Appeal No. 2003-0274
Application No. 09/476,460
Claim 9 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Sheng.
Claims 2 through 4 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sheng in view of Short.
Claims 5 through 8 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sheng in view of Bloomberg.
Reference is made to the briefs (paper numbers 16, 19 and
23) and the answer (paper number 22) for the respective positions
of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections of record.
Turning first as we must to the indefiniteness rejection,
the examiner is of the opinion (answer, pages 3 through 5) that
claims 2 through 9 are indefinite because claim 1 recites
decoding in the preamble but not in the two method steps of this
claim. Appellant argues (supplemental brief, pages 3 and 4)
that:
The law is well settled that a claim needn’t be a
recipe of an entire method. It can be drawn to a novel
sub-combination of operations used in a method. That
is the case with claim 1. The Examiner’s rejection on
this point is ill-founded, and should be overturned.
Moreover, it will be recognized that the dependent
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