Ex Parte Mesarovic et al

Board of Patent Appeals and Interferences

Jan 9, 2008

09570374 (B.P.A.I. Jan. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VLADIMIR Z. MESAROVIC and MIROSLAV V. DOKIC
____________

Appeal 2007-2160
Application 09/570,374
Technology Center 2600
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Decided: January 9, 2008
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Before JOSEPH F. RUGGIERO, ALLEN R. MACDONALD, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-7, 9-13, 16, 18, and 21-26. Claims 8, 14, 15, 17, 19, and 20 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ claimed invention relates to the decoding of audio signals
in which fixed point architecture and arithmetic and a mixed
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Application 09/570,374

table/computation approach is used. Over certain ranges, the variables used
in computations to decode a coded audio stream are calculated to reduce
memory usage. Over other ranges, however, the variables are stored in a
look-up table to minimize computational load. (Specification 3).
Claim 1 is illustrative of the invention and reads as follows:

1. A digital audio decoder for receiving an encoded audio signal
and decoding the audio signal; the digital audio decoder comprising:
an input which receives the encoded audio signal;
a program memory circuit which is operable to store a program by
which the digital audio decoder operates;
a data memory circuit which is operable to store pre-computed
calculations as operands for use in the decoding operation, the operands
having an integer part and a fractional part within a fixed word length, with
the division of bits between such parts having at least two formats in the data
memory circuit;
a control circuit connected to the input, the program memory circuit
and the data memory circuit, the control circuit having a fixed-point
mathematical operating system, the control circuit further being operable to
decode the encoded audio signal according to the program stored in the
program memory circuit, to retrieve and interpret the operands from the data
memory circuit, and to calculate an unencoded audio signal based on
mathematical formulas stored in the program memory circuit and based
upon the further pre-computed calculations stored in the data memory
circuit.
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The Examiner’s Answer cites the following references:1
Dworkin US 5,604,691 Feb. 18, 1997
Wise US 5,963,154 Oct. 5, 1999
Benbassat US 5,963,596 Oct. 5, 1999

ISO/IEC 11172-3 (ISO), International Standard, “Information Technology –
Coding of moving pictures and associated audio for digital storage media at
up to about 1.5 Mbit/s – Part 3: Audio” (1993).

ANSI/IEEE (ANSI) standard 754 (1985).

Claims 1-7, 9-13, 16, 18, and 21-26, all of the appealed claims, stand
rejected under 35 U.S.C. § 103(a). As evidence of obviousness, the
Examiner offers Benbassat in view of Wise with respect to claims 1, 2, 4, 5,
9, 11, 12, and 22, and adds ISO to the basic combination with respect to
claims 6 and 7. Claims 3, 10, 21, 23, and 24 stand rejected as being obvious
over the combination of Benbassat, Wise, and “well known prior art,” while
claims 13, 16, 18, 25, and 26 stand rejected as being obvious over the
combination of Benbassat and “well known prior art.”
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details. 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 Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

1 The Dworkin and ANSI references are cited as evidence in support of the
Examiner’s position, but are not included in the Examiner’s stated grounds
of rejection.
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ISSUES
(1) Under 35 U.S.C § 103(a), with respect to appealed claims 1, 2, 4,
5, 9, 11, 12, and 22, would one of ordinary skill in the art at the
time of the invention have found it obvious to combine Benbassat
and Wise to render the claimed invention unpatentable?
(2) Under 35 U.S.C § 103(a), with respect to appealed claims 6 and 7,
would one of ordinary skill in the art have found it obvious to
modify the combination of Benbassat and Wise by adding ISO to
render the claimed invention unpatentable?
(3) Under 35 U.S.C § 103(a), with respect to appealed claims 3, 10,
13, 16, 18, 21, and 23-26, would one of ordinary skill in the art
have found it obvious to add the teachings of “well known prior
art” in combination with Benbassat alone or with the combination
of Benbassat and Wise to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741(2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claim 1 based on the combination of Benbassat and
Wise, Appellants’ arguments in response assert a failure by the Examiner to
establish a prima facie case of obviousness since, even if combined, all of
the claimed limitations would not be taught or suggested by the applied prior
art references. In particular, Appellants contend (Br. 9) that, in contrast to
the claimed invention, neither Benbassat nor Wise discloses that the
calculation of an unencoded audio signal is based on mathematical formulas
stored in a program memory circuit and pre-computed calculations stored in
a data memory circuit.
After reviewing the disclosures of Benbassat and Wise in light of the
arguments of record, we are in general agreement with Appellants’ position
as stated in the Brief. With respect to Benbassat, relied upon by the
Examiner as disclosing the claimed audio signal calculation feature, we
agree with Appellants that the Examiner’s statement of the grounds of
rejection (Answer 6-7), making specific reference to the transforming
operation of Benbassat, draws an unsupported general conclusion that such a
feature is disclosed by Benbassat. Although the Examiner, in the responsive
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arguments portions of the Answer at page 22 attempts to expand upon the
interpretation rationale as related to Benbassat, we find nothing in the further
cited portions of Benbassat which supports the Examiner’s conclusion that
such additional cited portions correspond to what is claimed.
We have also reviewed the Wise reference which has been relied upon
by the Examiner to address the operand format feature set forth in
independent claim 1. We find nothing, however, in the disclosure of Wise
which overcomes the innate deficiencies of Benbassat discussed supra.
In view of the above discussion, since we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection, we do not sustain the rejection of
independent claim 1, nor of claims 2, 4, 5, 9, 11, 12, and 22 dependent
thereon.
Turning to a consideration of the Examiner’s obviousness rejections
of dependent claims 6 and 7 based on the combination of Benbassat, Wise,
and ISO, and dependent claims 3, 10, 21, 23, and 24 based on the
combination of Benbassat, Wise, and “well known prior art,” we do not
sustain these rejections as well. We find nothing in the disclosures of ISO
and what the Examiner considers as “well known prior art” that would
overcome the previously discussed deficiencies of Benbassat and Wise.
We also do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claims 25 and 26 in which the alleged teachings of “well known
prior art” are applied to the Benbassat reference to address the claimed
Taylor series expansion feature. The Examiner (Answer 29-30) additionally
makes reference to Dworkin as supplying evidence of the well known
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aspects of the use of a Taylor series expansion to represent logarithmic
factors.
Initially, we do agree with the Examiner that sufficient evidence exists
on the record before us, including the Dworkin reference, to support the
Examiner’s contention that it is well known to use a Taylor series expansion
to represent a logarithmic factor. As pointed out by Appellants (Br. 25 and
31), however, the language of claims 25 and 26 requires more than just a
Taylor series expansion of a logarithmic factor.
In particular, claims 25 and 26 require a “Taylor expansion
representation of a logarithm of a factor of a quantized subband sample.”
We find no disclosure in Benbassat, and the Examiner has pointed to none,
which uses logarithmic functions associated with quantized subband
samples. As alluded to by Appellants (id.), in order to apply the Taylor
series logarithmic expansion features of the prior art to Benbassat, there
must be a quantized subband sample logarithmic factor to expand, a
disclosure we find lacking in Benbassat.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 13 and 16 and dependent claim 18 based on
Benbassat and “well known prior art,” we note that, while we found
Appellants’ arguments to be persuasive with the respect to the Examiner’s
obviousness rejection of claims 1-7, 9-12, and 21-26, we reach the opposite
conclusion with respect to the rejection of independent claims 13 and 16 and
dependent claim 18. We note, initially, that, unlike the language of
independent claim 1, claims 13 and 16 have no recited limitations directed to
the feature of calculating an unencoded audio signal based on stored
mathematical formulas and pre-computed calculations. Instead, the primary
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point of contention between the Examiner and Appellants is whether the
combination of Benbassat and the “well known prior art” discloses the
storing in memory of operands having a fixed word length divided into an
integer and fractional part with the division of bits between the two parts
having at least two formats.
Our independent review of the disclosure of Benbassat reveals that, to
whatever extent the Examiner is relying upon “well known prior art”
teachings to provide a disclosure of two format operands, any such teaching
is cumulative to what is already disclosed in Benbassat. For example,
Benbassat discloses (col. 17, ll. 19-30) that in the multiplier portion of math
unit 154, the A operand is in 3.25 format while the B operand is in a 2.20
format. As further noted by the Examiner (Answer 31), each of the operand
numbers in Benbassat are of a fixed word length, there being no requirement
in the claim language that the fixed word lengths be the same word length.
For their part, Appellants’ arguments at pages 3 and 4 of the Reply
Brief recognize that Benbassat does disclose a math unit 154 which utilizes
operands in two different formats as part of a mathematical multiplication
operation. Appellants initially contend, however, that the values of such
operands are not “precomputed” calculations as claimed.
We make the observation that, while the language “precomputed’
appears in independent claim 13, there is no such requirement in
independent claim 16. In any case, our review of the disclosure of
Benbassat reveals that, as illustrated in Benbassat’s Figure 4 illustration and
described beginning at column 15, line 16, operand B is derived from
precomputed coefficient values stored in coefficient memory 178 which are
input to math unit 154 through multiplexer 176. Similarly, operand A is
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derived from precomputed scale factor and coefficient values stored,
respectively, in memories 168 and 170 and input to math unit 154 through
multiplexer 164 and register 158.
We further find to be unpersuasive Appellants’ contention (Reply Br.
3-4) that Benbassat does not disclose the storing of precomputed operand
values in the “same memory unit.” We would point out that the language of
independent claims 13 and 16 does not recite “same memory unit” but,
rather, recites “a data memory circuit” (claim 13) or “a memory circuit”
(claim 16). Therefore, to whatever extent Appellants are contending that the
language “a memory circuit” must be interpreted to mean a single memory,
we find such an argument to be misplaced. There is no recitation of a single
memory in any claim on appeal. See KCJ Corp. v. Kinetic Concepts, Inc.,
223 F.3d 1351, 1356 (Fed. Cir. 2000)(“This court has repeatedly emphasized
that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of
‘one or more’ in open-ended claims containing the transitional phrase
‘comprising.’ [citations omitted.]”).
With respect to dependent claim 18, we find no error in the
Examiner’s finding (Answer 17), and there are no convincing arguments to
the contrary from Appellants, that Benbassat provides a disclosure (col. 5, ll.
15-21, col. 17, l. 51, and col. 18, l. 35) of the recovery of frequency domain
transfer coefficients from parsed information and the passing of such
coefficients to a second processor.

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In view of the above discussion, since the teachings of the Benbassat
reference establish a prima facie case of obviousness based on Benbassat
alone which has not been overcome by any convincing arguments from
Appellants, the Examiner’s 35 U.S.C § 103(a) rejection of independent
claims 13 and 16 and dependent claim 18 is sustained.2

CONCLUSION
In summary, with respect to the Examiner’s 35 U.S.C. § 103(a)
rejections of the appealed claims, we have not sustained the rejection of
claims 1-7, 9-12, and 21-26, but have sustained the rejection of claims 13,
16, and 18. Accordingly, the Examiner’s decision rejecting appealed claims
1-7, 9-13, 16, 18, and 21-26 is affirmed-in-part.

2 The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363
F.2d 455, 458 n.2 (CCPA 1966).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(effective
September 13, 2004).

AFFIRMED-IN-PART

tdl/gw

JAMES J. MURPHY
THOMPSON AND KNIGHT LLP
1700 PACIFIC AVENUE SUITE 3300
DALLAS, TX 75201
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