Ex Parte Sculley

Board of Patent Appeals and Interferences

Aug 27, 2004

09849761 (B.P.A.I. Aug. 27, 2004)

The opinion in support of the decision being entered
today was not written for publication
and is not binding precedent of the Board.

Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TERRY L. SCULLEY
_____________

Appeal No. 2003-2156
Application No. 09/849,761
______________

ON BRIEF
_______________

Before THOMAS, BARRETT, and DIXON, Administrative Patent
Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 25.
Representative claim 14 is reproduced below:
14. A method for reducing noise in an output signal
of an analog-to-digital converter (ADC), the method
comprising:

dividing the output signal into frequency
subbands;

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processing a frequency subband signal in each of
the subbands by passing the frequency subband signal in
each of the subbands to a corresponding input of a
summing node if the frequency subband signal is outside
of a threshold range and passing an attenuated value
signal to the summing node if the signal is within the
threshold range; and

generating a final output signal by summing the
processed frequency subband signals at the summing
node.

The following reference is relied upon by the examiner:
Kolesnik et al. (Kolesnik) 6,263,312 Jul. 17, 2001
(filing date Mar. 02, 1998)

Claims 1 through 25 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner relies upon
appellant’s admitted prior art in view of Kolesnik.
Rather than repeat the positions of the appellant and
the Examiner, reference is made to the Brief and Reply Brief
for appellant’s positions, and to the Answer for the
Examiner’s positions.
OPINION
We sustain the rejection of claims 1 through 25
rejected under 35 U.S.C. § 103.
At the outset, we note that the top of page 4 of the
principal Brief on appeal indicates that each of the claims
on appeal stand or fall “together”. None of the claims on
appeal are argued separately. Moreover, no claim feature

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has been argued but only aspects of the disclosed invention
repeated in the Brief and Reply Brief. Thus, we choose as a
representative claim for our consideration, independent
claim 14 on appeal, as reproduced earlier in this opinion.
Although we agree with appellant’s characterizations in
the Brief and Reply Brief that the examiner has not set
forth a sufficient rationale in the answer as to the
combinability/motivation of appellant’s admitted prior art
with Kolesnik, we still sustain the rejection of the claims
on appeal. Initially, the examiner’s statement of the
rejection at page 3 of the Answer implicitly includes
independent claims 1, 8, 14 and 22. The examiner has not
separately parsed these independent claims, but has
considered each of the remaining dependent claims on appeal
at pages 3 and 4. The examiner has not presented to us a
detailed study of what the teachings of the admitted prior
art and Kolesnik are. The examiner’s rationale is either
unexplained or weakly explained. We will therefore not
speculate as to the combinability of the respective
references relied upon by the examiner.

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On the other hand, we sustain the rejection of
representative independent claim 14 on appeal because our
consideration shows that the admitted prior art alone is
sufficient to have rendered the subject matter of this
representative claim on appeal obvious within 35 U.S.C.
§ 103.
We make reference to the prior art discussion at
specification page 1, line 7 through page 5, line 7. Of the
prior art discussion of the material at these pages, we make
initial reference to the discussion that analog radio
receiver technology provided a prior art squelch operation
equivalent in the art to the claimed muting/unmuting
functions. According to the discussion at the bottom of
specification page 2, this squelching or muting operation
would turn off or mute the analog output signal if it was
below a given threshold level, the effect of which reduced
unnecessary noise. On the other hand, when an analog output
signal was above the given threshold, the output was again
turned on or unmuted. Functionally, this is equivalent to
the claimed muting and unmuting functions of the claims on

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appeal, irrespective of whether the unmuting and muting
functions are recited per se. This analog receiver muting
function was apparently only applicable to one band of
frequencies, and there was no signal summing operation.
The teachings of this just-discussed prior art was
applied to digital-to-analog converters according to the
discussion at pages 3 and 4 of the specification as filed in
a second example of what prior art squelching techniques
were utilized to function in a muting and unmuting
situation. This discussion makes reference to prior art
Figures 1 and 2. When the digital input signals to these
DACs were all zeros for a given time, the prior art
mute/unmute control muted the output signal. On the other
hand, any time the input signal was not zero, the output
signal was immediately unmuted. Again, these functions
relate to the corresponding functions of the claims on
appeal, yet still apparently applied to only one band of
frequencies and no signal summing operation. The top of
page 4 indicated that this approach was used in prior art CD
players.

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The discussion at specification pages 4 and 5, and a
third example, recognizes that prior art squelching
operations applied to ADC converted audio signals for data
compression in MPEG (Moving Pictures Expert Group). In a
manner directly applicable to the claimed invention
utilizing plural bands of digital audio information, a given
digital audio signal is divided into multiple subbands by a
digital filter bank which has a threshold masking function
settable for each of the priority of frequency subbands. It
appears that this settability of the threshold level
corresponds to the ability to selectively mute and unmute or
selectively choose the allowable noise level for each
respective band. As explained at the top of page 5 of the
specification as filed, in any given band where the noise
level was outside (claim 14) of a given threshold masking
level, the signal was preserved and unmuted or not
attenuated in any manner. Correspondingly, in those bands
of frequency which were not outside of the threshold mask
level, that is, that were within (claim 14) the respective
threshold mask level value, the signal was attenuated. This
attenuation took the form of fewer bits of the comparable

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data signal were allowed to be propagated at the output in
direct opposite comparison to the nonattenuated or preserved
signal values where many bits of information were utilized
to characterize the output signal. Lastly, it is stated at
page 5, lines 5 through 7 that an “[a]pproximate replica of
the original signal may be reconstructed from the compressed
data by combining the subband signals into a single output.”
This combination function is equivalent to the summing
operation of representative claim 14 on appeal.
As noted at the top of page 3 of the Brief, the claims
on appeal have not been amended and are originally filed
claims, which clearly read on appellant’s own admitted prior
art. In other words, the claims were filed and prosecuted
by the appellant where the claims did not distinguish over
the prior known to the appellant.
In view of the foregoing, the decision of the examiner
rejecting all claims on appeal under 35 U.S.C. § 103 is
affirmed.

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

AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )

JDT/ls/vsh

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