Appeal No. 2006-1607
Application 10/062,894
a matter of elementary claim interpretation, since the claims are open-ended, they do not
preclude encoding by more than one method. Nevertheless, Devon discloses only one pulse that
encodes a data element by its unique time position: the signal tone burst in one of the five pulse
windows P1-P5 in Fig. 2. The examiner's finding that "there are 'multiple pulses' used to encode
the signal and more than one 'slot' are used for such encoding" (EA5) does not fit the claim
language. The synchronization pulse does not encode a data element by its "unique time
position," because its time position is fixed. Only the signal tone burst encodes by its "unique
time position." For this reason, the anticipation rejection of claims 1-3 and 11-13 is reversed. It
is noted that the claims (as interpreted to only require time position) would be anticipated by a
conventional PCM scheme, as in the Gregg reference. Since no additional prior art is added for
the obviousness rejection, the rejection of claims 4-10 and 14-20 is also reversed.
NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(b)
Claims 1-10 are rejected under 35 U.S.C. § 101 as being directed to nonstatutory subject
matter. "Signals" are not statutory subject matter. A case involving this issue is presently on
appeal to the Federal Circuit: In re Nuijten, No. 06-1301.
Claim 1 is directed to a "propagated signal" having certain characteristics. A man-made
signal represents coded information. A signal can be an abstract quantity describing the
information or a measurable physical quantity (e.g., the fluctuations of an electrical quantity,
such as voltage) containing information. See In re Walter, 618 F.2d 758, 770, 205 USPQ 397,
409 (CCPA 1980) ("The 'signals' processed by the inventions of claims 10-12 may represent
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