Ex Parte JanevskiDownload PDFBoard of Patent Appeals and InterferencesFeb 17, 200909978123 (B.P.A.I. Feb. 17, 2009) Copy Citation 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 ____________ 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. 2 Appeal 2009-0671 Application 09/978,123 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. 3 Appeal 2009-0671 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. 4 Appeal 2009-0671 Application 09/978,123 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). 5 Appeal 2009-0671 Application 09/978,123 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 6 Appeal 2009-0671 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. 7 Appeal 2009-0671 Application 09/978,123 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. 8 Appeal 2009-0671 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? 9 Appeal 2009-0671 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 10 Appeal 2009-0671 Application 09/978,123 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. 11 Appeal 2009-0671 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 12 Appeal 2009-0671 Application 09/978,123 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.”) 13 Appeal 2009-0671 Application 09/978,123 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. . . . 14 Appeal 2009-0671 Application 09/978,123 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 15 Appeal 2009-0671 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. 16 Copy with citationCopy as parenthetical citation