Appeal No. 1998-1902
Application No. 08/435,592
disclosed by Barton, the evidence does not support the view that the requirements of
instant claim 1 would have been prima facie obvious to the artisan.
The examiner’s argument that the “8 - 0 - 4 - 4” weighting scheme has not been
shown to be critical is not well taken. We have pointed out one occurrence in the
specification which provides reasons for the claimed weights. In addition, as appellants
point out in the Brief, the instant specification is replete with sections consistent with the
criticality of the particular weighting scheme claimed.
The examiner also alleges, as stated on page 11 of the Answer, that the claimed
weighting scheme is not critical because the numbers “8 - 0 - 4 - 4” are not used in the
specification’s disclosed filter algorithm. However, as appellants point out in the Reply
Brief at pages 2-3, the original disclosure, which included the Abstract and the original
claims, referred to the filter as having “8 - 0 - 4 - 4” weighting. We find it of no significance
that appellants have chosen to use the terms “8 - 0 - 4 - 4” in the claims, rather than, for
example, using fractions as shown in instant Figure 2. We consider the claims to set forth
appellants’ invention in clear terms, in light of the specification, and the examiner has not
submitted any rejection for indefiniteness under 35 U.S.C. § 112, second paragraph.
Expressing the filter parameters in different ways does not mean that the parameters are
not critical to the invention.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
-6-
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