Ex Parte Zhang

Board of Patent Appeals and Interferences

Sep 28, 2009

10299730 (B.P.A.I. Sep. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAO ZHANG
____________

Appeal 2009-004134
Application 10/299,730
Technology Center 2600
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Decided: September 28, 2009
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 34, 45, and 56. Claims 1-33, 38-44, 49-55, and 60-66 have been
withdrawn from consideration and claims 35-37, 46-48, and 57-59 have
been objected to by the Examiner for being dependent on rejected claims,
but otherwise allowable if rewritten in independent form to include all the
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limitations of their base claim and those of any intervening claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Invention
Appellant’s invention relates to a finite impulse response (FIR) filter
that uses adaptive truncation and clipping in a wireless communication
device (Spec. 1).
Claim 34, which is representative of the claims on appeal, reads as
follows:
34. A fixed point finite impulse response (FIR) filter
comprising:

a filter input stage capable of receiving an input signal as a
sequence of input samples and generating an intermediate signal
comprising a sequence of filtered samples, wherein said filtered
samples have a larger number of bits than said input samples; and

an output stage capable of truncating k least significant bits
(LSBs) from each of said filtered samples, wherein k is a variable
number, to thereby produce a sequence of output samples.

References
The prior art applied in rejecting the claims on appeal is:
Mathe US 6,389,069 B1 May 14, 2002

Applicant’s Admitted Prior Art (AAPA), pages 12-15 of the Specification;
Figure 2.

Rejection
Claims 34, 45, and 56 stand rejected under 35 U.S.C. § 103(a) based
upon the teachings of AAPA in view of Mathe.
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We make reference to the Appeal Brief (filed Dec. 10, 2007), the
Reply Brief (filed Jun. 6, 2008), and the Answer (mailed Mar. 31, 2008) for
the positions of Appellant and the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments which
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Appellant argues (App. Br. 13) that the filter shown in application
Figure 2 truncates the k least significant bits wherein k is a fixed number.
Appellant further asserts (App. Br. 14 and 16-18) that Mathe indicates that
the value of k can vary according to the application, but like AAPA,
remained fixed in a particular device. Therefore, the issue specifically turns
on whether the combination of AAPA and Mathe teaches or suggests the
claimed subject matter related to truncating k least significant bits wherein k
is a variable number.

PRINCIPLES OF LAW
1. Scope of Claims
The scope of the claims in patent applications is determined not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). The “broadest
reasonable interpretation” rule recognizes that “before a patent is granted the
claims are readily amended as part of the examination process.” Burlington
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Indus. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). Thus, a patent
applicant has the opportunity and responsibility to remove any ambiguity in
claim term meaning by amending the application. In re Prater, 415 F.2d
1393, 1404-05 (CCPA 1969).
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)). "[I]nterpreting what is meant by a word in a
claim is not to be confused with adding an extraneous limitation appearing
in the specification, which is improper." (Emphasis original) In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002).

2. Obviousness
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Such a
showing requires:
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’ . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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ANALYSIS
Appellant’s arguments are focused on how the value of k is varied in
Mathe and assert that the value of k varies according to the application, but
is fixed in a particular device, as shown in Figure 1 of Mathe (App. Br. 16).
Appellant specifically argues that k is not a variable number in any of the
disclosed filters in Mathe because the reference does not disclose any
abilities to vary the value of k once a device has been manufactured (App.
Br. 17). Appellant further asserts lack of proper reasoning for combining
Mathe with AAPA and argues that there is no reason to insert the k-LSB
adder circuit 100 of Mathe after the summer 220 of APA because it serves
no purpose and is inoperable (App. Br. 18-19).
The Examiner responds (Ans. 5) that Mathe incorporates truncating
variations of k least significant bits (LSB) by showing different numbers of
LSB (i.e., 3 LSB in circuit 32, 4 LSB in circuit 36, 5 LSB in circuit 40)
truncated in circuits 32, 36, and 40, as shown in Figure 1. The Examiner
points out that, as suggested by Mathe (col. 4, ll. 49-50 and col. 8, ll. 58-60),
one of ordinary skill in the art would have adjusted the number of truncated
bits to meet the need for a given application (id.). The Examiner also finds
that the claims do not recite any specific requirement as to how and when k
is varied (id.). With respect to the combination of Mathe with AAPA, the
Examiner cites low power consumption and elimination of gain mismatch as
the reason the ordinary skill in the art would have found the combination
obvious (Ans. 5-6).
Giving the broadest reasonable interpretation in light of the
Specification to the claims without importing limitations from the
Specification, we find the Examiner’s interpretation of the claim term
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“wherein k is a variable number” to be reasonable. As argued by the
Examiner (Ans. 5), the claim does not specify how k is varied, how varying
k affects the output, or the manner by which k is varied. While Appellant’s
Specification describes specific schemes for varying k, such as feedback
(Fig. 6) or feed-forward control (Fig. 3), the disputed claims are not so
limited. Therefore, even if the value of k in Mathe may remain unchanged
within each truncation circuit (Fig. 1; col. 4, ll. 44-52), k is nonetheless a
variable number that is different from one circuit to another for truncating “k
least significant bits (LSBs) from each of said filtered samples,” when
considered as a whole within the FIR filter.
Appellant’s arguments pointing to the details of truncating a variable
number of bits using k as described in the Specification (Reply Br. 14) are
not convincing, since such details cannot be imported from the disclosure
and added to the claims. See In re Cruciferous, 301 F.3d at 1348. We
therefore, find that the interpretation purported by the Examiner for the
claim term “wherein k is a variable number” is reasonable and consistent
with the meaning as understood by one of ordinary skill in the art.
With respect to the combination of Mathe with AAPA, we also agree
with the Examiner (Ans. 5-6) that one of ordinary skill in the art would have
combined the references to reduce the device size and its power
consumption. In fact, Mathe discloses a low power programmable filter
(Abstract) which uses various transfer function in different filter sections in
order to achieve efficiency in space/area and power consumption (col. 1, ll.
48-52; col. 2, ll. 23-36). Therefore, Appellant’s arguments do not amount
to a successful showing that the Examiner’s combination based on the stated
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reason to combine the known elements of Mathe with AAPA in the fashion
claimed, was in error. See KSR, 550 U.S. at 418.

CONCLUSION
Because Appellant has failed to point to any error in the Examiner’s
position, we sustain the 35 U.S.C. § 103 rejection of claims 34, 45, and 56
over AAPA and Mathe.

ORDER
The decision of the Examiner to reject claims 34, 45, and 56 is
affirmed.
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

gvw

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