Ex parte Tognazzini

Board of Patent Appeals and Interferences

Nov 22, 2000

08608372 (B.P.A.I. Nov. 22, 2000)

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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today was not written for publication and is not binding
precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte BRUCE TOGNAZZINI
________________
Appeal No. 1998-2541
Application No. 08/608,372
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ON BRIEF
________________
Before HAIRSTON, JERRY SMITH, and LALL, 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 2, 5, 9, 12, 15-17 and
19-21. Claims 1, 3, 6-8, 13 and 14 have been cancelled.
Claim 18 has been indicated to be allowable. Claims 4, 10 and
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11 stand withdrawn from consideration as being directed to a
nonelected invention. An amendment after final rejection was
filed on September 25, 1997 and was entered by the examiner.
The disclosed invention pertains to a method and
apparatus for recording audio and/or video information
(program material) after the point in time at which the
program material occurred. Specifically, the program material
is first stored in a memory which holds the program material
for a period of time after the material has occurred. The
data in the memory can then be recorded at a point in time
after the information first occurred and was stored in memory.
Representative claim 2 is reproduced as follows:
2. Apparatus for recording program material from a
source of program material from a beginning, after the
beginning of the program material has passed, comprising:
a. a recording device;
b. a delayed recording circuit configured to introduce
delay between said source and said recording device and to
activate said recording device to record information from said
source from the beginning after said delay; and
d. a start-of-program detector which detects the start
of a program to be recorded.
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The examiner relies on the following references:
Moe 5,345,430 Sep. 6, 1994
Logan et al. (Logan) 5,371,551 Dec. 6, 1994
Claims 9, 12, 15-17 and 19-21 stand rejected under 35
U.S.C. § 102(b) as being anticipated by the disclosure of Moe.
Claims 2 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Moe in view of Logan.
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 anticipation and obviousness relied upon by the
examiner as support for the 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.
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It is our view, after consideration of the record before
us, that the disclosure of Moe fully meets the invention as
set forth in claims 15-17, 19 and 20. We reach the opposite
conclusion with respect to claims 9, 12 and 21. We are
further of the view that the evidence relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 2 and 5. Accordingly, we
affirm-in-part.
We consider first the rejection of claims 9, 12, 15-17
and 19-21 under 35 U.S.C. § 102(b). Anticipation is
established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). The
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examiner indicates how he read these claims on the disclosure
of Moe [answer, pages 3-7].
With respect to independent claim 9, appellant argues
that Moe has no element for “identifying said beginning [of
one type of information].” The examiner argues that the mark
in Moe which denotes the ending of the material to be recorded
also marks the beginning of the material to be recorded since
the material is stored as an endless loop [answer, page 9].
We do not agree with the examiner’s position. When the
mark in Moe is designated, the Moe system begins recording the
endless tape from the point just after the mark until the mark
is reached, which means the entire endless tape is recorded.
Thus, a specific point on the endless tape is identified, but
not the beginning of the material it is desired to record.
The phrase “identifying the beginning” in claim 9 refers to
the beginning of one type of information and not to the
beginning of an area in memory to be recorded. Therefore, we
agree with appellant that there is no element in Moe for
identifying the beginning of one type of information to be
recorded from the beginning. Accordingly, we do not sustain
the anticipation rejection of independent claim 9 or of claim
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12 which depends therefrom. Since independent claim 21 has
the same recitation as claim 9, we also do not sustain the
anticipation rejection of claim 21.
With respect to independent claim 15, appellant argues
that Moe does not “cause said recording device to continue to
record information delayed by said delayed recording circuit
after a stop button has been pushed until all information
delayed up until the time the stop button is pushed has been
recorded” [brief, page 5]. We do not agree. The recovery
button in Moe corresponds to the claimed stop button. When
the recovery button in Moe is pushed, all the material which
has been delayed on the endless tape loop is recorded
beginning at the point just after the location of the stop
mark until the stop mark is reached. This results in the
recorder continuing to record delayed information until all
information on the tape has been recorded ending with the
point where the stop button was pushed. In our view, the
delayed recording circuit of Moe is configured to perform
exactly as recited in claim 15. Therefore, we sustain the
anticipation rejection of claim 15.
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With respect to dependent claim 16, appellant argues that
Moe does not mark the location in memory where data was last
recorded when the stop button was pushed using a computer.
Since Moe discloses an endless tape loop, the location on the
tape loop begins just after the stop mark. Since Moe also
discloses that a random access memory could replace the
endless tape loop, Moe discloses that an address pointer would
indicate this same location in memory. Finally, the control
circuitry of Moe’s Figure 5 is a computer as broadly recited.
With respect to claim 17, appellant argues that a computer in
Moe does not stop the recording device. As noted above,
however, Moe discloses a computer in Figure 5, and this
computer stops the recording device in the manner recited in
claim 17. With respect to dependent claim 19, we agree with
the examiner that switch 16 of Moe constitutes a record
immediate button as recited in the claim. With respect to
dependent claim 20, the recovery button of Moe also operates
as the claimed reset button. Since we find that Moe fully
meets all the limitations of claims 15-17, 19 and 20, we
sustain the anticipation rejection of these claims.
We now consider the rejection of claims 2 and 5 under
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35 U.S.C. § 103 as unpatentable over the teachings of Moe and
Logan. 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 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
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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
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 claims 2 and 5, the examiner notes that
Moe fails to teach a start of program detector. The examiner
cites Logan as teaching a clock/calendar unit for
automatically recording programs in a recorder at
preprogrammed times. The examiner asserts the obviousness of
combining the teachings of Moe and Logan. Appellant argues
that the claimed detection of the start of a program to be
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recorded in a delayed recording system as recited in claim 2
is quite different from a clock and a calendar to start
recording at a scheduled time as taught by Logan.
We agree with appellant. The conventional timer
recording of Logan which permits future program material to be
recorded based on time has absolutely no relationship to the
recording of delayed program material as taught by Moe and as
recited in the appealed claims. Therefore, there would be no
basis for applying Logan’s conventional timer recording to
Moe’s system for recording material which has previously been
stored. Therefore, we do not sustain the examiner’s rejection
of claims 2 and 5 based on the teachings of Moe and Logan.
In summary, the anticipation rejection based on Moe has
been sustained with respect to claims 15-17, 19 and 20, but
has not been sustained with respect to claims 9, 12 and 21.
The obviousness rejection of claims 2 and 5 has not been
sustained. Accordingly, the decision of the examiner
rejecting claims 2, 5, 9, 12, 15-17 and 19-21 is affirmed-in-
part.
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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).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
JS/RWK
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