Ex Parte Spraque

Board of Patent Appeals and Interferences

Jun 17, 2004

08329345 (B.P.A.I. Jun. 17, 2004)

1
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not binding precedent of the Board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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PETER J. SPRAGUE
______________
Appeal No. 2003-0593
Application 08/329,345
_______________
ON BRIEF
_______________
Before THOMAS, KRASS, and GROSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
alleged final rejection of claims 33-64. Only claims 33-35,
38-41, 43-46, 49-51, 54-57, 59-62 and 64 are finally rejected.
Representative claim 33 is reproduced below:
33. In a television transmitter, a method comprising:
generating a composite video signal, including a video
signal and an audio signal, wherein said audio signal corresponds
to the audio portion of said composite video signal, said
composite video signal containing a plurality of news items, a
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Application 08/329,345
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given news item of said plurality of news items being defined
by a respective beginning and ending of said given news item;
generating a time advanced text data stream in digital form
substantially corresponding to the spoken words of said audio
portion of said composite video signal, said time advanced text
data stream being advanced in time so that substantially all of
said time advanced test data stream in digital form corresponding
to said given news item is generated before the beginning of said
given news items; and
combining said generated composite video signal and said
time advanced text data stream.
The following references are relied on by the examiner:
Baer 4,310,854 Jan. 12, 1992
Young 4,706,121 Nov. 10, 1987
Kim 5,526,130 June 11, 1996
(filing date Sep. 7, 1993)
All above-noted claims finally rejected stand rejected under
35 U.S.C. § 103. As evidence of obviousness as to claims 33-35,
38-41, 43-46, 49-51, 54-57, 59-62 and 64, the examiner relies
upon Kim in view of Baer. As to claims 33-35, 38, 49-51 and 54,
the examiner also relies upon Young in view of Baer.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
Generally, for the reasons set forth by appellant in the
brief, we reverse the rejection of all claims on appeal.
Appeal No. 2003-0593
Application 08/329,345
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At the outset, we note that independent method claim 33
has a corresponding apparatus claim 49. Both of these claims
relate to the transmitter portion of the disclosed invention.
On the other hand, method independent claim 39 has a corres-
ponding apparatus version in claim 55. Both of these claims
relate to the receiver portion of the disclosed invention.
Method independent claim 44 has a corresponding apparatus
independent claim 60 which recite both the transmitter and
receiver portions, substantially identical to the respective
subject matter of independent claims 33, 39 or 49, 55,
respectively.
In this manner each independent claim requires essentially
the same corresponding subject matter as set forth in the
transmitter independent claims 33, 49. The lengthy preambular
portion of receiver independent claims 39, 55 recites the
subject matter of independent claims 33 and 49 relating to
the transmitter portion of appellant's disclosed invention.
If we assume for the sake of argument that Kim is properly
combinable with Baer and that Young is properly combined with
Baer within 35 U.S.C. 103, we agree with appellant's analysis
that the combination does not meet the generating a time advanced
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Application 08/329,345
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text data stream clause of the claims on appeal as best stated at
pages 8 and 9 of the brief. The program titles of Kim and/or the
program schedule information of Young may be properly considered
as "news items" to the extent recited in the claims on appeal.
There is no dispute that program scheduling information of this
nature is advanced in time before the beginning of given news
items as recited in the claims on appeal. However, these
references do not teach the additional requirements that the
claimed time advanced text data stream of the so-called "news
items" "substantially correspond to the spoken words of the audio
portion of the composite video signal stream" as set forth in
each independent claim on appeal.
Baer, on the other hand, teaches a captioning system that
does in fact substantially correspond to the spoken words of an
audio portion of a composite video signal stream. If we consider
that all audio information in a composite audio plus video data
stream in Baer comprises news items of the type claimed, Baer's
captioning system does not generate advanced in time information
"before the beginning of the given news item" as required by each
independent claim on appeal. Significantly, the captioning
information is contemporaneous at best or slightly behind in
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Application 08/329,345
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time to the beginning of the actual news item. Therefore, the
combination of Kim and Baer as well as the separate combination
of Young and Baer does not meet the subject matter of each
independent claim on appeal.
It also appears to us that the artisan would not have
combined the subject matter of the respective paired references
within 35 U.S.C. § 103. The examiner has provided us no
persuasive line of reasoning to extend the closed captioning
teachings of Baer to Kim's/Young's advanced in time program
information since this advanced in time program information has
no audio component associated with it.
In this regard, we do not agree with the examiner's views
best expressed in the paragraph bridging pages 9 and 10 of the
answer:
It is submitted that both Kim and Young teach the use
of text data in advance and which is prepared by
broadcast station including channel, title and time
information of news items to be broadcasted. Since the
title or channel of text data may later be read by a
reporter for a give (sic) news item The (sic)
combination of Kim and Baer or Young and Bear (sic)
teach the limitation of using key word corresponding to
spoken word to program a VTR to record a given news
item. (emphasis added)
This presents for our review an improper analysis of the
combinability of the respective references relied upon within
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Application 08/329,345
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35 U.S.C. § 103. The examiner has thus not advanced a line of
reasoning to us that it would have been obvious for the artisan
to have combined the respective teachings of Kim and Baer and
Young and Baer. Instead, the examiner has presented us with a
speculative line of reasoning which is not the standard of
combinability within 35 U.S.C. § 103.
In view of the foregoing, the decision of the examiner
rejecting each independent claim on appeal and its respective
dependent claims is therefore reversed. Accordingly, the
decision of the examiner is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )

Appeal No. 2003-0593
Application 08/329,345
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