Ex Parte Hanes

Board of Patent Appeals and Interferences

Sep 6, 2007

09910970 (B.P.A.I. Sep. 6, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID H. HAYNES
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Appeal 2007-1406
Application 09/910,970
Technology Center 2600
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Decided: September 6, 2007
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Before LEE E. BARRETT, MAHSHID D. SAADAT, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-35.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.

1 Appellant has withdrawn claim 21 from consideration in this appeal (Br.
2). Therefore, the appeal is dismissed as to claim 21. Appellant cancelled

Appeal 2007-1406
Application 09/910,970

2
THE INVENTION
The disclosed invention relates in general to video processing systems
and, more specifically, to a system and method for detecting the border of
recorded video data (Specification 1).
Independent claim 1 is illustrative:
1. A method for detecting the border of recorded video data,
comprising:

analyzing a plurality of video frames, the plurality of
video frames comprising recorded data content and unrecorded
data content; and

identifying at least one frame of the unrecorded data
content as a border of the recorded data content.

THE REFERENCES
Nafeh US 5,343,251 Aug 30, 1994
Dettmer US 5,812,732 Sep. 22, 1998

THE REJECTIONS
Claims 1-7, 9-13, 15-19, 22-29, and 31-35 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Dettmer.
Claims 8, 14, 20, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Dettmer in view of Nafeh.

claims 36-40 in the After Final Amendment (received April 30, 2004) which
the Examiner entered on appeal (see Advisory Action mailed May 11, 2004).
Therefore, the appeal of claims 1-20 and 22-35 is before us.
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Application 09/910,970

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Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for the respective details
thereof.

STATEMENT OF LAW
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005)
(citation omitted). “Anticipation of a patent claim requires a finding that the
claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO,
Inc., 190 F.3d 1342, 1346, 51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In
other words, if granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art, then that
claim is anticipated, regardless of whether it also covers subject matter not in
the prior art.”) (citations omitted).

ANALYSIS

Independent claims 1, 9, 15, 23, and 29
We consider the Examiner’s rejection of independent claims 1, 9, 15,
23, and 29 as being anticipated by Dettmer.
We begin by noting that Dettmer discloses a rule-based system that
classifies television signals as representing commericials (Abstract).
Dettmer’s system provides for the elimination of those parts of the television
Appeal 2007-1406
Application 09/910,970

4
signals that correspond to commercials during recording or playback
(Abstract, see also col. 1, ll. 6-10).
We find the issue of whether Dettmer discloses “unrecorded data
content” to be dispositive with respect to all claims on appeal.
Regarding each of independent claims 1, 9, 15, 23, and 29, Appellant
points out that the signals evaluated by Dettmer contain only recorded data
content in the form of a program or a commercial (Br. 5-9). Thus, Appellant
contends that Dettmer does not disclose, teach, or suggest identifying a
border between unrecorded data content and recorded data content, as
required by the language of each independent claim (id.).
The Examiner disagrees. The Examiner apparently reasons that since
the desired program is recorded and the undesired/commercial program
becomes unrecorded in Dettmer, the limitations of “recorded data content
and unrecorded data content” are met (Answer 3). As such, the Examiner
corresponds “undesired” data content to Dettmer’s commercial data content
(Answer 4). Thus, the Examiner concludes that Dettmer meets the
limitations of having a border detection module which detects undesired and
desired materials based on pixel values (id.).
In the Reply Brief, Appellant restates the argument that each frame of
the Dettmer signal has content, i.e., either program data content or
commercial data content (Reply Br. 2).
After carefully considering the evidence before us, we agree with
Appellant’s reasoning as set forth in the Briefs. We find each of independent
claims 1, 9, 15, 23, and 29 expressly recites the limitation “unrecorded data
content.” We construe this term broadly but reasonably in a manner fully
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Application 09/910,970

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consistent with the Specification and also in accordance with the plain
meaning of the term “unrecorded.” This plain meaning is fully supported in
the Specification at page 3, lines 26-28, where unrecorded material is
“usually displayed on a video output as a solid color or snow, which is a
random-pattern black and white image.”
While we agree with the Examiner that commercial data content may
reasonably correspond to “undesired data,” we nevertheless find Appellant’s
claims are silent regarding the desirability of the data. Instead, each of
independent claims 1, 9, 15, 23, and 29 expressly recites the limitation of
“unrecorded data content.” We also find the Examiner has not shown or
adequately explained how “unrecorded data content” can be fairly read on
the commercial content disclosed by Dettmer. In that regard, Dettmer
identifies the commercials before recording or copying which results in not
recording the commercials and leaving only recorded data containing the
main programming (col. 4, ll. 4-12). This is not the same as having at least
one frame of the unrecorded data content as a border of the recorded data
content. The frame arrangement of Dettmer, at best, may be characterized as
unrecordable data frames bordering recordable data.
Because we find Dettmer fails to disclose the recited limitation of
“unrecorded data content,” we agree with Appellant that the Examiner has
failed to set forth a prima facie case of anticipation. Therefore, we reverse
the Examiner’s rejection independent claims 1, 9, 15, 23, and 29 as being
anticipated by Dettmer. Because we have reversed the Examiner’s rejection
of each independent claim on appeal, we will also reverse the Examiner’s
rejection of dependent claims 2-7, 10-13, 16-19, 22, 24-28, and 31-35, as
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Application 09/910,970

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being anticipated by Dettmer. For the same reason, we reverse the
Examiner’s rejection of dependent claims 8, 14, 20, and 30 as being
unpatentable over the teachings of Dettmer in view of Nafeh.

DECISION
In summary, we will not sustain the Examiner’s rejection of any
claims under appeal. Therefore, the decision of the Examiner rejecting
claims 1-20 and 22-35 is reversed.

REVERSED

KIS

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