Ex parte Dakin

Board of Patent Appeals and Interferences

May 9, 2000

08344691 (B.P.A.I. May. 9, 2000)

1
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(2) is not binding precedent of the Board.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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WAYNE R. DAKIN
__________
Appeal No. 1999-0189
Application 08/344,691
__________
HEARD: March 22, 2000
__________
Before STONER, Chief Administrative Patent Judge, and HAIRSTON
and Nase, Administrative Patent Judges.
Hairston, Administrative Patent Judge.
This is an appeal from the final rejection of claims 42
through 51, 53 through 59 and 61.
The disclosed invention relates to a method and apparatus
for producing a signal used for forming a record disc which
stores segments of audio information and corresponding
Appeal No. 1999-0189
Application No. 08/344,691
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segments of video information, and to a method and apparatus
for reproducing information from a disc which has data
recorded thereon of a type which includes a frame of a video
signal which is displayed while an audio portion is played.
Claims 42 and 45 are illustrative of the claimed
invention, and they read as follows:
42. An apparatus for producing a signal used for forming
a record disc which stores segments of audio information and
corresponding segments of video information, comprising:
means for receiving a video signal to be recorded and an
audio signal to be recorded;
a memory for storing said audio signal during recording;
a video normalizer, receiving an output of said memory,
and adjusting a level of said output of said memory to produce
a normalized signal which is adjusted relative to a level of
said video signal, thereby utilizing a full dynamic range of
video circuitry; and
means for combining said normalized signal indicative of
audio with said video signal to produce a composite normalized
signal.
45. An apparatus for reproducing information from a disc
which has data recorded thereon of a type which includes a
frame of a video signal which is displayed while an audio
portion is played, comprising:
an element which scans said disc to obtain a combined
video/data signal, said video/data signal having a video
portion and an audio portion normalized relative to said video
portion;
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Application No. 08/344,691
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an audio normalizer, receiving said video/data signal,
adjusting a level of said video/data signal to produce a
normalized signal which utilizes a full dynamic range of audio
circuitry;
a memory, operatively connected to receive at least a
part of said combined video/data signal as normalized by said
audio normalizer; and
a data converter, operatively coupled to an output of
said memory means, reading out audio information from said
memory.
Claims 42 through 51, 53 through 59 and 61 stand rejected
“under the judicially created doctrine of double patenting
over claims 1-12 of U.S. Patent No. 4,583,131 since the
claims, if allowed, would improperly extend the ‘right to
exclude’ already granted in the patent” (Answer, page 3).
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
The rejection of claims 42 through 51, 53 through 59 and
61 is reversed.
The examiner’s statement of the rejection (Examiner's
Answer, pages 3 through 5) is reproduced in toto as follows:
Claims 42-51, 53-59, and 61 are rejected under
the judicially created doctrine of double patenting
over claims 1-12 of U.S. Patent No. 4,583,131 since
the claims, if allowed, would improperly extend the
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Application No. 08/344,691
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“right to exclude” already granted in the patent.
The subject matter claimed in the instant
application is fully disclosed in the patent and is
covered by the patent since the patent and the
application are claiming common subject matter, as
follows: an apparatus for reproducing information
form [sic, from] a disc which has data recorded
thereon of a type which includes a frame of a video
signal is display [sic] while an audio portion is
played having an element which scans the disc to
obtain a combined video/data signal, the video/data
signal having a video portion and an audio portion;
a memory, operatively connected to receive at least
a part of the combined video/data signal; and a data
converter, operatively coupled to an output of the
memory means, reading out audio information form
[sic, from] the memory. The subject matter recited
in claims 42-62 of this patent application -
“comprising ABCY” - is fully disclosed in the patent
4,583,131. The allowance of these claims would
extend the rights [sic] to exclude already granted
in claims 1-12 of the patent - that right to exclude
covering the device “comprising ABCX”. The
transitional phrase “comprising” does not exclude
the presence of elements other than A, B, C, and X
in the claims of the patent. Because of the phrase
“comprising” the patent claims not only provides
[sic] protection to the elements ABCX claimed in the
patent but also extends [sic] patent coverage to the
disclosed combination - ABCXY. Like wise [sic], if
allowed, the claims of this application, because of
the phrase comprising, not only would provide patent
protection to the claimed combination ABCY but would
also extend patent coverage to the combination ABCXY
- already disclosed and covered by the claim in the
patent. Thus, the controlling fact is that patent
protection for the device, fully disclosed in and
covered by the claims of the patent, would be
extended by the allowance of the claims in this
application.
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Application No. 08/344,691
The examiner’s rationale for the rejection tracks the 1
reasoning used by the court which is as follows:
While his [Schneller’s] invention can be practiced
in the forms ABCX or ABCY, the greatest advantage
and best mode of practicing the invention as
disclosed is obtained by using both inventions in
the combination ABCXY. His first application
disclosed ABCXY and other matters. He obtained a
patent claiming BCX and ABCX, but so claiming these
combinations as to cover them no matter what other
feature is incorporated in them, thus covering
effectively ABCXY. He now, many years later, seeks
more claims directed to ABCX and ABCXY. Thus,
protection he already had would be extended, albeit
in somewhat different form, for several years beyond
the expiration of his patent, were we to reverse.
Schneller, 397 F.2d at 355-56, 158 USPQ at 216.
5
Furthermore, there is no apparent reason why
applicant was prevented from presenting claims
corresponding to those of the instant application
during prosecution of the application which matured
into a patent. See In re Schneller, 397 F.2d 350,
158 USPQ 210 (CCPA 1968). See also MPEP § 804.[1]
In response to the examiner’s Schneller-based rejection,
appellant argues (Brief, pages 4 through 14) that Schneller
has been overruled by subsequent cases. According to
appellant (Brief, page 4), the Court of Customs and Patent
Appeals (CCPA) overruled Schneller in In re White, 405 F.2d
904, 906, 160 USPQ 417, 418 (CCPA 1969) by stating “[o]f
course, if the appealed invention is unobvious, there can be
Appeal No. 1999-0189
Application No. 08/344,691
The so-called "nonobviousness" type of double patenting2
was a creation of the U.S. Patent & Trademark Office. See
Manual of Patent Examining Procedure (MPEP) § 804 (6th ed.,
Jan. 1995), pages 800-15 and 800-16. The latest edition of
the MPEP has dropped "nonobviousness" from the description of
the Schneller decision.
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no double patenting.” In White, the CCPA made such statement
in connection with nonobviousness under 35 U.S.C. § 103, and
not in connection with same invention double patenting under
35 U.S.C. § 101 or the judicially-created, obviousness-type
double patenting. The Schneller decision never mentioned
“nonobviousness” type double patenting, and the White decision
was not addressing the same. Thus, the Court had no need to2
overrule that which it had not created.
Appellant argues (Brief, page 4) that the Court sitting
en banc in In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619,
621 (CCPA 1970) overruled prior CCPA decisions, such as
Schneller, to the extent that the prior decisions were
inconsistent therewith. Schneller was not mentioned in Vogel.
Although the subsequent case of In re Kaplan, 789 F.2d
1574, 229 USPQ 678 (Fed. Cir. 1986) dealt with an obviousness-
type double patenting rejection, it does not support
appellant’s arguments (Brief, page 4) because the Court never
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Application No. 08/344,691
As indicated supra, the judicially-created, obviousness-3
type double patenting and same invention double patenting
under 35 U.S.C. § 101 are the only types of double
patenting rejections.
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mentioned Schneller.
Thus, appellant’s arguments to the contrary
notwithstanding, Schneller did not create a third type of3
double patenting rejection (i.e., nonobviousness-type double
patenting rejection) (Brief, pages 5 and 6).
Appellant argues (Brief, page 11) that “in General Foods
Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
23 U.S.P.Q.2d 1839 (Fed. Cir. 1992), the Federal Circuit
reiterated that ‘same invention’ and ‘obvious-type’ are the
only recognized bases for a double patenting rejection.” We
agree with appellant’s argument. Schneller fits within the
latter type of double patenting rejection, and a “Schneller-
based double patenting [rejection] is legally viable” (Brief,
page 6).
Appellant argues (Brief, page 12) that “[i]f Schneller
was good law, why did the U.S.P.T.O. fail to apply it between
1970 and 1994?” The mere fact that the Office failed to rely
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Application No. 08/344,691
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on Schneller until it was addressed in the 6th edition of the
MPEP does not affect the use of Schneller as a basis for
instituting a double patenting rejection when the facts in an
application support such a rejection. When Schneller is
properly applied, it will not “cast doubt over the validity of
an untold number of issued patents, create disputes, and
invite litigation” (Brief, page 13).
According to appellant (Brief, page 14), “[t]he second
step of the Schneller-based double patenting analysis inquires
whether there was a reason why an applicant was prevented from
presenting the later-examined claims in the prior
application.” Appellant argues (Brief, page 14) that he “was
indeed prevented from doing so by operation of Title 37, Code
of Federal Regulation, section 1.141" which “prevents an
applicant from claiming two or more ‘independent and distinct’
inventions in a single application.”
A limitation-by-limitation comparison of the claims on
appeal to the claims in the patent is needed to determine
whether the two sets of claims present “independent and
distinct” inventions. The examiner has not made a “side by
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Application No. 08/344,691
In other words, a determination has to be made whether4
there is a "patentable difference" or a "patentable
distinction" between the claims of the patent and the claims
on appeal. General Foods Corp. v. Studiengesellschaft Kohle
mbH, 972 F.2d 1272, 1278-79, 23 USPQ2d 1839, 1844 (Fed. Cir.
1992).
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side comparison of the reference and application claims.” See
MPEP § 804 II B(2), page 800-21. Notwithstanding the lack of
such an analysis by the examiner, the Court has indicated that
appellant should establish that "the invention claimed in his
patent is independent and distinct from the invention of the[4]
appealed claims.” Schneller, 397 F.2d at 354, 158 USPQ at
214. Accordingly, appellant argues (Brief, pages 16 and 17)
that:
It is clear that the appealed claims and the
claims of the ‘131 patent do not form a single
general inventive concept. For example, the[15]
appealed recording claims relate to an apparatus and
method of producing a signal used for forming a
record disc. In contrast, claims 1-6 of the ‘131
patent recite an apparatus for playing a record
disc, and claims 7-12 of that patent recite a method
for playing a record disc. Clearly then, an
apparatus and method for producing signals that are
used to form a record disc and an apparatus and
method for playing a record disc do not form a
single general inventive concept. A recording
device and method produce signals used for storing
information on the record disc. In contrast, a
playback device and method is directed to a
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different general inventive concept -- i.e., the
recovery of information stored on the disc.
The different general inventive concepts claimed
in the appealed recording claims and the claims of
the ‘131 patent are further exemplified by the
disparate language recited in those groups of
claim[s]. For example, the apparatuses and methods
recited in the appealed recording claims are
directed to devices and steps for receiving a video
signal to be recorded and an audio signal to be
recorded. Clearly, no such devices or steps are
required in playing back information from a disc.
Because the appealed recording claims recite a
general inventive concept different from that of the
claims of the ‘131 patent, Applicant was prevented,
by operation of 37 C.F.R. § 1.141 (1985), from
presenting the appealed recording claims for
examination during prosecution of the ‘131 patent in
1985-86. Thus, step 2 of the Schneller-based double
patenting test is not satisfied with respect to the
appealed recording claims, and the rejection of
those claims should be withdrawn.
Similarly, the appealed playback claims (Claims
45, 46, 50, 51, 54, 56 and 58) recite apparatuses
and methods relating to the reproduction of
information from a disc. The subject matter of the
appealed playback claims forms a general inventive
concept different from that of the inventions
defined by the claims of the ‘131 patent for the
following reason: Each of the appealed playback
claims recites a device or step for audio
normalizing a received video/audio signal. The
general inventive concept defined by the appealed
playback claims allows the signal output from the
devices and methods claimed therein to utilize the
full dynamic range of an audio circuit. That same
general inventive concept is not present in any of
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the claims of the ‘131 patent.
A limitation-by-limitation comparison of the independent
claims in the patent to the independent claims in the
application is provided infra. To aid in this comparison, the
following alphabetical designation has been provided for each
signal and element that is claimed in both the patent claims
and the application claims:
CLAIMED SIGNAL OR ELEMENT ALPHABETICAL DESIGNATION
1. Video signal 35 A
2. Audio signal 21 B
3. Memory 31 C
4. Adaptive Delta Demodulator 23 D
5. Low-Pass Filter 51 E
6. Video Normalizer 55 F
7. Summer 59 G
8. Video/Data Output Signal 61 H
9. Disc Mastering Machine/Disc I
Reproduction Apparatus
10. Video/Data Input Signal 65 J
11. Data Normalizer 67 K
12. Memory 77 L
13. Adaptive Delta Demodulator 99 M
14. Analog Audio Output Signal 101 N
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15. Video Output From Disc O
Reproduction Apparatus
16. Chroma Burst Timing Signal 72 P
17. Vertical Blanking Signal 85 Q
18. Horizontal Blanking Signal 87 R
19. Playback Apparatus (Audio/Video) S
20. Data Flag Signal 73 T
21. Sequence Controller 69 U
22. 7.2 MHZ Enable Signal 75 V
23. Clock Generator 71 W
24. AND gate 83 X
25. Squelch signal 103 Y
26. Record Disc Z
In the following limitation-by-limitation comparison of
independent claims 1, 6, 7 and 12 in the patent to independent
claims 42, 45, 53 through 59 and 61 in the application, the
above-noted alphabetical designations are used for each of the
claimed signals or elements. A bold-typed alphabet in the
application claims indicates that the signal or element is not
in the patent claims:
U.S. PATENT NO. 4,583,131 APPLICATION CLAIMS
Claim 1 - IJLMNOSZ Claim 42 - ABCFG
Claim 6 - IJLMNOPQRSZ Claim 45 - IJKLMZ
Claim 7 - IJLMNOSZ Claim 53 - ABCFG
Claim 12- IJLMNOPQRSZ Claim 54 - IJKLZ
Claim 55 - ABCFG
Claim 56 - IJKLMZ
Claim 57 - ABCFG
Claim 58 - IJKLZ
Claim 59 - ABCDEFG
Claim 61 - ABCEFG
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From the comparison, it is clearly seen that none of the
limitations of application claims 42, 53, 55, 57, 59 and 61
(directed to method and apparatus for producing a signal used
for forming a record disc) is found in patent claims 1, 6, 7
and 12 (directed to method and apparatus for playing a record
disc). Inasmuch as our analysis of these claims agrees with
appellant’s arguments, we find that appellant has established
that the invention claimed in his patent is “independent and
distinct” from the invention of the appealed claims 42, 53,
55, 57, 59, 61 and the claims that depend therefrom. In other
words, the patent claims and the application claims are
patentably distinct inventions.
Each of the independent application claims 45, 54, 56 and
58 includes an audio normalizer for “adjusting a level of said
video/data signal to produce a normalized signal which
utilizes a full dynamic range of audio circuitry.” The
examiner has not explained how the application claims with
this feature could have been presented at the time of
prosecution of the patent claims, or how this claimed subject
matter is "covered" by the patent claims no matter what other
feature is incorporated in them. It would have been equally
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helpful for an explanation by the examiner as to why no other
evidence of obviousness was needed beyond the claims of the
patent. In the absence of such a showing or a convincing line
of reasoning by the examiner, we agree with the appellant that
the added feature in these application claims “is not present
in any of the claims of the ‘131 patent. . . .” and that these
claims are “independent and distinct” (i.e., patentably
distinct) inventions (Brief, pages 16 and 17).
As a result of the patentable distinctness between the
application claims and the patent claims, the examiner could
have made a restriction requirement in the originally filed
application.
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DECISION
In summary, the judicially created doctrine of double
patenting rejection of claims 42 through 51, 53 through 59 and
61 is reversed.
REVERSED
BRUCE H. STONER, JR., Chief )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
KWH:svt
Appeal No. 1999-0189
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