Ex parte ODA et al.

Board of Patent Appeals and Interferences

Feb 17, 1998

07678441 (B.P.A.I. Feb. 17, 1998)

Application for patent filed April 1, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TOSHIYUKI ODA,
TAMOTSU ITO and TAKASHI TAKEUCHI
_____________
Appeal No. 95-4645
Application 07/678,4411
______________
HEARD: February 4, 1998
_______________
Before THOMAS, HAIRSTON and LEE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 10 to 14 and 19. As distinguished from
Appeal No. 95-4645
Application 07/678,441
2
the final rejection, the initial answer rejected only claims 10
and 19 under 35 U.S.C. § 102(b), which rejection remains. This
answer instituted a rejection of dependent claims 11 to 14 under
35 U.S.C. § 103. The supplemental answer reduced this latter
rejection such that only claim 11 is included. Thus, only claims
10, 11 and 19 remain on appeal.
The pertinent portion of representative independent claim 10
on appeal is “means for modifying the reproduced image data and
the reproduced voice data in accordance with the executed control
program.” Corresponding language appears in independent claim 19
in slightly more specific form.
The following references are relied on by the examiner:
Kageyama et al. (Kageyama) 4,791,496 Dec. 13, 1988
Hirano et al. (Hirano) 4,845,571 Jul. 04, 1989
Rather than repeat the positions of the appellants and the
examiner, reference is made to the various briefs and answers for
the respective details thereof.
OPINION
We reverse the rejection of claims 10 and 19 under 35 U.S.C.
§ 102 as being anticipated by Hirano and, because Kageyama does
not cure the defects of Hirano as applied in the rejection of
claim 11 under 35 U.S.C. § 103, this latter rejection of
dependent claim 11 is also reversed.
Appeal No. 95-4645
Application 07/678,441
3
Page 9 of the Principal brief on appeal begins a series of
arguments that the above noted means for modifying of independent
claims 10 and 19 is not taught within 35 U.S.C. § 102 in Hirano.
More specifically, the arguments beginning at the bottom of page
10 through page 11 of the Principal brief on appeal take the
position that in accordance with the sixth paragraph of 35 U.S.C.
§ 112, the reference does not teach the process table of Figure 9
and thus, the process of modifying the image data by diffussing
one pixel of data into data of surrounding pixels as described at
page 17, lines 9 to 12 of the specification as filed.
To expand upon this correlation it appears that the subject
matter of Figure 9 is discussed beginning at line 3 of page 17
through the end of the specification. A specific manner of
modifying is, as urged by appellants, discussed at page 17 in the
manner argued. The succeeding pages discuss Figure 10 and Figure
11 of the specification as filed. Even though the discussion in
the specification relating to Figure 11 does not discuss in
detail the process table of Figure 9, it is shown in Figure 11 as
a part of the application program. As noted by the examiner in
the responsive arguments portion at page 6 of the initial
examiner’s answer, the referenced portion of the specification at
page 17 makes reference only to modifying image data whereas the
Appeal No. 95-4645
Application 07/678,441
4
subject matter of the means for modifying clause of each
independent claim on appeal relates to doing so for
reproduced image data and reproduced voice data. The examiner’s
reference to the bottom of page 21 of the specification as filed
correlates to the Figure 12 showing of the system of the
invention which concerns modifying both image and voice data as
set forth at lines 22 through 26 at this page. It is noted
further that the subject matter of the original but now canceled
claim 1 recited this same feature of means for modifying the
voice data and the image data in accordance with the claimed
controlled program.
In light of this understanding, it is apparent that there
is, as disclosed and originally claimed, a means for modifying
the reproduced image data and the reproduced voice data as
presently claimed in independent claims 10 and 19 on appeal.
Although the original claims in the specification as filed do not
detail the manner in which the means for modifying of voice data
would occur, the corresponding teachings and showings associated
with Figure 9, as urged by appellants, do detail the specifics of
Appeal No. 95-4645
Application 07/678,441
5
the modification of the reproduced image data in such a manner as
to diffuse one pixel of data into data of surrounding pixels.
The examiner’s correlation of the claimed modifying feature
to the error correcting capability of the error correction
circuit 53 in Figure 2 of Hirano is misplaced. Even though the
discussion of Figure 2 of Hirano beginning at column 4, line 30,
indicates that with respect to read operation the error
correcting code generator 53 does in fact correct or modify data
to the extent broadly claimed, it does not do so in a program
manner such as to diffuse a pixel into surrounding pixels in
accordance with the arguments presented by appellants linking the
claimed means for modifying to the Figure 9 representation of the
disclosed invention. Thus, we conclude that there can be no
structural equivalence in accordance with 35 U.S.C. § 112, sixth
paragraph, for this claimed feature. As such, we do not agree
with the examiner’s expanded arguments as to this modifying
feature in the supplemental answer at pages 2 and 3 thereof.
Appeal No. 95-4645
Application 07/678,441
6
In view of the foregoing, the decision of the examiner
rejecting claims 10 and 19 under 35 U.S.C. § 102 is reversed as
well as the rejection of dependent claim 11 under 35 U.S.C. §
103.
REVERSED

)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON )
Administrative Patent Judge ) APPEALS AND
Appeal No. 95-4645
Application 07/678,441
7
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
ANTONELLI, TERRY, STOUT & KRAUS
Suite 1800
1300 North Seventeenth Street
Arlington, VA 22209