Ex Parte POSA et al

Board of Patent Appeals and Interferences

Mar 28, 2002

08556746 (B.P.A.I. Mar. 28, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN G. POSA and BARRY H. SCHWAB
____________
Appeal No. 1999-1096
Application No. 08/556,746
____________
ON BRIEF
____________
Before JERRY SMITH, DIXON, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 5, 10, 11, 16 through 24, 27 through 30,
and 35 through 50. In the Examiner's Answer (page 2), the
examiner indicates that claims 42 through 47 are allowed and
claims 19, 27 through 30, and 50 are objected to as being
dependent upon a rejected base claim but would be allowable if
rewritten in independent form. Accordingly, only claims 1, 5,
10, 11, 16 through 18, 20 through 24, 35 through 41, 48, and 49
remain before us on appeal.
Appeal No. 1999-1096
Application No. 08/556,746
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Appellants' invention relates to a video indexing method
which includes separately storing segments of a video program and
displaying them in separate windows to identify program contents,
with at least one of the segments including motion imagery.
Claim 1 illustrates the claimed invention and reads as follows:
1. A video indexing method, comprising the steps of:
recording a video program having a sequence of images;
separately storing information representative of a subset of
the images, the image subset representing segments of the program
which are separated in time; and
displaying images from the subset in separate windows on a
display device as a way of identifying the contents of the video
program, at least one of the windows displaying a segment
including motion imagery.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Yoshimura et al. (Yoshimura) 5,126,851 Jun. 30, 1992
Kano 5,142,302 Aug. 25, 1992
Henmi et al. (Henmi) 5,390,027 Feb. 14, 1995
Takahashi 5,459,582 Oct. 17, 1995
Mankovitz 5,541,738 Jul. 30, 1996
(filed Apr. 12, 1994)
Claims 1, 5, 10, 11, 16 through 18, 21, 24, 48, and 49 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Takahashi in view of Mankovitz.
Claims 20, 22, 23, and 35 through 41 also stand rejected
under 35 U.S.C. § 103 as being unpatentable over Takahashi in
Appeal No. 1999-1096
Application No. 08/556,746
3
view of Mankovitz, but further in view of Kano for claim 22,
Yoshimura for claim 23, or Henmi for claims 20 and 35 through 41.
Reference is made to the Examiner's Answer (Paper No. 15,
mailed January 5, 1999) for the examiner's complete reasoning in
support of the rejections, and to appellants' Brief (Paper
No. 14, filed October 13, 1998) and Reply Brief (Paper No. 17,
filed January 28, 1999) for appellants' arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellants and the examiner. As a consequence of our review, we
will reverse the obviousness rejections of claims 1, 5, 10, 11,
16 through 18, and 20 through 24 and affirm the obviousness
rejection of claims 35 through 41, 48, and 49.
Claim 1 recites a video indexing method including the steps
of "separately storing information representative of a subset of
the images [of a video program being recorded], the image subset
representing segments of the program which are separated in
time," and "displaying images from the subset in separate windows
. . . at least one of the windows displaying a segment including
motion imagery." Claim 17 recites means for accomplishing
essentially the steps of claim 1. Thus, both claims 1 and 17
require storing and displaying in separate windows time separated
Appeal No. 1999-1096
Application No. 08/556,746
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segments of a program being recorded, with at least one segment
containing motion imagery.
The examiner asserts (Answer, page 5) that Takahashi
discloses displaying images as a way of identifying the contents
of a video program, but fails to disclose that the displayed
images are motion images. To remedy this deficiency, the
examiner turns to Mankovitz, stating that "Mankovitz discloses a
video apparatus including the capability of displaying guide
information having video clips comprising moving pictures as menu
data indicating the content of the video program." The examiner
continues that:
It would have been obvious . . . to modify the
Takahashi's video system wherein the displaying means
provided thereof . . . would incorporate the capability
of displaying motion images as menu for identifying the
contents of the video program in the same conventional
manner as shown by Mankovitz. The motivation being to
increase the quality of the displayed images by
providing a more comprehensive imagery to the user as
suggested by Mankovitz.
Appellants argue (Brief, page 7) that Takahashi is limited
to storage of a single still picture subdivided into multiple
images. As support for their assertion, appellants point to
column 8, lines 17-23, of Takahashi wherein Takahashi indicates
that for a fixed image memory capacity, as the number of images
written into the image memory is increased, the picture quality
is degraded. This portion of the disclosure seems to suggest
Appeal No. 1999-1096
Application No. 08/556,746
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that Takahashi is concerned with limiting the amount of
information written into the image memory, whereas substituting
motion pictures would require increasing the amount of
information written into memory.
Mankovitz discloses a program guide for use in future
recordings and not recording new indexing information as part of
a user recording. Thus, Mankovitz alone does not teach the
claimed invention. As to the examiner's motivation for
incorporating Mankovitz's motion images in Takahashi's indexing
system, i.e., "to increase the quality of the displayed images by
providing a more comprehensive imagery to the user," we find no
suggestion in either reference that more comprehensive imagery
would result from the combination nor that such would even be
desirable. The Court has held that:
With respect to core factual findings in a
determination of patentability, however, the Board
cannot simply reach conclusions based on its own
understanding or experience -- or on its assessment of
what would be basic knowledge or common sense. Rather,
the Board must point to some concrete evidence in the
record in support of these findings.
In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.
2001). Thus, we cannot accept bald assertions with no evidence
to support them as motivation for modifying Takahashi.
Accordingly, the examiner has failed to establish a prima facie
of obviousness for claims 1 and 17. Therefore, we cannot sustain
Appeal No. 1999-1096
Application No. 08/556,746
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the rejection of claims 1, 17, and their dependents, claims 5,
10, 11, 16, 18, 21, and 24.
As to independent claim 48 and its dependent claim, 49,
appellants assert (Brief, page 13) that:
According to paragraph 2 of the final Office Action,
these claims are rejected only over Takahashi in view
of Mankovitz though, in the previous Office Action,
Yoshimura was added under §103. Since it is unclear to
Appellants precisely which references are being used to
reject these claims, argument will be made with respect
to Yoshimura in the event that the Examiner intended
its use.
However, we find nothing in the Answer, the Final Rejection, or
the Office Action just prior to the Final Rejection indicating
the addition of Yoshimura for rejecting claims 48 and 49. The
rejection was and continues to be over Takahashi and Mankovitz.
As appellants' sole argument is directed to Yoshimura, they have
failed to point out any deficiency in the applied combination.
Accordingly, we will affirm the rejection of claims 48 and 49.
Furthermore, appellants state (Brief, page 5) that claims 35
through 41 are to stand or fall with, claims 48 and 49.
Consistent therewith, appellants have presented no arguments as
to the separate patentability of claims 35 through 41. Since we
have affirmed the rejection of claims 48 and 49, we will likewise
affirm the rejection of claims 35 through 41.
Regarding claim 20, Henmi teaches identifying portions of a
tape by program information and index numbers, not by images or
Appeal No. 1999-1096
Application No. 08/556,746
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pictures. Therefore, Henmi fails to add any teachings to the
primary combination of Takahashi and Mankovitz which would cure
the deficiencies thereof. Consequently, we cannot sustain the
rejection of claim 20.
For claim 22, the examiner adds Kano to Takahashi and
Mankovitz for a suggestion to include a means for printing the
stored pictures. However, Kano is directed to a printer, not to
a video indexing method, and, therefore, fails to cure the
deficiency of the primary combination. Accordingly, we cannot
sustain the rejection of claim 22.
As to claim 23, the examiner applies Yoshimura for a
suggestion to display the pictures in an array of windows.
However, as Yoshimura discloses extracting and displaying still
pictures similar to Takahashi, Yoshimura fails to provide the
missing motivation for substituting moving images for still
pictures. Therfore, Yoshimura fails to remedy the primary
combination, and we cannot sustain the rejection of claim 23.
CONCLUSION
The decision of the examiner rejecting claims 1, 5, 10, 11,
16 through 18, 20 through 24, 35 through 41, 48, and 49 under
35 U.S.C. § 103 is affirmed as to claims 35 through 41, 48, and
49 and reversed as to claims 1, 5, 10, 11, 16 through 18, and 20
through 24.
Appeal No. 1999-1096
Application No. 08/556,746
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1999-1096
Application No. 08/556,746
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AG/RWK
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