Ex Parte UEDA

Board of Patent Appeals and Interferences

Jun 24, 2003

08893024 (B.P.A.I. Jun. 24, 2003)

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not binding precedent of the Board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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MAMORU UEDA
______________
Appeal No. 2001-2005
Application 08/893,024
_______________
ON BRIEF
_______________
Before THOMAS, KRASS, and BLANKENSHIP, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 10-15 and 17-22. Representative claim
10 is reproduced below:
10. Apparatus for processing a digital video signal,
comprising:
a processor for generating block units of a predetermined
size from said digital video signal and adding block number
information and color field information indicating a phase-shift
of a subcarrier of said digital video signal to said block units,
said block number information indicating the sequential order of
said block units; and
Appeal No. 2001-2005
Application 08/893,024
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a block conversion coder for block conversion coding said
block units to generate coded data as a function of said block
number information and said color field information.
The following references are relied on by the examiner:
Oguro 5,349,384 Sep. 20, 1994
(filing date Dec. 30, 1992)
Montgomery et al.
(Montgomery) 5,831,679 Nov. 3, 1998
(effective filing date Sept. 18, 1992)
Claims 10-15 and 17-22 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness, the examiner relies upon Oguro in
view of Montgomery.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs, the final rejection,
the advisory action and the answer for the respect details
thereof.
OPINION
We reverse.
At the outset, we note that apparatus independent claim 10
mirrors the subject matter of method independent claim 17. Based
upon the arguments presented to us, the only dispute relates to
the feature of these claims relating to the color field
Appeal No. 2001-2005
Application 08/893,024
3
information "indicating a phase-shift of a subcarrier of said
digital video signal."
The arguments presented by appellant in the brief and reply
brief do not argue against the combinability of Oguro and
Montgomery within 35 U.S.C. § 103. Moreover, we agree with the
examiner's understanding that Oguro teaches everything of
representative claim 10 on appeal except for the disputed feature
noted earlier. Based upon our study of the examiner's positions
with respect to Montgomery in the final rejection, the advisory
action and the answer, we conclude that there is no teaching or
suggestion of the disputed feature within this reference.
Based upon our study of each of the portions urged by the
examiner as teaching or suggesting the disputed feature, we
conclude that there is no such teaching or suggestion. The
discussion referenced by the examiner at column 5 (and we note
the bottom of column 8) of this reference does recognize a known
phase relationship between a data carrier with a color frame as
to the first embodiment of the transmitter in Figure 1 of this
reference. Yet, this feature alone does not come close to
indicating a phase-shift of a subcarrier in association with
color field information coded for digital video information.
The examiner's reference to the phase synch markers at column 10,
Appeal No. 2001-2005
Application 08/893,024
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lines 17-24, which are further developed according to the
discussion at column 12, lines 20-39, and the discussion at the
bottom of column 11 of Montgomery also fail to teach or suggest
within Montgomery the coding within a color field information
portion any data indicating a phase-shift of a subcarrier of the
digital video information. All of these noted locations relate
to the mere synchronization of data and not any phase-shift of a
subcarrier related to color field information. Basically, the
phase-synchs taught in Montgomery as a whole and these latter
noted locations relied on by the examiner clearly indicate to us
that phase synchronization is not a phase-shift as claimed.
Our study of Montgomery therefore is consistent with the
arguments presented by appellant at pages 5 and 6 of the
principal brief on appeal and the similar arguments raised at
pages 2 and 3 of the reply brief. We also find ourselves
generally in agreement with appellant's urging at the top of page
3 of the reply brief that Montgomery does not disclose the
addition of timing information (such as phase-shift information
of a subcarrier associated with color field information as
claimed) to the digital video information during an encoding or
generation of video block units as in claim 10. The discussion
Appeal No. 2001-2005
Application 08/893,024
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of phase compensation noted by the examiner at the top of column
7 of Montgomery is in the context of a receiver in Figure 2 and
not the transmitter in Figure 1, and it is not in the context of
encoding or generation of digital video information.
NEW REJECTIONS UNDER 37 CFR § 1.196(b)
Claims 10-15 and 17-22 are rejected under the enablement and
written description portions of 35 U.S.C. § 112, first paragraph.
The disputed language of independent claims 10 and 17 on appeal
"indicating a phase-shift of a subcarrier" of the digital video
signal was added by the amendment filed on May 13, 1999. Our
study of the specification as filed, the drawings and the
original claims leads us to conclude there is no disclosure at
all of any specific teaching or showing of color field
information "indicating a phase-shift of a subcarrier" to the
extent presently recited in each of the claims on appeal. Thus,
there is a clear absence of any enablement for this feature and
any written description therefore from the specification as a
whole as originally filed.
In summary, we have reversed the outstanding rejection of
claims 10-15 and 17-22 under 35 U.S.C. § 103. Additionally, we
have introduced rejections of these claims under the enablement
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Application 08/893,024
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and written description portions of 35 U.S.C. § 112, first
paragraph. These two new rejections are entered within 37 CFR
§ 1.196(b).
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2001-2005
Application 08/893,024
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Howard B. Blankenship )
Administrative Patent Judge )

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