Ex parte Hurst et al.

Board of Patent Appeals and Interferences

Dec 15, 2000

08571044 (B.P.A.I. Dec. 15, 2000)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT N. HURST, JR. and JUNGWOO LEE
________________
Appeal No. 1998-2556
Application 08/571,044
________________
ON BRIEF
________________
Before JERRY SMITH, FLEMING and HECKER, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-8 and 10-22, which
constitute all the claims remaining in the application.
The disclosed invention pertains to an apparatus for
compressing video signals containing pixel image data.
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Representative claim 1 is reproduced as follows:
1. Apparatus for compressing an image representative
video signal containing pixel data comprising:
means for estimating noise in said video signal and
providing an output;
means for generating residues having lower and higher
amplitude components, said residues representing differences
of pixel values between predicted pixel values and real pixel
values of a current frame of said video signal being
compressed;
nonlinear processing means, coupled to said generating
means, for attenuating lower amplitude residues greater than
higher amplitude residues and providing processed residues at
an output, wherein a transfer function of said nonlinear
processing means is responsive to said noise estimate; and
transform means for transforming said processed residues
and providing a compressed video data output.
The examiner relies on the following references:
Zdepski et al. (Zdepski) 5,005,082 Apr. 02, 1991
Ishii et al. (Ishii) 5,051,826 Sep. 24, 1991
Stott et al. (Stott) 2,196,205 Apr. 20, 1988
(UK Application)
Grotz et al. (Grotz) 0,346,636 Dec. 20, 1989
(European Application)
The following rejections are on appeal before us:
1. Claims 10 and 11 stand rejected under 35 U.S.C. §
112, second paragraph, for failing to particularly point out
and distinctly claim the invention.
Appeal No. 1998-2556
Application 08/571,044
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2. Claims 1, 2, 4, 5, 8, 10, 12, 14 and 15 stand
rejected under 35 U.S.C. § 102(a) as being anticipated by the
disclosure of Grotz.
3. Claims 16, 17, 21 and 22 stand rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of Grotz
taken alone.
4. Claims 3, 11, 13, 18 and 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of Grotz
in view of Zdepski.
5. Claims 6 and 20 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Grotz in view
of Stott.
6. Claim 7 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Grotz in view of
Ishii.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
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appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the prior art rejections. We have,
likewise, reviewed and taken into consideration, in reaching
our decision, the appellants’ arguments set forth in the brief
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that claims 10 and 11 are not in compliance with 35
U.S.C.
§ 112. We are also of the view that the prior art relied upon
by the examiner does not support any of the prior art
rejections. Accordingly, we affirm-in-part.
We consider first the rejection of claims 10 and 11
under the second paragraph of 35 U.S.C. § 112. The rejection
states that there is no clear antecedent basis for the phrase
“said coring function” in these claims. We note that
appellants have not responded to this rejection. Since we
agree with the examiner that there is no antecedent basis for
the phrase “said coring function,” and since appellants have
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offered no argument in rebuttal of the rejection, we sustain
the examiner’s rejection of claims 10 and 11 under the second
paragraph of 35 U.S.C.
§ 112.
We next consider the rejection of claims 1, 2, 4, 5,
8, 10, 12, 14 and 15 as being anticipated by the disclosure of
Grotz. These claims stand or fall together as a single group.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to representative, independent claim 1,
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the examiner indicates how he perceives the claimed invention
to be fully met by the disclosure of Grotz [answer, pages 4-
5]. Appellants respond that Grotz has no “means for
estimating noise” as recited in claim 1. Since there is no
means for estimating noise in Grotz, appellants also argue
that Grotz has no nonlinear processing means with a transfer
function which is responsive to the noise estimate [brief,
pages 5-7]. The examiner responds that the MCFE circuit of
Grotz inherently functions to estimate noise since Grotz
reduces small noise-like disturbances through errors in the
motion-compensated prediction and the DCT coding [answer,
pages 13-14].
After a careful consideration of the Grotz disclosure,
we agree with appellants that Grotz does not anticipate the
invention of claim 1. Although Grotz does disclose that his
system can reduce small noise-like disturbances, Grotz does
not achieve this function by controlling a nonlinear
processing means as a function of a determined noise estimate
signal. As pointed out by appellants, there is no disclosure
in Grotz of estimating noise and using that estimate as a
control parameter. Grotz estimates the picture information
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Application 08/571,044
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itself based on motion estimation, and not the noise. We
agree with appellants that estimating motion compensated
picture information is not a noise estimate, nor does it
inherently involve a means for estimating noise.
If a prior art reference does not expressly set forth
a particular element of the claim, that reference still may
anticipate if that element is “inherent” in its disclosure.
To establish inherency, the extrinsic evidence “must make
clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may
not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Id. at 1269, 20 USPQ2d at
1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981). The record before us does not
support the examiner’s assertion that Grotz inherently has a
means for estimating noise as recited in independent claim 1.
Since all the recitations of claim 1 are not present in the
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Grotz disclosure, we do not sustain the examiner’s
anticipation rejection of claim 1 or of claims 2, 4, 5, 8, 10,
12, 14 and 15 which depend therefrom based on the Grotz
disclosure.
We now consider the various rejections of the claims
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
Appeal No. 1998-2556
Application 08/571,044
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227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but
chose not to make in the brief have not been considered [see
37 CFR
§ 1.192(a)].
Appeal No. 1998-2556
Application 08/571,044
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The remaining independent claims are claims 17 and 22.
Claims 17 and 22 are rejected based on Grotz taken alone.
Since claim 22 has the same means for estimating noise
recitations as we considered in claim 1 above, the examiner’s
rejection of claim 22 must fail because there is no teaching
or suggestion of a means for estimating noise in Grotz.
Independent claim 17 does not recite a means for estimating
noise, but instead, recites details of the transfer function
of a nonlinear processing means having a coring window. The
examiner admits that Grotz does not teach transfer functions
having the properties set forth in claim 17, but the examiner
finds that the artisan having general knowledge of noise
reduction image processing systems “would have had no
difficulty” in providing such transfer functions [answer,
pages 6-7]. Appellants respond that neither “general
knowledge” nor any of the cited references suggest transfer
functions having the properties recited in claim 17 [brief,
pages 7-8].
We agree with appellants that the prior art applied by
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the examiner does not support the obviousness rejection as
formulated by the examiner. The mere fact that the prior art
may be modified in the manner suggested by the examiner does
not make the modification obvious unless the prior art
suggested the desirability of the modification. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992);
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). Grotz taken alone (with or without general
knowledge) does not suggest transfer functions having the
properties recited in claim 17. The only basis for making the
modification proposed by the examiner comes from an improper
attempt to reconstruct appellants’ invention in hindsight.
Therefore, we do not sustain the rejection of claims 17 and 21
based on Grotz taken alone.
Although dependent claims 3, 6, 7, 11, 13 and 18-20
are rejected using the additional teachings of Zdepski, Stott
or Ishii, none of these additional references overcomes the
basic deficiency in Grotz discussed above. Therefore, we also
do not sustain any of the rejections of claims 3, 6, 7, 11, 13
and 18-20.
Appeal No. 1998-2556
Application 08/571,044
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In summary, we have sustained the rejection of claims
10 and 11 under 35 U.S.C. § 112 because appellants have
offered no response to the rejection. We have not sustained
any of the prior art rejections of claims 1-8 and 10-22.
Accordingly, the decision of the examiner rejecting claims 1-8
and 10-22 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 1998-2556
Application 08/571,044
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JS/ki
Joseph S. Tripoli
Patent Operations-GE and RCA
Licensing Management Operation, Inc.
CN 5312
Princeton, NJ 08543-0028