Ex Parte ATON

Board of Patent Appeals and Interferences

Jan 28, 2000

08250631 (B.P.A.I. Jan. 28, 2000)

1
Application for patent filed May 27, 1994. According to appellant,
this application is a continuation of Application No. 07/678,570, filed March
28, 1991, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS J. ATON
____________
Appeal No. 1997-1011
Application No. 08/250,6311
____________
ON BRIEF
____________
Before BARRETT, FLEMING, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 22, which are all of the claims
pending in this application.
The appellant's invention relates to a communication system
in which icon strings of information such as network identifiers
or program titles are displayed with standard broadcasts. Claim
Appeal No. 1997-1011
Application No. 08/250,631
2
Takarada is the inventor name printed on the abstract and used by the
examiner in the rejection, although Masao Kita and Tomoyoshi Kurisaki are the
inventor names listed on the translation. We will refer to the reference as
Takarada for purposes of our decision.
2
1 is illustrative of the claimed invention, and it reads as
follows:
1. A communication system comprising:
a transmitter for broadcasting communication signals having
an information content, comprised of a standard broadcast format
in addition to an associated icon string, said associated icon
string being transmitted with the communication signal;
a receiver for receiving and processing said communication
signals, said receiver comprising;
circuitry for processing said standard broadcast format
portion of said communication signals in preparation for a
display of said signals,
circuitry for stripping said associated icon string
comprised of both close caption text and other icons from said
communication signal,
decoding/processing circuitry for decoding and processing of
said other icons, and
at least one display for the simultaneous display of said
communication signals and said other icons, wherein said other
icons displayed is the source information such as a network
identifier or station call letters or a program title.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Niioka et al. (Niioka) 4,392,246 Jul. 05, 1983
Seth-Smith et al. (Seth-Smith) 4,890,319 Dec. 26, 1989
Takarada2 JP 60-103888 Jun. 08, 1985
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Application No. 08/250,631
3
Claims 1 through 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Takarada in view of Niioka, further in
view of Seth-Smith with respect to claims 16 and 17.
Reference is made to the Examiner's Answer (Paper No. 27,
mailed May 21, 1996) and the Supplemental Examiner's Answer
(Paper No. 29, mailed November 25, 1996) for the examiner's
complete reasoning in support of the rejections, and to
appellant's Brief (Paper No. 26, filed January 23, 1996) and
Reply Brief (Paper No. 28, filed July 26, 1996) for appellant's
arguments thereagainst.
OPINION
As a preliminary matter, we note that appellant indicates on
page 5 of the Brief that the claims do not stand or fall
together. Appellant supplies arguments as to the separate
patentability of claims 11 and 16, but does not mention claim 12,
and merely reproduces the limitations recited in each of claims 2
through 10, 13 through 15, and 17 through 22. 37 CFR
§ 1.192(c)(7) (1995), which was controlling at the time of
appellant's filing the Brief, states,
For each ground of rejection which appellant contests
and which applies to a group of two or more claims, the
Board shall select a single claim from the group and
shall decide the appeal as to the ground of rejection
on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or
fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the
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Application No. 08/250,631
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claims of the group are believed to be separately
patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the
claims are separately patentable (underlining added for
emphasis).
Therefore, we will consider the claims according to the following
groups, (1) claims 1 through 10, 14, 15, and 19 through 21,
(2) claims 11 through 13, (3) claims 16 and 17, and (4) claims 18
and 22, with claims 1, 11, 16, and 18 as representative.
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 1 through 22.
Appellant's sole argument with respect to claim 1 (Reply
Brief, pages 1-2) is that neither Takarada nor Niioka discloses
transmitting icons which display the source information, such as
a network identifier, station call letters, or a program title.
The examiner asserts (Answer, page 3) that it would have been
obvious in view of the teachings of Niioka to use network
identifiers as Takarada's character data.
Takarada discloses (translation, page 4-5) a transmitter
(transmission circuit 2), which transmits communication signals
(character data Vd and video signals Vf), a receiver (antenna
11), stripping circuitry (processing circuit 13, which separates
video signals Vf from the remaining signals Vo), and a display
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(picture tube 15). Takarada, however, includes a single type of
character data (which appears to be for close captioning) and
does not describe source information as the character data.
Claim 1, on the other hand, requires two types of icons, close
captioning and source data. Niioka discloses providing a
broadcast wave receiving system with a display of channel
receiving information, such as the call signs of the stations, to
inform the user of the name or call sign of a channel as it is
received. Niioka, however, does not transmit the call signs with
the broadcast. Rather, Niioka presets and stores the information
at the receiver and compares the frequency of the received
broadcast with frequency data stored with the call signs.
We find no motivation in either reference for transmitting
the network identifiers with the broadcast signals, as the
disclosure of Niioka is limited to presetting such information at
the receiver. Additionally, neither reference discloses
transmitting both close captioning and source data as the
character data, as Takarada transmits only one type of character
data and Niioka does not transmit any type of icon or character
data. Accordingly, the examiner has failed to establish a prima
facie case of obviousness. Therefore, we cannot sustain the
rejection of claims 1 through 10, 14, 15, and 19 through 21.
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Claim 11 does not specify that the icons display source
information, but still requires two kinds of icons, including
close captioning. As explained above, Takarada is limited to a
single type of character data, and Niioka does not teach
transmitting any. Also, claim 11 recites separating the icons by
function, and storing them in function specific memory circuits.
The examiner asserts (Answer, page 6) that Takarada's memory 24
is a function specific memory, thereby meeting the claim
limitation. Appellant contends (Reply Brief, page 4) that
neither reference discloses such function specific memories. As
Takarada transmits only one type of character data, Takarada
requires only one type of memory. Consequently, memory 24 is a
single memory rather than plural memory circuits, as recited in
claim 11, and is not function specific. Accordingly, we cannot
sustain the rejection of claim 11, nor claims 12 and 13, which
are grouped therewith.
Claim 18 again recites two kinds of icons including close
captioning. As explained above, neither reference discloses
transmission of two types of icons. Further, the examiner has
failed to address the additional limitation of turning on
automatically to down-load the icons for at least one channel.
The examiner asserts (Answer, page 4) in regard to claim 22
(which further limits claim 18) that automatically turning on the
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receiver in the middle of the night would have been obvious
because the operator might preprogram the system to turn on and
receive icons for later. However, in the absence of the second
type of icon, we find no motivation for down-loading such icons
by automatically turning on the receiver. Accordingly, we cannot
sustain the rejection of claim 18 nor the rejection of claim 22,
which is grouped therewith.
Claims 16 and 17 include the same limitations as claim 11,
with the addition of a non-volatile memory for one of the
function specific memories. Seth-Smith, which was applied for a
teaching of non-volatile memory, does not cure the deficiencies
discussed above. Thus, we cannot sustain the rejection of claims
16 and 17.
The examiner should consider the attached disclosure on
pages 80-81 of Television Electronics: Theory and Servicing,
eighth edition, by Milton S. Kiver and Milton Kaufman, published
in 1983, in determining the obviousness of the claims. For
example, in reference to claim 1, pages 80-81 indicate that
information which may be transmitted and displayed visually with
program related data signals include text for deaf viewers (close
captioning) and channel number or other broadcast messages
(which, broadly interpreted, could include source data).
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CONCLUSION
The decision of the examiner rejecting claims 1 through 22
under 35 U.S.C. § 103 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
vsh
Appeal No. 1997-1011
Application No. 08/250,631
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