Ex Parte O et al

Board of Patent Appeals and Interferences

Dec 23, 2008

11174906 (B.P.A.I. Dec. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS M. O'CONNOR and MARK P. CHUANG
____________

Appeal 2008-4041
Application 11/174,906
Technology Center 2600
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Decided: December 23, 2008
____________

Before KENNETH W. HAIRSTON, JOSEPH L. DIXON, and
LANCE LEONARD BARRY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
A Patent Examiner rejected claims. The Appellant appeals therefrom
under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).

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A. INVENTION
The invention at issue on appeal relates to time shifting by
simultaneously recording and playing a data stream. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 26, which further illustrates the invention, follows.
26. A method comprising:
selectively displaying a video stream from storage or
without storing said video stream, depending on a time delay.

C. REFERENCES
The Examiner relies on the following references as evidence:
Yonemitsu US 5,040,061 Aug. 13, 1999.
Camhi US 5,930,444 Jul. 27, 1999

D. REJECTIONS
The Examiner makes the following rejections.
Claims 26-27, 29-33, 35-40, and 42-44 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Camhi.
Claims 28, 34, and 41 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Camhi in view of Yonemitsu.

II. ISSUE
Has the Examiner set forth a proper showing of anticipation and
specifically, whether the teachings of the originally filed application of the
Camhi reference support the relied upon portions in the issued patent?
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III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“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., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their 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). The properly
interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent
that "[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results." Id.
The operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
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The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at
1741).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

IV. ANALYSIS
35 U.S.C. § 102
Appellants' contention as set forth in the Reply Brief at page 2 is that
the originally filed subject matter in the original specification of Camhi,
prior to any amendments thereto, cannot and does not support the
Examiner's reliance thereon for the rejection of the presently claimed subject
matter "selectively displaying a video stream from storage or without storing
said video stream depending on the time delay." We disagree with
Appellants' contention and find that the originally filed subject matter in
Camhi supports the Examiner’s position as set forth in the statement of the
rejection.
First, from our review of the originally filed specification of Camhi,
we find that there is adequate and enabling support in the originally filed
subject matter at pages 10-11 which discusses the bypass lines 34 to prevent
the inputs 22 from interfering with the information retrieved from memory
12 and coupled to the outputs 24, for the portions of Camhi, relied upon in
the rejection. At pages 10-11 of originally filed Camhi, we find that there is
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adequate and enabling support for the language of dependent claim 9, as
amended during prosecution of Camhi, to support "when said key means for
controlling the sequence and rate is subsequently used to advance the
playback of the stored information to a point where the interval of time delay
becomes negligible." From our reasoned analysis, we find that in the
switchover from playback to live viewing, there would not necessarily be a
delay of zero at switchover due to the latency of the switching circuitry.
Once there is a zero delay, by the time the switching circuitry switches
sources of input, there would be some additional delay and some missed data
during that additional delay. Therefore, the language of dependent claim 9
of Camhi takes into account this fact.
Furthermore, we find that the Examiner's reliance upon page 15, third
paragraph, of the originally filed specification of Camhi (Answer 7) to
additionally support the Examiner’s rejection of independent claim 26. We
agree with the Examiner that figure 5 of Camhi teaches the further
recordation of the input stream when a user has viewed the recorded input, a
recorder reverts to a passive state with information present at the input 22
coupled directly to the output. Hence, there is selectively displaying of the
video stream from storage when data is recorded or without storing said
video stream depending on a time delay. For one stream of video there is a
delay and for the other stream of video there is no delay. Therefore, the
output depends on a time delay being present or not. Therefore, we will
sustain the Examiner's rejection of independent claim 26 and dependent
claims 27-30 grouped therewith.
Since Appellants have not separately argued the patentability of
independent claims 32 and independent claim 38, we will sustain the
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rejections of those claims and their respective dependent claims 33-36 and
39-44 for the same reasons discussed above with respect to independent
claim 26.
With respect to the Examiner’s position that the originally filed
specification of Camhi does not have to support the relied upon subject
matter under 35 U.S.C. § 102(e), we disagree with the Examiners’ position
and find that the Appellants' contention and reliance upon Ex Parte D to be
correct. Applying that principle here, we find original support in the
originally filed disclosure of Camhi, as discussed above. Therefore, there is
no material issue in this respect. Therefore, Appellants’ argument is not
persuasive of error in the Examiner’s initial showing of anticipation.

35 U.S.C. § 103(a)
Appellant relies on the same arguments advanced above with respect
to anticipation. Since we did not find those arguments persuasive of error in
the Examiner’s initial showing, we do not find that Appellants have shown
error in the Examiner’s initial showing of obviousness.

V. CONCLUSION
For the aforementioned reasons, we conclude that the teachings of the
originally filed application of the Camhi reference supports the relied upon
portions of the issued patent. Hence, the Examiner has set forth initial
showings of anticipation and obviousness, and Appellants have not shown
error therein.

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VI. ORDER
We affirm the anticipation rejection of claims 26-27, 29-33, 35-40,
and 42-44, and the obviousness rejections of claims 28, 34, and 41.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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BARRY, Administrative Patent Judge, concurring.

I concur with my colleagues' analysis and finding "that the originally
filed subject matter in Camhi supports the Examiner’s position as set forth in
statement of the rejection." I also write separately to explain an alternative
reason for affirming the outstanding rejections.

ISSUE
The Examiner finds "that the original specification of Camhi does
disclose the limitations recited in the instant claimed invention." (Answer
7.) The Appellants argue that they "know that the application does not
support the patent" (Appeal Br. 10 (emphasis added)) and that they "ha[ve]
carried the burden of showing that subject matter relied upon in the issued
patent was improperly added in an amendment during prosecution. Nothing
within the application as filed supported the added subject matter" (id.).
Therefore, the issue is whether the Appellants have met their burden to rebut
the presumption of operability of Camhi.

LAW
"A patent shall be presumed valid. Each claim of a patent (whether in
independent, dependent, or multiple dependent form) shall be presumed
valid independently of the validity of other claims; dependent or multiple
dependent claims shall be presumed valid even though dependent upon an
invalid claim." 35 U.S.C. § 282 (2007)1. "[W]hen the PTO cited a

1 I cite to the version of the United States Code in effect at the time of the
Appeal Brief. The current version includes the same law.
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disclosure which expressly anticipated the present invention . . . , the burden
was shifted to the applicant. He had to rebut the presumption of the
operability of [the reference] by a preponderance of the evidence." In re
Sasse, 629 F.2d 675, 681 (CCPA 1980) (citing In re Jacobs, 318 F.2d 743
(1963)). See also Amgen Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1355 (Fed. Cir. 2003) ("In patent prosecution the examiner is
entitled to reject application claims as anticipated by a prior art patent
without conducting an inquiry into whether or not that patent is enabled or
whether or not it is the claimed material (as opposed to the unclaimed
disclosures) in that patent that are at issue.") "Argument in the brief does
not take the place of evidence in the record." In re Schulze, 346 F.2d 600,
602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).

FINDING OF FACT
Camhi is a U.S. Patent.

ANALYSIS
Because Camhil is a domestic patent it is presumed valid under 35
U.S.C. § 282. The Examiner's citation and reliance upon the patent "shifted
the burden of going forward to [the A]ppellants, who, to overcome the
rejection, were required to rebut the presumption of operability of the cited
patent by a preponderance of the evidence." Ex parte D, 27 USPQ2d 1067,
1069 (BPAI 1993).2

2 Ex parte D, 27 USPQ2d 1067 (BPAI 1993) is the case cited by the
Appellants. (Appeal Br. 10.)
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The "Appellants have not apprised us of any objective evidence
tending to establish that the [patent's] disclosure, as filed, was non-enabling,
i.e., that the patent specification was insufficient to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation." Id. Their argument does not take the place of evidence in
the record.; nor does their personal knowledge, i.e., what they "know"
(Appeal Br. 10)

CONCLUSION
Based on the aforementioned facts and analysis, I conclude that the
Appellants did not meet their burden to rebut the presumption of operability
of the Camhi. For that reason alone, I would affirm the rejections on that
failure alone. Agreeing with my colleagues' analysis, however, I would
alternatively affirm for their reasons.

msc

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