Ex Parte McGowan et al

Patent Trial and Appeal Board

Dec 30, 2013

11303990 (P.T.A.B. Dec. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/303,990 12/19/2005 Neil McGowan 7000-670 7558
27820 7590 12/30/2013
WITHROW & TERRANOVA, P.L.L.C.
100 REGENCY FOREST DRIVE
SUITE 160
CARY, NC 27518
EXAMINER
UDDIN, MOHAMMED R
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
12/30/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEIL McGOWAN, BRADLEY JOHN MORRIS,
and EDWARD KEN KIU MAH
____________________

Appeal 2011-004589
Application 11/303,990
Technology Center 2100
____________________

Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/303,990

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STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-22, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Appellants invented compression of complex signals within
telecommunications. Specification ¶ 0001.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A method of bit conversion and transmission of a digital
complex signal over a physical medium, said method
comprising:
receiving a digital complex signal;
compressing said digital complex signal into a series of
bits by sharing a common exponent across real and imaginary
components of said complex signal;
transmitting said series of bits across a physical medium;
and
expanding said series of bits to reconstitute said digital
complex signal by again sharing said common exponent across
said real and imaginary components of said complex signal.

REFERENCES
The Examiner relies on the following prior art:
Lindh
Wegener
US 7,212,583 B2
US 7,394,410 B1
May 1, 2007
Jul. 1, 2008
Onggosanusi US 2003/0063654 A1 Apr. 3, 2003

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Mar. 3, 2010), the Examiner’s Answer (“Ans.,” mailed Sep. 16, 2010),
and Final Rejection (“Final Rej.,” mailed Mar. 5, 2009).
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REJECTIONS
Claims 9-22 stand rejected under 35 U.S.C. § 101 as being directed
towards non-statutory subject matter.
Claims 1-3, 5, 9, 10, 15, and 19 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Wegener.
Claims 4, 6, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wegener and Lindh.
Claims 12, 13, 17, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wegener and Onggosanusi.
Claims 7, 8, 14, 18, 20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wegener, Onggosanusi, and Lindh.

ISSUES
The issue of whether the Examiner erred in rejecting claims 9-22
under 35 U.S.C. § 101 as being directed towards non-statutory subject
matter turns on whether claims 9-22 recite an abstract idea.
The issue of whether the Examiner erred in rejecting claims 1-22 as
being anticipated by or unpatentable over the cited prior art turns on whether
Wegener describes the limitations of claim 1.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
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which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusions reached by the Examiner. We highlight the following
arguments for emphasis.

Claims 9-22 rejected under 35 U.S.C. §101 as being directed towards non-
statutory subject matter
The Examiner found that claims 9, 15, and 19 are directed towards a
compression module and claims 12, 17, and 21 are directed towards an
expansion module, and therefore the claims are nothing more than software
per se. Ans. 28. Appellants contend that the claims (1) recite an apparatus
that transmits a signal over a physical medium and therefore is tied to a
particular machine to satisfy the machine prong of the machine-or-
transformation threshold test and (2) the claims transform a signal into bits
and therefore satisfy the transformation prong of the machine-or-
transformation threshold test. App. Br. 5-6.
We disagree with Appellants. As found by the Examiner, claims 9,
12, 15, 17, 19, and 21 are directed to either a compression or expansion
module. The Specification illustrates that a module “may be an
encoder/decoder device that implements the present invention in terms of
software.” Specification ¶ 0018. While the claims include a recitation of an
“apparatus” and a “physical medium” in the preamble, the claims fail to
recite any structure such that the apparatus is anything more than a general
purpose machine. As such, we do not agree with Appellants that these
claims are tied to a particular machine. Additionally, Appellants fail to
provide sufficient rationale or evidence to illustrate how the compression of
a signal into bits is a transformation. Furthermore, we find that the claims
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are directed towards an abstract idea. As such, we do not agree with
Appellants that claims 9-22 satisfy the machine-or-transformation test2 and,
in the absence of sufficient evidence or argument in support of their
contention that the claims are directed to statutory subject matter, sustain
the Examiner’s rejection of claims 9-22 as being directed towards non-
statutory subject matter.

Claims 1-3, 5, 9, 10, 15, and 19 rejected under 35 U.S.C. §102(e) as being
anticipated by Wegener
Appellants contend that Wegener fails to describe “compressing a
digital complex signal,” as per claim 1. App. Br. 12-13. Appellants
specifically argue that Wegener fails to describe both that the signal is
complex and the signal is compressed. Id. We disagree with Appellants.
As found by the Examiner, Wegener clearly describes that a sample signal is
compressed and a complex-to-real transformation logic transforms the
complex sample signal. Ans. 30 (citing Wegener col. 65, ll. 55-65; col.41,
ll. 55-60). As such, Wegener describes that the sample signal is complex
and is compressed. Appellants do not rebut these findings by the Examiner.
Accordingly, we do not find Appellants’ argument to be persuasive.
Appellants further contend that Wegener fails to describe “sharing a
common exponent across real and imaginary components of said complex
signals,” as per claim 1. App. Br. 13. We disagree with Appellants. As

2 While the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218 (2010), ruled
that the machine-or-transformation test is not the sole test for determining
whether a claimed method is a statutory process, it nonetheless indicated that
the machine-or-transformation test is a useful tool for making the
determination.
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found by the Examiner, Wegener describes that “[a]n analytic signal
generation logic 212 converts the sampled input single 104 into a real part of
analytic signal 214 and an imaginary part of analytic signal” 216. Ans. 31
(internal quotation marks omitted) (citing Wegener col. 40, ll. 65-67). The
Examiner further found Wegener describes that “each compressed sample is
represented by a mantissa and an exponent that is shared or dedicated.” Ans.
31 (internal quotation marks omitted) (citing Wegener col. 66, ll. 16-22).
Since each complex signal consists of a real part and an imaginary part and
is further represented by a shared exponent, it follows that the real and
imaginary parts of each signal share an exponent. While Appellants
interpret Wegener’s teachings differently, Appellants do not demonstrate
error in the Examiner’s application of Wegener’s teachings to disclose the
claimed limitations.
Appellants also contend that Wegener fails to teach “expanding said
series of bits to reconstitute the digital complex signal by again sharing the
common exponent across real and imaginary components of said complex
signal,” as per claim 1. App. Br. 14. Appellants argue that Wegener fails to
specifically disclose “again sharing said common exponent across said real
and imaginary components of said complex signal.” App. Br. 14. We are,
however, not persuaded by this argument for the same reasons discussed
above.
Appellants additionally contend that Wegener fails to describe the
limitations of claims 2, 3, and 5. App. Br. 15-18. However, we disagree
with Appellants’ conclusions and accordingly adopt the Examiner’s findings
and conclusions as our own. Ans. 5-7.
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Appellants further contend that Wegener fails to describe the
limitations of claims 9, 15, and 19. App. Br. 18-19. However, we are not
persuaded by Appellants’ assertions. Appellants restate the limitations of
claims 9, 15, and 19 and generally allege that Wegener fails to describe the
limitations of these claims. Id. Accordingly, we do not find Appellants’
statements to be arguments in support of patentability. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).

Claims 4, 6, 11, and 16 rejected under 35 U.S.C. §103(a) as being
unpatentable over Wegener and Lindh
Appellants contend the Examiner erred in rejecting claims 4, 6, 11,
and 16 for the same reasons asserted in support of claims 1-3. App. Br. 19.
We disagree with Appellants. Appellants’ arguments in support of claims 1-
3 were not found to be persuasive above and are not persuasive here for the
same reasons.

Claims 12, 13, 17, and 21 rejected under 35 U.S.C. §103(a) as being
unpatentable over Wegener and Onggosanusi
Appellants contend that the Examiner erred in rejecting claims 12, 13,
17, and 21 for the same reasons asserted in support of claims 1 and 2. App.
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Br. 19-21. We disagree with Appellants. Appellants’ arguments in support
of claims 1 and 2 were not found to be persuasive above and are not
persuasive here for the same reasons.

Claims 7, 8, 14, 18, 20, and 22 rejected under 35 U.S.C. §103(a) as being
unpatentable over Wegener, Onggosanusi, and Lindh
Appellants contend that the Examiner erred in rejecting claims 7, 8,
14, 18, 20, and 22 for the same reasons asserted in support of claims 1 and 5.
App. Br. 21-22. We disagree with Appellants. Appellants’ arguments in
support of claims 1 and 5 were not found to be persuasive above and are not
persuasive here for the same reasons.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-22.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 9-22 under 35 U.S.C. § 101 as being directed
towards non-statutory subject matter is sustained.
 The rejection of claims 1-22 as anticipated by or obvious and
therefore unpatentable over the cited prior art is sustained.

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) (2010).

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AFFIRMED

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