Ex parte Conover

Board of Patent Appeals and Interferences

Mar 13, 2000

08221959 (B.P.A.I. Mar. 13, 2000)

Claims 32 and 42 have been objected to by the examiner as allowable if written in independent1
form.
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publication in a law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KURT M. CONOVER
____________
Appeal No. 1997-2151
Application No. 08/221,959
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 14, 28-31
and 33-41 , which are all of the claims pending in this application.1
We AFFIRM.
Appeal No. 1997-2151
Application No. 08/221,959
2
BACKGROUND
The appellant's invention relates to a phase-locked sync stripper. An understanding
of the invention can be derived from a reading of exemplary claim 14, which is reproduced
below.
14. A circuit for stripping a synchronization component from a composite video signal,
the circuit comprising:
a phase-locked loop comprising:
a 10 MHZ clock phase-locked with a leading edge of a video sync
signal; and
a signal generating means which outputs a signal that encompasses
the video sync signal, said signal which begins a first predetermined time
period before a leading edge of the video sync and ends at a second
predetermined time period; and
an analog switch comprising a switchable input operational amplifier controlled by
said signal for switching a blank level voltage onto the composite video signal.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Dolby 3,005,869 Oct. 24, 1961
Tanabe 3,681,522 Aug. 01,1972
Omori JP 63-219273 Sep. 12, 1988
(Japanese Patent specification)
Nonomura JP 4-192971 Jul. 13, 1992
(Japanese Patent specification)
Appeal No. 1997-2151
Application No. 08/221,959
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Claims 28, 29, 33, 35, 38, 39 and 40 stand rejected under 35 U.S.C. § 102 as
being unpatentable over Tanabe. Claims 14, 28-31 and 33-41 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nonomura in view of Omori, Dolby and
Tanabe.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 17, mailed Aug. 20, 1996) for the examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 16, filed Jul. 15, 1996) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Only those arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made, but chose not to make in the brief
have not been considered. (See 37 CFR § 1.192(a).)
Appeal No. 1997-2151
Application No. 08/221,959
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Claims 28, 29, 33, 35, 38, 39 and 40
After the PTO establishes a prima facie case of anticipation based on inherency,
the burden shifts to the appellant to prove that the subject matter shown to be in the prior
art does not possess the characteristics of the claimed invention. See In re Thorpe, 777
F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327,
231 USPQ 136, 138 (Fed. Cir. 1986). Hence, appellant's burden before the PTO is to
prove that the applied prior art reference does not perform the functions defined in the
claims. The appellant has not come forward with any evidence to satisfy that burden.
Compare In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re
Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971); See In re Pearson,
494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974) (attorney's arguments in a brief
cannot take the place of evidence).
In our view, the examiner has set forth a prima facie case of anticipation. The
examiner has set forth the structure in Tanabe which corresponds to the claimed invention.
(See answer at pages 4-7.) Furthermore, the examiner has responded to appellant’s
arguments. (See answer at pages 7-10.) The examiner points out that the claim language
is broader than appellant argues. (See answer at page 8.) We agree with the examiner.
Appellant argues the timing and duration of the blanking signal as a distinguishing factor,
but cites to no specific claim language in claims 28 or 35. (See brief at page 3.) We
Appeal No. 1997-2151
Application No. 08/221,959
We note that an after-final amendment, filed Feb. 26, 1996, proposing to modify the language of2
the independent claims was not entered in an advisory action mailed Mar. 6, 1996. We have not
considered the language in these claims.
5
disagree with appellant. Appellant argues that Tanabe does not use clock signals to
properly time the signal generator, but cites to no specific claim language in claims 28 or
35. (See brief at page 3.) We disagree with appellant. Claim 28 merely requires that the
blanking “start a predetermined amount of time before the leading edge of the video sync
signal” and “ends a second predetermined time after a trailing edge of the video sync
signal.” We agree with the examiner that appellant is arguing limitations not expressly
found in the language of claim 28 .2
Appellant argues that Tanabe does not take into account the “front and back porch”
which includes color burst information. (See brief at page 3.) We agree with the examiner
that this limitation is not found in the language of claims 28 or 35 and is therefore not
persuasive. Appellant has not set forth any specific language in claims 28 or 35 which
distinguishes the claimed invention from Tanabe. Therefore, we will sustain the rejection of
claims 28 and 35 and their dependent claims.
Appeal No. 1997-2151
Application No. 08/221,959
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Claims 14, 28-31 and 33-41
“To reject claims in an application under section 103, an examiner must show an
unrebutted prima facie case of obviousness. See In re Deuel, 51 F.3d 1552, 1557, 34
USPQ2d 1210, 1214 (Fed. Cir. 1995). In the absence of a proper prima facie case of
obviousness, an applicant who complies with the other statutory requirements is entitled to
a patent. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima facie case with
evidence of secondary indicia of nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1455 (Fed. Cir. 1998). Here, we find that appellant has not overcome
the prima facie case of obviousness by showing insufficient evidence by the examiner of
obviousness or by rebutting the prima facie case with secondary evidence. Therefore, we
will sustain the rejection of claims 14, 28 and 35.
Similarly, as discussed above, claim 14 contains similar limitations as claim 28 with
the exception of the 10 MHZ limitation and use of the leading edge for timing purposes.
Again, we agree with the examiner concerning the prima facie case of obviousness set
forth in the answer. (See answer at pages 10-16.) Again, appellant has not shown
insufficient evidence by the examiner of obviousness or by rebutting the prima facie case
Appeal No. 1997-2151
Application No. 08/221,959
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of obviousness with secondary evidence. (See brief at pages 3-4.) Moreover, appellant
has merely addressed the individual references without
addressing the combination of the teachings. Appellant merely argues that “none of them
teach or suggest means to closely control the width of this blocking signal.” (See brief at
page 4.) We agree with the examiner and similarly, do not find a limitation in independent
claims 14, 28 or 35 expressly setting forth the “means to closely control the width of this
blocking signal.” Therefore, we will sustain the rejection of claims 14, 28 and 35 and their
dependent claims.
With respect to claims 32 and 42 which the examiner indicated as allowable if
rewritten in independent form, we make no comment with regard to these claims since
these claims are not on appeal.
CONCLUSION
To summarize, the decision of the examiner to reject claims 28, 29, 33, 35, 38, 39
and 40 under 35 U.S.C. §102 is affirmed and the decision of the examiner to reject claims
14, 28-31 and 33-41 under 35 U.S.C. § 103 is affirmed.
Appeal No. 1997-2151
Application No. 08/221,959
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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
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-2151
Application No. 08/221,959
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C/O OFFICE OF GENERAL COUNSEL NM75-C10
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HONEYWELL INC.
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