Ex Parte Liang et al

Board of Patent Appeals and Interferences

Jun 30, 2004

09164517 (B.P.A.I. Jun. 30, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JIE LIANG, ANTONIO ORTEGA, YOUNGJUN YOO
and CHRISTOS CHRYSAFIS
__________
Appeal No. 2003-0949
Application 09/164,517
___________
ON BRIEF
___________
Before JERRY SMITH, FLEMING, and MACDONALD, Administrative Patent
Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-7.
Invention
Appellants’ invention relates to an image compression method
with arithmetic coding of coefficient bitplanes and including
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Application 09/164,517
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differing contexts and coefficient types from differing portions
of the image. (Appellants’ brief, page 2)
Claim 1 is representative of the claimed invention and is
reproduced as follows:
1. A method of encoding an image, comprising the steps of:
(a) decomposing an image into bitplanes; and
(b) arithmetic encoding the bitplanes with a context
model from the neighboring bits in a bitplane and previous bits
at the location in previous bitplanes.
References
The references relied on by the Examiner are as follows:
Boliek et al (Boliek) 6,141,446 Oct. 31, 2000
(filed September 30, 1997)
Rabbani et al (Rabbani) 5,442,458 Aug. 15, 1995
Healey et al (Healey) 5,357,250 Oct. 18, 1994
Oda 5,703,646 Dec. 30, 1997
(filed December 19, 1996)
Rust 5,901,251 May 4, 1999
(filed March 18, 1997)
Rejections At Issue
Claim 1 stands rejected under 35 U.S.C. § 103 as being
obvious over the combination of Boliek and Rabbani.
Claims 2-3 stand rejected under 35 U.S.C. § 103 as being
obvious over the combination of Boliek, Rabbani and Healey.
Claims 4-5 stand rejected under 35 U.S.C. § 103 as being
Appeal No. 2003-0949
Application 09/164,517
1 Appellants filed an appeal brief on August 6, 2002. Appellants original
brief filed on July 24, 2001, was fully replaced by the subsequent brief. The
Examiner mailed out an office communication on September 18, 2002.
3
obvious over the combination of Boliek, Rabbani and Oda.
Claims 6-7 stand rejected under 35 U.S.C. § 103 as being
obvious over the combination of Boliek, Rabbani and Rust.
Throughout our opinion, we make references to the
Appellant’s briefs, and to the Examiner’s Answer for the
respective detail thereof1.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of the
Appellants and the Examiner, for the reasons stated infra, we
reverse the Examiner’s rejection of claims 1-7 under
35 U.S.C. § 103.
Appellants has indicated that for purposes of this appeal
all the claims stand or fall together.
I. Whether the Rejection of Claims 1-7 Under 35 U.S.C. § 103 is
proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
Appeal No. 2003-0949
Application 09/164,517
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in the art the obviousness of the invention as set forth in
claims 1-7. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
We find the Examiner met his initial burden of establishing
a prima facie case of obviousness. (Rejection, paper number 11,
pages 3-7) The Appellants responded that the Boliek patent is
not prior art as its filing date was the same as Appellants’
priority date for Provisional Application 60/060414 filed
September 30, 1997. (Paper number 13, page 2) The Examiner then
pointed out that the Boliek reference is a continuation-in-part
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Application 09/164,517
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of U.S. patent 5966465 to Keith et al (Keith) and “US 5966465,
has all the limitations the examiner used to reject claims 1-7.”
For these reasons, the Examiner viewed Boliek as entitled to an
effective filing date of May 3, 1996. (Final rejection, paper
number 14, page 2) Appellants repeat their above position before
the Board in the brief at page 3. The Examiner responded with a
more detailed analysis of where various limitations of Boliek can
be found in the Keith reference. (Answer, page 8)
The question before us is whether and to what extent Boliek
constitutes legally available prior art under 35 U.S.C. 102(e).
Based on the evidence before us, we find Appellants’ argument
persuasive. In order to carry back the 35 U.S.C. § 102(e)
critical date of the U.S. patent reference to the filing date of
a parent application, the parent application must support the
invention claimed as required by 35 U.S.C. § 112, first
paragraph. See MPEP § 2136.03 (IV).
The Examiner has shown where the Boliek limitations can be
found in the parent application. However, there is no showing of
how the disclosure of the Keith patent supports the invention of
Boliek as required by 35 U.S.C. § 112, first paragraph. This
showing is a prerequisite to showing where the Boliek limitations
can be found in Keith. Our review of the claims in Boliek and
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Application 09/164,517
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the disclosure of the Keith patent shows that the invention
claimed in Boliek is not supported by the disclosure of the Keith
patent. Therefore, we do not get to the step of reviewing where
the Boliek limitations are found in Keith. “[P]ortions of the
original disclosure cannot be found ‘carried over’ for the
purpose of awarding filing dates, unless that disclosure
constituted a full, clear, concise and exact description in
accordance with § 112, first paragraph, of the invention claimed
in the reference patent, else the application could not have
matured into a patent, within the Milburn § 102(e) rationale, to
be ‘prior art’ under § 103.” Ex parte Ebata, 19 USPQ2d 1952,
1955 (Bd. Pat. App. & Int.).
Other Issues
At page 8 of the Examiner’s Answer, there is an extensive
discussion of where limitations of claim 1 can be found in the
Keith patent (US 5,966,465). We have not decided the issue of
the applicability of the Keith patent to a rejection under
35 U.S.C. § 103, as that issue is not before us.
Appeal No. 2003-0949
Application 09/164,517
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Conclusion
In view of the foregoing discussion, we have reversed the
rejection under 35 U.S.C. § 103 of claims 1-7.

REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
ARM:pgc
Appeal No. 2003-0949
Application 09/164,517
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