Ex Parte Monro

Patent Trial and Appeal Board

Jun 18, 2013

11255090 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/255,090 10/19/2005 Donald M. Monro 2222.5070000 3559
26111 7590 06/18/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
JACOB, AJITH
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
06/18/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONALD M. MONRO
____________________

Appeal 2011-001342
Application 11/255,090
Technology Center 2100
____________________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001342
Application 11/255,090

2

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 41, 43-57, and 59-69 (App. Br. 6). Claims
1-40, 42, and 58 were cancelled (id.). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The Invention
Exemplary independent claim 41 follows:
41. A method, comprising:
determining inner products of entries from a first set of
basis functions and data to be coded;
determining a relative maximum one of the inner
products;
storing an entry of the first set of basis functions
corresponding to the relative maximum one of the inner
products as an entry of a second set of basis functions; and
storing the second set of basis functions in a memory.

Rejection on Appeal
Claims 41, 43-57, and 59-69 stand rejected under 35 U.S.C. 102(e) as
being anticipated by Sommer (US 6,847,966 B1) (Ans. 3-9).

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Appeal 2011-001342
Application 11/255,090

3

Can the claimed invention be distinguished from the prior art on the
basis of determining an inner product “from a first set of basis functions and
data to be coded,” as recited in independent claim 41, and as similarly
recited in independent claims 61 and 63-69?

ANALYSIS
Based on Appellant’s arguments (App. Br. 19-24), we select
independent claim 41 and dependent claim 46 as representative of
Appellant’s arguments and groupings with respect to claims 41, 43-57, and
59-69. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that the Examiner erred in rejecting independent
claims 41, 61, and 63-69 because “Sommer is entirely devoid of any
disclosure with respect to the recited ‘first set of basis functions’” (App. Br.
22 (emphasis omitted)). Appellant also contends that “Sommer fails to
disclose at least the recited feature of ‘data to be coded’” (id. at 23 (emphasis
omitted)). Appellant also contends that the Examiner erred in rejecting
dependent claim 46 because “Sommer does not disclose ‘video data, audio
data, multidimensional data, or a wavelet transformed data as the data to be
coded’” (id. at 24 (emphasis omitted)).
We note, however, that the argued limitations fail to distinguish the
claimed invention from the prior art either structurally or functionally
because they are non-functional descriptive material, i.e., the content of
operands to an inner product operation. This data constitutes non-functional
descriptive material in that the underlying structure and functionality of the
claims remain the same regardless of what the data constitutes or how the
data may be named. In other words, the same steps in the claims are
Appeal 2011-001342
Application 11/255,090

4

executed regardless of the content of the data that is input to the inner
product operation. The informational content of the data thus represents
non-functional descriptive material, which “does not lend patentability to an
otherwise unpatentable computer-implemented product or process.” Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir.
Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006) (“wellness-related”
data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method). See also In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-
functional descriptive material).
Thus, we find no error in the Examiner’s obviousness rejection of
independent claims 41, 61 and 63-69 and dependent claim 46 as well as the
additional dependent claims 43-45, 47-57, 59, 60, and 62 because Appellant
did not set forth any separate patentability arguments for the additional
dependent claims (see App. Br. 23).

DECISION
We affirm the Examiner’s obviousness rejections of claims 41, 43-57
and 59-69.
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).

AFFIRMED
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