Ex Parte Iwamoto et al

Board of Patent Appeals and Interferences

Jul 17, 2002

08860537 (B.P.A.I. Jul. 17, 2002)

1 Application for patent filed October 31, 1997 under
35 U.S.C. § 371 based on the PCT application Serial No.
PCT/JP96/03367, filed November 15, 1996, which claims the foreign
filing priority benefit under 35 U.S.C. § 119 of Japanese
Applications No. 07-297224, filed November 15, 1995 and No. 07-
332296, filed December 20, 1995.
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today was not written for publication and is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TETSUYA IWAMOTO, YOSHINORI SUZUKI,
HIROSHI INAMURA, ATSUMU SODA, TATSUJI YAMAZAKI,
JUNICHI OGIKUBO, SOICHIRO NIHO, NORIKAZU ITO,
HIROYUKI FUJITA and YUICHI KOJIMA
________________
Appeal No. 2000-2111
Application 08/860,5371
________________
ON BRIEF
________________
Before THOMAS, LEVY and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2 and 8 through 11.
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Application No. 08/860,537
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Claims 3 through 6 have been objected to and claim 7 has been
indicated as allowed.
We affirm-in-part.
BACKGROUND
The invention relates to a video recording and reproducing
system for recording and reproducing audio and video data in
digital format. Such apparatus, as depicted in figures 2 and 7,
includes an input/output controlling means for inputting
audio/video data to be recorded from an external apparatus and
outputting the data reproduced from a recording medium to the
external apparatus (specification, pages 37-44 and 54-57). A
controlling means controls the reproducing means so that data
from the recording medium is reproduced based on a designated
speed provided by the input/output controlling means.
Independent claim 1 is reproduced as follows:
1. A video recording and reproducing system comprising
a recording and reproducing apparatus having a
recording and reproducing means for recording and
reproducing video data and an input/output controlling means
for supplying to the recording and reproducing means the
video data supplied from the outside and
a reproducing apparatus having a reproducing means for
reproducing the video data from a recording medium and
supplying it to the input/output controlling means and a
controlling means for controlling the reproducing means so
as to reproduce the video data from the recording medium at
a designated reproduction speed,
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characterized in that
the controlling means of the reproducing apparatus
inquires about the reproduction speed of the video data to
the input/output controlling means of the recording and
reproducing apparatus, receives reproduction speed
authorization data or reproduction speed designation data
supplied from the input/output controlling means and
controls the reproducing means of the reproducing apparatus
so as to reproduce the video data from the recording medium
at the designated speed based on the received reproduction
speed authorization data or reproduction speed designation
data.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Nagasawa 5,647,047 July 8, 1997
(filed Dec. 13, 1994)
Hasegawa 5,576,907 Nov. 19, 1996
(filed Jun. 7, 1995)
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Nagasawa. Claims 8 through 11 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Nagasawa and Hasegawa.
Rather than reiterate the conflicting viewpoints advanced by
the Examiner and Appellants regarding the above-noted rejections,
we make reference to the answer (Paper No. 16, mailed December 6,
1999) for the Examiner’s complete reasoning in support of the
rejections, and to the brief (Paper No. 15, filed September 16,
1999) and the reply brief (Paper No. 17, filed February 6, 2000)
for Appellants’ arguments thereagainst.
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Application No. 08/860,537
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OPINION
At the outset, we note that Appellants state that claims 1
and 2 constitute one group while claims 8 through 11 stand or
fall together (brief, page 5). Thus, we will consider claims 1
and 2 as one group and claims 8 through 11 as another for
considering their rejections under §§ 102 and 103. We will treat
claims 1 and 8 as the representative claims of their respective
groups.
With regard to the rejection of claims 1 and 2 under
35 U.S.C. § 102, Appellants argue that Nagasawa discloses only
one control means, control unit 27, which is not separate and
apart from the input/output control means (brief, page 6 and
reply brief, page 3). Appellants further assert that Nagasawa’s
control means does not inquire to the input/output control means
about “the reproduction speed” that is applied for reproducing
data from the recording medium (brief, pages 6 & 7 and reply
brief, page 3).
The Examiner responds to Appellants’ arguments by stating
that Nagasawa teaches a control means that receives a designation
speed command from the user supplied by control means to the
reproducing apparatus (answer, page 6). The Examiner buttresses
this position by referring to columns 5, 7 and 9 of the reference
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and concludes that Nagasawa teaches both control means and
input/output control means for receiving the designated speed and
controlling the recording/reproducing means, respectively (id.).
As a general principal, a rejection for anticipation under
section 102 requires that each and every limitation of the
claimed invention be disclosed in a single prior art reference.
In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994), citing In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657 (Fed. Cir. 1990). The inquiry as to whether a
reference anticipates a claim must focus on what subject matter
is encompassed by the claim and what subject matter is described
by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983), it is only necessary for the claims to “‘read on’
something disclosed in the reference, i.e., all limitations of
the claim are found in the reference, or ‘fully met’ by it.”
After reviewing Nagasawa, we find that the Examiner presents
sufficient support to establish a prima facie case of
anticipation. In Figure 2, Nagasawa discloses a video editing
system which records reproduced source video data in a storage
device and produces edited video data from the data in the
storage device to an external device. In particular, Nagasawa
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teaches that source data is recorded in recording area Ar1 (col.
4, lines 50-55) and reproduced to output interface circuits 23-1
through 23-k for editing based on reproduction control signal NPc
which is supplied from control unit 27 (col. 5, lines 7-12).
Edited data is further stored in recording area Ar2 through input
interface 24, which is later reproduced and supplied to a
broadcast medium based on control signal NRc (col. 5, lines 29-
35). Therefore, the Examiner has properly corresponded storage
device 22 to the claimed recording and reproducing means and high
speed transfer machine 21 to the claimed reproducing apparatus.
We further find that Nagasawa’s control unit 27, as indicated by
the Examiner, constitutes the controlling means for both the
input/output circuits and the recording/reproducing means as well
as for providing the control signals in response to each step of
the process.
We do not agree with Appellants that Nagasawa only controls
the speed with control unit 27 (brief, page 6) as control unit 27
provides the recording and reproducing control signals FPc, NPc
and NRc. Furthermore, through high speed transfer machines 21
and 26, input/output interface circuits 23 and 24 supply data
provided from the outside to recording areas Ar1 and Ar2 and
supply the reproduced data from the recording area to an external
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device. We also note that control unit 27 together with
operation unit 28 provide various control signals as well as the
recording/reproducing speed based on both the stored commands or
manual entries by an operator (col. 6, lines 21-23 and col. 9,
lines 25-27). We also remain unpersuaded by Appellants’ argument
that a control means separate and apart from the input/output
control means is absent from the single control unit of Nagasawa
since we do not find such limitation (separate control means)
required in the claimed invention. In fact, the control unit of
Nagasawa performs the function of controlling the recording and
reproduction of video data reproduced from multiple and different
sources (col. 5, lines 13-15). Additionally, control unit 27
determines the speed of data transfer by probing the format and
the speed of the data inputted/outputted through input/output
interface circuits 23 and 24 (col. 4, lines 36-39) or the data
transfer speed designated by control unit 27 (col. 7, lines 11-12
and col. 9, lines 25-27).
With respect to Appellants’ argument that Nagasawa’s control
means does not “inquire about reproduction speed” to the
“input/output controlling means,” we find Examiner’s reliance on
the disclosed speed designation commands in columns 5, 7 and 9 to
be persuasive. Of particular relevance to the claimed
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controlling means inquiring about the reproduction speed, we find
Nagasawa’s disclosure in column 7, lines 11-22 which state that:
When the operator operates a certain reproduction pattern
designating operation key of the operation unit 28, commands
assigned to operation keys, e.g., various reproduction
commands, such as slow motion reproduction, quick motion
reproduction, etc., are supplied from the control unit 27 to
the storage device 22. When commands indicative of
reproducing at various reproduction speeds are supplied to
the output interface circuits 23-1, 23-2, ..., 23-k of the
storage device 22, the output interface circuits 23-1, 23-2,
..., 23-k of the storage device 22 output sources read from
the area Ar1 of the storage device 22 at speeds based on the
commands. [Emphasis added.]
The recorded video data from the storage area Ar1 is reproduced
at a designated reproduction speed that is based on the
reproduction commands supplied by input/output control means in
control unit 27. Therefore, as discussed above, Nagasawa teaches
“the controlling means ... inquires about the reproduction
speed,” as recited in claim 1, by disclosing a control unit that
controls the recording/reproducing of video data based on a
reproduction speed received from the control unit.
With respect to claim 2, we note that Nagasawa teaches that
audio/video data from storage area Ar1 is supplied through output
interface 23 to special effect mixer 25 at the normal transfer
rate (first data rate) in response to reproduction control signal
NPc (col. 5, lines 7-15). Furthermore, audio/video data from
storage area Ar2 is supplied through input interface 24 to high
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speed transfer machine 26 at n times the normal transfer rate
(second data rate being higher than the first data rate) in
response to control signal NRc (col. 5, lines 29-35).
In view of the analysis above, we find that the examiner has
met the burden of providing a prima facie case of anticipation.
In that regard, Nagasawa teaches input/output controlling means
and control means for a reproducing apparatus wherein video data
is reproduced at a designated speed received from the control
means, as recited in Appellants’ independent claim 1. Similarly,
as discussed above, the reference teaches the first and the
second input/output controlling means as well as the recording
and reproduction means, as recited in Appellants’ independent
claim 2. Accordingly, we affirm the rejection of claims 1 and 2
under 35 U.S.C. § 102 over Nagasawa.
Regarding the rejection of claims 8 through 11 under 35
U.S.C. § 103 over Nagasawa and Hasegawa, we note that the
Examiner, in the statement of rejection, suggests that Nagasawa
discloses the claimed invention except for “the tracks having
different azimuth angles” (answer, page 5). The Examiner
suggests the obviousness to one of ordinary skill in the art of
modifying Nagasawa by using a “recording control means for
controlling the recording and reproducing heads to scan the tape
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Application No. 08/860,537
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in recording and reproducing with tracks having different azimuth
angles” of Hasegawa “to reduce the cross talk between the
adjacent tracks” (answer, pages 5 & 6).
After reviewing Appellants’ response, we agree with
Appellants’ argument that although the Examiner has referred to
teachings in Nagasawa that relate to the identified elements of
claims 1 and 2 and an error detecting means, the Examiner has not
addressed the limitations of an error detecting means and a data
selecting means included in the data reproducing means, as
recited in claim 8 (brief, page 7). As pointed out by
Appellants, claim 8 requires that the error detecting means
detect “the error of each of the identified data and the recorded
data” and that the data selecting means select each recorded data
“having the smallest error from among the recorded data read”
(brief, pages 7 & 8, reply brief, pages 3 & 4). We are also in
agreement with Appellants’ position that neither Nagasawa nor
Hasegawa teaches or suggests these elements. We find that the
error correcting circuits of Nagasawa in columns 11 and 15, as
relied on by the Examiner (answer, page 7), do not select any
data having the smallest error and merely correct errors in the
supplied data based on the appended error correction codes.
Moreover, the only other data recovery function performed by
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Nagasawa, is to conceal the errors that could not be corrected so
that the recovered data is restored to a form closest to the
original data (col. 15, lines 6-12).
Assuming, arguendo, that it would have been obvious to
utilize the recording control means of Hasegawa in Nagasawa’s
recording and reproducing apparatus, as held by the Examiner, the
combination of references would still not disclose the error
detecting means and the data selecting means for selecting each
recorded data having the smallest error. Accordingly, since the
Examiner has failed to establish a prima facie case of
obviousness, the 35 U.S.C. § 103 rejection of independent claim 8
and claims 9 through 11, dependant therefrom, cannot be
sustained.
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1 and 2 under 35 U.S.C. § 102 is affirmed. The
decision of the Examiner rejecting claims 8 through 11 under 35
U.S.C. § 103 is reversed.
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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
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
STUART S. LEVY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2000-2111
Application No. 08/860,537
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William S. Frommer
Curtis, Morris & Safford
745 Fifth Avenue, 10th Floor
New York, NY 10151