Ex parte Lee

Board of Patent Appeals and Interferences

Jun 20, 2000

08263744 (B.P.A.I. Jun. 20, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HYUN-SOO LEE
________________
Appeal No. 1998-0701
Application 08/263,744
________________
ON BRIEF
________________
Before JERRY SMITH, FLEMING AND FRAHM, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-13, which constitute
all the claims in the application.
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Application 08/263,744
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The disclosed invention pertains to the field of
recording and reproducing audio and video signals. More
particularly, audio and video information is recorded along
with a record mode discrimination signal which has a
predetermined frequency and a periodicity within the signal
that is dependent upon the record mode. The recorded
discrimination signal can be detected during search mode to
control the speed of reproduction during the search mode.
Representative claim 1 is reproduced as follows:
1. In a magnetic recording and reproducing system of
the type which records an analog audio and video signal on a
recording medium at selected record mode speeds, and which
reads out recorded signals from said recording medium, said
system having also a read and write head, the improvement
comprising:
means for generating a record mode discrimination signal
having a predetermined frequency and a periodicity within the
signal that is dependent upon said record mode,

mixer means for mixing said record mode discrimination
signal with said audio and video signal and a pilot signal to
provide a mixed signal and for applying said mixed signal to
said read and write head for recording on said recording
medium,
whereby the recording of said record mode discrimination
signal along with said audio and video signal enables the
detection of the record mode for said recorded signal.
The examiner relies on the following references:
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Application 08/263,744
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Enoki 4,991,027 Feb. 05, 1991
Kim et al. (Kim) 5,319,499 June 07, 1994
(filed Aug. 28,
1991)
Fukami et al. (Fukami) 5,477,396 Dec. 19, 1995
(effectively filed Nov. 26,
1990)
Minoda et al. (Minoda) 5,521,766 May 28, 1996
(effectively filed Apr. 02,
1992)
The following rejections are set forth in the
examiner’s answer:
1. Claims 1-13 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
described in the originally filed specification.
2. Claims 1-4, 10 and 12 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over the teachings of Fukami and
Minoda.
3. Claims 5-7 and 13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the teachings of Fukami,
Minoda and Enoki.
4. Claims 8, 9 and 11 stand rejected under 35 U.S.C.
Appeal No. 1998-0701
Application 08/263,744
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§ 103 as being unpatentable over the teachings of Fukami,
Minoda, Enoki and Kim.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the obviousness rejections. We have, likewise, reviewed
and taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the originally filed specification supports
the invention now being claimed as required by 35 U.S.C. §
112. We are also of the view that the evidence relied upon
and the level of skill in the particular art would not have
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Application 08/263,744
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suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in claims 1-13. Accordingly, we
reverse.
Appellant has indicated that for purposes of this
appeal the claims within each rejection will stand or fall
together as a single group [brief, page 5]. Consistent with
this indication appellant has made no separate arguments with
respect to any of the claims subject to the same rejection.
Accordingly, all the
claims within each rejection will stand or fall together.
Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed.
Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3
(Fed. Cir. 1983).
We consider first the rejection of claims 1-13 under
35 U.S.C. § 112, first paragraph, as containing subject matter
which was not described in the originally filed specification.
The rejection results from a finding by the examiner that an
amendment to independent claims 1 and 10 was new matter which
was unsupported by the original disclosure. The amendment in
question amended the phrase “records an audio and video
signal” in claims 1 and 10 to “records an analog audio and
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Application 08/263,744
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video signal.” The original disclosure describes the
invention as being useful in a conventional 8mm camcorder.
The examiner’s rejection is based on the position that the
person of ordinary skill in the art would not have recognized
that an 8mm camcorder operated on audio and video signals
which were both analog.
Appellant’s argument that the first paragraph of 35
U.S.C. § 112 is not an appropriate basis for asserting that
amendments to the claims are not supported by the original
disclosure is without merit. A rejection of claims which
supposedly contain new matter, or material which is
unsupported by the original disclosure, is a rejection based
on the written description requirement of 35 U.S.C. § 112.
Therefore, the examiner’s rejection is clearly made under the
proper statutory authority.
Notwithstanding appellant’s assertion that the
rejection is made under the wrong statutory basis, appellant
also makes the argument that the person skilled in this art
would have understood that conventional 8mm camcorders
recorded signals in analog form. Additionally, appellant
argues that the original disclosure is generic to analog and
Appeal No. 1998-0701
Application 08/263,744
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digital signals and that appellant is not precluded from
limiting the claimed invention to analog signals only.
The purpose of the written description requirement is
to ensure that the applicant conveys with reasonable clarity
to those skilled in the art that he was in possession of the
invention as of the filing date of the application. For the
purposes of the written description requirement, the invention
is "whatever is now claimed." Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Thus,
the critical question on this issue is whether appellant was
in possession of the magnetic recording and reproducing system
with
respect to analog audio and video signals at the time this
application was filed.
We decide this question in favor of appellant for
essentially the reasons argued by appellant in the brief. We
are not persuaded by the examiner’s view that the original
disclosure only supports recording and reproducing digital
audio data and that the phrase “analog audio and video signal”
constitutes new matter. The original disclosure relates to a
conventional 8mm camcorder. The evidence on this record
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Application 08/263,744
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supports appellant’s position that conventional 8mm camcorders
were known to operate on analog audio and video signals. The
examiner’s position could only be tenable if the examiner had
demonstrated that only digital recording and reproduction of
signals was known from conventional 8mm camcorders. The
present record does not support this position of the examiner.
Therefore, we find that the original disclosure
provides written description support for the phrase “an analog
audio and video signal” as recited in independent claims 1 and
10. Thus, we do not sustain the examiner’s rejection of the
claims as being based on an inadequate disclosure.
We now consider the various prior art rejections. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ
459, 467
(1966), and to provide a reason why one having ordinary skill
Appeal No. 1998-0701
Application 08/263,744
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in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
Appeal No. 1998-0701
Application 08/263,744
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1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
With respect to the rejection of claims 1-4, 10 and
12, we consider independent claim 1 as the representative
claim for this group. The examiner essentially finds that
Fukami teaches all the features of claim 1 except for the
recording and reproducing of video signals. The examiner
cites Minoda as teaching that it was conventional to record
both audio and video signals on the same magnetic tape. The
examiner concludes that it would have been obvious to the
artisan to record video data on Fukami’s tape as taught by
Minoda [answer, page 4].
Appellant argues that Fukami relates to digital audio
recording and reproduction only. He also argues that the
status byte of Fukami, which indicates tape speed, does not
constitute a discrimination signal having a predetermined
frequency and a periodicity within the signal that is
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Application 08/263,744
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dependent on the record mode as recited in claim 1 [brief,
pages 10-11]. Finally, appellant argues that there would be
no motivation to combine Minoda’s video signals with the
digital audio tape of Fukami [id., pages 12-13].
The examiner’s initial response to appellant’s
argument that Fukami is not directed to analog audio and video
data is to note that this claim limitation is new matter
[answer, page 10]. This response is inappropriate because
limitations of a claim cannot be ignored when making prior art
rejections even if the claim limitations are unsupported by
the disclosure. The examiner additionally attempts to find
that the control data of Fukami meets the recitation of
frequency and periodicity as recited in claim 1. We agree
with appellant, however, that the byte of control data of
Fukami does not meet the claim limitations for reasons
explained on pages 10-11 of the brief.
Since we agree with appellant that the means for
generating a record mode discrimination signal as recited in
claim 1 is not taught or suggested by the collective teachings
of Fukami and Minoda, the examiner has failed to establish a
prima facie case of obviousness. Therefore, we do not sustain
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Application 08/263,744
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the rejection of claims 1-4, 10 and 12 based on these
teachings.
The rejection of claims 5-9, 11 and 13 relies on the
same combination of Fukami and Minoda discussed above. Since
the additional teachings of Enoki or Enoki and Kim do not
overcome the deficiencies in the basic combination discussed
above, we do not sustain the rejection of these claims based
on the prior art cited by the examiner.
In summary, we have not sustained any of the
examiner’s rejections of the claims. Therefore, the decision
of the examiner rejecting claims 1-13 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
Appeal No. 1998-0701
Application 08/263,744
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)
ERIC FRAHM )
Administrative Patent Judge )
JS/ki
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