Ex Parte Janevski

Board of Patent Appeals and Interferences

Feb 17, 2009

09978123 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANGEL JANEVSKI
____________

Appeal 2009-0671
Application 09/978,123
Technology Center 2600
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Decided:1 February 18, 2009
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and KARL D. EASTHOM,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0671
Application 09/978,123

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 4-9, 11-16, and 18-22. Claims 3, 10, and 17 have
been indicated as containing allowable subject matter (Ans. 2). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new
ground of rejection under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellant invented a system, receiver, method, and datastream for
content-based recording. The method includes receiving a broadcast and
demodulating a field from the broadcast. The field is compared to a
template. If there is threshold of similarity between the field and template,
the field is saved so the user can view the broadcast at a later time.2 Claim 1
reads as follows:
1. A system for video content-based selection of programming
for recording comprising:
a connection for receiving broadcast programming; and
an image processor comparing a demodulated field from
the received broadcast programming to a template defining
characteristics of video content desired to be recorded and
saving the field in response to determining at least a threshold
level of similarity between the field and the template.
The Examiner relies upon the following as evidence in support of the
rejection:
Tajima US 6,928,231 B2 Aug. 9, 2005
(filed Apr. 2, 2001)

2 See generally Spec. 3:3-15, 9:13-10:4, 16:5-13 and 17:1-10.
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Claims 1, 2, 4-9, 11-16, and 18-22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Tajima.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

Claims 1, 2, 4-9, 11-16, and 18-21
The Examiner finds that Tajima discloses every feature recited in
independent claim 1, including a processor that compares a demodulated
field to an image from a database or template (Ans. 3 and 4). Appellant
contends that Tajima extracts facial features from a video signal, produces a
normalized face image, and compares this extracted and normalized face
image to another normalized face image (App. Br. 4 and 6; Reply Br. 4). In
Appellant’s view, this purported extracted and normalized face image is not
a demodulated field, and thus, Tajima does not compare “a demodulated
field from the received broadcast programming to a template” as recited in
claim 1 (App. Br. 4-7; Reply Br. 1-4).

3 Throughout this opinion, we refer to (1) the Appeal Brief filed December
6, 2006, (2) the Examiner’s Answer mailed March 22, 2007, and (3) the
Reply Brief filed May 22, 2007.
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Application 09/978,123

ISSUE
Has Appellant shown the Examiner erred in finding that Tajima
discloses an image processor “comparing a demodulated field from the
received broadcast programming to a template . . . and saving the field in
response to determining at least a threshold level of similarity between the
field and the template” in rejecting claim 1 under § 102?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The Specification has no definition of “field” but does discuss a
field or frame (Spec. 10:1-3 and 16:6-7).
2. The Specification describes a template 203 as full field image
having white region 204a-e (Spec. 9:15-19 and 10:16-20; Fig. 2c).
3. The Specification states that a tuner is capable of demodulating
broadcast programming (Spec. 7:15-17).
4. Wiley Encyclopedia of Electrical and Electronics Engineering
defines a field as “a picture with half the resolution” and that a frame
consists of two fields.4

4 ALAN GODBER & JAMES R. REDFORD, Television Broadcast Transmission
Standards, WILEY ENCYCLOPEDIA OF ELECTRICAL AND ELECTRONICS
ENGINEERING 573 (Dec. 27, 1999), available at
http://mrw.interscience.wiley.com/emrw/9780471346081/eeee/article/W152
1/current/html?hd=All,television&hd=All,broadcast.
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5. Tajima discloses a video signal 1 is outputted from a tuner
(Tajima, col. 5, ll. 39 and 40; Fig. 1).
6. Tajima states that signal 1 consists of sequential pictures of
thirty frames per second (Tajima, col. 5, ll. 48 and 49).
7. Tajima discloses the signal 1 enters a face detecting means 2
(Tajima, col. 5, ll. 52-59; Fig. 1).
8. Tajima discloses the face detecting means 2 transforms the
signal 1 into a low resolution image 202 and outputs a face identifying
region 207. The face identifying region 25 corresponds to the face
identifying region 207 (Tajima, col. 6, ll. 43-46 and col. 7, ll. 1-14 and 22-
24; Figs. 2-4).
9. Video signal 1 is inputted into the normalizing means 3. Using
the face identifying region 207, the face of signal 1 is normalized and a
normalized face image 26 is outputted (Tajima, col. 5, ll. 52-56 and col. 7, ll.
24-27; Figs. 1 and 4).
10. The normalized face image 26 is sent to the face identifying
means 6 for comparison with a normalized face image 51 from a database 5
to determine whether there is a match or level of similarity (Tajima, col. 5, l.
56- col. 6, l. 14, col. 7, ll. 26 and 27, and col. 9, ll. 49-61; Figs. 4 and 5).
11. Once a comparison has been made and if a degree of similarity
exists between the normalized face images 26 and 51, a match or conformity
signal 62 is sent to the video signal recording means 9 (Tajima, col. 6, ll. 1-
7).
12. Tajima discloses that a video signal from video delay means 8
is recorded or stored (Tajima, col. 6, ll. 7-17; Fig. 1).

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PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1313.

ANALYSIS
As Appellant’s arguments primarily focus on Tajima’s alleged failure
to disclose an image processor comparing a “demodulated field” with a
template as recited in claim 1 (App. Br. 4-7; Reply Br. 1-4), we first
determine the scope of the above-quoted phrase. The Specification uses the
term “field” as an alternative to “frame” on numerous occasions (FF 1) and
describes a template 203 as a full field image (FF 2). However, the
Specification provides no definition of the term “field” (FF 1). Thus, the
term “field” will be given its ordinary and customary meaning to an
ordinarily skilled artisan. Phillips, 415 F.3d at 1312. In television
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Application 09/978,123

broadcasting, a field is defined as “a picture with half the resolution” and a
frame consists of two fields (FF 4). Thus, we find that the phrase
“demodulated field” customarily means a demodulated picture with half the
resolution.
Tajima discloses that a video signal 1 is outputted from a tuner (FF 5).
The Examiner finds that the video signal 1 fed through a tuner is a
demodulated signal (Ans. 5), and the Specification supports this position (FF
3). Additionally, Tajima discloses that the signal consists of a sequence of
pictures made up of thirty frames per second (FF 6). As two fields make up
a frame (FF 4), Tajima also discloses that a demodulated signal consisting of
fields enters the face detecting means 2 (FF 7). This signal 1 enters the face
detecting means 2 and a portion of a picture or face identifying region 207
corresponding to the face identifying region 25 (FF 8) is outputted to the
normalizing means 3 (FF 8 and 9).
Video signal 1 is also inputted into the normalizing means 3 (FF 9).
Using face identifying region 207, the face of video signal 1 is normalized.
(Id.). The resulting output 26 to face identifying means 6 is the video signal
1 with the region of the image having the face being normalized. (Id.).
Thus, contrary to Appellant’s assertions (App. Br. 4-6; Reply Br. 4), the face
region is not extracted from the image for comparison. Rather, this region of
the image is normalized (FF 10). The face identifying means 6 of Tajima
compares this normalized face image 26 with a normalized face image from
a database 5 in order to determine if a similarity exists between the two (FF
10). Tajima, therefore, discloses that a demodulated image 26 is compared
to a database’s image 51 or template.
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Moreover, as a frame or image includes two fields (FF 4), the
processor of Tajima compares two fields to the template. Appellant argues
that comparing two fields is not what is recited in claim 1 (Reply Br. 3).
However, courts have “repeatedly emphasized that an indefinite article ‘a’ or
‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended
claims containing the transitional phrase ‘comprising.’” KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). As claim 1
recites the transitional phrase “comprising,” the limitation of “comparing a
demodulated field” in claims carries the meaning of comparing one or more
fields. Tajima, therefore, discloses the limitation of “an image processor
comparing a demodulated field from the received broadcast programming to
a template” as recited in claim 1.
However, if a degree of similarity exists between the image 26 and
template 51, Tajima sends a match or conformity signal 62 to the video
signal recording means 9 (FF 11). Tajima then discloses a video signal from
video delay means 8 is recorded (FF 12). As the saved video signal is not
the demodulated field compared with the template, Tajima fails to disclose
“an image processor . . . saving the field in response to determining at least a
threshold level of similarity between the field and the template” (emphasis
added) as recited in claim 1.
For the foregoing reasons, Appellant has shown error in the
Examiner’s anticipation rejection of claim 1 based on Tajima. As
independent claims 8 and 15 include limitations that are commensurate in
scope with the “saving the field” recitation of claim 1, Appellant has also
shown error in the Examiner’s anticipation rejection of claims 8 and 15
based on Tajima.
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Application 09/978,123

Accordingly, we will not sustain the Examiner’s rejection of
independent claims 1, 8, and 15 or dependent claims 2, 4-7, 9, 11-14, 16, and
18-21.

Claim 22
Claim 22 varies in scope from claim 1 and recites a datastream having
a broadcast programming stream and at least one template. Additionally,
claim 22 does not recite structure or the step for saving the field in response
to determining a level of similarity between the field and template. The
Examiner finds that Tajima discloses every feature recited in independent
claim 22 (Ans. 3-4). Appellant contends that Tajima does not disclose a
datastream with both the broadcast programming stream and a template
(App. Br. 9-12; Reply Br. 5-6). Appellant also reiterates the arguments
made with respect to claim 1, stating that Tajima does not disclose selecting
a portion of the broadcast to record based on the similarity of a field of the
broadcast and a template (App. Br. 9-12).

ISSUES
(1) Has Appellant shown the Examiner erred in finding that Tajima
discloses a datastream having a broadcasting programming stream and at
least one template in rejecting claim 22 under § 102?
(2) Has Appellant shown the Examiner erred in finding that Tajima
discloses “at least one template suitable . . . for recording based upon a
similarity of a field within the selected portion of the broadcast
programming stream to the at least one template” in rejecting claim 22 under
§ 102?
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Application 09/978,123

ADDITIONAL FINDING OF FACT
The record supports the following additional finding of fact (FF) by a
preponderance of the evidence.
13. The Specification states that the template may be transmitted
using the same broadcast medium as the video programming or through a
different connection (Spec. 11:1-8).

ANALYSIS
The Specification states that the template may be carried on a
different medium or connection than the video programming (FF 13). Thus,
giving the term “datastream” the broadest reasonable interpretation in light
of the Specification, we find that the recited broadcast programming stream
and the template of claim 22 do not have use the same broadcast medium to
read on a “datastream.” Tajima discloses a broadcast programming stream 1
that includes selected broadcast programming 26 (FF 5 and 10). A portion
of the broadcast programming stream (e.g., the stream carrying the face of
interest) is selected by a receiver (e.g., face identifying means 6 is part of the
video receiver) to be processed at face normalizing means 3 (FF 8-10).
While the portion of the selected broadcast programming 26 has been
normalized in the region defined by face identifying region 207 (FF 9), the
image 26 still remains a broadcast programming stream.
As stated above, the similarities between this transmission and a
normalized face image 51 originating from a different connection (e.g., face
image database 6) are measured (FF 10). Using the broadest reasonable
interpretation of the term “datastream” in light of the Specification to
include data obtained from different media (see FF 13), Tajima discloses a
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datastream having both a selected broadcast programming 26 and at least
one template 51. Additionally, when the selected broadcast program 26 and
the template 51 are being compared within the face identifying means 6 (FF
10), Tajima discloses the same broadcast medium containing both the
program 26 and template 51. Thus, Tajima discloses a “datastream” having
both the selected broadcast programming and at least one template as recited
in claim 22.
With regard to Appellant’s argument that Tajima does not compare a
field with a template (App. Br. 12), we refer Appellant to the previous
discussion of claim 1 and how Tajima discloses a field that is compared with
template 51. Additionally, as stated above, Tajima discloses selecting a
portion of a broadcast stream to record (FF 11 and 12) based on the
similarity of a field 26 to a template 51. Moreover, since claim 22 includes
the open-ended transitional phrase “comprising,” the recitation to “a field”
encompasses one or more fields. See Kinetic Concepts, 223 F.3d at 1356.
Finally, the recording is also based upon a similarity of a field 26 originating
from or within the selected portion of the broadcast stream (FF 5-10). Thus,
Tajima discloses the recitation of “the at least one template is suitable for . . .
recording based upon a similarity of a field within the selected portion of the
broadcast programming stream to the at least one template.”
For the foregoing reasons, Appellant has not shown error in the
anticipation rejection of independent claim 22 based on Tajima. We, thus,
will sustain the rejection of claim 22.

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Application 09/978,123

New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103(a) for claim 22.
Claim 22 is rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Independent claim 22 recites, in pertinent part, a datastream
comprising “a broadcast programming stream” and “at least one template.”
Appellant admits that the recited broadcast programming stream can be a
signal (App. Br. 3). The Specification also discloses that “templates 106
may be created within video receiver 100, distributed to the subscriber
through broadcast transmission or physical media (e.g., CD-ROM), or
downloaded via the Internet from a variety of sources” (Spec. 13:1-4)
(emphasis added). The Specification also states in other sections that the
templates include a broadcast medium or communication link (Spec. 11:1-8
and 18:6-8). Thus, reading independent claim 22 in light of the
Specification, the recited “datastream” encompasses a signal that performs
the recited operations.
Signals are not patentable subject matter under § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). Therefore, when read in light of the
Specification, independent claim 22 includes both statutory subject matter
(instructions stored on a tangible medium) and non-statutory subject matter
(instructions conveyed by a signal). According to USPTO guidelines,
however, such claims must be amended to recite solely statutory subject
matter.5

5 See MPEP, Rev. 6, Sept. 2007 (“MPEP”) § 2106(IV)(C)(2)(2)(a) (“[A]
claim that can be read so broadly as to include statutory and nonstatutory
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For the foregoing reasons, independent claim 22 does not recite
statutory subject matter under 35 U.S.C. § 101.

CONCLUSIONS
(1) Appellant has shown that the Examiner erred in finding Tajima
discloses an image processor “comparing a demodulated field from the
received broadcast programming to a template . . . and saving the field in
response to determining at least a threshold level of similarity between the
field and the template” and similar recitations in rejecting claims 1, 8, and 15
under § 102.
(2) Appellant has not shown the Examiner erred in finding that Tajima
discloses a datastream having a broadcasting programming stream and at
least one template in rejecting claim 22 under § 102.
(3) Appellant has not shown that the Examiner erred in finding Tajima
discloses “at least one template suitable . . . for recording based upon a
similarity of a field within the selected portion of the broadcast
programming stream to the at least one template” in rejecting claim 22 under
§ 102.
(4) We have entered a new ground of rejection for claim 22 under
§ 101.

subject matter must be amended to limit the claim to a practical
application.”)
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ORDER
We reverse the Examiner’s rejection of claims 1, 2, 4-9, 11-16, and
18-21 and affirm the Examiner’s rejection of claim 22. We have also
entered a new ground of rejection under 37 C.F.R. § 41.50(b) for claim 22.
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
rejection . . . 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. . . .

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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Application 09/978,123

EVIDENCE APPENDIX

ALAN GODBER & JAMES R. REDFORD, Television Broadcast Transmission
Standards, WILEY ENCYCLOPEDIA OF ELECTRICAL AND ELECTRONICS
ENGINEERING 573 (Dec. 27, 1999), available at
http://mrw.interscience.wiley.com/emrw/9780471346081/eeee/article/W152
1/current/html?hd=All,television&hd=All,broadcast.

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