Ex parte Terane

Board of Patent Appeals and Interferences

Mar 13, 2000

08356966 (B.P.A.I. Mar. 13, 2000)

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Paper No. 24
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HIDEYUKI TERANE
______________
Appeal No. 1998-0496
Application 08/356,966
_______________
HEARD: FEBRUARY 24, 2000
_______________
Before KRASS, JERRY SMITH and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-11, which constitute all the
claims in the application. An amendment after final rejection
was filed on January 2, 1997 but was denied entry by the
examiner.
Appeal No. 1998-0496
Application 08/356,966
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The disclosed invention pertains to a method and apparatus
for processing signals. The invention has particular disclosed
utility in the decoding of variable length Huffman codes for use
in performing transformations in the restoration of received
image data.
Representative claim 1 is reproduced as follows:
1. A signal processing device for processing an input
signal including a plurality of first digits and a plurality of
second digits, wherein the plurality of first digits indicate a
run length of a single first value, and wherein the plurality of
second digits include at least one second value other than said
first value, said signal processing device comprising:
(a) an address generator comprising:
(a-1) a first input for sequentially receiving a run
length indicative of a number of contiguous first values in said
input signal;
(a-2) a second input for sequentially receiving said
second digits;
(a-3) a first output for sequentially outputting a
first address updated by a value of said run length plus one; and
(a-4) a second output for sequentially outputting said
second digits in synchronism with a first address, and
(b) a signal processor for performing a predetermined signal
processing upon said first address and said second digits to
output an array of output signals.
The examiner relies on the following references:
Saito et al. (Saito) 5,184,229 Feb. 2, 1993
Fukuda et al. (Fukuda) 5,416,854 May 16, 1995
(filed July 30, 1991)
Appeal No. 1998-0496
Application 08/356,966
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Claims 1 and 7 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by the disclosure of Saito. Claims 2-6 and 8-
11 stand rejected under 35 U.S.C. § 103 as being unpatentable
over the teachings of Saito and Fukuda.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the examiner and the evidence of
anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us,
that the disclosure of Saito does not fully meet the invention as
recited in claims 1 and 7. We are also of the view 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
Appeal No. 1998-0496
Application 08/356,966
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obviousness of the invention as set forth in claims 2-6 and 8-11.
Accordingly, we reverse.
We consider first the rejection of independent claims 1 and
7 as being anticipated by the disclosure of Saito. Anticipation
is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed,
468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984).
With respect to each of claims 1 and 7, the examiner
indicates how he reads these claims on the disclosure of Saito on
page 3 of the answer. Appellant points primarily to the elements
labeled “(a-3)” and “(a-4)” in claim 1 and the steps labeled
“(c)” and “(d)” in claim 7 as claim recitations which are not met
by Saito. According to appellant, what the examiner identifies
in Saito as generating an address by updating a first address by
a value of the run length plus one does not in fact meet the
recitation of claims 1 or 7 [brief, pages 4-7]. The examiner has
Appeal No. 1998-0496
Application 08/356,966
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indicated that the “run length plus one” of the claims is met by
the overflow in Saito [answer, page 3] or by the non-zero
amplitude digits of Saito [id., page 6].
We base our decision essentially on the arguments presented
by appellant in the briefs. We agree with appellant that neither
the overflow in Saito nor the non-zero digits in Saito are
combined with the run length in Saito to generate sequential
updated addresses which meet the limitations of claims 1 or 7.
The examiner’s mere assertion that the recitations of claims 1
and 7 are fully met by the disclosure of Saito is simply
unsupported by the Saito disclosure.
Since we agree with appellant that every limitation of
claims
1 and 7 is not fully disclosed by Saito, we do not sustain the
examiner’s rejection of claims 1 and 7 under 35 U.S.C. § 102.
We now consider the rejection of claims 2-6 and 8-11 under 35
U.S.C. § 103 as unpatentable over the teachings of Saito and
Fukuda. 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
F.2d 1071, 1073,
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Application 08/356,966
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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. 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). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
Appeal No. 1998-0496
Application 08/356,966
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evidence as a whole and the relative persuasiveness of the
arguments. See Id.;
In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made by
appellant have been considered in this decision. Arguments which
appellant could have made but chose not to make in the brief have
not been considered [see 37 CFR § 1.192(a)].
Claims 2-6 and 8-11 depend from either claim 1 or claim 7.
The examiner relies on Saito for teaching all the limitations of
claims 1 and 7 as noted above. The Fukuda reference does not
overcome the deficiencies in Saito that were discussed above.
Thus, there are differences between the claimed invention and the
teachings of Saito and Fukuda which have not been properly
addressed by the examiner. The failure to address the
obviousness of these differences between the claimed invention
and the applied prior art results in a failure to properly
establish a prima facie case of obviousness. As noted above, the
failure to make the prima facie case of obviousness by the
examiner must result in a reversal of the rejection made under 35
U.S.C. § 103.
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Application 08/356,966
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In conclusion we have not sustained either of the examiner’s
rejections of the claims. Therefore, the decision of the
examiner rejecting claims 1-11 is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
Anita Pellman Gross )
Administrative Patent Judge )
JS/cam
Appeal No. 1998-0496
Application 08/356,966
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