Ex Parte Ekudden et al

Patent Trial and Appeal Board

Nov 28, 2012

09789691 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEALS BOARD
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Ex parte ERIK EKUDDEN and JOHAN SJOBERG
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Appeal 2010-003970
Application 09/789,691
Technology Center 2600
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Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have filed a Request for Rehearing (hereinafter “Request”)
under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of July 13,
2012 (hereinafter “Decision”).

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The Decision affirmed the Examiner’s rejections as follows:
1. We affirmed the Examiner’s rejection of claims 37, 38, 40,
41, 44, and 46-48 under 35 U.S.C. §103(a) as being
unpatentable over the combination of Schuster
(US 6,175,871, January 16, 2001) (“Schuster”) and
Hardwick (US 5,517,511, May 14, 1996) (“Hardwick”).
2. We affirmed the Examiner’s rejection of claims 42 and 43
under 35 U.S.C. §103(a) as being unpatentable over the
combination of Schuster, Hardwick, and Jarvinen
(US 6,470,470, October 22, 2002) (“Jarvinen”).
Appellants seek reconsideration of our Decision affirming the
Examiner’s rejection of claims 37, 38, 40-44, and 46-48 under 35 U.S.C.
§ 103(a). Specifically, Appellants argue that the Board erred by: (1)
misapprehending the nature of the teachings of Hardwick; (2) by failing to
consider the prior art in its entirety; (3) by employing impermissible
hindsight when viewing the references; and (4) by improperly combining the
references when Hardwick teaches away from their combination. Request 2-
3. We address each argument in turn.

(1) The teachings of Hardwick.
Appellants argue that Hardwick teaches that the most error-sensitive
bits in a frame receive a higher weight in a set of quantizer values. Request
2. Appellants contend that the bits are then prioritized according to their
weights, and are then encoded with error control codes. Id. Appellants
argue that error control codes with higher redundancy are used to encode the
higher priority (i.e., higher weight) bits. Id. According to Appellants, there
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is no teaching or suggestion in Hardwick of including the most sensitive data
in subsequent redundant frames. Id.
Hardwick teaches that, in the state of the contemporaneous art, it was
well-known that error control codes:
function by converting a set of information bits into a large
number of bits which are then transmitted across the channel.
The increase in the number of bits can be viewed as a form of
redundancy which enables the receiver to correct and/or detect
up to a certain number of bits errors. In traditional ECC
methods the number of bits errors which can be
corrected/detected is a function of the amount of redundancy
which is added to the data.

Hardwick, col. 1. l. 65 – col. 2, l. 5. Thus, while Appellants are correct that
Hardwick’s claimed invention teaches that the most error-sensitive bits in a
frame receive a higher weight in a set of quantizer values, the reference
addresses the use of redundant frame. As recognized by the Examiner (Ans.
8) and pointed out in our analysis (Decision 4), Hardwick also acknowledges
that, in the state of the contemporaneous art the use of redundant frames was
well-known as a method for detecting and correcting bit errors (and thus
improving efficiency) in a noisy transmission system. We therefore find
Appellants’ contention that the Board erred in construing the teaching of
Hardwick not persuasive.

(2) Consideration of the prior art in its entirety.
As an initial matter, Appellants’ argument that the Examiner and the
Board erred because it failed to consider the Hardwick reference in its
entirety, and thus ignored Hardwick’s alleged “teaching away” from
Appellants’ claimed invention was not raised in the Appellants’ Appeal
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Brief and is, consequently, waived.1 See 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Nevertheless, we disagree with Appellants’ position for the following
reasons.
Appellants argue that the Board erred by adopting the Examiner’s
reasoning in not relying upon the entire reference of Hardwick, but rather
relying upon Hardwick for the very basic concept, known in the
contemporaneous art, of providing error protection for only the most
sensitive data with respect to speech distortion through data loss or
corruption. Request 3 (citing Decision 4; Ans. 8). Appellants contend that
this was error on the part of both the Board and the Examiner because the
Board and the Examiner allegedly extracted one teaching from Hardwick
while overlooking an express teaching that contradicts their argument.
Request 4. According to Appellants, Hardwick expressly teaches it is not
desirable to add more redundancy to the data stream, and thus teaches away
from the Appellants’ claimed invention, which adds partial redundant
frames. Id.
Furthermore, according to Appellants, Hardwick teaches that it is
desirable to perform data encoding and error detection without requiring any
further redundancy to be added to the data stream. Request 2 (citing
Hardwick, col. 4, ll. 38-41). According to Appellants, Hardwick thus
teaches that it is “undesirable to add redundancy to the data stream, and
instead teaches providing extra protection within each frame and then
redundant frames do not have to be transmitted.” Request 2.

1 Appellants did not file a Reply Brief in response to the Examiner’s Answer
in their appeal.
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The cited portion of Hardwick recites:
In a first aspect, the invention features a new data
encoding method which uses bit modulation to allow
uncorrectable bit errors to be detected without requiring any
further redundancy to be added to digital data stream.

Hardwick, col. 4, ll. 38-41. However, as noted by the Examiner (Ans. 8) and
the Board (Decision 4), Hardwick also teaches that:
In a second aspect, the invention features a bit
prioritization method which improves the reliability with which
a set of quantizer values can be transmitted over a noisy
communication channel. This new method assigns a weight to
each bit location in a set of quantizer values. In any one
quantizer value, the weight is greater for a more significant bit
location than for a less significant bit location. The weight of
bit locations of the same significance in different quantizer
values varies depending upon the sensitivity of the different
quantizer values to bit errors; more sensitive bit locations
receiving a higher weight than less sensitive bit locations. The
bits in each of the bit locations are then prioritized according to
their weight, and the prioritized bits are then encoded with error
control codes. Error control codes with higher redundancy are
typically used to encode the higher priority (i.e. higher weight)
bits, while lower redundancy error control codes are used to
encode the lower priority (i.e. lower weight) bits. This method
improves the efficiency of the error control codes, since only
the most critical bits are protected with the high redundancy
codes.

Hardwick, col. 4-5, ll. 60-9. As noted in section (1) supra, in the state of the
contemporaneous art, error control codes with redundant frames were well
known. Hardwick therefore teaches that the method of encoding prioritized
bits with error control codes with higher redundancy are typically used to
encode the higher priority (i.e., higher weight) bits, while lower redundancy
error control codes are used to encode the lower priority (i.e., lower weight)
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bits. Id. Moreover, Hardwick teaches that this method improves the
efficiency of the error control codes, since only the most critical bits are
protected with the high redundancy codes. Id.
A reference teaches away when “a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994).
As noted supra, Hardwick teaches “a new data encoding method which uses
bit modulation to allow uncorrectable bit errors to be detected without
requiring any further redundancy to be added to digital data stream.”
Hardwick, col. 4, ll. 38-41. However, we do not find that this single
embodiment, particularly in view of the second embodiment we cite above,
rises to the level of discouraging an artisan of ordinary skill from combining
the teaching of Hardwick with that of Schuster, or would lead such an
artisan on a divergent path from such a combination, as Appellants argue.
We consequently disagree with Appellants’ contention that Hardwick
teaches away.

(3) Impermissible hindsight when viewing the references.
Appellants next argue that the Board erred by adopting the
Examiner’s allegedly impermissible use of hindsight in viewing the Schuster
and Hardwick references. Request 4-5. As with the arguments addressed in
section (2) supra, this is an entirely new argument that was not raised by
Appellants in their Appeal Brief and we therefore deem it waived by
Appellants on appeal. See 37 C.F.R. § 41.37(c)(1)(vii) (2009).

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(4) Improper combination of the references.
Appellants further argue that the Examiner and the Board erred by
overlooking that Hardwick allegedly teaches that it is undesirable to add
more redundancy to the data stream, and therefore teaches away from the
combination of Hardwick and Schuster. Request 5. We find this final
argument to be essentially identical to argument (2), supra. We
consequently find that: (a) Appellants’ argument was not presented on
appeal and is consequently deemed waived (See 37 C.F.R. § 41.37(c)(1)(vii)
(2009)); and (b) when considered upon the merits, Appellants’ argument is,
for the same reasons given supra, not persuasive.

CONCLUSION
We have considered the arguments raised by Appellants in the
Request. It is our view that Appellants have not identified any points raised
in the initial Appeal that the Board has misapprehended or overlooked. We
remain of the view that the Examiner did not err in reaching the legal
conclusion of obviousness, based upon the record before us in the original
appeal. We have reconsidered our Decision but decline to grant the relief
requested. This Decision on Appellant’s “Request for Rehearing” is deemed
to incorporate our earlier Decision by reference. See 37 C.F.R. §
41.52(a)(1).

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DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision. We deny Appellants’ request for rehearing of
claims 37, 38, 40-44, and 46-48.

REHEARING DENIED

msc