Ex parte Menezes

Board of Patent Appeals and Interferences

Nov 20, 2000

08638071 (B.P.A.I. Nov. 20, 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not written for publication and is not binding precedent of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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VINOD MENEZES
__________
Appeal No. 1999-0016
Application 08/638,071
___________
ON BRIEF
___________
Before HAIRSTON, FLEMING, and HECKER, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 12, all the claims pending in the present
application.
The invention relates to a method and system for
processing speech or image data using lossy techniques.
Appellant discloses on page 1 of the specification that
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conventional image and speech processing techniques use
complex digital logic. Appellant points out that the use of
digital logic which employs very precise arithmetic processing
is not always needed in every speech and image
processing/compression application. Appellant points out that
simple analog devices and/or circuits can be used with some
amount of signal loss/noise without adversely affecting the
results of processing/compression. Appellant discloses on
page 5 of the specification that figure 2a shows a data
compression system in accordance with the present invention.
The system shows a transformation module with analog devices
22, a quantization module with analog devices 24 and an
entropy coding module 26.
Independent claim 1 is reproduced as follows:
1. An [sic A] data compression system comprising:
collector means for collecting said data;
a transformer coupled to said collector means for
transforming said data to generate transform coefficients,
said transformer implemented using analog devices;
a quantizer coupled to said transformer for quantizing
said transform coefficients to generate quantized
coefficients, said quantizer implemented using analog devices;
and
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an encoder coupled to said quantizer for encoding said
quantized coefficients to generate compressed data.
The Examiner relies on the following references;
Merola et al. (Merola) 4,288,858 Sept. 8,
1981
Blaschke 4,335,444 Jun. 15,
1982
Chiang 5,126,962 Jun. 30,
1992
Agranat et al. (Agranat) 5,619,444 Apr.
8, 1997
(Filed June 20,
1994)
Claims 1 and 4 through 7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Appellant’s figures 1a and
1b in view of either Chiang or Merola. Claims 2, 3 and 8
through 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Appellant’s figures 1a and 1b in view of
Chiang or Merola and further in view of either Blaschke or
Agranat.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
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Application 08/638,071
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OPINION
1. We will not sustain the rejection of claims 1
through 12 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). “Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable ‘heart’ of the
invention.” Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 519 U.S. 822 (1996), citing W. L. Gore & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 7 and 8 of the brief, Appellant argues that
neither the Appellant’s figures 1a and 1b, Chiang nor Merola
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teaches or suggests analog devices for quantization.
Appellant argues that Appellant’s claim 1 calls for a
quantizer implemented using analog devices which would not be
obvious in view of Chiang or Merola or the prior art in
figures 1a and 1b since this is not taught or suggested in
these references. Appellant further points out that all the
independent claims recite this limitation.
On page 5 of the answer, the Examiner responds by stating
that it is noted that the actual “quantization using analog
devices” limitation is not expressly shown in Chiang or
Merola. The Examiner argues that this limitation is
implicitly disclosed since the coder shown in figure 1 of
Chiang must have analog devices for processing the analog
signal from the transform device 20. The Examiner further
argues that Merola implicitly teaches “quantization using
analog devices” in that the processor shown in figure 4
receives and provides analog signals.
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.2d 1362, 1369, 47
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USPQ2d 1523, 1529 (Fed. Cir. 1998).
We note that all the independent claims recite “quantizer
implemented using analog devices.” Turning to Appellant’s
specification, we find that the Appellant discloses throughout
the specification that the quantization module shown in figure
2a is implemented entirely with analog devices. Appellant has
pointed out the advantages of using the analog devices to
implement this function. In particular, Appellant points out
on pages 7 and 8 that the analog circuits are simpler than the
digital circuits and can provide some amount of
syhchronization. Therefore, we find that Appellant is
claiming a quantizer coupled to the transformer for quantizing
the transformation coefficients using analog devices to
generate quantizer coefficients.
Turning to the prior art recited by the Examiner, we find
that Chiang and Merola disclose digital circuits for providing
these functions. We fail to find that either Chiang or Merola
teaches or would have suggested using analog devices to
provide a quantizer for quantizing the transformation
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coefficients to generate quantized coefficients. Furthermore,
we fail to find that Blaschke or Agranat teaches or would have
suggested this limitation.
The Federal Circuit states that “[t]he 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 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that “[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.”
Pro-mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), citing In
re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA
1976) (considering the problem to be solved in a
determination of obviousness). The Federal Circuit reasons in
Para-Ordnance Mfg. Inc. v. SGS Importers Int’l Inc., 73 F.3d
1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert.
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Application 08/638,071
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denied, 519 U.S. 822 (1996), that for the determination of
obviousness, the court must answer whether one of ordinary
skill in the art who sets out to solve the problem and who had
before him in his workshop the prior art, would have been
reasonably expected to use the solution that is claimed by the
Appellants. However, “[o]bviousness may not be established
using hindsight or in view of the teachings or suggestions of
the invention.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73
F.3d at 1087, 37 USPQ2d at 1239, citing W.L. Gore & Assoc.,
Inc. V. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at
311, 312-13. In addition, our reviewing court requires the
PTO to make specific findings on a suggestion to combine prior
art references. In re Dembiczak 175 F.3d 994, 1000-01, 50
USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
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Application 08/638,071
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We fail to find that the Examiner has established a prima
facie case of obviousness. Therefore, in view of the
foregoing, we will not sustain the Examiner’s rejection of
claims 1 through 12 under 35 U.S.C. § 103.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 1999-0016
Application 08/638,071
10
MRF:pgg
Tammy L. Williams
Texas Instruments Incorporated
P.O. Box 655474 MS 219
Dallas, TX 75265