Ex Parte ARAS

Board of Patent Appeals and Interferences

Mar 11, 2005

09331756 (B.P.A.I. Mar. 11, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MEHMET R. ARAS
____________
Appeal No. 2004-2307
Application No. 09/331,756
____________
ON BRIEF
____________
Before KRASS, GROSS, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 38-59, which are all the claims remaining in the application.
We reverse, and enter a new ground of rejection in accordance with 37 CFR
§ 41.50(b).
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BACKGROUND
The invention relates to a TV broadcast system whereby remote TV transmitters,
and their transmitted content, may be controlled by a central studio. Claim 38 is
reproduced below.
38. A TV broadcast method for a system to be operated from a TV continuity
studio within the control of a broadcast flow unit, said method comprising:
(a) generating alphanumeric characters and/or image data separately
for each of plural remote sites at a central site and transmitting said
alphanumeric characters and/or image data therefrom to said plural remote sites
via a digital data communication link;
(b) detecting whether said alphanumeric characters and/or image data
have been received correctly at the said remote sites via said link;
(c) generating and transmitting command codes within non-displayed
portions of broadcast television signals to remotely control each of said remote
sites from the said central site;
(d) converting said alphanumeric characters and/or image data to local
vision materials with a graphic generator at each of said remote sites;
(e) at each remote site, overlaying said local vision material
synchronously onto the continuing general television signal without cutting off the
main general broadcast; and
(f) detecting whether the said local vision materials have been
broadcast via transmission of digital information sent back to the central site.
The examiner relies on the following references:
Harvey et al. (Harvey) 4,694,490 Sep. 15, 1987
Seth-Smith et al. (Seth-Smith) 4,829,569 May 9, 1989
Nemirofsky 5,412,416 May 2, 1995
(filed Aug. 7, 1992)
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Claims 38-41, 44, 47-49, 51, 53, and 56-59 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Nemirofsky.
Claims 42 and 50 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Nemirofsky and Seth-Smith.
Claims 43, 45, 46, 52, 54, and 55 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nemirofsky and Harvey.
We refer to the Final Rejection (Paper No. 20) and the Examiner’s Answer
(Paper No. 25) for a statement of the examiner’s position and to the Brief (Paper No.
24) for appellant’s position with respect to the claims which stand rejected.
OPINION
Rejections over the prior art
Instant claim 38 requires, inter alia, generating alphanumeric characters and/or
image data separately for plural remote sites at a central site, and transmitting the data
to the remote sites via a digital data communication link. The claim further requires
generating and transmitting command codes within non-displayed portions of broadcast
television signals to remotely control each of the remote sites from the central site.
The statement of the rejection (Answer at 4) points to Figure 2, element 46, and
column 7, lines 35 through 44 of Nemirofsky as corresponding to the transmission of the
data via a digital data communication link. The rejection further points to column 6 of
the reference for a teaching of generating and transmitting command codes within non-
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displayed portions of the broadcast signals; i.e., within the vertical blanking interval
(VBI) that is specific to Nemirofsky’s analog environment. (Id.) The examiner
underscores, later in the Answer, that the teaching of encoding control data in the VBI is
deemed to correspond to the claimed generation and transmission of command codes
within non-displayed portions of broadcast television signals. (Id. at 12.)
Nemirofsky describes two embodiments of the invention. In the analog (or “first”)
embodiment, video signals are transmitted in analog form. Col. 6, l. 8 et seq. In the
analog embodiment, control data may be encoded in a vertical blanking interval in the
analog video signal. Alternatively, the control data may be encoded into a separate
data sub-carrier signal. Col. 6, ll. 31-35.
In the digital embodiment, video data are compressed and transmitted in digital
source channels. Col. 6, l. 52 et seq. Control data are carried on a digital control data
channel. Col. 6, ll. 52-59; col. 7, ll. 31-37.
Anticipation requires the presence in a single prior art reference disclosure of
each and every element of the claimed invention, arranged as in the claim. Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984). The rejection over Nemirofsky, however, reads the
claimed elements on two distinct embodiments described in the reference. The
rejection combines the teaching of a digital data communication link in Nemirofsky’s
digital embodiment with the teaching of transmitting command codes within non-
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displayed portions of broadcast television signals (i.e., in a vertical blanking interval) in
the analog embodiment.
Reading a claim on separate embodiments described in a reference, while not
consistent with a finding of anticipation, could support a rejection for obviousness.
Whether there is suggestion to combine elements or steps of different embodiments is
an inquiry under obviousness, rather than anticipation. “Even when obviousness is
based on a single prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In this case, however, we find no suggestion in Nemirofsky for combining the
relevant portions of the distinct embodiments such that the requirements of instant claim
38 are met. Indeed, it appears that such a combination of the digital and analog
embodiments of the reference would be, at best, impractical.
The remainder of the independent claims contain similar limitations to those of
claim 38 that we have addressed. The additional references applied in the § 103
rejections do not remedy the basic deficiency of Nemirofsky as applied against the base
claims. We thus do not sustain any of the rejections of the claims under 35 U.S.C.
§ 102 and 103.
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New ground of rejection
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 41.50(b): Claims 38-59 are rejected under 35 U.S.C. § 112, first
paragraph, as the disclosure fails to provide written description for the invention now
claimed.
Each independent claim (e.g., claim 38) requires, inter alia, generating
alphanumeric characters and/or image data separately for plural remote sites at a
central site, and transmitting the data to the remote sites “via a digital data
communication link.” The disclosure does not provide written description for the
invention now claimed.
To comply with the “written description” requirement of 35 U.S.C. § 112, first
paragraph, an applicant must convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the invention. The
invention is, for purposes of the “written description” inquiry, whatever is now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). To “convey with reasonable clarity to those skilled in the art” may also be
expressed in terms of whether the “necessary and only reasonable construction” to be
given the disclosure by one skilled in the art clearly supports the limitation now claimed.
See Hyatt v. Boone, 146 F.3d 1348, 1354, 47 USPQ2d 1128, 1132 (Fed. Cir. 1998)
(“We do not view these various expressions as setting divergent standards for
compliance with § 112. In all cases, the purpose of the description requirement is ‘to
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ensure that the inventor had possession, as of the filing date of the application relied on,
of the specific subject matter later claimed by him.’”) (quoting In re Edwards, 568 F.2d
1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978)).
The invention claimed does not have to be described in ipsis verbis in order to
satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208
F.3d 989, 1000, 54 USPQ2d 1227, 1235 (Fed. Cir. 2000). However, one skilled in the
art, reading the original disclosure, must be able to immediately discern the limitations
now claimed. See Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558,
31 USPQ2d 1855, 1857 (Fed. Cir. 1994) (“The fact finder must determine if one skilled
in the art, reading the original specification, would immediately discern the limitation at
issue in the parent.”).
We are mindful, however, that the question of written description support should
not be confused with the question of what would have been obvious to the artisan.
Whether one skilled in the art would find the instantly claimed invention obvious in view
of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559
F.2d 588, 593, 194 USPQ 470, 474 (CCPA 1977). A description which renders obvious
the invention for which the benefit of an earlier date is sought is not sufficient.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997).
When a claimed limitation is not present in the written description, it must be
shown that a person of ordinary skill would have understood, at the time the application
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was filed, that the description requires that limitation. See Hyatt v. Boone, 146 F.3d at
1353, 47 USPQ2d at 1131 (“[W]hen an explicit limitation in an interference count is not
present in the written description whose benefit is sought it must be shown that a
person of ordinary skill would have understood, at the time the patent application was
filed, that the description requires that limitation.”).
One shows “possession” by descriptive means such as words, structures,
figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood,
107 F.3d at 1572, 41 USPQ2d at 1966. It is not sufficient for purposes of the written
description requirement that the disclosure, when combined with the knowledge in the
art, would lead one to speculate as to modifications that the inventor might have
envisioned, but failed to disclose. Id.
Appellant’s disclosure described alphanumeric character and/or image data,
stored as data files on hard disk at the central site, and later transmitted to a remote
station over a modem. The modem/telephone network communications link to the
remote stations was deemed to be the most reliable link for data transfer. (See, e.g.,
spec. at 6.)
Modem communication over a telephone network is not, however, a digital data
communication link, as now claimed. A modem is “[a] device that converts the digital
signals produced by terminals and computers into the analog signals that telephone
circuits are designed to carry.” McGraw-Hill Encyclopedia of Science & Technology, 7th
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1 A copy of the reference, pages 313 and 314, should mail as an attachment to this decision.
2 To the extent that the disclosure may have conveyed that the relevant data transmission could
be via satellite (e.g., original claim 2), there was no disclosure of, at the least, digital transmission of the
alphanumeric characters and/or image data via satellite in combination with generation and transmission
of command codes within non-displayed portions of broadcast television signals.
-9-
ed., vol. 11, at 313 (1992).1 The disclosure thus described an analog, rather than
digital, communication link.2
We acknowledge that, at the time of invention, there may have been devices
referred to as “digital modems,” or other instances of equipment having designations
that included the term “modem,” that may have been useful for digital communication
links. The modem described in the instant specification, however, is simply a “modem” -
- not modified by other terms so as to describe some other piece of equipment.
Moreover, as we have suggested supra, the question of whether it would have
been obvious to use a digital, as opposed to an analog, communication link is not at
issue in the present inquiry. The question of whether appellant may have contemplated
other embodiments, not described, is not at issue in the present inquiry.
CONCLUSION
The rejection of claims 38-59 under 35 U.S.C. § 102 or 103 is reversed. A new
rejection of claims 38-59 under 35 U.S.C. § 112, first paragraph is set forth herein.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
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Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
REVERSED -- 37 CFR § 41.50(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2004-2307
Application No. 09/331,756
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