Frederik Nagel et al.

Patent Trials and Appeals Board

Sep 30, 2019

14811722 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/811,722 07/28/2015 Frederik NAGEL 110971-8889.US01 5989
22918 7590 09/30/2019
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
COLUCCI, MICHAEL C
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte FREDERIK NAGEL, SASCHA DISCH,
and ANDREAS NIEDERMEIER1
________________

Appeal 2018-008530
Application 14/811,722
Technology Center 2600
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 6–10, 12, 15, and 19–23. Appeal Br. 19–36.
Claims 5 and 13 stand object to, but indicated as containing allowable
subject matter. Final Action mailed Oct. 11, 2017 (“Final Act.”) 26. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Fraunhofer-Gesellschaft zur Foerderung der angewandten Forschung e.V.
Appeal Brief filed April 6, 2018 (“Appeal Br.”) 3.
Appeal 2018-008530
Application 14/811,722

2
STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A decoder for generating a frequency enhanced audio signal,
includes: a feature extractor for extracting a feature from a core
signal; a side information extractor for extracting a selection
side information associated with the core signal; a parameter
generator for generating a parametric representation for
estimating a spectral range of the frequency enhanced audio
signal not defined by the core signal, wherein the parameter
generator is configured to provide a number of parametric
representation alternatives in response to the feature, and
wherein the parameter generator is configured to select one of
the parametric representation alternatives as the parametric
representation in response to the selection side information; and
a signal estimator for estimating the frequency enhanced audio
signal using the parametric representation selected.
Abstract.
Claims 1, 2, 4, 6–10, 12, 15, and 19–23 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Neuendorf (US 2011/0202353 A1; published
Aug. 18, 2011). Final Act. 12–26.
Independent claim 1 illustrates the subject matter that pertains to
Appellant’s decoder:
1. A decoder for generating a frequency enhanced audio
signal, comprising:
a feature extractor configured for extracting a feature from
a core signal;
a side information extractor configured for extracting a
selection side information associated with the core signal;
a parameter generator configured for generating a
parametric representation for estimating a spectral range of the
frequency enhanced audio signal not defined by the core signal,
wherein the parameter generator is configured to provide a
number of parametric representation alternatives in response to
Appeal 2018-008530
Application 14/811,722

3
the feature, and wherein the parameter generator is configured to
select one of the parametric representation alternatives as the
parametric representation in response to the selection side
information;
a signal estimator configured for estimating the frequency
enhanced audio signal using the parametric representation
selected; and
a signal classifier configured for classifying a frame of the
core signal,
wherein the parameter generator is configured to use a first
statistical model, when a signal frame is classified to belong to a
first class of signals and to use a second different statistical
model, when the frame is classified into a second different class
of signals
wherein one or more of the feature extractor, the side information
extractor, the parameter generator, the signal estimator and the
signal classifier is implemented, at least in part, by one or more
hardware elements of the apparatus.
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We address the rejection of the decoder claims (e.g., claim 1) separately
from the rejection of the encoder claims (e.g., claim 15).

DISCUSSION
The Examiner cites multiple rationales for why Neuendorf discloses
every element of the decoder recited in independent claim 1. Final Act. 2–
14. We address these rationales separately.
I.
The Examiner initially relies on Neuendorf’s Figure 5 as disclosing
the claimed decoder. Id. at 12. Appellant, in turn, points out the
Appeal 2018-008530
Application 14/811,722

4
Neuendorf’s Figure 5 is directed to an encoder as opposed to a decoder, as
claimed. Appeal Br. 19. The Examiner finds this argument unpersuasive
because, in the Examiner’s opinion, the term decoder is only used in the
preamble of claim 1, and the Examiner determines that the term should not
be given patentable weight. Ans. 18–19.
The Examiner’s decision to ignore the recitation of a decoder is
unreasonable. As the Examiner acknowledges, “the preamble serve[s] to
further define the structure of the article produced” when “it is only by that
phrase that it can be known that the subject matter defined by the claims is
comprised as [the type of article recited in the preamble].” Ans. 19 (citing
Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). By the Examiner’s own
finding, it is only by the preamble’s recitation of the decoder that it can be
known that the subject matter defined by the claims comprises a decoder, as
opposed to comprising an encoder or a combination of a decoder and
encoder. See Ans. 18 (explaining that other than the preamble, the terms of
the claim can be applied interchangeably to an encoder or a decoder). So if
we were to adopt the Examiner’s reasoning, the preamble would have to be
given patentable weight.
The Examiner alternatively reasons that even if one gives patentable
weight to the claim term “decoder,” the decoder of Neuendorf’s Figure 6 “is
the inherent equivalent to” the encoder of Neuendorf’s Figure 5. Id. at 25.
The Examiner explains that Figures 6’s decoder contains all of the elements
of Figure 5’s encoder and, therefore, must perform all of the encoder’s
functionality in reverse order. Id. at 20.
The Examiner’s reasoning is unsupported. Even if we were to
assume, solely for the sake of argument, that Neuendorf’s decoder contains
Appeal 2018-008530
Application 14/811,722

5
all of the same elements as Neuendorf’s encoder, the Examiner still does not
explain sufficiently why it is inherent—or necessarily the case—that
components of the decoder must be arranged in a manner that processes the
encoded core signals, as claimed. In fact, if Neuendorf’s decoder provides
all of the functionality recited in claim 1, the Examiner should be able to cite
to passages of Neuendorf that describe this functionality—either directly in
relation to Neuendorf’s decoder or inferentially by pointing to a disclosure
that Neuendorf’s decoder performs mirror operations of the encoder. The
Examiner has not done so.
Furthermore, the Examiner’s determination that Neuendorf’s decoder
inherently performs the same steps as the encoder, but in reverse order, is
undercut by the fact that the Examiner’s rejection is not premised on a
theory that Neuendorf’s encoder of Figure 5 performs its encoding
functionality in the reverse order of the present decoder’s operations, as
claimed. Final Act. 12–13. Rather, the rejection is based on the disclosure
of the forward direction of the encoder’s operations. Id.
Even if we were to agree with the Examiner that the preamble of
claim 1 does not limit the claimed subject matter to a decoder, that would
not be the end of the inquiry. The body of claim 1, itself, reasonably
indicates that the scope of claim 1 is limited to a decoder and not written
broadly enough to encompass an encoder.
More specifically, claim 1 recites, in relevant part,
a feature extractor configured for extracting a feature from
a core signal;
a side information extractor configured for extracting a
selection side information associated with the core signal;
Appeal 2018-008530
Application 14/811,722

6
a parameter generator configured for generating a
parametric representation for estimating a spectral range of the
frequency enhanced audio signal not defined by the core signal.
Claim 1 (emphasis added).
The language in claim 1 stating that a spectral range is estimated for
the frequency enhanced audio signal that is not defined by the core signal
indicates that the “core signal” is a core signal within the decoder. This is
because Appellant’s Specification renders it reasonably clear that the
encoder employs a side information generator, whereas the decoder
employs a side information extractor. Spec. 7:29–32, 8:27–32. Appellant’s
Specification additionally renders it reasonably clear that it is the core signal
within the decoder that needs spectral range estimates—not the core signal
prior to being encoded within the encoder:
At the receiver, the decoder side information is used to support
the estimation of the wideband envelope within the bandwidth
extension algorithm. The message m is obtained by several
procedures. A spectral representation of frequencies from
[3.4] kHz to 7 kHz is extracted from the wideband signal
available only at the sending side.
Spec. 3:4–8 (emphasis added).
Appellant’s disclosure may be used to determine the proper meaning
of the terms used in the claims. Markman v. Westview Instruments, Inc.,
52 F.3d 967, 979–80 (Fed. Cir. 1995) (en banc). “[I]nterpreting what is
meant by a word in a claim is not to be confused with adding an extraneous
limitation appearing in the specification, which is improper.” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002)
(internal quotation marks and citations omitted; emphasis in original).
Appeal 2018-008530
Application 14/811,722

7
II.
The Examiner also purportedly maps “the features, parametric
elements, enhancements, classification, estimation, and other elements . . . in
a simplified manner in view of the amendments to reflect the type of
encoding in the claims in a broader capacity known in the art” and
“[w]ithout altering the previous rejection.” Final Act. 7–8 (emphasis added).
The Examiner then again points to Neuendorf’s encoder as providing
support for disclosing the claimed signal classifier of claim 1’s decoder. Id.
at 8 (citing Neuendorf ¶ 42, Fig. 5). The Examiner also explains that speech
model and perception based model of Neuendorf’s encoder purportedly
correspond to the decoder’s parameter generator, as well as how Neuendorf
discloses the feature extractor, the side information extractor, the parameter
generator, the signal estimator, and the signal classifier, as recited in claim 1:
wherein the parameter generator is configured to use a first
statistical model, when a signal frame is classified to belong to a
first class of signals and to use a second different statistical
model, when the frame is classified into a second different class
of signals (the use of statistical models are present in the form of
two models 1) speech model for speech signals and 2) perception
based model for non-speech, music, etc., as in 0048 with fig. 2
overview... this specifically tackles various classifications of an
input signal as well as it's transformed or bandwidth extended
equivalent)[.]
Id. at 8.
The Examiner’s “simplified manner” of mapping the claim elements
is insufficient to support an anticipation rejection. As one example, the
Examiner maps the claimed “feature extractor” to Neuendorf’s
surround/joint stereo 101 that outputs an unencoded mono signal to
Neuendorf’s encoder. Final Act. 12. The Examiner, however, does not
Appeal 2018-008530
Application 14/811,722

8
explain how the surround/joint stereo extracts a feature from an encoded
core signal.
For these reasons, we do not sustain the anticipation rejection of
independent claim 1 or of claims 2, 4, 6–10, 12, 20, and 22, which either
depend from claim 1 or otherwise recite similar limitation.
Claims 15, 19, 21, and 23
Independent claim 15 is directed to “[a]n encoder for generating an
encoded signal” that comprises “a core encoder,” “an output interface,” and
“a core decoder.” Appeal Br. 44–46 (Claims Appendix). Claim 15 recites
that the output interface is configured to output an encoded signal that, in
turn, comprises an encoded audio signal and selection side information. The
portion of claim 15 that is directed to the “core decoder” includes sub-
limitations that more specifically are directed to a “feature extractor,” a
“statistical model processor,” a “signal estimator,” and a “comparator” that
“compar[es] the frequency enhanced audio signals to the original signals.”
The rejection of independent claim 15, then, suffers similar
deficiencies to those of claim 1. See, e.g., Final Act. 9–11 (wherein the
Examiner maps the claimed core decoder to Neuendorf’s encoder of Figure
5). For similar reasons as set forth above in relation to claim 1, then, we do
not sustain the anticipation rejection of independent claim 15, of claim 19,
which depends from claim 15, or of claims 21 and 23, which recite similar
limitations.2

2 We note that claim 15 first recites a selection side information generator
that is “configured for generating selection side information . . . in response
to a feature extracted from the original signal or from the encoded audio
signal or from a decoded version of the encoded audio signal.” Claim 15
(emphasis added). But claim 15 subsequently states, more narrowly, that the
Appeal 2018-008530
Application 14/811,722

9

CONCLUSION
In summary:

REVERSED

selection side information generator comprises “a feature extractor
configured for extracting a feature from the decoded core signal.” Id.
(emphasis added). Upon any further prosecution, the Examiner should
consider whether the metes and bounds of claim 15 are reasonably definite
in light of claim 15 seemingly setting forth conflicting requirements for the
scope of the manner by which the feature is extracted.
Reference(s) Basis Claims Affirmed Reversed
Neuendorf § 102(a)(1) 1, 2, 4, 6–10, 12,
15, and 19–23
1, 2, 4, 6–10,
12, 15, and
19–23