Ex parte Hajdu et al.

Board of Patent Appeals and Interferences

Dec 10, 1998

08205812 (B.P.A.I. Dec. 10, 1998)

Application for patent filed March 3, 1994. According1
to appellants, this application is a continuation of
Application No. 07/920,950, filed July 28, 1992, now
abandoned.
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journal and (2) is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTOPHER A. HAJDU and DARRYL R. POLK
____________
Appeal No. 96-1246
Application No. 08/205,8121
____________
ON BRIEF
____________
Before URYNOWICZ, HAIRSTON, and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 96-1246
Applicaton No. 08/205,812
2
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 2, 12 through 15 and 17 through 20. Claims 3
through 11 and 16 have been canceled.
The invention relates to digitally filtering stereo data
to increase the quality of the audio information in an
efficient manner.
Independent claim 1 is reproduced as follows:
1. An apparatus for recursively filtering in
parallel digital audio information, comprising:
(a) means for receiving digital audio
information, having a first set of digital
signals for a first channel and a second set of
digital signals for a second channel;
(b) means for receiving filter coefficients;
(c) means for recursively filtering the audio
information connected to said means for
receiving digital audio information and said
means for receiving filter coefficients, said
means for recursively filtering including means
for mathematically applying said coefficients to
said first and second sets of digital signals in
parallel with said means for receiving filter
coefficients; and
(d) means for storing the filtered audio
information.
The references relied on by the Examiner are as follows:
Sakamoto et al. (Sakamoto) 4,507,728 Mar. 26,
1985
Appeal No. 96-1246
Applicaton No. 08/205,812
3
Fukuda 5,216,718 Jun. 1,
1993
The specification is objected to under 35 U.S.C. § 112,
first paragraph, for failing to provide an adequate written
description of the invention. Claims 1, 2, and 12 through 15
and
17 through 20 stand rejected for the reasons set forth in the
objection to the specification. Claim 19 stands rejected
under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter
which applicants regard as the invention. Claims 1, 2, and 12
through 15 stand rejected under 35 U.S.C. § 102 as being
anticipated by Fukuda. Claims 17 through 20 stand rejected
under 35 U.S.C.
§ 102 as being anticipated by Sakamoto.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claims 1, 2, 12 through 15
Appeal No. 96-1246
Applicaton No. 08/205,812
4
and 17 through 20 are properly rejected under 35 U.S.C. § 112
or are properly rejected under 35 U.S.C. § 102 as being
anticipated by the applied references.
The Examiner objects to the specification on the
basis of written description and then argues that the
specification is not enabling. Our reviewing court has made
it clear that written description and enablement are separate
requirements under the first paragraph of 35 U.S.C. § 112.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d
1111, 1114 (Fed. Cir. 1991). Thus, we will treat these two
issues separately.
"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented
Appeal No. 96-1246
Applicaton No. 08/205,812
5
processes including those limitations." Wertheim, 541
F.2d at 262, 191 USPQ at 96 citing In re Smythe, 480 F.2d
1376, 1382, 178 USPQ 279, 284 (CCPA 1973). Furthermore, the
Federal Circuit points out that "[i]t is not necessary that
the claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in
the art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983).
The Examiner has not shown that the inventor did not have
possession, as of the filing date of the application relied
on, of the specific subject matter later claimed by him.
Thus, we will not sustain the rejection on the basis of
written description.
In order to comply with the enablement provision of
35 U.S.C. § 112, first paragraph, the disclosure must
adequately describe the claimed invention so that the artisan
could practice it without undue experimentation. In re
Appeal No. 96-1246
Applicaton No. 08/205,812
6
Scarbrough, 500 F.2d 560, 565, 182 USPQ 298, 302 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1405-06, 179 USPQ 286, 294
(CCPA 1973); and In re Gay, 309 F.2d 769, 772, 135 USPQ 311,
315 (CCPA 1962). If the Examiner had a reasonable basis for
questioning the sufficiency of the disclosure, the burden
shifted to the Appellant to come forward with evidence to
rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied,
416 U.S. 935 (1974); In re Brown, 477 F.2d 946, 950, 177 USPQ
691, 694 (CCPA 1973); and In re Ghiron, 442 F.2d 985, 991, 169
USPQ 723, 728 (CCPA 1971). However, the burden was initially
upon the Examiner to establish a reasonable basis for
questioning the adequacy of the disclosure. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218
(CCPA 1976); and In re Armbruster, 512 F.2d 676, 677, 185 USPQ
152, 153 (CCPA 1975).
The Examiner argues that the specification fails to
disclose any structure of a device in a meaningful degree of
specificity to enable a person of ordinary skill in the art to
Appeal No. 96-1246
Applicaton No. 08/205,812
7
implement the equations shown in Figures 3 through 10 in
parallel. On pages 9 and 10 of the brief, Appellants point to
pages 8 through 11 of the specification which describe in
detail a device for implementing execution of instruction in
parallel. Appellants further point to page 6 of the
specification which discloses that a commercially available
processor, Texas Instruments TMS 320, is capable of
implementing the invention.
Upon a careful review of the specification, we find that
the Examiner did not have a reasonable basis for questioning
the sufficiency of the disclosure, and thereby the burden did
not shift to the Appellants to come forward with evidence to
rebut this challenge. Therefore, we will not sustain the
Examiner's rejection under 35 U.S.C. § 112, first paragraph.
Claim 19 stands rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter which applicants regard as
the invention. Analysis of 35 U.S.C. § 112, second paragraph,
should begin with the determination of whether the claims set
out and circumscribe a particular area with a reasonable
degree of precision and particularity; it is here where
Appeal No. 96-1246
Applicaton No. 08/205,812
8
definiteness of the language must be analyzed, not in a
vacuum, but always in light of teachings of the disclosure as
it would be interpreted by one possessing ordinary skill in
the art. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187,
193 (CCPA 1977), citing In re Moore, 439 F. 2d 1232, 1235, 169
USPQ 236, 238 (1971). Furthermore, our reviewing court points
out that a claim which is of such breadth that it reads on
subject matter disclosed in the prior art is rejected under 35
U.S.C. § 102 rather than under 35 U.S.C. § 112, second
paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195,
197 (Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 645-46 (CCPA 1970).
On page 4 of the answer, the Examiner states that claim
19 is indefinite because it is not clear what is meant by the
claimed limitation, "the multiplication to apply a five pole
digital filter to the one or more digital signals."
Appellants argue on page 12 of the brief that the language
particularly points out and distinctly claims the Appellants'
invention when read in light of Appellants' specification.
Appeal No. 96-1246
Application No. 08/205,812
9
On page 6 of the specification, we note Appellants
disclose that the "mathematical equations which constitute a
five pole recursive digital filter for right and left channel
stereo processing are shown in Figure 3." Claim 19 recites
"wherein the filter coefficients are selected to cause the
multiplication to apply a five pole digital filter to the one
or more digital signals." Thus, the claim is requiring that a
five pole recursive digital filter implemented by calculating
the equations shown in Figure 3 be applied to the digital
signals. In reviewing the specification as well as
Appellants' claimed language, we find that claim 19 sets out
and circumscribes the invention with a reasonable degree of
precision and particularity
in light of teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art.
Therefore, we will not sustain the Examiner's rejection under
35 U.S.C. § 112, second paragraph.
Claims 1, 2, and 12 through 15 stand rejected under 35
U.S.C. § 102 as being anticipated by Fukuda. Claims 17
through 20 stand rejected under 35 U.S.C. § 102 as being
anticipated by Sakamoto.
Appeal No. 96-1246
Application No. 08/205,812
10
It is axiomatic that anticipation of a claim under § 102
can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326,
231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ
481, 485 (Fed. Cir. 1984).
In regard to the rejection of claims 1, 2, and 12 through
15 as being anticipated by Fukuda, Appellants argue on pages
15 and 16 of the brief that Fukuda fails to teach the
Appellants’ claimed limitations as required under 35 U.S.C. §
102. In particular, Appellants argue that Fukuda does not
teach or suggest means for parallel processing between filter
application and coefficient and data signal loading as recited
in Appellants' claims 1 and 2. Appellants further argue that
Fukuda does not teach or suggest the means for overlapping
instruction execution and digital signal and coefficient
loading as recited in Appellants' claims 12 through 15.
Upon a careful review of Fukuda, we fail to find that
Fukuda teaches a "means for recursively filtering the audio
Appeal No. 96-1246
Application No. 08/205,812
11
information . . . including means for mathematically applying
said coefficients to said first and second sets of digital
signals in parallel with said means for receiving filter
coefficients" as recited in Appellants' claim 1. Furthermore,
we fail to find that Fukuda teaches a "one multiplication and
one logic processing means . . . , said processing means
overlapping instruction processing for said two or more
channels of digital signals" as recited in Appellants' claim
12.
In regard to the rejection of claims 17 through 20 as
being anticipated by Sakamoto, Appellants argue on pages 13
through 15 of the brief that Sakamoto fails to teach all of
the claimed limitations. In particular, Appellants argue that
Sakamoto does not teach or suggest executing a multiplication
while loading another filter coefficient in the same processor
cycle.
Upon a careful review of Sakamoto, we fail to find that
Sakamoto teaches the method step of "multiplying two values
selected from said filter coefficients, said digital signals
or an intermediate result in said processor means which in the
same processor cycle loading another filter coefficient or
Appeal No. 96-1246
Application No. 08/205,812
12
digital signal into said processor means" as recited in
Appellants'
claim 17. Therefore, we will not sustain the Examiner's
rejections under 35 U.S.C. § 102.
In view of the foregoing, the decision of the Examiner
rejecting claims 1, 2, and 12 through 15 and 17 through 20 is
reversed.
REVERSED
STANLEY M. URYNOWICZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-1246
Application No. 08/205,812
13
Mark S. Walker
IBM Corporation
Intellectual Prop. Law Dept., 932
11400 Burnet Road, ZIP 4054
Austin, TX 78758
Shereece
Appeal No. 96-1246
Application No. 08/205,812
APJ FLEMING
APJ HAIRSTON
APJ URYNOWICZ
REVERSED
Prepared: August 13, 1999