Ex parte Lavallee

Board of Patent Appeals and Interferences

Oct 31, 2000

08351102 (B.P.A.I. Oct. 31, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PIERRE A. LAVALLEE
_____________
Appeal No. 1998-1337
Application 08/351,102
______________
ON BRIEF
_______________
Before KRASS, FLEMING and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 20, all of the claims pending in
the present application.
Appeal No. 1998-1337
Application 08/351,102
We note that the proper claims before us are the claims1
provided by Amendment C, an after final amendment. The
Examiner states on page 2 of the Examiner's answer that
"Amendment 'C', paper number 15, filed with the Appeal Brief
has been entered."
2
The invention relates to an apparatus and method for
optimally compressing image data containing pictorial and text
images.
Independent claim 1 is reproduced as follows:1
1. An image compression apparatus comprising:
means for generating a first set of control signals
indicating whether image data contains pictorial image data or
text image data based upon image characteristics;
first encoding means for encoding the image data in
accordance with a first encoding scheme optimized for
pictorial image data;
second encoding means for encoding the image data in
accordance with a second encoding scheme optimized for text
image data, as the first encoding means encodes the image
data; and
control means for receiving encoded image data from
both the first encoding means and the second encoding means
and for selecting encoded image data from one of the first and
second encoding means based upon the first set of control
signals.
Appeal No. 1998-1337
Application 08/351,102
Appellant filed an appeal brief on June 3, 1997. 2
Appellant filed a reply brief on October 3, 1997. The
Examiner mailed a communication on November 12, 1997 stating
that the reply brief has been entered and considered but no
further response by the Examiner is deemed necessary.
3
The references relied on by the Examiner are as
follows:
Robinson 5,339,172 Aug. 16, 1994
Kimura et al. (Kimura) 5,392,362 Feb. 21, 1995

Claims 1 through 5 and 8 through 12 stand rejected
under 35 U.S.C. § 102 as being anticipated by Kimura. Claim 6
stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kimura. Claims 7 and 13 through 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Kimura in view of
Robinson.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs and answer for the2
details thereof.
OPINION
Appeal No. 1998-1337
Application 08/351,102
4
After careful review of the evidence before us, we
do not agree with the Examiner that claims 1 through 5 and 8
through 12 are anticipated by Kimura.
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).
Appellant argues that Kimura does not disclose every
element or claim recitation as required under § 102.
Appellant
argues on page 6 of the brief that Kimura does not disclose
concurrent encoding of image data using more than one encoder.
Appellant argues that appellant's claims require two encoders
to encode image data and a controller to select data from one
of the two encoders after the image data has been encoded by
the two encoders. In particular, appellant points to claim 1
as well as claim 9 language which requires second encoding
Appeal No. 1998-1337
Application 08/351,102
5
means encoding image data in accordance with a second encoding
scheme as first encoding means encodes the image data.
Appellant also points out that claim 1, and similarly claim 9,
recite a control means receiving encoding image data from both
the first encoding means and the second encoding means and
select encoding image data from one of the first and second
encoding means. Appellant argues that these recitations make
it clear that first and second encoding means encode image
data in parallel and that the encoded data is received from
both first and second encoding means at the control means.
On page 9 of the answer, the Examiner responds to
these arguments by stating that concurrent encoding is not
recited in the claims. The Examiner does not dispute that
Kimura does not
in any way disclose concurrent encoding of image data using
more
than one encoder. The Examiner argues that the term "as" does
not necessarily mean "concurrently." The Examiner argues that
"as" can mean "to the same extent or degree."
Appeal No. 1998-1337
Application 08/351,102
6
On pages 4 and 5 of the reply brief, Appellant
argues that the only reasonable interpretation of "as" is that
the second encoding means encodes while the first encoding
means encodes. Appellant argues that the Examiner's
interpretation of "as" as recited in claims 1 and 9 is faulty.
On page 2 of the reply brief, Appellant points to support for
the first and second encoding means operating in parallel in
the specification and drawings. In particular, Appellant
points us to figure 1; page 8, lines 15 through 17; page 9,
lines 17 through 19; and page 13, lines 4 through 10 of the
specification. Appellant argues that when the originally
filed specification is considered as a whole, it is clear that
one aspect of the invention includes a control means
simultaneously receiving encoded image data from first and
second encoding means that are operating concurrently.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Claims will be given their
broadest
Appeal No. 1998-1337
Application 08/351,102
7
reasonable interpretation consistent with the specification,
and
limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1,
5, (Fed. Cir.), cert. denied, 474 U.S. 828 (1985).
When reading Appellant's specification as a whole,
we find that the term "as" would mean "while." In particular,
we note that Appellant's figure 1 shows the first and second
encoding means connected in parallel. Furthermore, we note
that on page 8 of the specification, Appellant discloses that
the first and second encoding means operate in parallel and
provide data to control unit 180. On page 9, Appellant
discloses that the control unit selectively stores the image
data compressed by encoder 140 or encoder 170 in accordance
with the determined image type. Appellant further points out
that it is the control unit 180 that determines the image
type. Appellant discloses on page 13 that the apparatus
compresses the image data using parallel compressors and
selects the compressed image data from
Appeal No. 1998-1337
Application 08/351,102
8
the compressors based upon the detected image characteristics.
Therefore, we find ample support in the specification for the
interpretation of the term "as" found in claims 1 and 9 as
meaning "while." In other words, appellant's claimed
invention
requires the first and second encoders to be operating in
parallel concurrently. However, we find no support in the
specification for the Examiner's interpretation of "as."
In view of this finding, we will not sustain the
Examiner's rejection of claims 1 through 5 and 8 through 12
under 35 U.S.C. § 102 as being anticipated by Kimura.
Furthermore, we note that the rejection of claims 6, 7, and 13
through 20 under 35 U.S.C. § 103 is based upon the above
interpretation of the term "as." Therefore, we will not
sustain the Examiner's rejection of these claims for the same
above reasons.
In view of the foregoing, the decision of the
Examiner rejecting claims 1 through 20 is reversed.
REVERSED
Appeal No. 1998-1337
Application 08/351,102
9
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:psb
Appeal No. 1998-1337
Application 08/351,102
10
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