Ex Parte Chu et al

Patent Trial and Appeal BoardMay 13, 2014

11402863 (P.T.A.B. May. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHUNG-SHIH CHU, TSUNG-PENG CHUANG, and YI-CHANG TU ___________ Appeal 2011-008894 Application 11/402,863 Technology Center 2600 ____________ Before CARL W. WHITEHEAD, JR., JEFFREY S. SMITH, and DANIEL N. FISHMAN, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008894 Application 11/402,863 2 STATEMENT OF THE CASE Appellants are appealing the rejection of claims 1-3, 6-10, 13-16, 18 and 20 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Introduction The invention is directed to “[a]n audio coding and decoding device, which is used to realize the coding and decoding functions.” Abstract 14. Representative Claim (Emphasis Added) 1. An audio coding and decoding device, which is used to realize the audio coding and decoding functions, said audio coding and decoding device comprising: a first circuit, which is used to perform a first operation of said audio coding and decoding function, wherein said first operation executed by said first circuit includes a digital-to- analog conversion and/or an analog-to-digital conversion; a general-purpose processor, which is used to perform a second operation of said audio coding and decoding function according to an instruction set and a software program, wherein said software program includes a portion specifying performing the sigma-delta modulation and/or the sigma-delta demodulation by making use of said general-purpose processor; and a serial link, which is coupled between said first circuit and said general-purpose processor, and is used to perform serially the data transmission between said first circuit and said general-purpose processor. Appeal 2011-008894 Application 11/402,863 3 Rejection on Appeal Claims 1-3, 6-10, 13-16, 18 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Intel, High Definition Audio Specification: Revision 1.0 , 13-19, 72-75 (April 15, 2004 (hereinafter “HDAS”)) and Heyl (US Patent Number 5,598,353; issued January 28, 1997). Answer 3-9. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed February 5, 2011), the Answer (mailed February 28, 2011), and the Reply Brief (filed May 4, 2011) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ contentions. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief and adopt them as our own, except as to those findings that we expressly overturn or set aside in the analysis as follows. Appellants contend: Applicants have claimed a non-obvious structural separation of portions of the audio coding and decoding functions. A first portion is performed in a first circuit, while a second portion is performed in a general-purpose processor. The first circuit is Appeal 2011-008894 Application 11/402,863 4 different from the general-purpose processor, and both are connected to each other by a serial link. In various claimed embodiments, the “serial link is in conformity with the high definition audio (HDA) specification.” Appeal Brief 8. Appellants contend “HDAS fails to show or suggest a general-purpose processor performing sigma-delta modulation or sigma-delta demodulator.” Id. Appellants further contend the prior art cited fails to show or suggest the claimed feature “wherein said software program includes a portion specifying performing the sigma-delta modulation and/or the sigma-delta demodulation by making use of said general-purpose processor” as recited in claim 1. (Emphasis added). The Examiner finds HDAS employs a circuit, a general purpose processor, and a serial link wherein the components are used in audio coding and decoding functions. Answer 4-5. The Examiner further finds that Heyl teaches using a software program including delta-sigma modulation. Id. We do not find Appellants’ arguments to be persuasive because the arguments are not commensurate with the scope of claim. Claim 1 recites a first circuit, a general-purpose processor, and a serial link wherein each element is followed by an intended use statement. For example, claim 1 recites, “a first circuit, which is used to perform a first operation of said audio coding and decoding function.” For patentability, apparatus claims must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Thus, even if a prior art device is used for a different purpose, it will nevertheless fully meet a recited apparatus if it contains all claimed Appeal 2011-008894 Application 11/402,863 5 structural features and is capable of performing the intended function. See Id. Further claim 1 recites several wherein clauses, as noted above, that are conditional and do not positively recite the limitations as actually occurring.1 In addition, claim 1 recites “a general purpose processor” having associated software that has a portion that is intended to perform either modulation or demodulation or both. We find the “performing” language of claim 1 to merely represent a statement of intended purpose of the respectively associated programming comprised in the processor. However, an intended purpose will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, we give claim 1 its broadest reasonable interpretation as merely requiring a processor having associated software that is intended for receiving data, wherein the data to be received may then be used for 1 See Manual of Patent Examining Procedure (MPEP) § 2111.04 (8th Ed., Rev. 9, Aug. 2012) regarding “wherein” clauses: Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. Appeal 2011-008894 Application 11/402,863 6 intended purposes such as generating representation data for audio coding and decoding. Therefore, we sustain the Examiner’s obviousness rejection of claim 1 for the reasons articulated above. Appellants argue the rejection of claim 8 should be overturned for the same reasons as claim 1. Appeal Brief 10. We did not find the rejection of claim 1 to be deficient therefore we sustain the rejection of claim 8 for the same reason articulated above. Appellants also argue claims 16 and 18 are allowable because the cited references did not “show or suggest” features emphasized in the claims reproduced in Appellants’ arguments section of the Appeal Brief. Appeal Brief 20-21. However, “[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii). Appellants do not address the specific citations and merits of the Examiner’s rejection. Therefore, Appellants’ argument does not show error in the Examiner’s showing of obviousness of claims 16 and 18. For the above reasons, we are also affirming the rejection of dependent claims 2, 3, 6, 7, 9, 10, 13-15 and 20, whose merits are not separately argued. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987). DECISION The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-3, 6-10, 13- 16, 18 and 20 is affirmed. Appeal 2011-008894 Application 11/402,863 7 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). See 37 C.F.R. § 41.50(f). AFFIRMED hh