Ex Parte Griesinger

Board of Patent Appeals and Interferences

Mar 18, 2008

10429276 (B.P.A.I. Mar. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID H. GRIESINGER
____________

Appeal 2007-2345
Application 10/429,276
Technology Center 2600
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Decided: March 18, 2008
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP
and ST. JOHN COURTENAY III, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Of claims 1 through 70 and 92 through 120 initially on appeal, pages
33 and 34 of the Answer indicate that the Examiner has allowed claims 10
through 19, and 34 through 36. Therefore, claims 1 through 9, 20 through
33, 37 through 70, and 92 through 120 remain on appeal. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
Appeal 2007-2345
Application 10/429,276

As best representative of the disclosed and claimed invention, claim 1
is reproduced below:
1. A method of establishing mix coefficients for downmixing a multi-
channel input signal having a plurality of input channels, to an output signal
having a plurality of output channels, comprising:

determining an input energy based on the multi-channel input signal;

determining a limited-bandwidth mix coefficient based on the input
energy; and

updating a broad-bandwidth mix coefficient based on the limited-
bandwidth mix coefficient.

The following references are relied on by the Examiner:
Gerzon US 5,594,800 Jan. 14, 1997
Griesinger US 5,870,480 Feb. 9, 1999

Claims 1, 2, 8, 20 through 22, 37 through 48, 51 through 54, 60
through 70, 92, 94 through 115, and 117 through 119 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Gerzon. This reference is relied
upon by the Examiner in combination with Griesinger to reject claims 3
through 7, 9, 23 through 33, 49, 50, 55 through 59, 93, 116, and 120 under
35 U.S.C. § 103.
Rather than repeat verbatim the positions of the Appellant and the
Examiner, reference is made to the Brief and Reply Brief for Appellant’s
positions, and to the Answer for the Examiner’s positions.

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Application 10/429,276

OPINION
For the reasons set forth by the Examiner in the Answer, we sustain
the rejection of the noted claims under 35 U.S.C. § 102 in the first stated
rejection as well as those claims in the second stated rejection.
According to the positions set forth by Appellant beginning at page 6
of the principal Brief on appeal, the essentially commonly recited feature
among independent claims 1, 53, 92, 101, 109, and 117 is argued to
distinguish over Gerzon in the first stated rejection under 35 U.S.C. § 102.
This feature relates to updating a broad-bandwidth mix coefficient based on
the limited-bandwidth mix coefficient. We agree with the Examiner’s
arguments responding to these positions of Appellant in the Brief as set forth
by the Examiner beginning at page 34 in the Answer. Because the Examiner
has shown mathematically that the formulas jointly discussed may properly
be interpreted by the artisan as not a fixed value, it is therefore proper to
interpret varying or adjusting coefficients that are the updating capability
argued as reasonably taught in Gerzon. Essentially, the Examiner’s
approach is to utilize traditional mathematical techniques to convert one
mathematical expression to an equivalent one.
The Examiner’s mathematical approach at equivalence is not
necessarily limited to the art at issue here despite Appellant’s criticisms of
the Examiner’s approach beginning at page 2 of the Reply Brief. Indeed, the
Examiner’s use of mathematical equivalence per se to show anticipation
appears to apply across all arts. Appellant has not asserted here anything
mathematically incorrect about the Examiner’s approach. According to
Appellant’s view of Gerzon, in light of the broadly stated “based on”
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language common to the independent claims noted earlier, Appellant asserts
that only a fixed relationship exists in Gerzon such that the updating
requirement of the claim is not met. There is no requirement expressly
stated in the claims that the limited-bandwidth mix must be a varying value
to begin with. Additionally, the concept of “updating” does not positively
recite that the value is updated dynamically or is “based upon” or is itself a
varying value.
Appellant’s views at page 3 of the Reply Brief that no one of ordinary
skill in the art would agree that Gerzon teaches or suggests the claimed
features as substituted by the Examiner’s mathematical approach and that it
would be unimaginable that anyone of ordinary skill in the art would attempt
to rewrite an equation as set forth in the Answer are merely attorney
argument or speculation. There is no independent evidence before us that
such is the case.
On the other hand, it is the claims in our view that do not define over
Gerzon’s teachings taken with the Examiner’s views of it. In fact, the
Examiner’s substitutionary approach tests the limits of Appellant’s claimed
and argued inventive features and finds them overly broad. In the absence
of any alleged and true mathematical error in the Examiner’s mathematical
substitutionary approach, it appears to us that the claimed invention is
subject to the same deficiencies as alleged at page 3 of the Reply Brief of the
Examiner’s view with respect to Gerzon.
To the extent Appellant argues claim 20 at the top of page 8 of the
principal Brief on appeal, the Examiner squarely addresses this argument at
pages 36 and 37 of the Answer which the Reply Brief fails to further
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address. As to this argued claim, therefore, the weight of the arguments and
evidence supports the Examiner’s decision as to the unpatentability of this
claim.
Lastly, Appellant presents certain views at page 8 of the principal
Brief on appeal as to the second stated rejection of certain dependent claims
under 35 U.S.C. § 103. Appellant does not argue that Gerzon and Griesinger
are not properly combinable within 35 U.S.C. § 103 and does not contend
before us that what the Examiner asserts Griesinger teaches is in error. In
fact, Appellant appears to agree as to what Griesinger teaches as well as
assumes for the sake of argument that motivation exists to combine the
teachings of the respective references. Appellant then essentially argues
again the positions with respect to the first stated rejection of the parent
independent claims under 35 U.S.C. § 102, which we have found
unpersuasive.
NEW REJECTION UNDER 35 U.S.C. § 101
Within the provisions of 37 C.F.R. § 41.50(b) we reject pending
method claims 1 through 52 and 92 through 100 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter. These claims are directed to
merely establishing a numeric mix coefficient to yield an updated numeric
value of no dimension. Essentially, the claims determine mathematical input
values with respect to generic signals in an attempt to produce or otherwise
“establish” a mix coefficient, another dimensionless mathematical value.
The claims do not require a transformation of a physical thing and there is
no machine required by these claims to practice or otherwise achieve the
functionality recited.
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In summary, we have sustained the Examiner’s separate rejections of
certain claims under 35 U.S.C. § 102 and 35 U.S.C. § 103. In addition, we
have instituted our own rejection within the provisions of 37 C.F.R.
§ 41.50(b) of claims 1 through 52 and 92 through 100 as being directed to
nonstatutory subject matter within 35 U.S.C. § 101.
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED -- 37 C.F.R § 41.50(b)

pgc

BRINKS HOFER GILSON & LIONE
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