Ex Parte 5,329,369 et al

Board of Patent Appeals and Interferences

Oct 29, 2010

90010074 (B.P.A.I. Oct. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,074 12/07/2007 5,329,369 230.2-US-RX 1754
20872 7590 10/29/2010
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,021 09/06/2007 H. 5329369 4671-4672-001-02 8993
20872 7590 10/29/2010
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FUNAI ELECTRIC CO., LTD.
____________

Appeal 2010-003274
Reexamination Control 90/010,021 & 90/010,074
United States Patent 5,329,369
Technology Center 3900
____________

Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F.
TURNER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

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Patent 5,329,369

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Patent owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-18.2 Claims 19-29 have been confirmed.
(App. Br. 2.) We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from two separate third party requests for ex
parte reexamination of U.S. 5,329,369. The Office granted and sua sponte
merged the two requests, Reexamination Control 90/010,021 and
90/010,074. Appellant’s Brief states that there are currently four related
litigations and investigations involving the ‘369 patent. Three separate
litigation actions in the Central District Court of California were stayed
pending the resolution of a separate investigation by The International Trade
Commission. Pursuant to the investigation, an Administrative Law Judge at
the ITC conducted a hearing and rendered an Initial Determination that
claims 1, 3, 7, 19, and 21 of the ‘369 Patent are invalid. The Commission
declined to review the ALJ’s findings on February 11, 2009. The findings
are now final. The ‘369 Patent and EPO Patent No. 532,682 claim priority
to the same British patent application and cover similar subject matter. On
March 19, 2004, the EPO Board of Appeals affirmed an EPO opposition
decision revoking the ‘682 patent. (See App. Br. 1.) An oral hearing before
the panel listed above involving the ‘369 patent and another patent assigned

2 Patent owner, Appellant, Funai Electric Co., Ltd., is the real party in
interest for this appeal and assignee of record of U.S. Patent 5,329,369
“Asymmetric Picture Compression” (issued July 12, 1994 with listed
inventors Donald H. Willis and Barth A. Canfield).
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to the same assignee, U.S. Patent 6,115,074 (Appeal 2010-007834), was
conducted at the USPTO on August 18, 2010.
The ‘369 Patent3
The ‘369 patent describes a wide screen television with a width to
height display ratio of 16 x 9. First and second video signals define first and
second pictures. The second video signal has a second format display ratio
smaller than, or different from, the wide screen television ratio, for example,
a width to height ratio of 4 x 3. A video signal processor asymmetrically
compresses the second video signal, for example, 4:1 horizontally and 3:1
vertically. (Abstract.)
The Exemplary Claims, References, and Rejection
Exemplary claims 1 and 10 on appeal read as follows:
Claim 1: A television apparatus, comprising:
video display means having a first format display ratio of width to
height;
means for receiving a first video signal representing a first picture;
means for receiving a second video signal representing a second
picture having a second ratio of width to height different than
said first ratio;
means for changing said ratio of width to height of said second
picture; and,
means for combining a portion of said first picture with a portion of
said changed second picture for simultaneous display of said
first and second picture portions.

Claim 10: A video display system, comprising:
video display means having a first format display ratio of width to
height;

3 The ensuing description constitutes findings of fact referenced herein as
“D1”.
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means for receiving a first video signal, defining a picture in a second
format display ratio of width to height smaller than said first
format display ratio;
means for asymmetrically compressing said width and height of said
picture; and,
means for mapping said asymmetrically compressed picture onto said
display means.

(App. Br. Claims App’x .)

The Examiner listed and employed the following prior art references:4
Fernandez US 4,947,257 Aug. 7, 1990
Marlton US 5,027,212 June 25, 1991

Claims 10-18 stand rejected under 35 U.S.C. § 102(e) as anticipated
based on Fernandez.
Claims 1-18 stand rejected under 35 U.S.C. § 102(e) as anticipated
based on Marlton.5
OPINION
Issue-Fernandez
The dispositive dispute with respect to Fernandez involves whether
the Examiner established that Fernandez discloses structure satisfying the
“the means for asymmetrically compressing said width and height of said
picture” as recited in claim 10.

4 Other references of record listed in the Answer are not repeated here
because they are not material to the decision. (See Ans. 3-4.)
5 The Examiner withdrew a rejection of claims 1-9 under 35 U.S.C. § 102(e)
based on a patent to Rabii as “largely cumulative” of Marlton and Fernandez
(Ans. 33) and “in the interest of simplifying issues before the Board of
Appeals” (Ans. 3).
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Fernandez’s Teachings
F1. Fernandez discloses video input processors (VIPs) 26 which scale
video input so that it can fit into particular displays. A cubic spine
interpolation algorithm carries out the scaling. (Col. 5, ll. 52-57; Fig. 3.)
The ‘369 Patent Disclosure
D2. In Figure 9 of the ‘369 patent, the “DECIMATION CIRCUIT”
328C appears as a hardware block which includes, according to Figures 10-
12 and the related description in the ‘369 patent (col. 13, l. 12 to col. 14, l.
17), inter alia, counters 850 and 858, and a circuit 859 which further
includes multiplexers 862 and 864. The invention modifies a basic CPIP
(picture-in-picture) chip to include the decimation circuit. (Col. 13, ll. 12-
15, 36-40.)
D3. “The picture-in-picture processor 320, according to an inventive
arrangement and unlike the basic CPIP chip, is adapted for asymmetrically
compressing the video data in one of a plurality of selectable display
modes.” (Col. 13, ll. 12-15.)
Analysis
The Examiner maintains that Fernandez’s VIPs 26 (see F1) satisfy the
disputed means structure as recited in claim 10 (i.e., the “means for
asymmetrically compressing said width and height of said picture.”) (See
Ans. 5.) Appellant maintains that “the ‘369 patent describes decimation
circuitry as corresponding to the recited function.” (App. Br. 10.) Appellant
contends that because “the ‘examiner should provide an explanation and
rationale in the Office action as to why the prior art element is an
equivalent’” (id. (quoting MPEP § 2183) (emphasis by Appellant)) to this
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disclosed decimation circuitry, and did not do so, “[t]he Examiner has failed
to meet his burden of proof” (id.).
Appellant refers (id. at 9) to the Brief’s “Summary of Claimed Subject
Matter” to further describe the decimation circuitry as including, inter alia,
element 328C in Figures 9-12 as the structure corresponding to the
asymmetrically compressing function (id. at 4-5.). According to Appellant,
“the decimation circuits . . . allow for separate horizontal and vertical
compression of the picture.” (Id. at 5.)
In other words, Appellant relies on specific decimation hardware
disclosed in the ‘369 patent as corresponding structure for the disputed
means clause. The Examiner does not attempt to show how the Fernandez
VIPs include structure which is either the same as or equivalent to the
decimation circuit disclosed as part of the modified ‘369 CPIP chip. Rather,
the Examiner maintains that the disclosed “decimation circuitry alone cannot
perform the function” and that “the asymmetric compression is carried out
by the processor (320).” (Ans. 28.)
Appellant responds by noting that “the corresponding structure for the
‘means for asymmetrically compressing’ may include not only the
decimation circuit, but also timing and control section 328, which both
reside in the PIP processor 320.” (Reply Br. 4.)
Appellant’s argument is more persuasive. The ‘369 patent indicates
that “unlike the basic CPIP chip” (D3), the invention includes a modified
chip which at least includes hardware decimation circuitry. The modified
chip corresponds to the “means for asymmetrically compressing” recited in
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claim 10. (See D2, D3.) As such, the Examiner has not established that the
Fernandez chip meets the disputed means structure.
Based on the foregoing discussion, the Examiner erred in finding that
Fernandez anticipates independent claim 10 and claims 11-18 dependent
therefrom.
Conclusion
The Examiner did not establish that Fernandez discloses structure
satisfying the “means for asymmetrically compressing said width and height
of said picture” as recited in claim 10. As such, we do not sustain the
anticipation rejection of claims 10-18 based on Fernandez.
Issue-Marlton
Appellant’s responses to the Examiner’s rejection based on Marlton
raise the following issues:
Does Marlton disclose “means for receiving a second video signal
representing a second picture having a second ratio of width to height
different than said first ratio” of width to height of a video display means,
and “means for changing said ratio of width to height of said second
picture,” as recited in claim 1?
Does Marlton disclose a “means for receiving a first video signal,
defining a picture in a second format display ratio of width to height smaller
than said first format display ratio” as recited in claim 10?
The ‘369 Patent Disclosure
D4. As background, the ‘369 patent notes that “[m]ost televisions
today have a format display ratio, horizontal width to vertical height, of 4:3.
A wide format display ratio corresponds more closely to the display format
ratio of movies, for example 16:9.” (Col. 1, ll. 6-9.) The patent describes
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“the use of a wide display ratio screen” (col. 1, l. 32) and “signal
transmissions . . . broadcast with a 4 X 3 format display ratio” (col. 1, ll. 15-
17).
D5. “Figure 1(b) shows a 16 X 9 screen. A 16 X 9 format display
ratio video source would be fully displayed.” (Col. 5, ll. 24-25.)
D6. Figure 1(d) “illustrates a display format, wherein the main and
auxiliary video signals are displayed with the same size picture. Each [side-
by-side] display area has an [sic] format display ratio of 8 X 9 . . . . In order
to show a 4 X 3 format display ratio source in such a display area, without
horizontal or vertical distortion, the signal must be cropped on the left and/or
right sides.” (Col. 5, ll. 41-48.)
D7. “A first turner [sic: tuner] or jack provides a first video signal,
representing a first picture. A second tuner or jack provides a second video
signal, representing a second picture having a second ratio of width to height
different than the first format display ratio.” (Col. 3, ll. 47-51.)
Marlton’s Teachings
M1. “The video input stage has inputs for accepting video signals in
RGB format, composite (PAL or NTSC) format, or SVHS format. SVHS
signals are similar to composite signals, but have separate chroma and
luma/-sync signals. Referring to FIG. 3, the video input stage 26 has six
analogue video input channels . . . .” (Col. 4, ll. 56-61.)
M2. Marlton’s system combines graphics generated from a computer
with an outside video source, including video described above, and also,
video from a disk player. According to Marlton, in the prior art, aspect
ratios for computer graphics are not the same as that for usual standards of
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video image. These prior art (synchronous) systems cannot easily correct
the graphics aspect ratio relative to that of the video. Prior art systems also
limit both the graphics and video displays to fill the whole of the display
area on the display screen. Further, in prior art systems, the combined
display will be distorted by a graphics input: “A circle drawn in computer
graphics will appear as an ellipse in the combined display” (col. 1, ll. 46-47).
(Col. 1, ll. 7-12, 38-54.)
M3. Marlton’s system digitally encodes and asynchronously converts
video input to a signal synchronized to a graphics generator, allowing for a
wide variety of different video source signal formats to be combined with
computer graphics. The graphics and video are combined into a high
resolution computer monitor display which may have the same, less, or more
video display lines than the number of video lines in the video input. (Col.
1, ll. 65-67; col. 7, ll. 3-11.) Marlton’s system overcomes the above-
described prior art problems “using a high resolution computer monitor
capable of displaying the full resolution of all the computer’s graphics
modes. Since the video signal is converted asynchronously, effects such as
video picture magnification and reduction, as well as aspect ratio correction
can be achieved.” (Col. 1, l. 65 to col. 2, l. 2.)
M4. Marlton describes maintaining an input video aspect ratio while
reducing the video image: “If the video image is being reduced in size in
proportion, i.e., maintaining its aspect ratio, two or more video lines may be
stored in the linsetore 118. This enables more extensive interpolation to be
effected by using more vertical samples.” (Col. 7, ll. 31-36.)
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M5. Marlton describes vertical scaling and reduced size display
windows:
Vertical scaling is required because the video source has either
240 lines (NTSC) or 288 line[s] (PAL) of active video per field.
Using a full computer display screen, the video image has to be
displayed in 350, 400 or 480 scan lines of the 31.5 MHz output
display, depending on the computer graphics mode in use. If a
windowed screen is used, i.e. the video is displayed in a
reduced size window of the computer graphics screen, more
vertical scaling is required.
(Col. 6, ll. 54-62.)
M6. Marlton discloses a specific example of vertically scaling an
NTSC format of 240 lines of video so that it fits into a reduced sized
window “set to 71% of the full screen size. Therefore, the number of
display lines in the video window is 71% X 480=340 full lines.” As 340 is
more than the input video of 240 lines, “line doubling is effected” with a
vertical scaling factor of 340/240 = 1.4 – i.e., magnifying the input image by
a factor of 1.4 “to fit the display window.” (Col. 7, l. 67 to col. 8, l. 10.)
(This example requires sub-sampling the (over-sampled) doubled lines (by
interpolation) to obtain 340 out of 480, and discarding remaining lines.
(Col. 8, ll. 23-45.))
M7. Figure 10 is depicted next:

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Figure 10 “shows the filter combinations used depending on the
degree of vertical scaling.” (Col. 7, ll. 48-49.)
M8. Marlton also discloses horizontal scaling. “Horizontal scaling
allows the video to be displayed in a reduced size window of the graphics
screen.” (Col. 6, ll. 14-16.)
Marlton’s Figure 9 is depicted next:

Figure 9, depicted supra, and Figure 8, not depicted, show that a
“particular configuration of the filter 100 is dependent on the degree of
horizontal scaling, the narrowest band pass filter combination E being
selected for the smallest video picture size.” (Col. 6, ll. 28-31.) “The five
filter combinations [A-E] configurable in the horizontal luma filter 100 are
shown in” Figure 8 (and correspond to those in Figure 9). (Col. 5, ll. 65-67.)
M9. Marlton provides a specific example of horizontal scaling of
one-half and corresponding vertical scaling of differently contemplated
degree:
If the video data has been horizontally scaled, more than one
video line may be stored in the linestore. For example, if the
video is horizontally scaled to half its original width, two video
lines may be stored in the line store 118. The vertical scaler has
two modes of operation, depending on the degree of vertical
scaling required.
(Col. 7, ll. 20-26.)
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M10. Vertical scaling is further described as follows: “The
framestore input is fed in at a rate determined by the horizontal and vertical
scalers that sub-sample the video signal, as described hereinbefore.” (Col. 9,
ll. 6-8.) The vertical scaler 116 includes interpolators 120 and 121 which
perform sub-sampling in a similar manner to the horizontal interpolator 104.
(Col. 7, ll. 17-56; see fig.4.)
M11. The syncrhonizer 25 includes a vertical sync microprocessor
398 which is controlled by microprocessor 38. (Col. 17, ll. 18-22; Figs. 2,
21.)
Analysis
Appellant’s arguments focus on independent claims 1 and 10. (App.
Br. 8.) Accordingly, claims 1 and 10 are respectively selected to represent
claims 1-9 and claims 10-18. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to claim 1, Appellant argues that Marlton does not
disclose the “means for receiving a second video signal representing a
second picture having a second ratio of width to height different than said
first ratio.” (App. Br. 12.) Appellant’s arguments with respect to claim 10
mirror the arguments presented with respect to claim 1. (See App. Br. 20.)
As Appellant notes, claim 10 more narrowly requires the input video to be
smaller than, rather than different from, the format display ratio of width to
height. (Id.)
While Appellant argues that the width to height ratio of Marlton’s
display screen is not disclosed (see App. Br. 12), and assuming for the sake
of argument that is correct, Appellant does not explain why Marlton’s video
input stage cannot accept any second video signal, including one having a
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second ratio of width to height different than the width to height of the
computer display. As the Examiner found, Marlton specifically discloses
that the graphics aspect ratio is different than the standard input video ratios.
(Ans. 12 (last full ¶); accord Ans. 32, M2.)
Appellant responds that this graphics aspect ratio does not refer to the
physical dimensions of the display, but rather only refers to the resolution of
graphics images or signals. (See App. Br. 13; Reply Br. 18-19, 27.) That is,
Appellant argues that Marlton’s “correction applies to the mutable aspect
ratio of graphics images, not the fixed aspect ratio of any display.” (Reply
Br. 27.) On the other hand, Appellant admits that Marlton’s “system could .
. . change the aspect ratio, and display the resulting picture in a window not
filling the entire extent of the display.” (Reply Br. 19-20 (emphasis added,
footnote omitted).) In the omitted footnote, Appellant explains that
“Marlton contemplates displaying video in windows that do not fill the
display screen, but does not disclose changing the aspect ratio.” (Reply Br.
20, n.9.) Taken out of context, this argument is not clear entirely.
However, Appellant appears to be arguing that the “video display
means having a first format display ratio of width to height” in claim 1 limits
the display video display means to a fixed aspect ratio for the whole display
screen and precludes it from referring to a smaller window in the claimed
video display means. (See Reply Br. 19-20 (paragraph spanning both
pages).) The ‘369 Patent disclosure is not as limiting as the argument
implies. The ‘369 Patent refers to a “format display ratio” in terms of a
source, a screen (see D4, D5), and a display area (D6). Regarding the latter,
these display areas are smaller windows within a full screen, i.e., the two 8
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X 9 side-by-side windows in Figure 1(d) are described as “display area[s]”
with a “format display ratio of 8 X 9.” (D6.)6
In other words, Appellant apparently concedes that Marlton’s system
accepts video inputs having an aspect ratio different than a window in a full
display screen. This concession means that Marlton satisfies the disputed
claim limitation based on a claim interpretation in which Marlton’s windows
satisfy the video display means.
Even without that concession or assuming arguendo that the claim is
more limiting (to a full display screen) as Appellant argues, according to
Appellant, the means for receiving a second video merely constitutes an
input structure, such as S1, S2, ANT 1, ANT 2, AUX1 and AUX2 as
depicted at Figure 2, Section 20, of the ‘369 Patent. (App. Br. 3.) The ‘369
Patent also describes a “jack” as corresponding structure. (D7.) In other
words, a simple video signal input path including a jack constitutes
corresponding means structure. The Examiner found that Marlton’s various
input structures (i.e., six video input channels) constitute corresponding
input structure. (Ans. 12; accord M1.) That is, Marlton includes a wide
variety of input formats and structure for receiving these varied formats,
including video disk inputs and other (NTSC, PAL, RGB, etc.) types

6 In the Brief, Appellant does not indicate that this “video display means” is
in means plus function format. Appellant’s citations to the ‘369 Patent
indicate a tube with a screen supports the structure. (See App. Br. 2
(describing claim 1), referencing “‘369 Patent Abstract; 3:45-47” and “1:6-
9.”) ; App. Br. 4 (describing claim 10, same reference). The Abstract
broadly describes pictures within a picture and arrays of pictures on a whole
screen. Thus, these particular citations do not limit the video display means
to a whole screen. In any event, the sections just cited also support a broader
interpretation which includes a window within a screen.
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(having varying line formats). (M1, M2, M3, M5.) These simple input
paths (i.e., jack inputs and channel) in the ‘369 Patent and similar input
paths in Marlton (see M1 - input video channels imply similar channel input
structure) do not limit the aspect ratio of the input video signal to any
particular ratio.
As such, because Marlton’s apparatus has the same or similar video
input as the ‘369 Patent and specifically processes aspect ratios different
than the computer graphics ratio, Marlton’s device is capable of receiving a
video input signal having a variety of width to height (aspect) ratios. If one
input aspect ratio is the same as the display screen as Appellant argues, it
follows that others of such input different aspect ratios must be different
than a fixed ratio for the display screen. To support this capability, the
Examiner quoted Marlton to show that “the synchronizer can control the
aspect ratio of the video image in the combined display.” (Ans. 30, quoting
Marlton at col. 2, ll. 24-26.) Based on this finding, the Examiner reasoned
that “Marlton can accommodate a second video signal having a width and
height (aspect ratio) different than a first aspect ratio.” (Ans. 30; accord
M1-M5.)
The Examiner’s rationale is sound. Nothing in Marlton, including the
input paths, or the width to height ratio of Marlton’s display screen
(whatever it is), limits the width to height format ratio of any video signal
which finds its way to Marlton’s input stage. If anything, given the
foregoing discussion, the fact that Marlton’s display screen and window
sizes are not disclosed implies that Marlton’s disclosure does not constrain
the aspect ratio of the video input relative to the display screen.
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Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function, provided the structure is
capable of performing the function. In re Schreiber, 128 F.3d 1473, 1477-
78 (Fed. Cir. 1997) (holding that a funnel disclosed for oil dispensing
anticipated a claim to a funnel-like structure employed for dispensing
popcorn and that applicant had the burden to prove that the funnel was not
capable of dispensing popcorn once the Examiner established a similarity in
structure);7 Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what
a device does.”); Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969)
(“Expressions relating the apparatus to contents thereof during an intended
operation are of no significance in determining patentability of the apparatus
claim.”).
Based on the discussion supra, Appellant’s argument (Reply Br. 19)
that the Examiner’s finding of Marlton’s “mere capability” of receiving a
second video signal as set forth in claim 1 (and similarly in claim 10) is not
enough for anticipation, is not persuasive. Cf. In re Mott, 557 F.2d 266, 269
(CCPA 1977) (“Absent structure which is capable of performing the
functional limitation of the ‘means’, Leutwyler does not meet the claim);

7 While the Schreiber opinion did not specifically expound on the claim
form, Schreiber’s claim 1 includes a means plus function limitation: “means
at the enlarged end of the top to embrace the open end of the [popcorn]
container, the taper of the top being uniform and such as to by itself jam up
the popped popcorn before the end of the cone and permit the dispensing of
only a few kernels at a shake of a package when the top is mounted on the
container.” Id. at 1476.
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RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed.
Cir. 1984) (quoting Mott’s “capable of performing” standard with approval).
Whereas the Examiner has identified Marlton’s video inputs as
structure corresponding to the claimed function, and whereas these standard
video input structures and signal formats are similar to or the same as those
in the ‘369 patent, Marlton’s receiving means necessarily can receive video
signals having different width to height ratios than a display screen. It is
well settled that when the prior art structure is the same or substantially
similar to the applicant’s disclosed structure, and Appellant contends that the
identical function is not disclosed, under Schreiber, Appellant has the
burden of demonstrating otherwise.8 Absent evidence to the contrary,
Marlton’s system necessarily has the capability to receive a video signal of a
width to height ratio different or less than the display ratio of a screen (or
window), thereby satisfying the disputed limitation in claim 1, and the
similar disputed limitation in claim 10.9 Appellant points to nothing in
Marlton which would preclude such a relative aspect ratio video reception.

8 See also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“[T]he mere
recitation of a newly discovered function or property, inherently possessed
by things in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.”)
9 While Appellant submitted an expert declaration, it does not address this
issue. (See “Declaration of Professor Kannan Ramchandran Under CFR
1.132 In Support of Response to Non-Final Office Action,” ¶¶16-20 (App.
Br. Evidence App’x, Exhibit D).)
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Shifting to another claim limitation, i.e., the “means for changing said
ratio of width to height of said second picture,” in claim 1 and a similar
limitation in claim 10, Appellant also argues that Marlton’s system does not
change the aspect ratio of the second input video signal because Marlton
discloses preventing such a change. (App. Br. 15-16.) This argument is also
unpersuasive. The Examiner relied upon the horizontal and vertical scaling
in Marlton as providing the identical function recited. (Ans. 13-14; accord
M4-M10.) The Examiner also found that Marlton discloses that “‘the
synchronizer can control the aspect ratio of the video image in the combined
display.’” (Ans. 30 (quoting Marlton at col. 2, ll. 24-26).) The Examiner
also explained that “[w]hile Marlton does indeed address the situation where
the aspect ratio is maintained (preventing changing) as proposed by
Appellants (e.g. at 7:32), Marlton also makes clear that the aspect ratio can
be controlled (i.e. changed) by the synchronizer as explained above.” (Ans.
31.) The Examiner further explained that Marlton has two purposes, one
related to distortion control, the other related to different video input and
graphics display aspect ratios. (See Ans. 31.) The record supports this
position. Marlton controls a video aspect ratio so that a video input fits into
any sized computer graphics display, and also controls distortion caused by a
graphics input when combined with a video input. (See M2, M3.)
Appellant responds that in Marlton, control of the aspect ratio means
that Marlton prevents change in the aspect ratio, because otherwise,
changing it would result in unwanted distortion. (Reply Br. 21-22; accord
App. Br. 15-16.) Appellant explains further that Marlton is only capable of
presenting the distortion option and “instead suggests the opposite” option.
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(Reply Br. 22.)10 The specific Marlton passage relied upon by the Examiner
(“e.g. at 7:32”) states: “If the video image is being reduced in size in
proportion, i.e., maintaining its aspect ratio, two or more video lines may be
stored in the linestore 118. This enables more extensive interpolation to be
effected by using more vertical samples.” (M4 (emphasis supplied).)
This passage, stating that “if the video image is being reduced in size
in proportion,” implies that the image need not be reduced in such
proportion. As such, Marlton necessarily discloses the disputed function.
Moreover, Appellant’s reliance (App. Br. 15-16) on Marlton’s desire for
distortion prevention improperly conflates Marlton’s desire to prevent
distortion of a graphics source (i.e., “[a] circle drawn in computer graphics
will appear as an ellipse in the combined display”) to Marlton’s video
source. (M2.) Skilled artisans would have recognized that Marlton’s system
provides an option for altering the aspect ratio of input video.
In further support of these findings, Marlton also discloses horizontal
scaling at one-half, with vertical scaling at virtually any reasonable amount,
depending on two separate modes. (M7.) Another specific example which
does not specify the horizontal scaling, describes a different (than one-half)
vertical scaling of 1.4 to fit a reduced window of 71%. (M9.) In addition to
these examples, Marlton discloses aspect ratio correction and video
reduction with both vertical and horizontal scaling controlled at any amount
necessary to allow for an image to fit into a reduced size display window,

10 Appellant’s expert (supra note 9) opines in a similar or cumulative
fashion. (See Ramchandran Decl. ¶¶16-19.) The expert does not address the
Examiner’s finding that Marlton’s system also produces distorted (i.e.,
changed aspect ratio) pictures.
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and further discloses different filter combinations and different sampling and
scaling for obtaining the different vertical and horizontal scaling. (M4-M6,
M8, M10.)
Finally, as noted above, Appellant acknowledges that Marlton
displays video to fit different windows. (Reply Br 19-20.) While Appellant
maintains that Marlton does not disclose changing the input video aspect
ratio (id. at 20 n.9.) the argument reduces to the assertion that Marlton’s
disclosure limits all windows to the same aspect ratio as other windows or as
the screen. No basis exists for such a limitation on Marlton’s generic
disclosure of windows.
In any event, different scaling of the horizontal versus the vertical
video input constitutes distortion by disproportionate scaling, i.e., not
maintaining the aspect ratio. (See App. Br. 13, 19-20.) Contrary to
Appellant’s arguments, while Marlton’s disclosure does indicate that the
horizontal scaling and vertical may be the same, Marlton’s broad disclosure
discussed supra presents a distortion option.
Appellant also relies on Transclean Corp. V. Bridgewood Servs., Inc.,
290 F.3d 1364,1373 (Fed. Cir. 2002) for the proposition that a prior art
reference must necessarily disclose the identical function. (App. Br. 18.)
Similar to the argument presented supra, Appellant argues that even if a
prior art means is “capable of performing the recited function,” such is not
sufficient to show that Marlton “necessarily perform[s] the recited function.”
Id.
As indicated supra, the Examiner’s findings and the record shows that
Marlton’s disclosure necessarily either describes a pre-configured apparatus
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with a distortion option (with selectable different horizontal and vertical
filters employed during different scaling options, etc.) or an apparatus
having post-optional configuration(s) (i.e., options for adding the different
horizontal and vertical filters, etc. and scaling options to the apparatus as
required) which necessarily include a distortion option. Contrary to
Appellant’s argument, Transclean does not preclude a finding of
anticipation based on a reference which informs skilled artisans of the
various options necessary to perform the recited function. Cf. In re Mott,
557 F.2d at 269 (relying on the capable of performing standard for a means
clause to show a lack of anticipation).
In other words, even if additional modifications are required, as long
as any such required modifications are disclosed in the four corners of
Marlton such that Marlton discloses the invention in the manner claimed
(i.e., without picking and choosing), Marlton anticipates the claims. Net
MoneyIn, Inc. v. VeriSign, Inc. 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(holding that an anticipating reference must “disclose[] within the four
corners of the document not only all of the limitations claimed, but also all
of the limitations arranged or combined in the same was as recited in the
claim”); cf. Transclean, 290 F.3d at 1372 (noting that nothing in the prior art
Becnel patent showed how a skilled artisan would recognize that that the
claimed flow equalization was necessarily present).11

11 Appellant also relies on “an analogy” in Net MoneyIn, 545 F.3d at 1367.
Appellant argues that this case stands for the proposition that “a prior art
reference disclosing a general purpose computer does not satisfy a means-
plus-function element reciting a particular function on the theory that the
computer is capable of being programmed to perform the recited function.
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Appellant also argues that Marlton does not disclose . . . “means for
combining a portion of said first picture with a portion of said changed
second picture . . . or means for changing the ratio or width to height of said
second picture.” (App. Br. 14 (bolding emphasis deleted).) With respect to
the first portion of the argument, Appellant contends that the Examiner did
not respond to Appellant’s “arguments that Marlton lacks ‘means for
combining . . . .’” (App. Br. 16.) The Examiner found, inter alia, that
Marlton’s “fading/mixing circuit 34 combines tile video and graphics
signals” from each asynchronous converter 30, and that the output of the
circuit 34 constitutes a combined display signal which is provided to the
display monitor. (Ans. 14.) The Examiner also explained that that “the
fading/mixing circuit 34 (matrix) [is] under the control of uP control 38,”
and referenced the earlier “Final Office Action of 1/29/09.” (Ans. 31.)
In response, Appellant focuses on the functional limitations involving
“changing” and does not contest (with any supporting argument or evidence)
the Examiner’s finding that Marlton’s circuit 34 constitutes structure

Rather the computer must be, in fact, programmed with an algorithm to
perform the function.” (App. Br. 17, n. 9.) While Net MoneyIn does outline
anticipation requirements in another portion of the opinion as summarized
supra, in the portion of the opinion relied upon by Appellant, Net MoneyIn
outlines the requirements for a claimant’s disclosure to satisfy 35 U.S.C. §
112 ¶¶ 2 & 6 when a claim is in a means-plus-function format. In any event,
contrary to Appellant’s analogy, nothing in Net MoneyIn requires a general
purpose computer to be programmed, “in fact,” either for anticipation
purposes, or otherwise. For example, an algorithm specified as applicable
for a general purpose computer in the patent specification can satisfy 35
U.S.C. § 112 ¶¶ 2 & 6. Cf. id. (holding means-plus-function claims
indefinite under 35 U.S.C. § 112 ¶ 2 because “the specification fails to
disclose an algorithm for performing the claimed function.”)
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satisfying the means for combining. (See App. Br. 16) In other words,
Appellant only asserts but does not specifically explain why Marlton’s
structure is not the same as or an equivalent to Marlton’s means for
combining. Absent a specific explanation by Appellant to the contrary, the
Examiner’s response with respect to the means for combining clause appears
supported because Appellant also discloses microprocessor control, albeit of,
“for example, the multiplexers” (as structure corresponding to the function
of combining a signal for display). (App. Br. 4 (emphasis added).) Such an
“example” opens the door for other corresponding or equivalent hardware
besides multiplexers. “It is the applicants’ burden to precisely define the
invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).
With respect to the second portion of the argument, Appellant’s
arguments similarly focus on the asserted lack in Marlton of the “changing”
function recited in the “means for changing” clause, and as also implied in
the “means for combining . . .” clause (based on the recited “changed second
picture” in the latter clause), in claim 1. On the other hand, Appellant does
assert, without explanation, that the Examiner failed to show that Marlton’s
“synchronizer corresponds to the structure described in the ‘369 Patent, or
an equivalent thereof, for performing the recited function of the ‘means for
changing.’” (Reply Br. 20.)
In other words, Appellant’s terse assertion without explanation as to
an alleged lack of changing (or other) means structure, coupled with pointed
arguments alleging a lack of function, lead to the conclusion that Appellant
relies on an alleged lack of disclosed function to show a lack of
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corresponding structure. In response to Judge Turner’s questions at the oral
argument, Appellant verified that Appellant’s arguments were not directed
to a lack of structure corresponding to the means for changing clause,
thereby waiving any such argument based on lack of structure. (See BPAI
Hearing Transcript 12 (stating “I believe we did not make a structural
argument in Marlton” and later, “[i]t wasn’t in dispute”).) In any event,
comparison of the respective circuits at least reveals sufficient prima facie
structural equivalence and/or correspondence.12
While Appellant recites limitations appearing in claims 5 (App. Br.
12), 12 (id. at 16, 20), and 16 (id. at 16), these separate recitations appear
under the same section headings for the independent claims (i.e., “1. Claims

12 For example, Appellant states that the means for changing “may be
accomplished by interpolation and resampling circuits that implement
subsampling (when reducing) and up-sampling (when increasing) the line or
pixel counts.” (App. Br. 3.) Appellant also pointed (more specifically) to
disclosed corresponding structure including interpolators, a processor, and
decimation circuitry (as noted supra in the discussion of Fernandez). (Id. at
3-4.) The Examiner relied on Marlton’s asynchronous video converter 30
and synchronizer. (See Ans. 13, citing Marlton at column 5, ll. 56-61.)
Synchronizer 25 and converter 30 cooperate (Marlton, col. 4, ll. 24-31) to
provide sync and include horizontal and vertical filters, and interpolators
(see Ans. 13, citing Marlton at column 5, ll. 56-61). Synchronizer 25 is
under microprocessor control. (M11.) The interpolator 104 provides
“‘horizontal scaling . . . by sub-sampling at a predetermined clock rate.’”
(Ans. 13, quoting Marlton at col. 6, ll. 12-16.) With respect to a more
limiting “changing means” as recited in claim 9, the Examiner also pointed
out that Marlton’s vertical interpolator performs a similar sub-sampling as
the horizontal interpolator. (Ans. 17, citing Marlton at col. 7, ll. 36-38.) The
Examiner also pointed out that Marlton’s synchronizer circuit performs both
sub-sampling and over-sampling to change the aspect ratio. (Ans. 30 (citing
Marlton at col. 7, ll. 28, 59).)
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1-9,” id. at 11, and “2. Claims 10-18,” id. at 20) and appear to be in the
context of explaining the meaning of independent claims 1 and 10. As such,
these mere recitations, each appearing as grouped with the corresponding
independent claims, do not rise to the level of separate patentability
arguments. See 37 C.F.R. § 41.37(vii). Moreover, Appellant asserts that
dependent claims 2-9 and 11-18 respectively are patentable “for at least the
reasons given for the independent claim[s]” 1 and 10. (App. Br. 19; accord
App. Br. 16, 21.) In other words, based on the arguments presented, the
dependent claims fall with the independent claims.
Based on the foregoing discussion, the Examiner did not err in finding
that Marlton anticipates independent claims 1 and 10, and claims 2-9 and 11-
18 dependent therefrom.
Conclusion
Marlton discloses “means for receiving a second video signal
representing a second picture having a second ratio of width to height
different than said first ratio” of width to height of a video display means,
and “means for changing said ratio of width to height of said second
picture,” as recited in claim 1. Marlton discloses a “means for receiving a
first video signal, defining a picture in a second format display ratio of width
to height smaller than said first format display ratio” as recited in claim 10.
As such, we sustain the anticipation rejection of claims 1-18 based on
Marlton.
DECISION
The Examiner’s decision to reject appealed claims 1-18 is affirmed.
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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

KMF

Counsel for Patent Owner:
Morrison & Foerster, LLP
425 Market Street
San Francisco, California 94105-2482

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