Ex parte Wang

Board of Patent Appeals and Interferences

May 7, 1999

08220772 (B.P.A.I. May. 7, 1999)

Application for patent filed March 31, 1994. 1
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journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHAY-PING T. WANG
____________
Appeal No. 96-3513
Application No. 08/220,7721
____________
ON BRIEF
____________
Before JERRY SMITH, GROSS, and FRAHM, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 11, 13 through 15, and 17
through 21, which are all of the claims pending in this
application.
Appeal No. 96-3513
Application No. 08/220,772
2
The appellant's invention relates to an output-processing
circuit using at least one latch and at least one adder
circuit to produce neural network outputs. Claim 1 is
illustrative of the claimed invention, and it reads as
follows:
1. A processing circuit for processing the
output of an artificial neuron, said neuron
generating a sequence of outputs, said processing
circuit being coupled to said neuron outputs and to
an output gating function, said processing circuit
comprising:
a latch responsive to one of said neuron outputs
and to said output gating function, said latch
generating an output representative of said neuron
output or zero, depending upon the value of said
output gating function; and
an adder circuit for generating an output, said
adder circuit being responsive to said latch output
and to its own output.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Krutz et al. (Krutz) 3,707,621 Dec. 26, 1972
Claims 1 through 11, 13 through 15, and 17 through 21
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Krutz.
Appeal No. 96-3513
Application No. 08/220,772
3
Reference is made to the Examiner's Answer (Paper No. 12,
mailed February 12, 1996) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
Brief (Paper No. 10, filed November 15, 1995), Supplemental
Brief (Paper No. 16, filed February 17, 1999), and Reply Brief
(Paper No. 13, filed April 15, 1996) for the appellant's
arguments thereagainst.
OPINION
As a preliminary matter, we note that appellant indicates
on page 3 of the Brief (with reasons as set forth in 37 CFR

§§ 1.192(c)(5) and (c)(6)) that the claims do not stand or
fall
together. Appellant groups the claims as follows: (1) claims
1, 4, 7, 10, 11, 13 through 15, and 17 (2) claims 2, 3, 5, 6,
8, 9, 19, and 21, and (3) claims 18 and 20. We will treat
claim 1 as representative of Group 1 and claim 18 as
representative of Group 3.
We have carefully considered the claims, the applied
prior art reference, and the respective positions articulated
by the appellant and the examiner. As a consequence of our
Appeal No. 96-3513
Application No. 08/220,772
4
review, we will reverse the obviousness rejection of claims 1
through 11, 13 through 15, and 17 through 21.
Claim 1 requires "a latch responsive to one of said
neuron outputs and to said output gating function; and an
adder circuit . . . responsive to said latch output and to its
own output." Krutz includes a latch following an adder
circuit, such that the adder circuit is responsive to an input
and the latch output (which is the same as the adder circuit
output). The examiner states (Answer, page 2), that
Krutz forms the new total before it is known if the
applied number is or is not to be included in the
total to be stored in flip-flops 160. It would have
been obvious to a person of ordinary skill in the
art at the time the invention was made to modify
Krutz by placing a gated latch before the adder,
rather than after the adder, because the same
function is being performed, namely the selective
addition of a plurality of numbers.
The examiner further asserts (Answer, page 3) that
Krutz states . . . that he places the latch after
the adder to increase the processing speed, thereby
implying that the latch could be placed before the
adder. Furthermore, one of ordinary skill in the
art would readily realize that the latch location
does not affect the function performed. (emphasis
added)
Appeal No. 96-3513
Application No. 08/220,772
5
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, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988); Stratoflex
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535, 218 USPQ 871, 876
(Fed. Cir. 1983); In re Warner, 379 F.2d 1011, 1016, 154 USPQ
173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057. In so
doing, the examiner is required 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, 837 F.2d
1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir. 1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hospital Systems, Inc. v. Montefiore Hospital,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984); In re
Sernaker, 702 F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983).
Appeal No. 96-3513
Application No. 08/220,772
6
The examiner in the present case has found an implication
in Krutz that the latch "could be" placed before the adder
circuit, but provides no teaching, suggestion, or implication
from the prior art as to why one of ordinary skill in the art
would have been motivated to do so. As pointed out by
appellant (Brief, page 4), "In no instance does the cited
reference suggest configuring of elements as required by the
appealed claims." Accordingly, the examiner has failed to
establish a prima facie case of obviousness for claims 1, 4,
7, 10, 11, 13 through 15, and 17, and the claims dependent
therefrom, claims 2, 3, 5, 6, 8, and 9.
In addition, appellant recites in the preamble of claim 1
a "processing circuit for processing the output of an
artificial neuron said neuron generating a sequence of
outputs, said processing circuit being coupled to said neuron
outputs" (underlining added for emphasis). Further, the body
of the claim refers to "said neuron outputs." The examiner
contends (Answer, page 3) that the phrase "neuron output" is
"the mere labeling of a number or signal." However, "neuron
output" refers to the output of a neuron circuit, which is the
building block of an
Appeal No. 96-3513
Application No. 08/220,772
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artificial neural network, which in turn refers to specific
structures. The terms "neural network" and "neuron output"
are used throughout the specification as the only type of
environment and input for the system, respectively, clearly
indicating that the inventor intended to encompass artificial
neural networks. Accordingly, "neuron output" is not merely a
label. Krutz does not teach or suggest neuron outputs. In
the absence of any suggestion by Krutz, the system of Krutz is
not a neural network and does not involve neuron outputs. As
such the Krutz reference is insufficient to establish a prima
facie case of obviousness.
Independent claims 4, 7, 10, and 14 all include the
phrases of "artificial neurons" and "neuron outputs" in the
preamble and body of the claims, in the same way as claim 1.
Similarly, independent method claims 18 and 20 include steps
which act upon neuron outputs. Since Krutz is not a neural
network or rather does not involve neuron outputs, the
examiner has not accounted for all of the limitations of the
Appeal No. 96-3513
Application No. 08/220,772
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claims and therefore has failed to establish a prima facie
case of obviousness. Accordingly, we
cannot sustain the rejection of claims 1 through 11, 13
through 15, and 17 through 21.
CONCLUSION
The decision of the examiner rejecting claims 1 through
11, 13 through 15, and 17 through 21 under 35 U.S.C. § 103 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERIC FRAHM )
Administrative Patent Judge )
Appeal No. 96-3513
Application No. 08/220,772
9
ANTHONY J. SARLI, JR.
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