Ex parte Hirose

Board of Patent Appeals and Interferences

Oct 19, 1998

08492643 (B.P.A.I. Oct. 19, 1998)

Application for patent filed June 20, 1995. 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journal and (2) is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAKI HIROSE
____________
Appeal No. 97-2903
Application No. 08/492,6431
____________
ON BRIEF
____________
Before URYNOWICZ, HAIRSTON and KRASS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 18
through 34.
The disclosed invention relates to a method and apparatus
for transmitting and receiving data via satellite.
Appeal No. 97-2903
Application No. 08/492,643
2
Claim 18 is illustrative of the claimed invention, and it
reads as follows:
18. A data transmitting apparatus for transmitting
predetermined data, comprising:
partial scramble means for scrambling a selected portion
of the predetermined data using a first key;
entire scramble means for entirely scrambling all of the
predetermined data, using a second key, after the selected
portion has been scrambled;
sending means for transmitting the entirely scrambled
predetermined data via a first transmission path; and
means for sending the first key via a second transmission
path.
Claims 18 through 34 stand rejected under the second
paragraph of 35 U.S.C. § 112 as being indefinite for failing
to particularly point out and distinctly claim the subject
matter which appellant regards as the invention.
Reference is made to the final rejection, the briefs and
the answer for the respective positions of the appellant and
the examiner.
OPINION
The indefiniteness rejection is reversed.
The examiner indicates (final rejection, page 2) that the
uses of “partial scramble means,” “entire scramble means,”
Appeal No. 97-2903
Application No. 08/492,643
3
“partial descramble means,” “entire descramble means,”
“scramble
Appeal No. 97-2903
Application No. 08/492,643
4
processing” and “descramble processing” have rendered claims
18 through 34 indefinite and unclear because “partial,”
“scramble” and “descramble” are not recited as “portion,”
“scrambling” and descrambling,” respectively. The examiner
additionally states (final rejection, pages 2 and 3) that the
uses of “encode” and
“decode” have rendered the claims indefinite because
“scrambling” and “descrambling” are performed, and not
“encoding” and “decoding.”
We agree with appellant’s argument (Brief, pages 4 and 5)
that it is perfectly acceptable to recite “scramble” and
“descramble” without an “ing” ending. The two terms are used
throughout appellant’s disclosure, and the skilled artisan
would not have any trouble understanding what is meant by the
two terms when they are considered in light of that
disclosure. The same holds true for appellant’s use of
“partial” instead of “portion” as suggested by the examiner.
We also agree with appellant’s argument (Brief, pages 4 and 5)
that he has the right to be his own lexicographer,
particularly where no reason has been provided for finding
appellant’s chosen terms indefinite.
Appeal No. 97-2903
Application No. 08/492,643
The attached excerpts from several electronics2
dictionaries buttress appellant’s conclusion that the terms
are now interchangeable terms.
5
Appellant argues (Brief, page 6) that the terms “encode”
and “decode” are synonymously referred to as “scramble” and
“descramble.” We agree. The terms are now interchangeably
used in the art, and appellant’s disclosure makes clear that2
the terms are interchangeably used to refer to the same
process.
Appeal No. 97-2903
Application No. 08/492,643
6
Based upon the foregoing, the claims are not indefinite.
Accordingly, the rejection of claims 18 through 34 under the
second paragraph of 35 U.S.C. § 112 is reversed.
DECISION
The decision of the examiner rejecting claims 18 through
34 under the second paragraph of 35 U.S.C. § 112 is reversed.
REVERSED
STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERROL A. KRASS )
Administrative Patent Judge )
Appeal No. 97-2903
Application No. 08/492,643
7
Limbach & Limbach
ATTN: Philip Shaw, Esq.
2001 Ferry Building
San Francisco, CA 94111-4262
KWH/jrg
JENINE GILLIS
Appeal No. 97-2903
Serial No. 08/492,643
Judge HAIRSTON
Judge KRASS
Judge URYNOWICZ
Received: 06 Oct 98
Typed: 08 Oct 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 2202
Index Sheet-2901 Rejection(s):
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Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk (FOIA): ____
Updated Monthly Report: ___