Ex parte BORG

Board of Patent Appeals and Interferences

Feb 20, 2001

08080471 (B.P.A.I. Feb. 20, 2001)

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written for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ARTHUR N. BORG
____________
Appeal No. 1997-2774
Application No. 08/080,471
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH, 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 14, 16 through 22, 24 through
34, and 36 through 44, which are all of the claims pending in
this application. Claims 15, 23, and 35 have been canceled.
Appellant's invention relates to a security system which
provides a visual record of trespassers that approach the
entryway to a building. When a detector senses a change in a
scene, such as at the entrance to a building, power is
Appeal No. 1997-2774
Application No. 08/080,471
2
supplied to a camera to capture an image of the scene, a
portion of the analog signal is converted to digital, and the
image is transmitted to a display at a remote location, such
as a control station. Claim 44 is illustrative of the claimed
invention, and it reads as follows:
44. A process for capturing a scene comprising the
steps:
detecting a change in a scene, a scene being a visual
perception of objects contained in a predetermined solid
angle;
converting the scene in which a change is detected into
an analog electrical signal from which a replica of the
original scene can be obtained; and
converting a portion of the analog electrical signal into
a sequence of digital samples representative of a portion of a
single image of the scene, the remaining portions of the
analog electrical signal not being used.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Barber et al. (Barber) 4,361,730 Nov. 30,
1982
Coutta et al. (Coutta) 4,510,526 Apr. 09,
1985
Yoshida 4,566,123 Jan. 21,
1986
Beaulier 4,568,981 Feb. 04,
1986
Keesen et al. (Keesen) 4,807,033 Feb. 21,
1989
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Application No. 08/080,471
3
Onoe et al. (Onoe) 5,151,693 Sep. 29,
1992
Tanaka 5,382,943 Jan. 17,
1995
John D. Spragins et al., "Telecommunications: Protocols and
Design", Addison-Wesley Publishing Company (1991), pp. 226-9.
(Spragins)
The Radio Amateur's Handbook, 49th Edition, by the
Headquarters Staff of the American Radio Relay League (1972),
p. 635. (Handbook)
Claims 28, 30, 33, and 37 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being single means claims that are
non-enabled by the disclosure.
Claims 1 through 14, 16 through 22, 24 through 34, and 36
through 44 stand rejected under 35 U.S.C. § 103 as being
unpatentable. As evidence of obviousness, the examiner
applies Beaulier and Coutta as to claims 4 and 5 and Tanaka
alone as to claims 2, 6, 9, 43, and 44. For the remaining
claims, the examiner applies Tanaka in combination with:
Yoshida as to claims 1, 8, 27, and 28, Barber as to claims 3,
10, 29, 30, 36, and 37, Keesen as to claim 7, Onoe as to claim
11, Onoe and Spragins as to claim 12, Onoe and Handbook as to
claim 13, Coutta as to claims 14, 16, and 34, Coutta and
Barber as to claims 17 and 31 through 33, Coutta and Beaulier
Appeal No. 1997-2774
Application No. 08/080,471
4
as to claims 18, 19, 38, and 39, Coutta and Onoe as to claims
20 through 22, 24, and 40 through 42, Coutta, Onoe, and
Spragins as to claim 25, and Coutta, Onoe, and Handbook as to
claim 26.
Reference is made to the Examiner's Answer (Paper No. 16,
mailed January 16, 1997) for the examiner's complete reasoning
in support of the rejections, and to appellant's Brief (Paper
No. 15, filed August 21, 1996) for appellant's arguments
thereagainst.
OPINION
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 affirm the enablement rejection of claims 28, 30,
33, and 37 and reverse the obviousness rejections of claims 1
through 14, 16 through 22, 24 through 34, and 36 through 44.
In other words, we affirm-in-part. We also enter a new ground
of rejection using our authority under 37 CFR § 1.196(b).
As to the enablement rejection, the examiner asserts
(Final Rejection, page 2) that "claims 28, 30, 33, and 37 are
considered to be a [sic] single means claim[s]." Appellant
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Application No. 08/080,471
5
contests the rejection, stating that since the claims depend
from method claims having multiple steps, each claim must be
interpreted as an apparatus including a "means for"
accomplishing each recited step. With such an interpretation,
the claims would include multiple means. Appellant further
refers to section 806.05(e) of the Manual of Patent Examining
Procedure (MPEP) as providing approval for such a claim
format. We agree with the examiner.
According to the MPEP, § 2164.08(a), a single means claim
is defined as a claim in which "a means recitation does not
appear in combination with another recited element of means,"
and "is subject to an undue breadth rejection under 35 U.S.C.
112, first paragraph." The MPEP refers to In re Hyatt, 708
F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983), wherein
the court explained,
The long-recognized problem with a single means
claim is that it covers every conceivable means for
achieving the stated result, while the specification
discloses at most only those means known to the
inventor. See O'Reilly v. Morse, 56 U.S. 62, 112
(1853). Thus, the claim is properly rejected for
what used to be known as "undue breadth," but has
since been appreciated as being, more accurately,
based on the first paragraph of §112... .
The final paragraph of §112 saves combination
claims drafted using means-plus-function format from
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this problem by providing a construction of that
format narrow enough to avoid the problem of undue
breadth as forbidden by the first paragraph. But no
provision saves a claim drafted in
means-plus-function format which is not drawn to a
combination, i.e., a single means claim.
In the present case, although claims 28, 30, 33, and 37
do not recite even a single means, they are analogous to
single means claims in that they recite neither a specific
structure nor a combination of means. In the absence of any
recitation of structure or multiple means, claims 28, 30, 33,
and 37 are not drawn to a combination. Thus the claims appear
to cover "every conceivable means for achieving the stated"
method, whereas the specification discloses only those limited
means or elements known to the inventor. As to appellant's
proposed interpretation of claims 28, 30, 33, and 37, no means
is recited, and the structure required for each method need
not be claimed in terms of means-plus-function. Instead, some
or all of the structure required to perform the method
alternatively could be recited as one or more specific
elements. In fact, apparatus claim 1, which basically
corresponds to method claim 27, is a hybrid type claim which
recites a camera (a specific element) for accomplishing the
Appeal No. 1997-2774
Application No. 08/080,471
We should note that the section of the MPEP referenced by appellant1
relates to restriction practice and not to the single means rejection.
Accordingly, that section does not control our decision concerning the single
means issue.
An analysis of means-plus-function elements according to In re2
Donaldson Co. will hereafter be referred to as a Donaldson analysis.
7
step of converting the scene into analog and a "means for"
accomplishing each other step recited in the method.
Consequently, we agree with the examiner that the scope of
claims 28, 30, 33, and 37 is not enabled by the specification,
and we sustain the examiner's rejection under 35 U.S.C. § 112,
first paragraph.1
Claims 2, 6, 9, 43, and 44 were rejected as being
unpatentable over Tanaka. Claim 6 includes, in pertinent
part, "a means for capturing a single image of a scene" and "a
memory for storing the sequence of integers representing the
captured scene." As to the capturing means, appellant invokes
In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir.
1994), and analyzes the claim in accordance therewith. In2
other words, appellant specifically lists the elements
disclosed which correspond to the claimed means and indicates
that elements lacking counterparts in Tanaka include
microprocessor 15, sync separator 29, gate 31, D flip-flop 35,
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NAND gates 37, 39, and counter 41. The examiner responds
(Answer, page 10) that "Tanaka would inherently contain a
microprocessor and counter or equivalent elements because it
is performing the same function."
The sixth paragraph of 35 U.S.C. § 112 states that a
claim expressed as a means for performing a specified function
without reciting a structure or material will be construed to
cover the corresponding structure or material described in the
specification and its equivalents. The test for determining
equivalence under the sixth paragraph of section 112 is
whether the differences with respect to the structure
disclosed in the specification are insubstantial, yet the
function is identical. See, for example, Al-Site Corp. v. VSI
International Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165
and 1168 (Fed. Cir. 1999). The examiner has failed to
indicate any particular elements in Tanaka that correspond to
the very specific ones disclosed by appellant and listed in
the Brief for the capturing means. Consequently, we find that
Tanaka does not disclose a structure with insubstantial
differences from, or, rather, an equivalent structure within
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35 U.S.C. § 112, sixth paragraph, to that disclosed for the
capturing means.
Furthermore, regarding the memory, appellant argues
(Brief, page 37) that Tanaka neither discloses a memory nor
requires a memory, since the digitized television signal is
immediately transmitted to another location. The examiner, on
the other hand, contends (Answer, page 11) that memory devices
are well-known in the art for temporarily storing information
to be processed and "would normally be an inherent feature."
Although the examiner's rationale for including a memory is
reasonable, it appears to be based on mere conjecture, as the
inclusion of a memory is not suggested by the reference. In
re Warner, 154 USPQ 173, 177 (CCPA 1967). Accordingly, the
examiner has failed to establish a prima facie case of
obviousness, and we cannot sustain the rejection of claim 6.
Claims 9, 43, and 44 each recite a means for or step of
converting a portion of the image viewed by the television
camera into a sequence of integers, with "the remaining
portions of the analog electrical signal not being used."
Appellant (Brief, pages 45-6) points to A/D converter 25,
microprocessor 15, sync separator 29, gate 31, D flip-flop 35,
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NAND gates 37 and 39, and counter 41 in the specification as
corresponding to the claimed means of claims 9 and 43. These
elements are the same as those for which we found above no
equivalent in Tanaka. Further, nothing in Tanaka indicates
that only a portion of the signal is converted, with the rest
of the signal not being used, as is required by all three
claims. Consequently, we reverse the rejection of claims 9,
43, and 44.
Claim 2 includes a "means for saving power, said power
saving means supplying power to the scene converting means
only ... until the sequence of digital samples representative
of a portion of a single image of the scene has been
obtained." Although the scene converting means must be turned
off eventually, Tanaka, as pointed out by appellant (Brief,
page 49), does not indicate how or when his devices are turned
off once they are turned on. The examiner asserts (Final
Rejection, page 7) that it would have been obvious to apply
power only during the conversion of the signal from analog to
digital, "since power during any other time would not be
necessary thereby conserving power." The examiner then
contends (Answer, page 11) that Tanaka "contains equivalent
Appeal No. 1997-2774
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elements because the reference performs the same function as
claimed."
We find no suggestion in Tanaka that the same function is
performed, as Tanaka makes no mention of turning off the
various devices, and, thus, we find no such equivalent
elements. Further, as to the obviousness of limiting the time
during which power is supplied, the prior art completely lacks
a teaching or suggestion as to how and why to do so.
Therefore, we cannot sustain the rejection of claim 2.
Claims 7, 8, and 10 through 13 all depend from claim 6,
and therefore include the same limitations noted above as
lacking from Tanaka. The examiner combines Tanaka with Keesen
(for claim 7), Yoshida (for claim 8), Barber (for claim 10),
Onoe (for claim 11), Onoe and Spragins (for claim 12), and
Onoe and Handbook (for claim 13), but none of the additional
references cures the deficiencies of Tanaka detailed above in
the discussion of the rejection of claim 6. Consequently, we
cannot sustain the rejections of claims 7, 8, and 10 through
13.
Claims 1, 27, and 28 include a means for or step of
converting a portion of the signal and discarding the
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remainder of the signal, similar to claims 9, 43, and 44.
Although the examiner combines Tanaka with Yoshida to reject
claims 1, 27, and 28, Yoshida fails to overcome the above-
noted deficiency of Tanaka. Therefore, we must reverse the
rejection of claims 1, 27, and 28.
Regarding claims 3, 29, and 30, the examiner (Final
Rejection, page 8) names as a means for detecting a first
event Tanaka's sensor 4, but admits that Tanaka fails to
disclose the claimed second event. The examiner contends,
however, that
every security system should include an on/off
switch for turning off the system when it is not
needed. Therefore, if the second event (turning the
system off) does not occur, then the security system
would continue to operate. Therefore, it would have
been obvious to one skilled in the art to modify
Tanaka to have an on/off switch to turn off the
system when it is not needed.
The examiner further applies Barber for a teaching of a delay
for sending the alarm code to a remote location.
As argued by appellant (Brief, page 62), if the second
event is assumed to be turning off the system, as proposed by
the examiner, then the "means for identifying a first event
that occurs ... after" the second event occurs would have no
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power when it is supposed to be performing its function of
identifying the first event. Barber does not remedy this
defect. Furthermore, in accordance with appellant's Donaldson
analysis (Brief, page 63), we find that the examiner's on/off
switch is not equivalent to the disclosed indicators of second
events and therefore fails to meet the claimed "means for
identifying." The examiner's only response in the answer
(page 13) is that "[t]he references show equivalent elements
performing the same functions as claimed." However, as
illustrated by appellant, the elements of the references do
not perform the same function, and, thus, the references do
not show equivalent elements. Therefore, we cannot sustain
the rejection of claims 3, 29, and 30.
Claim 4 recites, in pertinent part, "a means for
augmenting the received digital samples with a plurality of
augmenting digital samples representing augmenting data
whereby the resulting sequence of digital samples can be
converted to an electrical signal." The examiner states
(Final Rejection, page 9) that Beaulier discloses "a means
(32,34,50,52) for augmenting the received digital samples
(background frame which is the digital data of the scene) with
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a plurality of augmenting digital samples representing
augmenting data (caption frame) whereby the resulting sequence
of digital samples (col. 5, lines 17-21) can be converted to
an electrical signal." The examiner combines Coutta with
Beaulier for a suggestion to use time data for the caption
frame.
Appellant argues (Brief, page 65) that Beaulier mixes the
background and caption images to form a composite image,
whereas appellant keeps the two sets of data distinct for
separate display. Appellant further explains, as part of a
Donaldson analysis (Brief, pages 66-7), that his means for
augmenting the data involves a separate conversion of the time
data and the scene data into separate arrays of integers
stored in adjacent regions of the same memory. Appellant
discloses (Specification, page 13, lines 6-7) that the serial
bit stream representing the image is "augmented at the end by
digital codes that specify the date and time of arrival." In
contradistinction to appellant's method, Beaulier supplies
both background and caption data to a keyer 52 which "mixes
the background and caption images to generate video data
defining a composite image frame which is communicated to
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background frame store 34" (see column 5, lines 17-20).
Beaulier further reveals (column 5, lines 43-48) that keyer 52
is used "to mix the [background] image [from background frame
store 34] with a caption stored by caption frame store 32, and
then to return the single still frame composite mixed image to
background frame store 34."
The examiner insists (Answer, page 13) that Beaulier's
keyer 52, which mixes the two types of data, "reads on ... 'a
means for augmenting ....'" However, keyer 52 does not have
the same function as the disclosed elements for appellant's
claimed means, as required by In re Donaldson Co., as it mixes
the image and caption data to form a new composite image
rather than augmenting, or adding to, the digital image data
wherein the two types of data remain distinct. Furthermore,
Coutta fails to cure Beaulier's deficiency, since Coutta
discloses (column 4, lines 47-52) combining the camera output
(which is an analog signal) and the date/time generator output
using a video mixer, and there is no evidence of record that
combining analog video signals has corresponding structure to
that used for processing digital signals. Thus, neither
reference suggests any structure which could be construed as
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equivalent to appellant's disclosed "means for augmenting the
received digital samples." Accordingly, we cannot sustain the
rejection of claim 4 and its dependent,
claim 5.
Claim 31 is the method equivalent of claim 4. Thus,
claim 31 includes a step of "augmenting the received digital
samples with a plurality of digital samples representing
augmenting data whereby the resulting sequence of digital
samples can be converted to an electrical signal." The
examiner combines Tanaka, Coutta, and Beaulier to reject the
claim. Tanaka does not disclose any augmenting data of any
sort. Thus, the examiner relies on Coutta and Beaulier for
the augmentation step. As indicated above, neither Coutta nor
Beaulier teaches augmenting digital samples as claimed.
Therefore, we cannot sustain the rejection of claim 31 and its
dependents, claims 32 and 33.
Claim 14 includes a means for generating an electrical
signal from the sequence of integers representing the scene
and the time at which the sequence was received. Although the
rejection involves Tanaka and Coutta, as indicated above,
Tanaka does not disclose any time data. Thus, the rejection
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relies only upon Coutta for the last means of claim 14 (the
means for generating the electrical signal). Appellant
(Brief, pages 84-6) engages in a Donaldson analysis for the
claimed means in which he points out that the video mixer of
Coutta generates a signal from two analog signals, which
differs from appellant's generation of a signal from two
digital signals. Further, appellant clearly discloses that
the serial bit stream representing the image is "augmented at
the end by digital codes that specify the date and time of
arrival," which differs from a mixture of analog signals.
Thus, as both the methods of generating a signal and the
signal generated differ, we find the "means" for generating
the signal likewise is not an equivalent under 35 U.S.C. §
112, sixth paragraph. Consequently, we reverse the rejection
of claim 14.
Also, claims 16 through 22 and 24 through 26 all depend
from claim 14 and thus include the same limitation found
lacking from Tanaka and Coutta. Further, none of the
additional references used in the rejections of these claims
cure the deficiencies of Tanaka and Coutta. Accordingly, we
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reverse the rejection of claims 16 through 22 and 24 through
26.
Claim 34 is the method equivalent of claim 14 and thus
includes a step of generating a signal which corresponds to
the means recited at the end of claim 14. We have already
determined that appellant's generation of an electrical signal
from a sequence of integers representing the image and the
time at which the sequence was received differs from Coutta's
video mixing of two analog signals representing the image and
the time, respectively. Therefore, we cannot sustain the
rejection of claim 34.
Claims 36 through 42 all depend from claim 34 and thus
include the same method step lacking from Tanaka and Coutta.
Since none of the additional references applied against these
dependent claims overcome the above-noted deficiency, we
cannot sustain the rejection of claims 36 through 42.
We make the following new ground of rejection under
37 CFR § 1.196(b). Claims 28, 30, 33, 37, and 43 are rejected
under 35 U.S.C. § 112, second paragraph as being vague and
indefinite.
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Application No. 08/080,471
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As stated in In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645-46 (CCPA 1970), and reproduced in In re Hyatt, 708
F.2d at 715, 218 USPQ at 197 (footnotes omitted):
The first sentence of the second paragraph of §112
is essentially a requirement for precision and
definiteness of claim language. If the scope of
subject matter embraced by a claim is clear, and if
the applicant has not otherwise indicated that he
intends the claim to be of a different scope, then
the claim does particularly point out and distinctly
claim the subject matter which the applicant regards
as his invention.
This suggests that if the scope of a claim is not clear, then
a rejection under the second paragraph of 35 U.S.C. § 112 is
proper. We have sustained the rejection under the first
paragraph of 35 U.S.C. § 112, as the disclosure is not
commensurate in scope with the subject matter we believe to be
encompassed by the claims. However, we also find the scope of
the claims to be unclear in that we are unable to determine
the metes and bounds of the claims from the language thereof.
The purpose of the second paragraph of § 112 is to
basically insure, with a reasonable degree of particularity,
an adequate notification of the metes and bounds of what is
being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970). When viewed in light of this
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authority, since no structure is explicitly recited, the
language of the claims does not insure with any degree of
particularity an adequate notification of the metes and
bounds. More specifically, it is unclear whether the claims
are to be interpreted as combination claims including a means
for accomplishing each step, as asserted by appellant, or
whether the claims are to encompass all structures capable of
accomplishing the steps of the methods from which they depend.
Accordingly, claims 28, 30, 33, and 37 are vague and
indefinite as well as non-enabled by the disclosure.
Also, in line 7 of claim 43, both "the scene captured"
and "the television camera" lack antecedent basis in the
claim, as there is no prior indication in the claim that a
scene is captured nor is there any prior recitation of a
television camera. Accordingly, claim 43 is vague and
indefinite.
CONCLUSION
In summary, the decision of the examiner rejecting claims
28, 30, 33, and 37 under 35 U.S.C. § 112, first paragraph is
affirmed, and the decision of the examiner rejecting claims 1
through 14, 16 through 22, 24 through 34, and 36 through 44
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under 35 U.S.C. § 103 is reversed. Accordingly, the decision
of the examiner rejecting claims 1 through 14, 16 through 22,
24 through 34, and 36 through 44 is affirmed-in-part. A new
ground of rejection of claims 28, 30, 33, 37, and 43 under 35
U.S.C. § 112, second paragraph has been added pursuant to
provisions of 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, "A new
ground of rejection shall not be considered final for purposes
of judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellants may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(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
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ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellants elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
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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).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-2774
Application No. 08/080,471
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ROBERT E. MALM
16624 PEQUENO PLACE
PACIFIC PALISADES, CA 90272
apg/vsh