Ex Parte Mesarovic et alDownload PDFBoard of Patent Appeals and InterferencesJan 9, 200809570374 (B.P.A.I. Jan. 9, 2008) Copy Citation 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 ____________ Decided: January 9, 2008 ____________ 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 Appeal 2007-2160 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. 2 Appeal 2007-2160 Application 09/570,374 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. 3 Appeal 2007-2160 Application 09/570,374 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 4 Appeal 2007-2160 Application 09/570,374 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 5 Appeal 2007-2160 Application 09/570,374 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 6 Appeal 2007-2160 Application 09/570,374 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 7 Appeal 2007-2160 Application 09/570,374 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 8 Appeal 2007-2160 Application 09/570,374 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. 9 Appeal 2007-2160 Application 09/570,374 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). 10 Appeal 2007-2160 Application 09/570,374 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 11 Copy with citationCopy as parenthetical citation