Ex Parte Pasqualino

Patent Trial and Appeal Board

Dec 19, 2013

10034414 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER PASQUALINO
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Appeal 2011-007715
Application 10/034,414
Technology Center 2400
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Before ELENI MANTIS MERCADER, DEBRA K. STEPHENS, and
BRUCE R. WINSOR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007715
Application 10/034,414

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 19-21. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-18
have been canceled.
We REVERSE.

Introduction
According to Appellants, the claims are directed to a system and
method for transmitting auxiliary data in video encoding (Abstract).

Exemplary Claim
Claim 19, reproduced below, is illustrative of the claimed subject
matter:
19. A system for transmitting auxiliary data in video
encoding comprising:

an un-enhanced encoder;

an enhanced encoder;

an un-enhanced decoder adapted to communicate with
said un-enhanced and enhanced encoders; and

an enhanced decoder adapted to communicate with said
un-enhanced and enhanced encoders.

Appeal 2011-007715
Application 10/034,414

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REFERENCES
Mair
Mair
US 2002/0186322 A1
App. 60/296,924
(hereinafter “’924 Provisional”)
Dec. 12, 2002
Jun. 8, 2001

REJECTIONS
The Examiner made the following rejection:
Claim 19-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mair (Ans. 4-5).

ISSUE
35 U.S.C. § 103(a): Claims 19-21
Appellant asserts the invention as recited in claim 19 is not obvious
over Mair because the portions cited by the Examiner do not antedate
Appellant’s filing date (App. Br. 5-8). According to Appellant, the
Examiner has erred in determining Mair claims priority to ’924 Provisional.
Specifically, Appellant contends ’924 Provisional does not disclose any of
Mair’s Figures 1-5 and does not support the citations relied upon by the
Examiner (App. Br. 6). Appellant argues the ’924 Provisional describes use
of extra bits, but does not teach the description disclosed in the cited
portions of Mair (App. Br. 6-7; Reply Br. 6-8).
Thus, the issue presented by these arguments is:
Issue: Has the Examiner erred in finding Mair qualifies as prior art
and thus, in rejecting the present invention as recited in claim 19 for
obviousness?

Appeal 2011-007715
Application 10/034,414

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ANALYSIS
We agree with Appellant. The Examiner has not shown the limited
disclosure relied upon in ’924 Provisional renders the present invention
obvious. Indeed, ’924 Provisional describes use of 8 bit/10 bit encoding for
data with two extra bits performing specific and distinct functions (pg. 1,
§ Introduction). ’924 Provisional further discloses the proposal is to use DC
balancing bits to transport audio information (id.). ’924 Provisional also
discloses replacing the DC balance bit with audio data (pg. 1-2, § Principle
of Operation). However, we agree with Appellant that the Examiner has not
shown ’924 Provisional discloses the teachings which the Examiner relies
upon in rejecting the present invention as recited in claim 1.
Accordingly, based on the record before us, we are constrained to
reverse the rejection of claims 19-21 under 35 U.S.C. § 103(a) for
obviousness over Mair.

DECISION
The Examiner’s rejection of claims 19-21 under 35 U.S.C. § 103(a) as
being unpatentable over Mair is reversed.

REVERSED

msc