Appeal 2007-2921
Application 09/951,452
First, Appellant contends1 that Park does not anticipate the invention
as recited in claims 1, 2, 5, 6, 9, 10, and 13. Particularly, Appellant contends
that Park teaches neither outputting an error based on the results of encoding
digital data bands nor recompressing the resulting error before adding it to
the compressed data. (App. Br. 5 and 8.) In response, the Examiner
contends that Park’s disclosure of quantizing digital signal bands into multi-
layered bitstreams that are subsequently encoded teaches the invention as
claimed. (Answer 5 through 8.)
ISSUE
The pivotal issue in the appeal before us is as follows:
1. Has Appellant shown2 that the Examiner failed to establish that the
disclosure of Park anticipates the claimed invention under
1 This decision considers only those arguments that Appellant submitted in
the Appeal Brief. Arguments that Appellant could have made but chose not
to make in the Brief are deemed to have been waived. See 37 C.F.R.
§ 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368 (Fed. Cir. 2004).
2 In the examination of a patent application, the Examiner bears the initial
burden of showing a prima facie case of unpatentability. In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). When that burden is met, the burden then
shifts to the applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339,
1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). If the
applicant produces rebuttal evidence of adequate weight, the prima facie
case of unpatentability is dissipated. Piasecki, 745 F.2d at 1472. Thereafter,
patentability is determined in view of the entire record. Id. However,
Appellant has the burden on appeal to the Board to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
3
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