Ex parte Kim

Board of Patent Appeals and Interferences

Aug 29, 1997

07928717 (B.P.A.I. Aug. 29, 1997)

Appeal No. 96-3211 (ABC)
Application 07/928,717
APPLICANT(S): KI-YONG KIM
APJ TORCZON
APJ BARRETT
APJ FLEMING
DECISION: AFFIRMED-IN-PART
20 April 1999
Counsel for Applicant failed to appear for the hearing1
scheduled for 9 a.m. on 5 August 1997. Cf. Paper 42 entitled
"Transmittal of Confirmation of Oral Hearing Attendance".
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 43
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KI-YONG KIM
____________
Appeal No. 96-3211
Application 07/928,717
____________
ON BRIEF1
____________
Before BARRETT, FLEMING, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
We have reviewed the record in its entirety in light of the
arguments of Applicant and the examiner. Our decision presumes
familiarity with the entire record. A preponderance of the
evidence of record supports each of the following fact findings.
Appeal No. 96-3211
Application 07/928,717
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A. The nature of the case
1. This is an appeal from the final rejection of claims 1-
10 and 12-20. (Paper 28.) Claim 11 has been canceled and no
other claims are pending. (Paper 24 at 1.)
2. The subject matter of the invention is an automatic
switching circuit for an image recording system that switches
from an intermittent recording mode to a continuous recording
mode upon detection of motion. (Paper 1 at 1.)
3. Claim 10 defines the subject matter of the invention as
follows:
A method of automatically switching recording
modes of a recording device, comprising:
converting optical information representing
objects into an electrical image signal;
separating said electrical image signal into a
composite image signal and a luminance signal;
separating said luminance signal into a current
luminance signal and a previous luminance signal and
generating a difference signal representing differences
between said previous luminance signal and said current
luminance signal indicative of movement exhibited by
the objects;
detecting said movement by comparing said
difference signal to a reference value;
recording said composite image signal
intermittently at a predetermined rate in the absence
of detection of said movement; and
recording said composite image signal continuously
in response to said detection of said movement.
Appeal No. 96-3211
Application 07/928,717
We rely on a translation that Applicant provided for2
our understanding of this Japanese laid-open application.
- 3 -
4. The examiner rejected claims 6, 9, and 15 under
35 U.S.C. § 112 as being indefinite. The rejection of claim 9
appears to rest on its dependence from claim 6. (Paper 24 at 2.)
The examiner withdrew this rejection from claims 6 and 15.
(Paper 29.) We presume this rejection has been withdrawn from
claim 9 as well.
5. The examiner also rejected all of the claims on appeal
under 35 U.S.C. § 103 (Paper 24 at 3) as having been obvious in
light of the following references:
Folsom 4,001,881 4 Jan. 1977
Suzuki JP 59-221094 12 Dec. 19842
Niitsu 5,132,790 21 July 1992
(filed 27 Mar. 1991)
B. What the references teach
A person having ordinary skill in the art would have
appreciated fact findings 6 to 14 at the time of invention.
6. Folsom teaches cameras supplying a video signal to a
video recorder. (3:31-34.)
7. Recording may be in "time-lapse" (i.e., intermittent)
mode or it may be in real-time (i.e., continuous) mode. (3:19-
30.)
Appeal No. 96-3211
Application 07/928,717
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8. Folsom's system switches from time-lapse mode to real-
time mode "automatically" when an alarm button is pressed during
an emergency. (4:31-48.)
9. Folsom does not teach detection of movement by any
method or switching to real-time mode based on detection of
motion.
10. Suzuki teaches "driving a [television] and a [videotape
recorder] with the actuation of [a] sensor" activated by a
trespasser. (Abstract.) Suzuki describes automatic recording on
detection as "conventional". (2:10-12.)
11. Suzuki lists "[p]hotoelectric, ultrasonic,
electroextraction, oscillation, or infrared type of sensors" as
appropriate in his system. (3:3-4.) Many of these are directly
(e.g., ultrasonic sensors) or indirectly (e.g., photoelectric
sensors) motion detectors.
12. The two recording modes that Suzuki teaches are
continuous and off, not intermittent and continuous. (6:9-7:1.)
13. Suzuki does not teach detection of motion using
differences in a luminance signal over time.
14. Niitsu teaches that using a luminance frame difference
signal to detect motion in a video signal is "conventional".
(1:13-22.) Niitsu generates a difference signal in part by
Appeal No. 96-3211
Application 07/928,717
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subtracting a delayed luminance signal from an input luminance
signal. (3:64-4:18.)
C. Other findings
15. The references reflect the level of skill in the art at
the time of invention. Chore-Time Equip., Inc. v. Cumberland,
713 F.2d 774, 779, 218 USPQ 673, 676 (Fed. Cir. 1983). Applicant
has not, on appeal, urged an alternative level of skill.
16. On appeal, Applicant has not presented any evidence of
secondary considerations supporting patentability.
CONCLUSIONS OF LAW
A. Claim interpretation
1. Claim 10 is not written in step-plus-function language.
2. Claims 1-9 and 12-20 are written in means-plus-function
language. Applicant has not directly challenged the equivalence
of structures in the references except as specifically noted in
this opinion.
B. Grouping of claims
3. Applicant states that each of the claims on appeal are
argued separately and consequently stand or fall separately.
(Paper 33 at 7.) Our review of Applicant's briefs indicates that
the following groupings are argued separately with at least some
specificity: 1; 2-4; 5, 6 and 9; 7; 8; 10; 12; 13, 14, and 17;
Appeal No. 96-3211
Application 07/928,717
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and 15, 16, and 18-20. Claims within these groupings stand or
fall together.
B. Obviousness
4. Applicant argues that the proposed combination does not
teach the movement discriminating means and the mode control
means of claim 1, but only argues the mode control means
limitation with specificity. (Paper 33 at 10-13.)
5. Applicant is correct that Folsom does not teach
switching between the intermittent and continuous recording modes
when motion is detected. We conclude, however, that the
combination of Folsom with Niitsu and Suzuki does teach this
limitation. Suzuki teaches the desirability of detecting
intruders using various sensors including motion detectors.
Niitsu teaches a motion detection system for use in a video
system. Folsom teaches a video surveillance system with an
intermittent mode to avoid wasting videotape while still
recording as much as possible. A person having ordinary skill in
the art would have been motivated to incorporate Folsom's
videotape-saving mode of operation into an intrusion detection
and recording system like Suzuki's. Niitsu would have shown the
artisan how to do this using the video system itself instead of
additional sensors.
Appeal No. 96-3211
Application 07/928,717
In his reply brief, Applicant argues that claim 103
recites specific circuitry like claim 7. (Paper 37 at 11.) This
argument finds no support in the language of claim 10. Moreover,
unlike the other claims on appeal, claim 10 does not use
means/step-plus-function language, so it is not presumed to
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6. Folsom does not teach away from the combination because
it is Suzuki's purpose (intrusion detection) that would motivate
the artisan to combine the references, not Folsom's (transaction
monitoring) purpose. The problem of wasting video during non-
alarm periods is the same in both situations, however, and
provides the motivation to modify an intrusion detection system
with an intermittent/continuous recording mode switch.
7. Independent claim 7 contains additional limitations.
Moreover, Applicant specifically argues the differences between
his disclosed circuit and structures in the references.
(Paper 33 at 14.) The examiner relies on the general skill in
the art (Paper 34 at 15), but fails to explain precisely what
would have led the artisan to Applicant's circuits or their
equivalents. Thus, we conclude that the examiner has failed to
provide a basis for rejecting claim 7.
8. We reverse the rejection of claim 8 pro forma because
claim 8 depends from claim 7.
9. Regarding claim 10, Applicant points out the difference
signal limitation and the two recording modes without any
argument as to why these limitations are not met. (Paper 333
Appeal No. 96-3211
Application 07/928,717
trigger the means-plus-function provisions of 35 U.S.C. § 112.
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at 14.) We conclude that the combination of references meets
these limitations. We have already found that Niitsu teaches
generating a difference signal between successive components of a
received luminance signal indicative of movement of an object.
Finding 14, supra. We have also already explained how an artisan
would have been led to use Niitsu's luminance frame difference
signal as a motion detector to switch from intermittent mode to
continuous mode in the combination of references. Conclusion 5,
supra. Thus, we conclude that the combination meets all of the
contested limitations of claim 10.
10. Applicant approaches claim 12 in much the same way as
claim 10. Niitsu's motion detection means generates a motion
detection signal. Suzuki uses a sensor signal, including motion
detection signals, to change recording modes (on/off) in a
surveillance system. Folsom teaches switching between an
intermittent (videotape-saving) mode and a continuous mode in
response to an alarm situation. See conclusion 5, supra.
Applicant has not explained how the recited limitations (Paper 33
at 15, listing motion detection and two recording modes) overcome
the combination. Thus, we conclude the combination renders
claim 12 obvious as well.
Appeal No. 96-3211
Application 07/928,717
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11. Applicant challenges the rejection of claims 2-4 for
failing to account for the Applicant's specific circuit
components. (Paper 33 at 17.) The relevant circuits are
discussed at pages 9-12 of the specification. The examiner
relies on Niitsu and skill in the art to teach these structures,
but does not explain how Niitsu teaches precisely the same
structures or their equivalents. We cannot sustain the rejection
of claims 2-4 without a showing that Niitsu (in combination with
the other references) teaches these elements.
12. Claims 5, 6, and 9 require gating means. The examiner
has not clearly identified a structure in Niitsu or the other
references that teaches this limitation. To the extent that the
examiner is suggesting that gating means are inherent in the
combination (Paper 34 at 17-19), we agree with Applicant that
this is not a proper application of inherency. In re Rijckaert,
9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993).
13. Regarding claims 13-20, Applicant again argues that the
combination does not teach or suggest his particular circuits.
(Paper 37 at 11.) Again, the examiner apparently relies on
inherency to teach these elements. (Paper 34 at 18-19.) Niitsu,
by itself or in combination with Folsom and Suzuki, lacks
sufficient detail to determine whether its structures are the
same as or equivalent to the structures Applicant discloses in
Appeal No. 96-3211
Application 07/928,717
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the specification. The examiner has not provided an adequate
explanation of why Niitsu in combination with the other
references would have led an artisan to the disclosed circuits.
DECISION
We affirm the examiner's rejection of claims 1, 10, and 12
under section 103. We reverse the examiner's rejection of
claims 2-9 and 13-20 under section 103.
Appeal No. 96-3211
Application 07/928,717
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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). See 37 CFR § 1.136(b).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-3211
Application 07/928,717
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