Ex Parte Reams

Board of Patent Appeals and Interferences

Feb 28, 2011

10380190 (B.P.A.I. Feb. 28, 2011)

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.
10/380,190 03/07/2003 Robert W Reams 443-23-782 4554
43634 7590 02/28/2011
DTS, INC.
5220 Las Virgenes Road
Calabasas, CA 91302
EXAMINER
LEE, PING
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
02/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT W. REAMS
____________________

Appeal 2009-010738
Application 10/380,190
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD and
MARC S. HOFF, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010738
Application 10/380,190

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-11 and 21-29. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim(s)
Exemplary independent claims 1 and 21 under appeal reads as
follows:
1. A system for processing audio data comprising:
a spectral shaping system receiving sample audio data and
adaptive gain data and generating spectral characteristic data for a
plurality of spectral bands, wherein the spectral characteristic data
includes spectral characteristic data for predetermined frequency
bands for a combination of left channel data and right channel data
and a difference between left channel data and right channel data; and
an audio processing system receiving the spectral characteristic
data and processing the audio data so as to provide the spectral
characteristic data for the spectral bands of the audio data.
21. A method for processing audio data comprising:
selecting audio characteristic data based on audio sample data
having predetermined characteristics;
generating causal spectral characteristic data for predetermined
frequency bands of the left channel audio sample data combined with
predetermined frequency bands of the right channel audio sample
data;
generating acausal spectral characteristic data for a difference
between predetermined frequency bands of the right channel audio
sample data and predetermined frequency bands of the left channel
audio sample data;
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processing a combination of left channel audio data and right
channel audio data with the causal channel spectral characteristic data;
and
processing a difference between left channel audio and right
channel audio data with the acausal channel spectral characteristic
data.

Rejections
1. The Examiner rejected claim 11 under 35 U.S.C. § 112, second
paragraph, as being indefinite.2
2. The Examiner rejected claims 1, 4-6, 21-27, and 29 under
35 U.S.C. § 102(b) as being anticipated by Klayman (US 4,866,774).
3. The Examiner rejected claim 28 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Klayman ‘774 and Klayman
(US 4,748,669).
4. The Examiner rejected claims 2, 8, and 10 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Klayman
‘774 and Craven (US 5,815,580).
5. The Examiner rejected claim, 3, 7, 9, and 11 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Klayman
‘774, Craven, and Eatwell (US 5,481,615).

Appellant’ s Contention
Appellant contends that the Examiner erred in rejecting claim 21
under 35 U.S.C. § 102(b) because in construing claim 21, the Examiner has

2 This rejection is not argued in the Briefs. Therefore, the rejection is
affirmed as a matter of form.
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Application 10/380,190

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mistakenly “taken the position that sample audio data is the same as the
audio data.” (Reply. Br. 10).

Issues on Appeal
Whether the Examiner has erred in rejecting claim 21 as being
anticipated because the claimed sample audio data and the claimed audio
data are distinct and Klayman ‘774 fails to disclose both?

ANALYSIS
Claims 21-29
Appellant presents several arguments as to why the Examiner has
erred in rejecting claim 21. (App. Br. 12-14 and Reply Br. 9-10). We agree
with the Appellant’s above specifically quoted contention. The Examiner
has erred in finding that Klayman ‘774 describes both the sample audio data
and the audio data required by the claim.
Therefore, Appellant has established that the Examiner erred with
respect to the rejections of claims 21-29.

Claims 1-11
As to Appellant’s arguments as to why the Examiner has erred in
rejecting claims 1-11 based on the prior art references, we do not reach the
merits of the Examiner’s rejections or the merits of the references at this
time. Rather, we reverse pro forma the outstanding rejections of claims 1-11
under 35 U.S.C. §§ 102(b) and 103(a) because appealed claims 1-11 fail to
satisfy the requirements of the second paragraph of 35 U.S.C. § 112. Before
a proper review of the prior art rejection can be performed, the subject
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matter encompassed by the claims on appeal must be reasonably understood
without resort to speculation.
Claims 1-11 recite (or depend from claims that recite) “a spectral
shaping system receiving . . . and generating” (claim 1), “an audio
processing system receiving . . . and processing” (claim 1), “a spectral
parameter system generating” (claim 2), a first “image management system
receiving . . . and generating” (claim 4), a second “image management
system receiving . . . and generating” (claim 5), “a causal parameter system
and an acausal parameter system generating” (claim 6), “a spectral target
system receiving . . . and processing” (claim 8), “a causal target system
receiving . . . and processing” (claim 10), and “an acausal target system
receiving . . . and processing” (claim 10).
Although these claim limitations do not use the phrase “means for,”
we conclude that Appellant uses the “system” terms of these claims to
invoke § 112, ¶ 6. Although a limitation will not invoke § 112, ¶ 6 when
there is a structural modifier that further describes a non-structural term such
as “system”, our analysis determines that only non-structural modifiers are
recited. See Federal Register: February 9, 2011 (Volume 76, Number 27)
Pages 7162-7175 at Part 1, III, C, 1.
None of these means-plus-function claims recite structure sufficient to
perform of the claimed functions in its entirety. Therefore, we look to the
specification to identify the corresponding structure for each recited
function. However, we find that the specification states (emphasis added):
System 100 includes masking control system 102 and
audio target system 104, spectral shaping system 106, image
management system 108, audio processing system 110, and
audio data system 112, each of which can be implemented in
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hardware, software or a suitable combination of hardware and
software, which can be one or more software systems operating
on a general purpose processing platform. As used herein, a
software system can include user readable code, source code,
machine readable code, object code, one or more objects,
agents, threads, line of code, subroutines, separate software
applications, two or more lines of code or other suitable
software structures operating in two or more separate software
applications, on two or more different processors, or other
suitable software architectures. In one exemplary embodiment,
a software system can include one or more lines of code or
other suitable software structures operating in a general
purpose software application, such as an operating system, and
one or more lines of code or other suitable software structures
operating in a specific purpose software application.
Appellant’s Specification ¶ [0026]. See also ¶¶ [0035], [0041], [0051],
[0059], and [0064]. Consequently, Appellant’s Specification places no
boundary on the structure (or particular computer algorithm) to perform the
function recited in the claim. See Federal Register: February 9, 2011
(Volume 76, Number 27) Pages 7162-7175 at Part 1, III, C, 2 & 3.
Since Appellant does not set forth in the specification an adequate
disclosure showing what is meant by the means-plus-function language in
the claims, as required by 35 U.S.C. 112, ¶ 6, we conclude that Appellant
fails to set forth an adequate disclosure as required by § 112, ¶ 2. See In re
Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994). We further
conclude that Appellant has failed to particularly point out and distinctly
claim the invention as required by the second paragraph of section 112, and
that claims 1-11 are indefinite.
Presently, we would be forced to engage in speculation and conjecture
to determine the scope of the claimed invention as the claims are indefinite
under 35 U.S.C. § 112, second paragraph. This we decline to do. See In re
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Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.);
see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious- the claim becomes indefinite.”).
New Ground of Rejection 3
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

3 The DATE OF THE DECISION is the “MAIL DATE” (paper delivery
mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown
on the PTOL-90A cover letter attached to this decision.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claim 11 under
35 U.S.C. § 112, second paragraph, as being indefinite.
(2) Appellant has established that the Examiner erred in rejecting
claims 21-27 and 29 as being anticipated under 35 U.S.C. § 102(b).
(3) Appellant has established that the Examiner erred in rejecting
claim 28 as being unpatentable under 35 U.S.C. § 103(a).
(4) Claims 1-11 are not patentable.
(5) On this record, claims 21-29 have not been shown to be
unpatentable.

DECISION
The Examiner’s rejection of claim 11 under 35 U.S.C. § 112 is
affirmed.
The Examiner’s rejection of claims 1, 4-6, 21-27, and 29 under
35 U.S.C. § 102(b) is reversed.
The Examiner’s rejections of claims 2, 3, 7-11, and 28 under
35 U.S.C. § 103(a) are reversed.

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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-IN-PART
37 C.F.R. § 41.50(b)

kis

DTS, INC.
5220 Las Virgenes Road
Calabasas CA 91302