Ex parte Wine

Board of Patent Appeals and Interferences

Jan 7, 2002

08481408 (B.P.A.I. Jan. 7, 2002)

Application for patent filed July 10, 1995, entitled1
"Digital Video Tape Recorder for Digital HDTV," which is a
national stage application under 35 U.S.C. § 371 of
international PCT Application PCT/US94/00739, filed January
19, 1994, which claims the foreign filing priority benefit of
Great Britain Application, 9301093.2, filed January 20, 1993.
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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and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CHARLES M. WINE

Appeal No. 1999-2824
Application 08/481,4081

ON BRIEF

Before KRASS, BARRETT, and LALL, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-2824
Application 08/481,408
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 43-47.
We reverse.
BACKGROUND
The disclosed invention is directed to a video
recording/reproducing (VRR) device, such as a consumer VCR,
intended to operate with a video device, such as a television
receiver, for processing and displaying television-type
information. The VRR is arranged to have at least one of the
video feature functions it normally performs, such as freeze
frame, performed instead by the video device. See
specification, page 34, line 1 to page 37, line 16 and
page 39, lines 16-24.
Claim 43 is reproduced below.
43. A video recording/reproducing (VRR) system for
processing a digital enhanced definition television
signal, comprising
input means for receiving a digital datastream
containing video information;
recording/reproducing means responsive to said
datastream;
output means responsive to a transduced signal from
said recording/reproducing means for conveying
information including transduced video information to a
Appeal No. 1999-2824
Application 08/481,408
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video device suitable for processing and displaying
television-type information, when present;
feature control means, responsive to user input
control, for generating VRR video feature control data to
determine the operation of said video device such that,
in response to said feature control data being provided
from said VRR system to said video device when present,
at least one VRR video feature function is performed in
whole or in part by said video device; and
means for conveying said feature control data to
said output means.
The Examiner relies on the following prior art:
Hatakenaka et al. (Hatakenaka) 5,282,049 January 25,
1994
(filed February 4,
1992)
Lett et al. (Lett) 5,657,414 August 12,
1997
(filed December 1,
1992)
Claims 43 and 44 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Lett.
Claims 45-47 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lett and Hatakenaka.
We refer to the final rejection (Paper No. 23) and the
examiner's answer (Paper No. 26) (pages referred to as "EA__")
for a statement of the Examiner's position, and to the appeal
Appeal No. 1999-2824
Application 08/481,408
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brief (Paper No. 25) (pages referred to as "Br__") for a
statement of Appellant's arguments thereagainst.
OPINION
Anticipation ) claims 43 and 44
The issue is whether Lett teaches the following
limitations of claim 43:
feature control means, responsive to user input
control, for generating VRR video feature control data to
determine the operation of said video device such that,
in response to said feature control data being provided
from said VRR system to said video device when present,
at least one VRR video feature function is performed in
whole or in part by said video device . . . .
Appellant notes that all of the claimed arrangements
pertain to a video device for performing VRR video functions,
such as freeze frame and slow motion, in response to
instructions from the VRR device (Br4). It is argued (Br4-5):
"Television receiver 352 in Lett does not perform any VCR
video feature functions, nor does Lett suggest such operation.
In fact, as far as applicant can tell, Lett never mentions VCR
special features functions, for example freeze-frame, as
discussed by applicant and as specifically claimed in claims
44, 46 and 47."
Appeal No. 1999-2824
Application 08/481,408
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The Examiner finds, with respect to Fig. 7 of Lett, that
VCR 350 has a reproduction function which is a VCR video
feature function and that the reproduction operation is partly
performed by a display means, the TV receiver 352.
"Consequently, it is clear that component 352 shown in Lett et
al's Figure 7, does partly perform VCR video feature functions
because video signal generated during reproduction operation
of the VCR must be displayed thereon." (EA7.)
The Examiner errs in his finding of anticipation. In
particular, the Examiner errs by lumping the separate
functions of reproducing the recorded signal (a VRR video
feature function) and displaying the reproduced information (a
video device function) under the general description of
"reproduction" and then finding that the TV receiver 352 in
Lett performs part of the reproduction function. Reproducing
a recorded signal from a recording medium to produce a signal
to be displayed is a necessary function of any VCR, and is a
"VRR video feature function." However, this function is
incapable of being performed by TV receiver 352. The function
of TV receiver 352 is to display the signal from VCR 350,
which is not a VRR video feature function since the VCR 350
Appeal No. 1999-2824
Application 08/481,408
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never performs display. The TV receiver 352 does not perform
in whole or in part any VRR video feature function which would
normally be performed by the VRR system, such as freeze frame
or slow motion. Nor is there any teaching in Lett of
generating user controlled VRR video feature control data that
will cause the video device (TV receiver 352) to perform one
VRR video feature function, which limitation is not addressed
in the rejection. The fact that the TV receiver 352 displays
information reproduced by the VCR 350 does not meet the
feature control means claim language, no matter how broadly
the language is interpreted.
We agree with Appellant's treatment (Br5-7) of the
Examiner's reasoning in the final rejection which, in any
case, has not been repeated in the examiner's answer.
The Examiner errs in finding that the TV receiver 352 in
Lett performs at least one VRR video function and, therefore,
has failed to establish a prima facie case of anticipation.
The rejection of claims 43 and 44 is reversed.
Obviousness ) claims 45-47
Claims 45 and 46
Appeal No. 1999-2824
Application 08/481,408
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Limitation (e) of claim 45 essentially corresponds to the
feature control limitation of claim 43, which is not taught by
Lett. Hatakenaka is applied by the Examiner to teach altering
the data arrangement for high speed tape tracking (EA5-6). We
find that Hatakenaka does not cure the deficiency of Lett with
respect to the missing feature control limitation.
Accordingly, the Examiner has failed to establish a prima
facie case of obviousness. The rejection of claims 45 and 46
is reversed.
Claim 47
Limitation (a) of claim 47 essentially corresponds to the
feature control limitation of claim 43, which is not taught by
Lett. Claim 47 does not recite altering the data arrangement
for high speed tape tracking and, therefore, it is not clear
why the Examiner applies Hatakenaka. Claim 47 includes the
step of "generating a freeze frame display using local memory
associated with said video device"; i.e., the VRR video
feature function performed by the video device is a freeze
frame. The Examiner finds that the feature of generating a
freeze frame display is inherently present in the proposed
combination of Lett and Hatakenaka since conventional VCRs,
Appeal No. 1999-2824
Application 08/481,408
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such as the one disclosed in Fig. 7 of Lett, would include the
capability to freeze the image on the screen utilizing the
pause button.
Appellant argues that "the generated VRR feature is a
'freeze frame display using local memory associated with the
video device'" (Br8), which is not suggested by either Lett
with Hatakenaka, nor by the fact that a conventional VCR may
perform a freeze frame operation.
Lett with Hatakenaka do not suggest the feature control
limitation of step (a). We further agree with Appellant that
neither Lett with Hatakenaka suggests "generating a freeze
frame display using local memory associated with said video
device." Conventional VCRs keep scanning the tape for a
freeze frame. The Examiner has failed to establish a prima
facie case of obviousness. The rejection of claim 47 is
reversed.
CONCLUSION
The rejections of claims 43-47 are reversed.
REVERSED
Appeal No. 1999-2824
Application 08/481,408
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ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1999-2824
Application 08/481,408
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Joseph S. Tripoli
PATENT OPERATIONS GE & RCA LICENSING
MANAGEMENT OPERATION, INC.
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