Ex Parte Hong

Board of Patent Appeals and Interferences

Dec 17, 2007

09916245 (B.P.A.I. Dec. 17, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAN-YOUNG HONG
____________

Appeal 2007-2276
Application 09/916,245
Technology Center 2600
____________

Decided: December 17, 2007
____________

Before HOWARD B. BLANKENSHIP, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-8, 10, 12, 13, and 15. We have
jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
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INTRODUCTION
The claims are directed to a closed circuit television (CCTV) system
that is intended to prevent channels from being mixed while videos are being
reproduced. (Abstract.) Claim 1 is illustrative:
1. A closed circuit television (CCTV) system comprising:

a number of cameras for generating picture signals;

a multiplexer allotting identification information to each of the
picture signals received from the cameras, said identification information
being represented by a predetermined number of bits so that a number of
available identifications is twice or more than the number of the cameras,
said identification information comprising a plurality of proper identification
bits and a corresponding plurality of auxiliary bits, characterized in that the
proper identification bits identify which camera generated a corresponding
picture signal; and

a picture signal storage medium for storing the picture signals and
allotted identification information output from the multiplexer.

The Examiner relies on the following prior art references to show
unpatentability:
Tsugane US 4,961,211 Oct. 2, 1990
Cooper US 5,870,139 Feb. 9, 1999
Kim US 6,912,351 B1 Jun. 28, 2005
(filed Oct. 19, 1998)

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The rejections as presented by the Examiner are as follows:
1. Claims 1, 3, and 4 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Kim.
2. Claims 2, 5, and 6 are rejected under 35 U.S.C § 103(a) as
unpatentable over Kim.
3. Claims 1-8, 12, and 13 are rejected under 35 U.S.C § 103(a) as
unpatentable over Tsugane and Cooper.
4. Claims 10 and 15 are rejected under 35 U.S.C § 103(a) as
unpatentable over Tsugane, Cooper, and Appellant’s admitted prior
art (instant Fig. 3).
The Examiner has objected to claims 9, 11, 14, and 16 as being
dependent upon a rejected base claim, but allowable if rewritten in
independent form.
Claims 17-20 have been canceled.

OPINION
Section 102 -- Kim
Kim describes a time lapse recording apparatus (Fig. 2) comprising 1
to “n” cameras that may be selected by switch 80. Video from a selected
camera is stored in frame memory 100 and ultimately recorded on optical
disk 1 by means of recording/reproduction unit 140. Kim col. 2, l. 62 - col.
3, l. 32. A controller sends to MUX 130 a camera (channel) identification
code signal corresponding to the channel selection by the switch 80, so that
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the camera ID code is added to a data packet including the corresponding
image frame. Col. 4, ll. 34-38.
Kim Figure 6 shows an example of a data structure to be recorded and
reproduced on, and from, the optical disk medium. The data structure
carries the physical address of the bit stream, the camera ID code, the
address of the corresponding I-picture frame (intra-frame data in accordance
with a Moving Picture Expert Group (MPEG) standard), and picture data
stored in the picture data area. Kim, col. 4, l. 39 - col. 4, l. 7.
Because Kim Figure 6 appears to show a camera ID code consisting
of four bits, Appellant contends that the number of cameras is limited to
fifteen. According to Appellant, Kim would have to disclose a limit of
seven cameras to meet the claim 1 recitation that the number of available
identifications is “twice or more” than the number of the cameras. (App. Br.
7-8.)
Claim 1, however, recites “a number” of cameras for generating
picture signals. If we assume there are bits sufficient in number to uniquely
identify each of fifteen cameras (actually, sixteen, if four bits are used),
when only two cameras are in use in the Kim apparatus the “number of
available identifications is twice or more than the number of the cameras.”
Fifteen (or sixteen) is twice or more than two. Appellant’s argument is not
commensurate with the broad scope of the claim.
Appellant seems to acknowledge that Kim describes “auxiliary bits”
that are additional to the “proper identification bits” within the meaning of
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instant claim 1. Appellant argues, however, that Kim does not disclose the
same number (four) of auxiliary bits as “proper identification” bits. (App.
Br. 8-9.)
First, we disagree with the premise of the argument -- that Appellant
has somehow re-defined “corresponding” (as in claim 1) to be limited to
mean “the same” (as argued). However, even if we assume that the claim
requires, for example, four “auxiliary bits” when there are four “proper
identification bits,” Kim in Figure 6 shows four “auxiliary bits” within the
meaning of claim 1. There are, for example, four bits in the “corresponding
I-picture address,” adjacent to the four camera ID code bits, that are
“auxiliary bits” for all that the claim requires. The claim simply does not
place any limitation on what the “auxiliary bits” are to be, to represent, or to
mean, other than that the bits are a “corresponding plurality.” Appellant’s
arguments are, again, not commensurate with the invention that is claimed.
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). Our reviewing court
has repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc). During prosecution before the USPTO, claims
are to be given their broadest reasonable interpretation, and the scope of a
claim cannot be narrowed by reading disclosed limitations into the claim.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA
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1969). “[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d at 321.
We thus find claim 1 to be anticipated by Kim even if we give weight
to the meaning attributed to the “bits.” We also note, however, that nothing
is done with the “bits” in claim 1 other than being allotted by a
“multiplexer” and stored on a “picture signal storage medium.” The bits do
not change any underlying machine function. The bits (i.e., data) consist of
what has come to be known as nonfunctional descriptive material. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (“‘[w]here the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability,’”
quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)); In re Lowry,
32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory. . . . [N]or does he seek to patent the
content of information resident in a database.”). See also Manual of Patent
Examining Procedure § 2106.01, p. 2100-17 (“USPTO personnel need not
give patentable weight to printed matter absent a new and unobvious
functional relationship between the printed matter and the substrate” (citing
Lowry and Ngai)). What the bits of claim 1 are to “represent” are not
entitled to weight in the patentability analysis. The claim is anticipated by
the Kim system’s allocation and storage of bits, even before reaching
consideration of what the data are intended to represent.
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We do not, however, sustain the § 102 rejection of claim 3 over Kim.
Kim describes optical disk 1 “or other types of memories.” Kim col. 3, ll.
30-31. The reference notes the disadvantages attendant to conventional time
lapse video cassette recording. Col. 1, ll. 13-67 (in particular, ll. 57-67). We
do not find Appellant’s argument that Kim “teaches away” from the
invention to be persuasive. Whether a reference may be considered as
“teaching away” from an invention is relevant to obviousness but not
anticipation. Appellant’s cited support for the proposition that a “teaching
away” relates to lack of anticipation fails to support the proposition. (See
App. Br. 10, citing Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve Inc.,
796 F.2d 443 (Fed. Cir. 1986).)
However, we do not sustain the rejection of claim 3 because we agree
with Appellant’s arguments to the extent that Kim fails to describe an
invention sufficient to support a finding of anticipation. Under a fair reading
of the reference, Kim does not contemplate or convey that optical disk 1
(Fig. 2) might represent a video tape system, even if it might represent
“other types of memories” than the depicted optical disk. The rejection fails
to show an embodiment in Kim that meets the requirements of claim 1 and
yet has a picture signal storage medium that comprises a single video tape in
a single video tape recorder.
We sustain the rejection of claim 4, depending from claim 1, and not
separately argued by Appellant.

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Section 103 -- Kim
Claims 2, 5, and 6 are rejected under 35 U.S.C. § 103 over Kim. We
sustain the rejection because Appellant relies on the unpersuasive arguments
in response to the rejection of claim 1 over Kim. (See App. Br. 11;
37 C.F.R. § 41.37(c)(1)(vii).)

Section 103 -- Tsugane, Cooper
Claims 1-8, 12 and 13 are rejected under 35 U.S.C. § 103 over the
teachings of Tsugane and Cooper.
Tsugane describes a television conference system comprising four TV
cameras 5 through 8 (Fig. 1) linked to four TV monitors 32 through 35.
Each of the TV cameras has its own 2-bit binary ID (monitor ID, or IDM)
code to identify its picture signal. Tsugane col. 3, ll. 35-68. During a
conference, each time a speaker is selected the moving picture DI, the
monitor ID signal IDM, and the voice signal DV of the speaker are
multiplexed and transmitted. On the receiving side, the moving picture is
displayed on one of the TV monitors corresponding to the monitor ID signal
IDM. Still pictures are displayed on the remainder of the monitors. Tsugane
col. 4, ll. 27-43. In particular, multiplexer 104 multiplexes the monitor ID
signal IDM, the K-bit picture data output from A/D converter 102, and the J-
bit voice data output from the A/D converter 103. Col. 7, ll. 34-63. As an
example, K equals 8 and J equals 14. Col. 5, ll. 43-63.
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Appellant argues that because Tsugane shows four cameras identified
by two bits, the number of identifications is not “twice or more” than the
number of cameras, as recited in instant claim 1. (App. Br. 12-13.)
However, as we indicated in our discussion of Kim as applied to claim
1, the claim recites “a number of cameras” for generating picture signals.
When there are only two speakers using the conferencing system described
by Tsugane, the number of available identifications is “twice or more” than
the number of cameras because four is “twice or more” than two.
Appellant also argues that two bits “does not correspond” to fourteen
bits (i.e., the J-bit voice data). (App. Br. 13.) As we also indicated in our
discussion of Kim and claim 1, the “corresponding plurality of auxiliary
bits” of claim 1 does not read “corresponding plurality of auxiliary bits that
are the same in number as the proper identification bits,” because the claim
does not say “corresponding plurality of auxiliary bits that are the same in
number as the proper identification bits.” As we also indicated previously,
nothing much is required of the “auxiliary bits” of claim 1. The
“corresponding plurality” recitation is sufficiently broad to read on the first
two bits of the 14-bit voice data associated with the camera ID bits in
Tsugane, even if we pretend that “corresponding” means “the same in
number.”
Appellant also submits that the voice data signal (voice data bits) in
Tsugane is voice information, rather than “identification information” as
contemplated by claim 1. (App. Br. 14.) However, claim 1 recites that the
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“identification information” is allotted to “each of the picture signals
received from the cameras,” and that the “identification information” is
“represented” by a predetermined number of bits. “Identification
information” (camera ID and voice data bits) in Tsugane is allotted to each
of the picture signals received from the cameras, and is represented by a
predetermined number of bits (either of four or sixteen -- two plus two or
two plus fourteen, depending on how “corresponding” is to be read as a
limitation). The camera ID and voice data bits of Tsugane meet everything
that is required of the “identification information” of claim 1. We therefore
find Appellant’s argument to be not persuasive.1
Also with respect to claim 1, Appellant submits that Tsugane does not
teach recording video in a single video recorder, and there is no need to
modify Tsugane according to the teachings of Cooper. (App. Br. 15-16.)
Instant claim 1 does not specify recording video in a single video
recorder. Moreover, claim 1 recites “a picture signal storage medium for
storing the picture signals and allotted identification information output from
the multiplexer,” which does not specify how long, or for what purpose, the
picture signals and information are to be stored. Tsugane’s Decoder 200
(Fig. 1) teaches everything that claim 1 requires of the “picture signal

1 Moreover, as pointed out in our discussion of claim 1 and Kim, the data in
claim 1 represent no more than nonfunctional descriptive material. What the
“bits” of claim 1 are recited to represent is not entitled to patentable weight;
i.e., not a limitation.
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storage medium.” The teachings of Cooper thus may be considered merely
cumulative in view of the broad recitations of claim 1.
With respect to claim 3, Appellant acknowledges that Cooper
discloses the use of a video recorder, but alleges that “Cooper does not teach
the use of a video tape recorder.” (App. Br. 17.) Appellant does not submit
what type of video recorder that Cooper might teach, if not a video tape
recorder.
Cooper describes a generic video recorder 600 (Fig. 1) that stores
multiplexed video and audio signals from multiple cameras 301-304. Video
cassette recorders for recording from a plurality of cameras were well known
in the art (see, e.g., Spec. ¶¶ 3-4). We disagree that the artisan would
conclude that Cooper fails to teach the use of a video tape recorder.
Also with respect to claim 3, Appellant relies on the Kim reference as
allegedly “teaching away” from the use of a video tape recorder. (App. Br.
17.)
A prior art reference must be considered in its entirety, including
portions that would lead away from the claimed invention. See W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). “A
reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant.” Para-Ordnance Mfg. v. SGS Importers
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Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994)).
The Kim reference, however, has not been applied in the instant
rejection of claim 3, and its teachings have thus not been taken out of the
context of the entirety of the reference. Moreover, Appellant has adduced
no evidence to show that the prior art as a whole discouraged the use of
video tape recording. On the contrary, the evidence shows (e.g., Spec. ¶¶ 3-
4) that video tape recorders for multiple camera recording were conventional
at the time of Appellant’s invention.
Finally, with respect to claim 3, Appellant alleges that the
combination of Tsugane and Copper is not well founded because Tsuagene
has no need for video recording. The allegation is not persuasive of
nonobviousness. A person having ordinary skill in the art uses known
elements for their intended purpose. Anderson’s-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its
intended purpose in combination with a spreader and a tamper and screed).
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The artisan would have
appreciated that the use of a video tape recorder with the Tsugane system
(e.g., for conference archiving) would have yielded nothing unexpected,
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instead merely consisting of the use of known elements according to their
known functions.
Appellant’s arguments in defense of claim 5 (App. Br. 17-19) are
based on improper claim interpretation. The arguments are premised on the
belief that claim 5 somehow limits the subject matter to a “single” monitor.
On the contrary, the claim recites the open-ended (“comprising”) term of “a”
monitor. Tsugane describes a monitor within the meaning of claim 5; e.g.,
monitor 32 depicted in Figure 1. Appellant appears to recognize (App. Br.
19) that manual switches described by Tsugane qualify as part of the
“selection unit” as recited in claim 5. In particular, the Tsugane selection
unit enables a user to select picture signals corresponding to a particular one
of the cameras -- camera 5 (Fig. 1), for example -- for display on monitor 32.
Appellant also submits arguments for claim 7 (wherein the logical
values of the claim 1 auxiliary bits “are opposite to” the logical values of the
proper identification bits) and claim 12 (identical to, rather than opposite).
In claim 7 and claim 12, as in base claim 1, nothing is done with the data
other than, at most, storage on a picture signal storage medium. Because the
data are nothing more than nonfunctional descriptive material, it does not
matter for patentability purposes whether the bits are all ones, all zeroes, or
any combination of ones and zeroes. The further recitation of claim 7 (and
claim 12) is anticipated by a description of storage of data on a picture signal
storage medium (i.e., by Tsugane and by Cooper).
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We have considered all of Appellant’s arguments but are not
persuaded that any claim rejected over Tsugane and Cooper has been
rejected in error. We sustain the § 103 rejection of claims 1-8, 12 and 13
over Tsugane and Cooper.

Section 103 -- Tsugane, Cooper, Appellant’s admitted prior art
As Appellant relies on the arguments for claims 7 and 12 (App. Br.
21), addressed supra, we sustain the § 103 rejection of claims 10 and 15.

New Ground of Rejection -- 37 C.F.R. § 41.50(b)
We reject claims 9, 11, 14, and 16 under 35 U.S.C. § 103(a) based on
the evidence provided by Tsugane, Cooper, and Appellant’s admitted prior
art.
Claim 9 depends from claim 8, claim 11 depends from claim 10, claim
14 depends from claim 13, and claim 16 depends from claim 15. Appellant
has failed to demonstrate that claims 8 and 13 (rejected by the Examiner
under 35 U.S.C. § 103(a) as unpatentable over Tsugane and Cooper) and
claims 10 and 15 (rejected by the Examiner under 35 U.S.C. § 103(a) as
unpatentable over Tsugane, Cooper, and Appellant’s admitted prior art)
define subject matter that is nonobvious over the prior art. The further
depending claims are drawn to, at best, mere arrangements of data (i.e.,
nonfunctional descriptive material) that may be recorded on a picture signal
storage medium, but which do not result in any new and unobvious
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relationship between the data and the storage medium, nor modify the
function of any machine as claimed.
The recited data arrangements of claims 9, 11, 14, and 16 are not
entitled to patentable weight, and thus cannot serve to distinguish over the
prior art. Cf. In re Lowry, 32 F.3d at 1583 (“Lowry does not claim merely
the information content of a memory.”); Ex parte Curry, 84 USPQ2d 1272
(BPAI 2005) (nonprecedential) (Federal Circuit Appeal No. 2006-1003;
affirmed without written opinion Jun. 12, 2006).

CONCLUSION
In summary, we have sustained all the Examiner’s rejections except
for the § 102 rejection of claim 3 as being anticipated by Kim. However, as
we have sustained the rejection of claim 3 under § 103 over Tsugane and
Cooper, the Examiner’s decision is affirmed.
A new rejection of claims 9, 11, 14, and 16 under 35 U.S.C. § 103(a)
is set forth herein.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(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 ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(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 Appellant elects 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
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for final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED -- 37 C.F.R. § 41.50(b)

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