Ex Parte Voltz

Board of Patent Appeals and Interferences

Nov 25, 2003

08831731 (B.P.A.I. Nov. 25, 2003)

1 Application for patent filed April 1, 1997, entitled
"Simulated Burst Gate Signal And Video Synchronization Key For
Use In Video Recording."
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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and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CHRISTOPHER D. VOLTZ

Appeal No. 2002-0489
Application 08/831,7311

ON BRIEF

Before HAIRSTON, BARRETT, and BARRY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the final rejection of claims 1-63.
We affirm-in-part.
Appeal No. 2002-0489
Application 08/831,731
2 The word "external" underlined in claim 1 was proposed to
be deleted by amendment after final rejection (attached to Paper
No. 21). The amendment was denied entry by an Advisory Action
(Paper No. 22), stating that this presented a new limitation
requiring further consideration. Nevertheless, since there is no
rejection based on the word "external," and since we consider the
word to be an obvious error which only makes the claim difficult
to address, we will consider claim 1 to be without the word
"external" and recommend that the examiner allow entry of the
amendment deleting the term.
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BACKGROUND
The invention relates to a device having a programmable
horizontal sync pulse to simulate a burst gate signal. A burst
gate signal is a signal that envelops the color burst signal of a
composite video signal. The burst gate signal is provided to a
phase-locked-loop (PLL) device to set a window during which the
PLL device locks onto the 3.58 MHz frequency of the color burst.
The PLL device provides a continuous subcarrier reference
frequency output to a comb filter decoder which separates the
luminance (Y) and chrominance (C) components of a composite video
signal. Appellant states that prior art video decoder have used
internal burst gate signals (specification, p. 3). The decoder
of the present invention provides an external simulated burst
gate signal which allows for color separation circuitry external
to the video decoder (specification, p. 4).
Claim 1 is reproduced below.2
1. An appliance using a composite video signal having
a color burst, the composite video signal including a
Appeal No. 2002-0489
Application 08/831,731
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luminance signal and a chrominance signal, the appliance
comprising:
a video decoder for decoding the luminance signal and
the chrominance signal, the chrominance signal including a
color burst, the video decoder providing a programmable
decoded horizontal sync pulse; and
a controller for programming the programmable decoded
horizontal sync pulse of the video decoder to simulate an
external burst gate signal for enveloping a color external
burst,
wherein the external burst gate signal is asserted at a
first suitable timing location prior to the color burst and
the external burst gate signal is deasserted at a second
suitable timing location after the color burst, and
wherein the external burst gate signal provides a
suitable width to effectively lock onto the color burst.
The examiner relies on the following references:
Brown 3,716,795 February 13, 1973
Burrows 4,620,219 October 28, 1986
Romesburg et al. (Romesburg) 4,864,399 September 5, 1989
MC141622 Motorola Semiconductor Technical Data, Advance
Information, Advanced Comb Filter-II (AFC-II), Motorola,
Inc. (2/95) (MC141622).
MC44144 Motorola Semiconductor Technical Data, Advance
Information, Subcarrier Phase-Locked-Loop, Motorola, Inc.
(printed 4/94 (on back cover)) (MC44144).
SAA7111 Video Input Processor (VIP) Data Sheet, Philips
Semiconductors, May 15, 1996 (Philips).
Greg Rogers, Guide to Comb Filters: Y/C Separation,
CyberTheater: The Internet Journal of Home Cinema,
http://www.cybertheater.com/Tech_Reports/Comb_Filter_Tut/-
guide_comb_filters.html (printout dated 6/12/96) (Rogers).
Claims 1-3, 5, 6, 8, 12-14, 31, and 33-36 stand rejected
under 35 U.S.C. § 102(a) as being anticipated by Philips.
Appeal No. 2002-0489
Application 08/831,731
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Claim 4 stand rejected under 35 U.S.C. § 103(a) over
Philips, further in view of MC141622.
Claims 7, 9, and 32 stand rejected under 35 U.S.C. § 103(a)
over Philips, further in view of MC44144.
Claim 10 stands rejected under 35 U.S.C. § 103(a) over
Philips, further in view of Rogers and Romesburg.
Claim 11 stands rejected under 35 U.S.C. § 103(a) over
Philips, Rogers, and Romesburg, further in view of Brown.
Claim 15 stands rejected under 35 U.S.C. § 103(a) over
Philips, further in view of Brown.
Claims 16-18, 20, 21, 23, 27-29, 40-43 and 53-57 stand
rejected under 35 U.S.C. § 103(a) over Philips and Burrows.
Claim 19 stands rejected under 35 U.S.C. § 103(a) over
Philips and Burrows, further in view of MC141622.
Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a)
over Philips and Burrows, further in view of MC44144.
Claim 25 stands rejected under 35 U.S.C. § 103(a) over
Philips and Burrows, further in view of Rogers and Romesburg.
Claim 26 stands rejected under 35 U.S.C. § 103(a) over
Philips, Burrows, Rogers, and Romesburg, further in view of
Brown.
Claims 37-39 stand rejected under 35 U.S.C. § 103(a) over
Philips.
Appeal No. 2002-0489
Application 08/831,731
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Claims 44-46, 48, 49, and 58-60 stand rejected under
35 U.S.C. § 103(a) over Philips and Rogers.
Claim 47 stands rejected under 35 U.S.C. § 103(a) over
Philips and Rogers, further in view of MC44144.
Claims 50 and 61 stand rejected under 35 U.S.C. § 103(a)
over Philips and Rogers, further in view of Brown.
Claims 51 and 62 stand rejected under 35 U.S.C. § 103(a)
over Philips and Rogers, further in view of Romesburg.
Claims 52 and 63 stand rejected under 35 U.S.C. § 103(a)
over Philips, Rogers, and Romesburg, further in view of Brown.
Claim 16 stands additionally rejected under 35 U.S.C.
§ 103(a) over Philips, Burrows, and Rogers.
Claim 30 stands rejected under 35 U.S.C. § 103(a) over
Philips, Burrows, and Rogers, further in view of Brown.
The final rejection of claims 1-63 under 35 U.S.C. § 112,
first paragraph, based on lack of written description is
withdrawn (examiner's answer, page 8).
We refer to the final rejection (Paper No. 20) (pages
referred to as "FR__") and the examiner's answer (Paper No. 25)
(pages referred to as "EA__") for a statement of the examiner's
rejection, and to the appeal brief (Paper No. 24) (pages referred
to as "Br__") for a statement of appellant's arguments
thereagainst.
Appeal No. 2002-0489
Application 08/831,731
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OPINION
Grouping of claims
Appellant argues independent claim 1 as representative of
claims 1-3, 5, 6, 8, 12-14, 31, and 33-36 rejected under § 102(a)
over Philips. Thus, the claims in this group stand or fall
together with claim 1. However, since the argument section of
the brief also mentions claims 2 and 31, these claims will also
be addressed to the extent they are argued.
Appellant argues independent claims 16 and 58 as
representative of claims 4, 7, 9-11, 15-30, 32, and 37-63
rejected under § 103(a). Since claims 16-18, 20, 21, 23, 27-29,
40-43, and 53 stand rejected over Philips and Burrows, we treat
this group of claims to stand or fall together with claim 16.
Since claims 44-46, 48, 49, and 58-60 stand rejected over Philips
and Rogers, we treat this group of claims to stand or fall
together with claim 58.
The obviousness rejections of the dependent claims over
additional references are not argued. Since 37 CFR
§ 1.192(c)(8)(iii) (2000) requires the appeal brief to point out
the error in each rejection and appellant has not argued the
separate patentability of these claims, these claims fall
together with the representative claim (i.e., they are
unpatentable if the representative claim is unpatentable). The
claims do not necessarily stand together with the representative
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Application 08/831,731
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claim (i.e., are not patentable if the representative claim is
patentable) because the added reference may cure the deficiency
in the rejection of the representative claim.
Claims 1-15 and 31-39
Claims 1, 3-15, and 35-39
There is no question that Philips teaches "[a]n appliance
using a composite video signal having a color burst, the
composite video signal including a luminance signal and a
chrominance signal," as recited in the preamble of claim 1.
There is also no question that Philips teaches "a video decoder
for decoding the luminance signal and the chrominance signal, the
chrominance signal including a color burst, the video decoder
providing a programmable decoded horizontal sync pulse," as
recited in claim 1. The video input processor (VIP) of Philips
is a video decoder (p. 2 under "GENERAL DESCRIPTION") which
provides a programmable decoded horizontal sync pulse HS (p. 7
for symbol "HS"; p. 27, Fig. 19; p. 37, "Horizontal sync start"
and "Horizontal sync stop"; p. 41, Tables 15 & 16). Further,
there is no question that the VIP of Philips has "a controller
for programming the programmable decoded horizontal sync pulse of
the video decoder," as recited in claim 1, because the start and
end of the pulse can be programmed (id.).
Appeal No. 2002-0489
Application 08/831,731
3 See footnote 2.
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The issue involves the language "to simulate an external
burst gate signal for enveloping a color burst" 3 and the effect
of the "wherein" clauses. The examiner finds that Fig. 19 shows
the horizontal sync output signal HS enveloping the color burst
signal and being asserted before the color burst and being
deasserted after the color burst and, therefore, simulates a
burst gate signal (FR4-5). Since appellant's Fig. 9 is clearly a
copy of curves in Fig. 19 of Philips with the labels removed or
changed, and shows the color burst enveloped by the horizontal
sync pulse HS in the same way as Fig. 19, the examiner makes a
prima facie case of anticipation.
Appellant argues that the HS signal in Philips is not an
"external burst gate signal" because it does not have a suitable
width to lock onto the color burst, Philips does not disclose
simulating an external burst gate signal for enveloping a color
burst, and the fact that the HS signal starts before the color
burst and ends after the color burst does not make it a burst
gate signal (Br11-12). It is argued that "[a]ny described
programmable functionality in Philips of the HS signal alone
fails to anticipate the specific claimed subject matter of
programming the horizontal sync pulse to simulate an external
burst gate signal for enveloping a color burst" (Br11-12).
Appeal No. 2002-0489
Application 08/831,731
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Initially, there is an issue of claim interpretation.
Claim 1 recites "a controller for programming the programmable
decoded horizontal sync pulse of the video decoder to simulate an
external burst gate signal for enveloping a color burst." We
interpret "for programming" to be a statement of intended use,
i.e., the controller must be structurally capable of programming
the sync pulse, rather than a positive limitation that the sync
pulse is actually programmed. Under this interpretation, the
"wherein" clauses merely further describe the burst gate signal
when programmed as intended. Statements of intended use are not
structural limitations that distinguish over the prior art where
the prior art is capable of that use. See In re Pearson,
494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush,
477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey,
370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). We think there
is no question that the horizontal sync pulse HS of Philips is
capable of being programmed "to simulate an external burst gate
signal for enveloping a color burst" no matter how appellant
defines the burst gate signal since the start and stop positions
of the HS signal in Philips are both programmable. It is also
noted that the "external burst gate signal" is a statement of
intended use for the horizontal sync pulse since no actual use of
the burst gate signal is recited. The programming of HS is not
like programming a computer to perform a new function--it is
Appeal No. 2002-0489
Application 08/831,731
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setting start/stop positions which are meant to be set.
Essentially what is being claimed is a (possible) new use of an
old device, i.e., the use of the Philips decoder, with its
programmable horizontal sync pulse HS, as a burst gate signal
generator. New and unobvious uses of old devices must be claimed
as process claims. 35 U.S.C. § 100(b). Another claim
interpretation issue is that the claimed "external burst gate
signal" is merely a label and the nomenclature alone does not
distinguish over the horizontal sync output signal HS in Philips.
Assuming that the external burst gate signal limitations are
interpreted to be structural limitations, appellant has not shown
how the limitations define over HS shown in Fig. 19 of Philips.
Appellant's Fig. 9 is a copy of the curves in Fig. 19 of Philips
with the labels removed or changed, and shows the color burst
enveloped by the horizontal sync pulse HS in the same way as
Fig. 19. If appellant's Fig. 9 shows an appropriate simulated
burst gate signal, then so does Fig. 19 of Philips or, at least,
appellant has not explained why it does not. That the horizontal
sync output signal HS in Philips is not called a simulated
external burst gate signal is mere matter of labels or intended
use. Appellant does not explain why the HS signal shown in
Fig. 19 Philips cannot function as a burst gate signal, for
example, by pointing to claimed characteristics of the burst gate
signal not present in HS. Appellant does not explain why the
Appeal No. 2002-0489
Application 08/831,731
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horizontal sync HS signal in Fig. 19 of Philips does not have a
suitable width to lock onto the color burst. While the
specification discloses that the "simulated burst gate signal is
preferably not so far back in timing as to intersect the sync
region and not so far forward in timing as to intersect the
active video region" (specification, p. 16, lines 15-17), this is
not recited in claim 1, nor is it argued. Appellant has not
presented convincing arguments why the horizontal sync signal HS
in Fig. 19 of Philips cannot be a simulated burst gate signal.
Appellant argues that the examiner's view of the HS signal
as a burst gate signal is inconsistent with the showing in
Philips of a burst gate accumulator which generates an internal
burst gate signal (Br12) and "Philips cannot disclose its
external HS signal as a burst gate signal while also implicitly
disclosing an internal burst gate signal" (Br12).
We agree with the examiner's response (EA8-9) that since the
horizontal sync signal HS is output from the VIP decoder, it is
an external signal. Claim 1 does not require the decoder to use
the HS signal to lock onto the color burst or to be used for
decoding in the decoder; in fact, claim 1 only requires that the
horizontal sync signal simulates an external burst gate signal
without requiring that it ever be used. The fact that
appellant's Fig. 10 shows the decoding being done in the digital
comb filter 288 external to the video decoder 244 using the
Appeal No. 2002-0489
Application 08/831,731
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external burst gate signal is not claimed. Moreover, Fig. 10
appears inconsistent with claim 1 because the decoding is not
done in the video decoder, as claimed. The decoder is used only
as a burst gate generator.
In summary, we are not persuaded of error in the examiner's
rejection. The rejection of claims 1, 3, 5, 6, 8, 12-14, 35, and
36 is sustained. The rejections of dependent claims 4, 7, 9-11,
15, and 37-39 have not been argued and, accordingly, the
rejections of these claims are sustained.
Claim 2
Appellant argues (Br14) that Philips fails to disclose the
claimed "video circuitry external to the video decoder and
receiving the horizontal sync pulse programmed to simulate the
external burst gate signal." Appellant argues that the examiner
errs in stating that the decoder of Philips is "suitable" for any
video circuitry (Br14).
The examiner notes that Philips discloses, at page 3, that
the VIP decoder has applications in desktop video applications
which would require external video circuitry (EA10).
We agree with the examiner that the stated applications of
the integrated circuit video decoder (VIP) of Philips in desktop
video, multimedia, digital television, image processing, and
video phone (Philips, p. 3) teach that the integrated circuit VIP
Appeal No. 2002-0489
Application 08/831,731
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chip is attached to video circuitry external to the video
decoder. Since the horizontal sync signal HS is output from the
circuit (Fig. 2, pin 38), the signal HS is received by the
external circuitry of which the VIP integrated circuit is a
component. The rejection of claim 2 is sustained.
Claims 31-34
Appellant contests (Br14-15) the examiner's statement that
"[i]t is well known that the horizontal sync is used as a
simulated burst gate signal" (FR9). Appellant argues that this
statement has been strongly traversed and the examiner has not
made of record any reasonable support for his view (Br15). It is
argued that a horizontal sync pulse is separate from a burst gate
signal (Br15).
The examiner responds that the book Television Engineering
Handbook, edited by K. Blair Benson (McGraw-Hill, Inc. 1986), of
record, "teaches that it is [sic, was] well known in the art the
technique of utilizing the horizontal sync pulse signal to derive
(simulate) the burst gating pulse signal" (EA10). It is argued
that although separate horizontal sync and burst gate signals are
used, the "simulated" burst gate signal can be represented by the
horizontal sync rather than by an external decoder (EA10-11).
We are not convinced by the examiner's reasoning, as stated.
Benson teaches that the gating pulse can be derived from the
Appeal No. 2002-0489
Application 08/831,731
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trailing edge of the horizontal sync pulse (p. 13.141). Deriving
a burst gate signal from the horizontal sync pulse is not the
same thing as using the horizontal sync pulse itself to simulate
the burst gate signal, as stated. However, the horizontal sync
output signal HS in Philips is programmable in position from the
horizontal sync pulse as shown in Fig. 19. In view of Benson's
teaching that it was known to derive the burst gate signal from
the horizontal sync pulse, it would have been obvious to one
skilled in the art of designing burst gate signal circuitry to
program the horizontal sync output signal HS to be used as a
burst gate signal. Benson also teaches the parameters for the
burst gate signal (the leading and trailing edges of the burst
should be passed and video information should be excluded).
Nevertheless, the issue is whether the subject matter of
claim 31 is anticipated, not whether the examiner was correct in
stating that it was well known to use a horizontal sync signal as
a simulated burst gate signal. As noted in the discussion of
claim 1, if the horizontal sync signal has characteristics that
simulate a burst gate signal, it makes no difference what name it
is given. Claim 31 is different from claim 1. However, since
appellant's brief does not argue the merits of the rejection, as
required by 37 CFR § 1.192(c)(8)(iii), so that the examiner has a
chance to respond, we will not address the merits of claim 31.
The rejection of claims 31, 33, and 34 is sustained. Since the
Appeal No. 2002-0489
Application 08/831,731
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rejection of claim 32 under § 103(a) has not been argued, the
rejection of claim 32 is sustained.
Claims 16-30, 40-43, and 53-57
The examiner finds that Philips teaches the limitations of
claim 16 except for "a) claimed counter circuitry for generating
and providing a simulated external burst gate; [and] b) claimed
counter circuitry externally coupled to the video decoder"
(FR19). The examiner finds that Burrows teaches that a
conventional way to determine a burst gate signal was to time an
interval from the leading or trailing edge of the horizontal sync
pulse, that it was well known to use counters to time an
interval, and, accordingly, it would have been obvious to use
counter circuitry for generating and providing a simulated burst
gate signal (FR20). The examiner further finds that Philips
teaches a clock generation circuit separate from the decoder and,
therefore, it would have been obvious to couple the counter
circuitry externally to the video decoder to "recognize the
benefit[s] of versatil[ity] and flexibility" (FR20).
Appellant argues that the counter circuitry internal to a
video decoder in Burrows is limited to use with video circuitry
internal to a video decoder and to use with a traditional burst
gate signal, whereas counter circuity external to a video decoder
can use the simulated burst gate signal for video circuitry
Appeal No. 2002-0489
Application 08/831,731
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external to the video decoder, such as a standalone external
video decoder (Br17). It is argued that the examiner fails to
provide any objective reason to combine the references (Br17).
It is argued that the examiner's ignores that any need to
generate a burst gate signal is already met by the prior art
technique of generating a traditional burst gate signal (Br17).
The examiner responds by citing In re McLaughlin,
443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The examiner's response is not helpful. Unlike claim 1,
which claims an intended use for the horizontal sync pulse (to
simulate an "external burst gate signal") output from the
decoder, claim 16 recites "counter circuitry externally coupled
to said video decoder for generating and providing a simulated
external burst gate signal by counting cycles of the pixel clock
after the programmable decoded horizontal sync pulse." Thus, the
rejection must deal with this external counter circuitry for
generating a burst gate signal. The examiner relies on the
horizontal sync signal HS in Philips as the claimed "programmable
decoded horizontal sync pulse" and as the "simulated external
burst gate signal" (FR18-19). However, claim 16 requires the
"simulated external burst gate signal" to be generated by the
counter circuitry counting cycles after the programmable
horizontal sync pulse; it is not the horizontal sync pulse. For
this reason, the rejection is confusing. The examiner also finds
Appeal No. 2002-0489
Application 08/831,731
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that Burrows teaches generating a burst gate pulse by timing an
interval from either the leading or trailing edge of the
horizontal synchronization pulse (FR20). Thus, the examiner
relies on the background description of Burrows rather than the
invention in Burrows. We agree that Burrows teaches generating a
burst gate signal by counting cycles after a horizontal sync
pulse. However, the rejection never really comes to grips with
the limitations of the counter circuitry external to the video
decoder and using cycles of the pixel clock from the video
decoder. Although the examiner states that the external counter
circuitry would have been obvious for "the benefit[s] of
versatil[ity] and flexibility" (FR20), we do not find any
suggestion for this in Burrows. It is not explained why the
video decoder would require an external burst gate signal. We
conclude that the examiner has failed to establish a prima facie
case of obviousness. The rejection of claims 16-18, 20, 21, 23,
and 27-29, 40-43, and 53 over Philips and Burrows is reversed.
The references MC141622, MC44144, Rogers, Romesburg, and Brown,
applied to various dependent claims, do not overcome the
deficiencies of Philips and Burrows. Accordingly, the rejections
of claims 19, 22, 24-26, and 54-57 are reversed.
Although appellant does not address the rejection of
claim 16 over Philips, Burrows, and Rogers (FR36-39), we conclude
that Rogers does not overcome the deficiencies of Philips and
Appeal No. 2002-0489
Application 08/831,731
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Burrows. Thus, the rejection of claim 16 is reversed. The Brown
reference, applied to the rejection of claim 30, does not
overcome the deficiencies of Philips, Burrows, and Rogers. The
rejection of claim 30 is reversed.
Claims 44-52 and 58-63
The examiner states that "Claim 58 is substantially the same
as claim 44 and is rejected for the same reasoning" (FR35).
Appellant argues that claim 44 and claim 58 address
different subject matter altogether (Br18-19). It is argued that
the "timing envelope for a video signal" of claim 58 is not the
same thing as an "external burst gate signal" in claim 44 (Br19).
The examiner contends that claim 58 is a broader version of
claim 44, where the "timing envelope for a video signal" of
claim 58 is a broader version of the "external burst gate signal
. . . enveloping the color burst" in claim 44, and because both
the timing envelope and the burst gate signal are derived from
the horizontal sync output signal (EA12-13).
It would have been helpful if appellant had pointed out
where the "timing envelope" is described in the specification
since we do not find that terminology. Appellant argues that the
"timing envelope for a video signal" of claim 58 is not the same
thing as an "external burst gate signal . . . enveloping the
color burst" in claim 44, but does not explain why they are
Appeal No. 2002-0489
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different. We wonder whether the "timing envelope" is meant to
refer to the synchronization key mentioned in the title of the
application and at page 4, lines 10-13, of the specification.
However, the word "envelope" implies an enclosing structure
(without stating what is enveloped) and the examiner's
interpretation of "timing envelope" in claim 58 as a different
wording for an "external burst gate signal . . . enveloping the
color burst" in claim 44 is reasonable. If appellant intended to
recite a synchronization key there is no reason why the
terminology of the specification could not have been used.
Appellant has not shown error in the rejection. In
addition, appellant has not shown that the programmable
horizontal sync output signal HS in the VIP decoder in Philips,
which is intended to be used in desktop video and other
applications (Philips, p. 3 under "APPLICATIONS"), is not a
"timing signal for a video signal" which can be applied to a
plurality of video devices. We are not persuaded of error in the
rejection. The rejection of claims 44-46, 48, 49, 58-60 is
sustained. The rejections of dependent claims 47, 50-52, and
61-63 have not been argued and, accordingly, the rejections of
these claims are sustained.
Appeal No. 2002-0489
Application 08/831,731
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CONCLUSION
The rejections of claims 1-15, 31-39, 44-52, and 58-63 are
sustained
The rejections of claims 16-30, 40-43, and 53-57 are
reversed.
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 )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2002-0489
Application 08/831,731
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