Ex Parte Monro

Patent Trial and Appeal Board

Feb 27, 2014

11425142 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/425,142 06/19/2006 Donald Martin Monro 2222.7670000 8763
26111 7590 02/28/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
LAUTURE, JOSEPH J
ART UNIT PAPER NUMBER
2845
MAIL DATE DELIVERY MODE
02/28/2014 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 MARTIN MONRO
____________

Appeal 2011-011192
Application 11/425,142
Technology Center 2800
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011192
Application 11/425,142

2
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 37-45, 48-58, 61-71, 74-75, and 80-81. We have
jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Claim 37 is representative of the subject matter on appeal and is
reproduced below from the Appellant’s Claims Appendix:

37. A method of coding N symbols for storage or transmission comprising:

coding, using a processing device, the N symbols that are ranked
relative to each other according to frequency of occurrence and have a
higher rank than a threshold rank T with a variable length set of codes, the
coding being sufficiently unique so that the respective codes for the N
symbols individually distinguish from one another; and

coding, using the processing device, the N symbols that have an equal
or lower rank than the threshold rank T with a fixed length code that has a
number of bits to sufficiently distinguish the codes for the N symbols
individually between (1) the codes for the N symbols with the higher rank
than the threshold rank T and (2) the other codes for the N symbols with the
equal or lesser rank than the threshold rank T.

App. Br. 22, Claims App’x (emphasis added).

Appellant appeals the following rejections:
1. Claims 37-45, 48, 50-58, 61, 63-71, 74, and 80-812 under 35 U.S.C. §
103(a) as unpatentable over Hirano3 in view of Hains4 and further in
view of Sato.5

1 Appellant identifies the Real Party in Interest as Essex PA, L.L.C.
Appellant’s Brief filed December 9, 2010 (“App. Br.”) at 3.
2 Appealed claims 40, 42, 53, 55, 66, and 68 are not initially identified in the
Examiner’s Grounds of Rejection in the Examiner’s Answer mailed
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2. Claims 49, 62, and 75 under 35 U.S.C. § 103(a) as unpatentable over
Hirano in view of Hains, in further view of Sato, and in still further
view of Burns.6
ISSUE
Did the Examiner err in determining that Hirano, Hains, and Sato
render obvious the subject matter of claim 37, in particular the aspects of
claim 37 of coding “N symbols that are ranked relative to each other
according to a frequency of occurrence and have a higher rank than a
threshold rank T with a variable length set of codes” and coding “N symbols
that have an equal or lower rank than the threshold rank T with a fixed
length code”?
We answer this question in the negative and AFFIRM.

ANALYSIS
As an initial matter, we confine our discussion to appealed claim 37
which contains limitations representative of the arguments made by
Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii).

February 24, 2011 (“Ans.”) at 3, but are discussed in the Grounds of
Rejection section of the Answer at 15, as well as in the body of the Final
Office Action, mailed March 18, 2010, at 16-17. The Examiner erred in not
including claims 40, 42, 53, 55, 66, and 68 in the enumerated Grounds of
Rejection. However, because these claims are discussed in the Final Office
Action and in the body of the Answer, and because these claims are not
separately argued by Appellants, App. Br. 20, we find this error to be
harmless.
3 U.S. Patent No. 4,509,038, issued on April 2, 1985, to Hirano.
4 U.S. Patent No. 4,168,513, issued on September 18, 1979, to Hains et al.
5 U.S. Patent No. 4,899,148, issued on February 6, 1990 to Sato et al.
6 U.S. Patent No. 5,956,429, issued on September 21, 1999 to Burns.
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Application 11/425,142

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A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods. KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007); Rolls-Royce, PLC v. United
Technologies Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010) (“If a person of
ordinary skill, before the time of invention and without knowledge of that
invention, would have found the invention merely an easily predictable and
achievable variation or combination of the prior art, then the invention likely
would have been obvious.”).
The Examiner finds that, regarding claim 37, Hirano teaches “coding
symbols which have a level corresponding to a variable length code (VLC)
with a variable length code . . . based on a threshold value or rank (average
length of a word . . .), wherein the codes for each of the N symbols, i.e. their
number of bits individually distinguish from one another since the symbols
are different from each other, and coding symbols which [have] a level
corresponding to a fixed length code (FLC) with a fixed length code”
wherein “the codes for each of the N symbols, i.e. their number of bits
individually distinguish from one another since the symbols are different
from each other.” Ans. 3-4. The Examiner relies on Haines to disclose a
decoding apparatus and method wherein the length of a symbol is inversely
proportional to the probability of occurrence of a symbol. Id. at 4. The
Examiner further relies on Sato to disclose a data compression method
wherein the data words are ranked relative to each other according to their
frequency of occurrence. Id.
Appellant argues that the Hirano-Hains-Sato combination does not
teach “coding, using the processing device, the N symbols that have an equal
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Application 11/425,142

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or lower rank than the threshold rank T with a fixed length code,” App. Br.
14, because:
1. Hirano fails to teach a choice of coding based on a threshold rank,
id.;
a. The Examiner's interpretation of the claimed "threshold
rank" is neither reasonable nor supported by the
specification, id. at 15;
b. The Examiner's assertion that "average word length" implies
a "threshold rank" is erroneous, id. at 16;
2. The Examiner uses impermissible hindsight, id. at 17;
3. Neither Hains nor Sato teaches or suggests a choice of coding,
thus they fail to cure the deficiencies of Hirano, id. at 18;
4. The fact that Hirano, Hains, and Sato each provide benefits to data
coding schemes does not provide rational underpinning to justify
the alleged combination, id. at 19; and
5. Burns does not overcome the deficiencies of the Hirano-Hains-
Sato combination, id. at 20-21.
The Examiner responds:
1. The coding feature claimed by Appellant is taught in Figure 1 and
the Abstract of Hirano, Ans. 16-17;
a. The average word length of Hirano implies a rank as each
data word has its respective length which is compared to a
threshold value to determine its rank on a given scale based
on a frequency of occurrence to determine whether such a
data word will be fixed-length coded or variable-length
coded, id. at 17-18;
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b. The interpretation of “rank” is reasonable because the
Specification calls for variable length coding codewords
having a higher rank and fixed length coding codewords
having a lower rank, id. at 18; and because both the claimed
invention and Hirano call for comparing incoming data
words with a value that triggers either variable length coding
or fixed length coding, id. at 19;
2. The Examiner is not using improper hindsight reasoning, id.;
3. Hirano teaches choice of coding limitation, and Hains and Sato
teach the limitation of rank as it relates to a probability of
occurrence, id. at 20; and
4. One of ordinary skill in the art would incorporate the teachings of
Haines and Sato into the Hirano system to improve efficiency by
making it possible to regenerate each symbol only as it is required
and increase the effectiveness of the compression, id. at 22.
Claim 37 provides that N symbols that have a higher rank than a
threshold rank T are coded with a variable length set of codes, and N
symbols that have an equal or lower rank than the threshold rank T are
coded with a fixed length code. The Examiner finds that Hirano teaches
coding input data words using “fixed length coding for words having a
length less than an average word length.” Ans. 17; Hirano Figure 1, Abst.
The Examiner also finds that the “average word length in Hirano is the
threshold and benchmark value that triggers coding using either variable
length coding or fixed length coding.” Ans. 17. This finding addresses
Appellant’s contention that Hirano fails to teach the feature of coding
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symbols that have an equal or lower rank than the threshold rank T with a
fixed length code. The Examiner’s findings are reasonable in this regard.
Moreover, it is not unreasonable for the Examiner to equate the
threshold rank of Hirano, namely, the average word length, with the claimed
“threshold rank” T. The Examiner finds that the “average word length in
Hirano corresponds to the threshold rank in the claimed invention because it
serves as a threshold or benchmark in making a decision as to what method
of coding to apply.” Ans. 19. Although Appellant points to Spec. 6, l. 26-
7, l. 1 to support the opposing argument, App. Br. 16, the Specification’s
only mention of the term “threshold rank” provides that the claimed method
“may include: defining a threshold rank T, in which T is a positive integer
numeral, for example; coding symbols which have a higher rank than T with
a variable length code; and coding symbols which are ranked T or lower
with a fixed length code.” Spec. 4, ll. 5-8. Appellant does not identify any
other definition of ‘threshold rank’ in the Specification or elsewhere that
undermines rather than supports the reasonable finding of the Examiner in
this respect.
We do not see that the Examiner has employed hindsight reasoning.
The Examiner has articulated a reason having rational underpinnings for
making a proposed combination of the prior art teachings of Hirano, Hains,
and Sato, namely, to improve efficiency by making it possible to regenerate
each symbol only as it is required, and to realize a coding system having
improved performance and reliability because that would increase the
effectiveness of the compression. Ans. 4-5; 21-22. Appellant has not
explained why the Examiner’s articulated reason is ineffective to support the
conclusion of obviousness. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
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Application 11/425,142

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1971). Similarly, the Examiner’s articulated reason provides a rational
underpinning for the alleged combination of these three references, all of
which are directly related to the coding of data, and this articulated reason
has not been persuasively rebutted by the Appellant.
Finally, regarding Appellant’s argument that neither Hains nor Sato
teaches or suggests a choice of coding, the Examiner responds that Hirano
“teaches the essential features of the claimed invention, including the
variable length (VLC) or fixed length (FLC) coding,” Ans. 20, whereas
Hains and Sato “were introduced to teach that the limitation of rank as it
relates to a probability of occurrence in data coding is obvious and well
known.” Id. at 21. We share the Examiner’s view that the references would
have been combined in such a way as to render Appellant’s claims obvious.
Appellant does not provide additional substantive arguments against
rejection 2, and thus we affirm rejection 2 for reasons similar to those
presented above.7
The balance of the arguments and evidence in the record before us
weighs in favor of a conclusion of obviousness for the subject matter defined
by the argued claims on appeal.

7 In the Reply Brief filed April 22, 2011 (“Reply Br.”), Appellant presents
new arguments not raised in the Appeal Brief concerning Hirano’s “teaching
away” and concerning the claim 37 limitation “the N symbols that are
ranked relative to each other.” Reply Br. 4, 6. A new argument not timely
presented in the Appeal Brief will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1476-77 (BPAI 2010) (informative). See also 37 C.F.R.
§ 41.37 and § 41.41. Appellant has provided this record with no such
showing. Accordingly, we will not consider these new arguments in the
Reply Brief.

Appeal 2011-011192
Application 11/425,142

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ORDER
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

sld