Ex parte Strohacker

Board of Patent Appeals and Interferences

Jun 27, 2001

08516773 (B.P.A.I. Jun. 27, 2001)

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for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte OSCAR C. STROHACKER
____________
Appeal No. 1998-3362
Application No. 08/516,773
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and LEVY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-4, 6, 15-18, and 20, which are the only claims
remaining in the application. Claims 5, 7-14, 19, and 21 have
been canceled. An amendment filed July 23, 1997 after final
rejection was entered by the Examiner.
Appeal No. 1998-3362
Application No. 08/516,773
2
The claimed invention relates to a method and system for
preprocessing multiple bit per pixel sampled data in which
data stored in a frame buffer is transposed from a pixel based
format to a bit plane based format before compression.
Appellant asserts at page 4 of the specification that, by
regrouping the sampled video data from pixel referenced bits
and strings to bit plane bits and strings, the compressibility
of the data is improved. This improvement in data
compressibility resulting from the regrouping of data is
further asserted by Appellant to stem from the segregation of
the more significant bits from the least significant bits,
thereby efficiently utilizing the bit significance represented
by the frame buffer bit planes.
Claim 1 is illustrative of the invention and reads as
follows:
1. A system suited to the compression of video data,
comprising:
a frame buffer means with multiple bit planes for storing
digital format video data composed of multiple data bits per
pixel;
means for serially reading the video data from a selected
bit plane of the frame buffer means;
Appeal No. 1998-3362
Application No. 08/516,773
3
means for forming the serially read video data into
groups;
means for transmitting formed groups in ordered
succession;
means for compressing the video data as represented in
the ordered succession of groups; and
means for transmitting tokens representing the ordered
succession of groups in compressed form.
The Examiner relies on the following prior art:
Hattori 5,170,368 Dec. 08,
1992
Katayama et al. (Katayama) 5,361,147 Nov. 01,
1994
Strohacker 5,526,472 Jun. 11,
1996
(filed Oct. 07, 1994)
Claims 1-4, 6, 15-18, and 20 stand finally rejected under
35 U.S.C. § 103. As evidence of obviousness, the Examiner
offers Katayama alone with respect to claims 1, 2, 15, and 16,
and adds Hattori to Katayama with respect to claims 3, 4, 6,
17, 18, and 20. In a separate 35 U.S.C. § 103 rejection,
claims 3, 4, 6, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Katayama in view of
Strohacker.
Appeal No. 1998-3362
Application No. 08/516,773
4
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 12) and
Answer (Paper No. 13) for the respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth
in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1-4, 6, 15-18, and 20. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
Appeal No. 1998-3362
Application No. 08/516,773
5
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Appeal No. 1998-3362
Application No. 08/516,773
6
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the obviousness rejection of both of the
appealed independent claims 1 and 15 based on Katayama,
Appellants assert the Examiner’s failure to establish a prima
facie case of obviousness since all of the claim limitations
are not taught or suggested by the applied Katayama reference.
In particular, Appellant contends (Brief, page 6) that
Katayama has no disclosure of the serial reading of video data
from a selected bit plane of a frame buffer, as well as
lacking any disclosure of the formation of the serially read
data into groups.
After reviewing the disclosure of the Katayama reference
in light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Brief. In making the
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Application No. 08/516,773
7
rejection, the Examiner makes reference to the disclosure at
column 6, lines 6-15 of Katayama which describes the frame-
sequential read out of Y, U, and V component data (which the
Examiner has likened to bit planes) as supporting the
conclusion that serial read out is taking place. In our view,
however, this cited portion of the Katayama disclosure
describes only the read out of data from frame to frame in
sequential frame order, and not in what manner the data bits
are read from each of the Y, U, and V frames. Although the
Examiner suggests (Answer, page 10) that most image
compression systems are serial in nature, such assertion is
devoid of any supporting evidence on the record. We are not
inclined to dispense with proof by evidence when the
proposition at issue is not supported by a teaching in a prior
art reference, common knowledge or capable of unquestionable
demonstration. Precedence of our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
Appeal No. 1998-3362
Application No. 08/516,773
8
It is further our view, that even assuming, arguendo, the
correctness of the Examiner’s assertion that serial read out
from the frame memories is taking place in Katayama, such fact
alone does not address the issue of obviousness with respect
to the specific limitations of the appealed independent claims
1 and 15. Each of claims 1 and 15, besides a recitation of
the serial read out of video data from frame buffers, requires
the formation of the serially read data into groups as well as
the transmitting of the formed groups in ordered succession.
While the Examiner has asserted that the sub sampling unit 6
and orthogonal conversion unit 8 in Katayama perform these
functions, we find no description in Katayama that would
support the Examiner’s conclusion that grouping and
transmission in ordered succession is taking place. In order
for us to sustain the Examiner’s rejection under 35 U.S.C. §
103, we would need to resort to speculation or unfounded
assumptions or rationales to supply deficiencies in the
factual basis of the rejection before us.
In re Wagner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968), rehearing denied,
390 U.S. 1000 (1968). Accordingly, since the Examiner has not
Appeal No. 1998-3362
Application No. 08/516,773
9
established a prima facie case of obviousness, the rejection
of independent claims 1 and 15, and claims 2 and 16 dependent
thereon, over Katayama is not sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103 rejection of dependent claims 3, 4, 6, 17, 18, and 20 in
which the Strohacker and Hattori references are alternatively
added to Katayama, we do not sustain this rejection as well.
It is apparent from the Examiner’s analysis (Answer, pages 5
and 7) that Strohacker and Hattori are relied on solely to
address the claimed use of shift registers in data compression
systems. We find nothing, however, in the disclosures of
Strohacker and Hattori which would overcome the innate
deficiencies of Katayama discussed supra.
In conclusion, since the Examiner has not established a
prima facie case of obviousness, the 35 U.S.C. § 103 rejection
of independent claims 1 and 15 and claims 2-4, 6, 16-18, and
20 dependent thereon, cannot be sustained. Therefore, the
decision of the Examiner rejecting claims 1-4, 6, 15-18, and
20 is reversed.
REVERSED
Appeal No. 1998-3362
Application No. 08/516,773
10
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
lp
CASIMER K SALYS
INTERNATIONAL BUSINESS MACHINES CORP
INTELLECTUAL PROPERTY LAW DEPARTMENT
11400 BURNET ROAD INTERNAL ZIP 4054
AUSTIN TX 78758
Leticia
Appeal No. 1998-3362
Application No. 08/516,773
APJ RUGGIERO
APJ LEVY
APJ FLEMING
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: January 29, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT