal No. 1997-2474 Page 5
Application No. 08/125,590
31. We are persuaded, however, that he erred in rejecting
claims 9-23 and 26. Accordingly, we affirm-in-part. Our
opinion addresses the grouping and obviousness of the claims.
Grouping of the Claims
As amended at 60 Fed. Reg. 14518 (Mar. 17, 1995), 37
C.F.R. § 1.192(c)(7) was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and ...
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.
In addition, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
Appeal No. 1997-2474 Page 6
Application No. 08/125,590
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983).
Here, the appellants assert that claims 1-13, 24, 25, 28
and 31 should stand or fall together. They also assert that
claims 14-23 and 26 should stand or fall together. The
appellants, moreover, fail to explain whether claims 1-8, 24,
25, 28, 29, and 31 are believed to be separately patentable.
They also fail to explain whether claims 14-23 and 26 are
believed to be separately patentable. Therefore, the claims
stand or fall together in the following groups:
• claims 1-8, 24, 25, 28, 29, and 31
• claims 9-12
• claim 13
• claims 14-23 and 26.

We select claims 24, 9, 13, and 26 to represent the respective
groups. Next, we address the obviousness of the claims.
Obviousness of the Claims
We begin by finding that the references represent the
level of ordinary skill in the art. See In re GPAC Inc., 57
F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995)
Appeal No. 1997-2474 Page 7
Application No. 08/125,590
(finding that the Board of Patent Appeals and Interference did
not err in concluding that the level of ordinary skill in the
art was best determined by the references of record); In re
Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978)
("[T]he PTO usually must evaluate ... the level of ordinary
skill solely on the cold words of the literature."). Of
course, every patent application and reference relies on the
knowledge of persons skilled in the art to complement its
disclosure. In re Bode, 550 F.2d 656, 660, 193 USPQ 12, 16
(CCPA 1977). Such persons must be presumed to know something
about the art apart from what the references teach.
In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA
1962). We address the obviousness of the claims in the
following groups:
• claims 1-8, 24, 25, 28, 29, and 31
• claims 9-12
• claim 13
• claims 14-23 and 26.
Claims 1-8, 24, 25, 28, 29, and 31
The appellants make two arguments regarding the
obviousness of claims 1-13, 24, 25, 28, and 31. We address
these seriatim.
Appeal No. 1997-2474 Page 8
Application No. 08/125,590
First, they argue that McMillan is non-analogous art. (Appeal
Br. at 6-9.) The examiner replies, “appellant's argument ...
appears to be contradicted to [sic] what the appellant claims
in the present invention, in which both DCT and IDCT have
almost the same and/or similar limitations.” (Examiner’s
Answer at 8.) We agree with the examiner.
Art is analogous if a reference either is within the
field of an inventor's endeavor or is reasonably pertinent to
the particular problem with which the inventor was involved.
In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443, 1445 (Fed.
Cir. 1992); In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058,
1060 (Fed. Cir. 1992).
Here, the appellants state that their invention “relates
generally to the field of digital image processing systems
....” (Spec. at 2.) McMillan, in turn, “relates to the field
of digital image processing systems ....” Col. 1, ll. 10-11.
The appellants admit “that both McMillan, Jr. et al. and the
present invention are directed to image processing systems,”
(Appeal Br. at 5), and “both McMillan, Jr. et al. and the
Appeal No. 1997-2474 Page 9
Application No. 08/125,590
present invention relate to image processing ....” (Id. at
9.) Because McMillan is within the field of the inventors’
endeavor, viz., image processing, the appellants’ argument
that the reference is non-analogous art is not persuasive.
Second, the appellants argue, “Since there is no
discussion of implementations of the DCT whatsoever in
McMillan, Jr. et al., and no mention of symmetries found
therein, there is no way to make from McMillan, Jr. et al. the
present invention ....” (Appeal Br. at 9.)(emphasis added).
They add, “The desire of McMillan, Jr. et al. to so limit the
use of memory constitutes a teaching away from the elements of
the instant claims reciting ‘precomputing.’” (Id. at 10.)
The appellants err by attempting to read limitations from
the specification into the claims. “In the patentability
context, claims are to be given their broadest reasonable
interpretations. Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993)
Appeal No. 1997-2474 Page 10
Application No. 08/125,590
(internal citations omitted). Representative claim 24
specifies neither symmetries nor precomputing. Accordingly,
the appellants' reliance on these limitations for
patentability is not persuasive.
The appellants have neglected to address the examiner’s
rejection of claim 29. Accordingly, they have not shown error
in the rejection.
Therefore, we affirm the examiner’s rejections of claims
1-13, 24, 25, 28, 29, and 31 under 35 U.S.C. § 103. Next, we
address claims 9-12.
Claims 9-12
Regarding the obviousness of claims 9-12, the appellants
argue, “no reference performs combined operations within a
single register ....” (Appeal Br. at 12.) The examiner
offers no reply to the argument. We agree with the
appellants.
Appeal No. 1997-2474 Page 11
Application No. 08/125,590
Each of claims 9-12 specifies in pertinent part the
following limitations:
loading a first plurality of values
corresponding to a plurality of output coefficients
into distinct locations within a single register
...; and
performing in a single operation an accumulation
of a second plurality of values with the first
plurality of values within the single register;
whereby
a plurality of output values are accumulated in
the single register, simultaneously.
Giving claims 9-12 their broadest reasonable interpretation,
we agree with the appellants that each of the claims recites
performing combined operations within a single register.
The examiner fails to show a teaching or suggestion of
the limitations in the prior art. He merely alleges,
“adjusting values in each table and using a [sic] accumulator
with greater length would have been obvious to a person of
ordinary skill in the art.” (Examiner’s Answer at 6.) The
allegation does not establish a prima facie case of
obviousness. Therefore, we reverse the examiner’s rejection
Appeal No. 1997-2474 Page 12
Application No. 08/125,590
of claims 9-12 under 35 U.S.C. § 103. Next, we address claim
13.
Claim 13
Regarding the obviousness of claim 13, the appellants
argue, “the use of a bias value as recited in the claim is not
disclosed, taught or suggested by any reference of record.”
(Appeal Br. at 12.) The examiner offers no reply to the
argument. We agree with the appellants.
Claim 13 specifies in pertinent part the following
limitation: “adding a bias value to the amplitude values when
the input sample is signed ....” The examiner fails to
show a teaching or suggestion of the limitation in the prior
art. He merely notes, “Uramoto et al's Fig. 9 shows separate
tables are used for the least and most significant portions,
and it is inherent that the table corresponding with the most
significant portion is addressing only when the most
Appeal No. 1997-2474 Page 13
Application No. 08/125,590
significant portion having a value other than zero.”
(Examiner’s Answer at 6.)
The allegation does not establish a prima facie case of
obviousness. Therefore, we reverse the examiner’s rejection
of claim 13 under 35 U.S.C. § 103. Next, we address claims
14-23 and 26.
Claims 14-23 and 26
Regarding the obviousness of claims 14-23 and 26, the
appellants argue, “there is no ... suggestion found anywhere
in McMillan, Jr. et al. or any other reference presently of
record for dividing IDCT input coefficients into a plurality
of symmetry classes and addressing look up tables as recited
in the claims directed to that aspect of the invention related
to IDCTs.” (Appeal Br. at 9.) The examiner replies, “The
symmetry characteristic of the present invention are clearly
disclosed in cols. 6, 11 & 12 of Uramoto ....” (Examiner’s
Answer at 8.) We agree with the appellants.
Appeal No. 1997-2474 Page 14
Application No. 08/125,590
Claim 26 specifies in pertinent part the following
limitations:
A digital signal processing apparatus for
performing an inverse discrete cosine transform,
comprising:
...
means for outputting a digital output signal
including a sequence of output values;
...
a control store of central processing unit
instructions ... including instructions to sum
values to obtain parts of the output values
corresponding to a plurality of symmetry classes
....
The examiner fails to show a teaching or suggestion of
the limitations in the prior art. To the contrary, he admits
that the sole reference relied on to reject the claim, viz.,
McMillan, “does not disclose the symmetry characteristic ....”
(Examiner’s Answer at 4.) The admission negates a prima facie
case of obviousness. Therefore, we reverse the examiner’s
rejection of claim 26 under 35 U.S.C. § 103.
Each of claims 14-23 specifies in pertinent part the
following limitations concerning symmetry:
Appeal No. 1997-2474 Page 15
Application No. 08/125,590
A method of producing in a computer including a
processing unit ... an output signal including a
plurality of digitized signal samples by performing
an Inverse Discrete Cosine Transform of an input
signal including groups of N input coefficients,
each input coefficient classifiable into one of a
plurality of symmetry classes, the method comprising
the steps of:
precomputing for each of N look up tables, a
plurality of table values equal in number to a
number of possible input coefficient amplitude
values times N divided by a number of symmetry
classes ...;
...
summing results segregated by the symmetry
classes into which the input coefficients are
classified, and
performing at least one vector butterfly
operation corresponding to the plurality of symmetry
classes ....
The examiner admits, “McMillan, Jr. et al. ... does not
disclose the symmetry characteristic that the input samples
can be separately transformed for odd and even portions, then
accumulated to produce the output coefficient as claimed.”
(Examiner’s Answer at 4-5.) Accordingly, he relies on Uramoto
to teach “that by the symmetry of elements in the transform
matrix, the odd and even input samples can be separately
transformed and combined to produce the output coefficient,
Appeal No. 1997-2474 Page 16
Application No. 08/125,590
and by doing that the size of the look up table is clearly
reduced.” (Id.)
The examiner errs in determining the content of the prior
art. Uramoto teaches a coefficient matrix representation (5)
that “is horizontally symmetrical with respect to columns.”
Col. 6, ll. 39-40. Based on this, the representation (5) can
be transformed into another representation (6) comprising two,
smaller coefficient matrices. Id. at ll. 41-43. “[T]he
number of times of multiplication for acquiring output data yj
is reduced to a half in relation (6) as compared to relation
(5).” Id. at ll. 60-62. The examiner does not show how the
reference’s general teaching of transforming a matrix based on
symmetry would have suggested the detailed claim limitations
concerning symmetry. Duhamel does not cure this deficiency.
For the foregoing reasons, the examiner has failed to
establish a prima facie case of obviousness. Therefore, we
reverse the examiner’s rejection of claims 14-23 under 35
U.S.C. § 103.
Appeal No. 1997-2474 Page 17
Application No. 08/125,590
We end by noting that the aforementioned affirmances are
based only on the arguments made in the brief. Arguments not
raised therein are not before us, are not at issue, and are
thus considered waived.
CONCLUSION
To summarize, the examiner’s rejection of claims 1-8, 24,
25, 28, 29, and 31 under 35 U.S.C. § 103 is affirmed. His
rejection of claims 9-23 and 26 under § 103 is reversed.
Accordingly, we affirm-in-part.
Appeal No. 1997-2474 Page 18
Application No. 08/125,590
No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1997-2474 Page 19
Application No. 08/125,590
LLB/kis
Gary S. Engelson
WOLF, GREENFIELD & SACKS
Federal Reserve Plaza
600 Atlantic Avenue
Boston, MA 02210-2211