Ex parte Yoshida

Board of Patent Appeals and Interferences

Jan 31, 2001

08439793 (B.P.A.I. Jan. 31, 2001)

There was an amendment after the final rejection [paper1
no. 15] which was entered by the Examiner [paper no. 17].
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not written for publication and is not binding precedent of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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NOBORU YOSHIDA
__________
Appeal No. 1998-2264
Application No. 08/439,793
__________
HEARD: Jan. 10, 2001
__________
Before JERRY SMITH, LALL, and BLANKENSHIP, Administrative
Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 7 to 11. Claims 1 to 61
have been canceled.
Appeal No. 1998-2264
Application No. 08/439,793
2
The invention is related to a device for permitting
direct viewing of copy protected video signals without
stripping the signals of their copy protection, so that the
signals can be viewed without distortion but not recorded.
Copy protection is usually in the form of additions to the
video signal which cause the signal to distort upon passage
through the automatic gain control of the video recorder. As
a result, the copy protected signal can neither be recorded
nor directly viewed. The invention permits viewing of the
copy protected signals by including a by-pass of the automatic
gain control (AGC) circuit which routes an input signal
directly to the television signal processing circuit. The
invention is further illustrated by the following claim below.
7. An external input signal processing circuit for a
television receiver with a video tape recorder, the video tape
recorder having recording and reproducing functions, said
external input signal processing circuit comprising:
an automatic gain control circuit having an input
terminal connected to an external input terminal of the video
tape recorder and an output terminal connected to a video
signal recording circuit for recording a video signal on a
recording medium;
a video signal reproducing circuit for reproducing a
video signal recorded on said recording medium;
an internal/external viewing changeover switch having one
input terminal connected to receive a video signal from said
Appeal No. 1998-2264
Application No. 08/439,793
A reply brief was filed as paper no. 21 and was entered2
in the record without any response from the Examiner.
3
video signal reproducing circuit, another input terminal
connected to between said input terminal of said automatic
gain control circuit and said external input terminal, and a
common terminal connected to a television signal processing
circuit to permit viewing of a signal reproduced by said
reproducing circuit or input terminal.
The Examiner relies on the following references:
Damoci 4,633,302 Dec.
30, 1986
Japanese Kokai
Choichi et al. (Choichi) 52-69520 Sep. 6,
1977
Also, Admitted prior art (APA)
Claims 7 to 11 stand rejected under 35 U.S.C. § 103 over
various combinations of APA, Damoci and Choichi.
Rather than repeat the positions and the arguments of
Appellant or the Examiner, we make reference to the briefs2
and the answer for their respective positions.
OPINION
We have considered the rejection advanced by the
Examiner. We have, likewise, reviewed Appellant’s arguments
against the rejection as set forth in the briefs.
We affirm-in-part.
Appeal No. 1998-2264
Application No. 08/439,793
4
In rejecting a claim under 35 U.S.C. § 103, an Examiner
is under a burden to make out a prima facie case of
obviousness. If that burden is met, the burden of going
forward 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 In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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).
We are further guided by the precedents of our reviewing
court that the limitations from the disclosure are not to be
imported into the claims. In re Lundberg, 244 F.2d 543, 548,
113 USPQ 530, 534 (CCPA 1957); In re Queener, 796 F.2d 461,
463-64, 230 USPQ 438, 440 (Fed. Cir. 1986). We also note that
the arguments not made separately for any individual claim or
claims are considered waived. See 37 CFR § 1.192 (a) and (c).
In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ 2d
1281, 1285 (Fed. Cir. 1991) (“It is not the function of this
Appeal No. 1998-2264
Application No. 08/439,793
5
court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the
prior art.”); In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247,
254 (CCPA 1967) (“This court has uniformly followed the sound
rule that an issue raised below which is not argued in this
court, even if it has been properly brought here by a reason
of appeal, is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them.”)
Analysis
At the outset, we note that the claims do not stand or
fall together. We treat below the various claims under
rejection and the corresponding Appellant’s arguments.
Claim 7
Claim 7 is rejected over APA (specification, fig. 2) and
Damoci. The Examiner recognizes [answer, page 4] that APA
does not show the internal/external viewing changeover switch
having one terminal connected between an external input of the
VTR and an input of the VTR AGC circuit. The Examiner
explains [id., 4 to 5] how APA can be modified by the
teachings of Damoci to provide the claimed changeover switch.
Appeal No. 1998-2264
Application No. 08/439,793
6
Appellant argues [brief, pages 6 to 10 and reply brief, pages
2 to 3] that the combination still does not yield a circuit
having the claimed changeover switch. We have reviewed the
Appellant’s revised illustration on page 2 of the reply brief.
But, to the extent claimed, we agree with the Examiner’s
position that Damoci, at col. 1, lines 28 to 31, discloses
that “[f]inally, during record or playback, he (the viewer)
may use the VCR/TV button to pass the antenna input directly
to the tv, bypassing a conventional tv meter connected to the
antenna inputs.” Furthermore, Damoci discloses, at col. 1,
lines 53 to 57, that “the viewer may, ... either watch what is
on the antenna or cable using his tv’s tuner or switch to the
VCR output and watch a playback or monitor what is being
recorded.” This meets the noted limitation as recited in
claim 7. Therefore, we sustain the obviousness rejection of
claim 7 over APA and Damoci.
Claims 8 to 11
The Examiner has rejected these claims over APA, Damoci
and Choichi [answer, page 9] and makes a reference to paper
no. 10 [final rejection]. However, when we refer to paper no.
10, we find a further reference to paper no. 8. Although this
Appeal No. 1998-2264
Application No. 08/439,793
In paper no. 8, Damoci was not used to reject claim 7. 3
But in paper no. 10 (final rejection), Damoci was used to
reject claim 7. Since claims 8 to 11 depend on claim 7,
Damoci is inherently used in their appealed rejection.
7
is an impermissible procedural practice by the Examiner, we do
refer to paper no. 8 and find that Damoci was not used as a
reference in the rejection of claims 8 to 11. In this
instance , regardless of whether Damoci was, or was not, used3
to reject claims 8 to 11, we find that the suggested
combination of APA, or APA and Damoci, with Choichi would not
have yielded the claimed limitation (recited in claim 8) of
the circuit having “a switch circuit for controlling said
internal/external viewing changeover switch ... when the video
tape recorder is in a recording mode,” because the Choichi
reference does not disclose, or suggest, such a switch.
Therefore, we do not sustain the obviousness rejection of
claim 8 and its dependent claims 9 to 11.
In summary, we have sustained the obviousness rejection
over APA and Damoci of claim 7, but we have not sustained the
obviousness rejection of claims 8 to 11 over APA and Choichi,
or over APA, Damoci and Choichi.
Appeal No. 1998-2264
Application No. 08/439,793
8
Accordingly, the decision of the Examiner rejecting
claims 7 to 11 is affirmed-in-part.
Appeal No. 1998-2264
Application No. 08/439,793
9
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
Jerry Smith )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Howard B. Blankenship )
Administrative Patent Judge )
PSL:tdl
Appeal No. 1998-2264
Application No. 08/439,793
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