Ex Parte Suzuki

Board of Patent Appeals and Interferences

Oct 31, 2007

09951452 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIROSHI SUZUKI
____________

Appeal 2007-2921
Application 09/951,452
Technology Center 2600
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Decided: October 31, 2007
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Before ANITA PELLMAN GROSS, JEAN R. HOMERE, and
SCOTT R. BOALICK, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 2, 5, 6, 9, 10, and 13. Claims 3, 4, 7, 8, 11, and 12
Appeal 2007-2921
Application 09/951,452

have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) to decide
this appeal. We affirm.
The Invention
Appellant invented a data recording method and apparatus for
compressing digital data bands. The invention uses a quantizer that encodes
the incoming digital data to output quantized data including a quantization
error that is subsequently recompressed and added to the compressed data.
(Specification 8.)
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. A compression data recording apparatus for compressing a digital
signal, comprising:

a filter configured to divide an input signal into a plurality of bands; and

a mechanism configured to perform compression and a decompression of
said divided bands,

wherein said compressing and decompressing mechanism is arranged at a
plurality of stages in a layer manner and said mechanism comprises an
encoder configured to encode the information in said divided bands and
output an error based on the results of said encoding, said error being
recompressed and added to the compressed data.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Park US 6,122,618 Sep. 19, 2000

The Examiner rejects the claims on appeal as follows:
Claims 1, 2, 5, 6, 9, 10, and 13 stand rejected under 35 U.S.C. § 102(e), as
being anticipated by Park.
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Application 09/951,452

First, Appellant contends1 that Park does not anticipate the invention
as recited in claims 1, 2, 5, 6, 9, 10, and 13. Particularly, Appellant contends
that Park teaches neither outputting an error based on the results of encoding
digital data bands nor recompressing the resulting error before adding it to
the compressed data. (App. Br. 5 and 8.) In response, the Examiner
contends that Park’s disclosure of quantizing digital signal bands into multi-
layered bitstreams that are subsequently encoded teaches the invention as
claimed. (Answer 5 through 8.)
ISSUE
The pivotal issue in the appeal before us is as follows:
1. Has Appellant shown2 that the Examiner failed to establish that the
disclosure of Park anticipates the claimed invention under

1 This decision considers only those arguments that Appellant submitted in
the Appeal Brief. Arguments that Appellant could have made but chose not
to make in the Brief are deemed to have been waived. See 37 C.F.R.
§ 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368 (Fed. Cir. 2004).
2 In the examination of a patent application, the Examiner bears the initial
burden of showing a prima facie case of unpatentability. In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). When that burden is met, the burden then
shifts to the applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339,
1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). If the
applicant produces rebuttal evidence of adequate weight, the prima facie
case of unpatentability is dissipated. Piasecki, 745 F.2d at 1472. Thereafter,
patentability is determined in view of the entire record. Id. However,
Appellant has the burden on appeal to the Board to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
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Application 09/951,452

35 U.S.C. § 102(e)? Particularly, does Park’s disclosure anticipate the
claimed invention given that Park teaches quantizing incoming digital signal
bands to generate multi-layered bitstreams that are subsequently encoded?
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
The Invention
1. Appellant invented a data recoding method and apparatus for
compressing incoming digital signal bands. (Specification 8.)
2. As depicted in Figure 1, upon receiving digital signal bands
generated from a filter (61) and an analog to digital converter (62), an
encoder (63) quantizes the received bands to output compressed data
including a quantization error. (Specification 27.)
3. The resulting quantization error is further re-compressed in
another encoder (65), and subsequently added to the compressed data. (Id.)
The Prior Art Relied Upon
4. Park discloses a method and apparatus for coding and decoding
audio signals. (Abstract, Title.)
5. As shown in Figure 2, Park discloses a quantizing module (220)
that, upon receiving digital signal bands generated from a filter (200),
outputs quantized data including a quantization noise or error. (Col. 5, ll.
54-67.)3 The ensuing quantized data and quantization error are represented

3 Park states that “[t]he quantizing portion 220 quantizes the signals for each
predetermined coding band so that the quantization noise of each band
4
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Application 09/951,452

as multilayered bitstreams where the most significant bit (MSB) represents
the base layer while the least significant bits (LSBs) represent the
enhancement layers. (Col. 8, l. 65- col. 9, l. 11.)
6. Park discloses a bit packing portion (240) for sequentially
encoding the quantized values from MSBs to LSBs. Particularly, the bit
packing portion codes the side information corresponding to the base layer
and the enhancement layers resulting from the quantization. (Col. 6, ll. 1-
20.)
7. As depicted in Figure 14, Park discloses that, in the prior art, an
original signal is sampled and filtered to produce digital signal bands that are
encoded. The encoded signals are fed to a bitstream multiplexer. They are
also decoded, inverse filtered and up-sampled to re-construct the original
signal. The reconstructed signal is compared to the original signal in an
adder to generate an error. The error is subsequently encoded before it is
recombined with the encoded signal data in the bitstream multiplexer. (Col.
2, ll. 60-67.)

becomes smaller than the masking threshold.” (Col. 5, ll. 54-56.) (Emphasis
added.)
4 The Examiner notes in passing that the teachings of the prior art alone, in
Figure 1 of Park, anticipate the invention, as claimed. (Answer 6.) We
agree.
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PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”)
ANALYSIS
We begin our analysis by noting that independent claims 1, 2, 5, 6, 9,
10, and 135 recite outputting an error based on the results of encoding
information in divided bands, and subsequently recompressing the error

5 Appellant did not provide separate arguments with respect to the rejections
of claims 1, 2, 5, 6, 9, 10, and 13. Therefore, we select independent claim 1
as being representative of the cited claims. Claims 2, 5, 6, 9, 10 and 13
consequently fall together with representative claim 1. See In re Young,
927 F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).
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before adding it to the compressed data. (App. Br., Claim Appendix.) We
find that Park’s disclosure reasonably teaches this limitation.
As detailed in the Findings of Fact section above, we have found that
Park, similarly to the claimed invention, outputs quantized data including
quantization noise or error resulting from quantizing incoming digital signal
bands. (Finding 5.) We have also found that the multilayered bitstreams
generated in Park’s quantization include a base layer represented by the
MSBs, as well as enhancement layers represented by the LSBs that serve the
purpose of enhancing the quality of the signal portion represented by the
base layer. (Id.) We note that by the nature of the quantizer itself, as used
both in Appellant’s invention and in Park, upon being used to encode or
compress the incoming signal bands, the quantizer outputs the quantization
error along with the quantized signal. We thus agree with the Examiner that
the generated bitstreams6 include the quantization error, as well.
Next, we have found that Park discloses further encoding the
generated quantized data including the quantization noise to generate the
output bitstream. (Finding 6.) Thus, we agree with the Examiner that the
quantization error included in the quantized data is further compressed in the
bit packing portion. It follows that the Examiner did not err in rejecting
independent claims 1, 2, 5, 6, 9, 10, and 13 as being anticipated by Park.

6 [I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).

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CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
failed to establish that Park’s disclosure anticipates claims 1, 2, 5, 6, 9, 10,
and 13 under 35 U.S.C. § 102(e).
DECISION
We have affirmed the Examiner’s decision rejecting claims 1, 2, 5, 6,
9, 10, and 13.
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

ce/clj

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA VA 22314
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