Ex parte YUEN et al.

Board of Patent Appeals and Interferences

Sep 21, 1999

08284371 (B.P.A.I. Sep. 21, 1999)

Application for patent filed August 1, 1994. According to applicants,1
this application is a continuation of Application 07/676,934, filed March 27,
1991, now Patent No. 5,335,079, issued August 2, 1994, which is a
continuation-in-part of Application 07/371,054, filed June 26, 1989
(abandoned); which is a continuation-in-part of Application 07/289,369, filed
December 23, 1988 (abandoned).
1
Paper No. 22
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HENRY C. YUEN
and DANIEL S. KWOH
______________
Appeal No. 1996-3600
Application 08/284,3711
_______________
HEARD: SEPTEMBER 13, 1999
_______________
Before JERRY SMITH, LALL and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 1996-3600
Application 08/284,371
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 106-127, 133-162 and
168-175. Claims 1-105 have been cancelled. Claims 128-132
and 163-167 have been indicated as containing allowable
subject matter and are merely objected to as depending from
rejected claims.
The disclosed invention pertains to a method and
apparatus for programming and automatically recording video
signals such as in a video tape recorder. An input receives
signals representative of channel, date, time of day and
program length in a compressed form. A decoder decodes and
expands this data into the signals necessary to control a
video recorder.
Representative claim 106 is reproduced as follows:
106. A system for programming and automatically
recording programs transmitted using video signals, by a video
recorder, under control of sets of channel, date, time-of-day
and program length commands, the system comprising:
an input for receiving compressed coded indications into
said system, each compressed coded indication incorporating
the data represented in a set of individual channel, date,
time-of-day and program length commands, wherein each of one
or more of said compressed coded indications has a length that
is less than the length of the concatenation of said
Appeal No. 1996-3600
Application 08/284,371
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incorporated individual channel, date, time-of-day and program
length commands; and
a decoder for decoding and expanding each of one or more
of said compressed coded indications into said set of
individual channel, date, time-of-day and program length
commands for control of the video recorder.

The examiner relies on the following references:
Welles, II (Welles) 4,623,887 Nov. 18, 1986
Beyers, Jr. (Beyers) 4,641,205 Feb. 03, 1987
Young 4,977,455 Dec. 11, 1990
(filed July 15,
1988)
Claims 106-127, 133-162 and 168-175 stand rejected
under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers Beyers in view of Welles with respect to all
the claims and additionally adds Young with respect to claims
140, 141, 174 and 175.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
Appeal No. 1996-3600
Application 08/284,371
4
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, 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 106-127, 133-162 and 168-175.
Accordingly, we reverse.
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 deter-
minations set forth in Graham v. John Deere Co., 383 U.S. 1,
Appeal No. 1996-3600
Application 08/284,371
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17, 148 USPQ 459, 467 (CCPA 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
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
With respect to independent claims 106 and 142, the
examiner cites Beyers as teaching a system for programming and
automatically recording video signals. The system of Beyers
Appeal No. 1996-3600
Application 08/284,371
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automatically records programs by entering data into the
system individually for channel, date, time of day and program
length. The examiner notes that Beyers does not teach that
the coded data is compressed, that a decoder is used to expand
the coded information, and that the compressed codes are
entered into the system as recited in claims 106 and 142
[answer, pages 4-7]. Welles teaches a universal remote
control which can learn the commands of other remote controls.
After the universal remote control of Welles learns the
commands of another remote control, the learned commands are
stored in memory in a compressed form to save memory space.
The examiner concludes that it would have been obvious to
substitute the universal remote control of Welles for the
Beyers remote control to gain the advantage of reducing the
number of remote control units as taught by Welles [id., pages
7-9].
Appellants’ first argument is that Beyers fails to
disclose either of the elements or steps of independent claims
106 and 142. Beyers teaches a conventional on-screen remote
control unit for a video recorder in which channel, date, time
Appeal No. 1996-3600
Application 08/284,371
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of day and program length commands are sequentially entered
into the remote control unit [see column 9, line 40 to column
11, line 8]. Thus, appellants are correct that the system of
Beyers neither receives compressed coded indications of
channel, date, time of day and program length, nor decodes and
expands such information into a set of individual commands as
recited in claims 106 and 142.
As noted above, Welles was cited by the examiner for
its teaching of compressed data. Appellants argue that the
compression of data in Welles has nothing to do with
compressing coded indications of channel, data, time of day
and program length information as recited in claims 106 and
142. Appellants are again correct that the only compression
of data in Welles occurs after the data has already been
entered into the system. The Welles universal remote only
“learns” the meaning of the individual inputs of a master
remote, and this learned information is simply stored in
compressed form to save memory space. There is no compression
of coded indications representative of channel, data, time of
day and program length information in Welles.
Appeal No. 1996-3600
Application 08/284,371
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The examiner’s proposal to replace Beyer’s remote with
Welles’ remote makes no sense to us. Even if the Welles
remote has been programmed to learn the commands of the Beyers
remote, the Welles remote in combination with the Beyers
system will not have the input and decoder as recited in
claims 106 and 142. In other words, the Welles remote will
simply operate as the Beyers remote, and programming the
Welles remote cannot provide input and decoding functions to
the Beyers system which the Beyers system did not have in the
first place.
Furthermore, we can find no motivation whatsoever for
combining the teachings of Beyers with those of Welles. It
would appear that nothing can be gained by using a universal
remote in Beyers that has anything to do with the claimed
invention. Even if the teachings are combined, however, the
recitations of independent claims 106 and 142 are not met by
the combined teachings of these references as discussed above.
Since the teachings of Beyers and Welles, singly or in
combination, do not teach or suggest the features of
independent claims 106 and 142, we do not sustain the
Appeal No. 1996-3600
Application 08/284,371
9
rejection of these claims or of any of the claims which depend
therefrom. With respect to the rejection of claims 140, 141,
174 and 175 using the additional teachings of Young, since
Young does not cure the deficiencies in the combination of
Beyers and Welles, the rejection of these claims is also not
sustained.
In summary, the evidence presented by the examiner
does not support the rejection of claims 106-127, 133-162 and
168-175 under 35 U.S.C. § 103. Therefore, the decision of the
examiner rejecting these claims is reversed.
REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph L. Dixon )
Appeal No. 1996-3600
Application 08/284,371
10
Administrative Patent Judge )
JS/cam
Christie, Parker & Hale
P. O. Box 7068
Pasadena, CA 91109-7068