Ex Parte WEN et al - Page 4




              Appeal No. 2003-2057                                                                                       
              Application No. 09/201,865                                                                                 

              length coding for a discrete cosine transform (DCT) bit region.  (Brief at 7-8.)                           
              Appellants argue there is no disclosure or suggestion in the reference for reversible                      
              variable length coding the bit regions “selected from the variable-length coded bit                        
              regions according to a predetermined priority for recovery,” in the language that                          
              appears in all the independent claims.                                                                     
                     The examiner responds by reiterating that the skilled artisan would recognize                       
              that Figure 31 of Nagai represents reversible variable length coding because such                          
              coding is used for error detection and correction.  The examiner further relies on                         
              material in the “Background of the Invention” section of Nagai as evidence in support of                   
              the finding.  (Answer at 6-7.)                                                                             
                     We are persuaded by appellants, for the reasons advanced in the briefs, that the                    
              instant rejection fails to establish a case for prima facie obviousness.  We find no                       
              disclosure or suggestion in Nagai for the above-noted feature argued by appellants.                        
              Figure 31 of Nagai, upon which the rejection appears to principally rely for the relevant                  
              suggestion, is described at column 24, lines 10 through 29 of the reference.  Since                        
              Nagai expressly describes reversible variable length coding elsewhere in the reference                     
              (e.g., cols. 34-36), Nagai would, in our estimation, expressly describe the operation of                   
              Figure 31 in the same terms, if such coding were to be implied by the figure.                              
              Moreover, even if the figure were to be presumed to disclose or suggest reversible                         
              variable length coding, there would still be insufficient guidance to suggest applying the                 


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