Ex Parte 5109414 et al

Board of Patent Appeals and Interferences

Jan 7, 2009

90006838 (B.P.A.I. Jan. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PERSONALIZED MEDIA COMMUNICATIONS, LLC
____________

Appeal 2008-4864
Reexamination Control 90/006,838
U.S. Patent 5,109,414
Technology Center 3900
____________

Decided: January 07, 2009
____________

Before LEE E. BARRETT, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

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DECISION ON APPEAL
Personalized Media Communications, LLC appeals under 35 U.S.C.
§ 134(b) and 35 U.S.C. § 306 from a final rejection of claims 1, 2, 5-12, 23,
and 26.1 We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on November 19, 2008. The record includes
a written transcript of the oral hearing.
We reverse.

STATEMENT OF THE CASE

Reexamination proceeding
A request for reexamination of U.S. Patent 5,109,414 (the '414
patent), entitled "Signal Processing Apparatus and Methods," was filed on
October 31, 2003 by third party requester Scientific-Atlanta, Inc.
(Requester). The '414 patent issued April 28, 1992, to John C. Harvey and
James W. Cuddihy, based on Application 07/588,126 (the '126 application),
filed September 25, 1990. The real party in interest is the patent owner,
Personalized Media Communications, LLC. The '414 patent is said to be a
continuation of Application 07/096,096, filed September 11, 1987, now U.S.
Patent 4,965,825 (hereinafter referred to as the 1987 application or '825
patent), which is said to be a continuation in part (CIP) of Application
06/829,531, filed February 14, 1986, now U.S. Patent 4,704,725 (the '725
patent), which is said to be a continuation of Application 06/317,510, filed

1 Claims 3, 4, 13-22, 24, and 25 have been confirmed as patentable.
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November 3, 1981, now U.S. Patent 4,694,490 (hereinafter referred to as the
1981 application or '490 patent).

Related proceedings
The Brief indicates that the '414 patent is part of a chain of patents
that includes additional later issued patents and various pending patent
applications. (App. Br. 3.) The Brief identifies seven related patents that are
each involved in reexamination proceedings. (Id.)
The Brief identifies a number of related U.S. Patent and Trademark
Office (USPTO), International Trade Commission, and court proceedings.
(App. Br. 3-6.) The Brief indicates (App. Br. 5) that the '414 patent is
asserted in Pegasus Development Corp. and Personalized Media Comm.,
LLC v. DIRECTV Inc., No. CA 00-1020 (D. Del. filed Dec. 4, 2000), which
has been stayed, and is also asserted in Personalized Media
Communications, LLC v. Scientific-Atlanta, Inc. et al., No. 1:02-CV-824
(CAP) (N.D. Ga. filed Mar. 28, 2002), which also has been stayed.

Appellant's invention
The claimed invention relates to signal processing apparatus and
methods to automate operations at an intermediate transmission station such
as a cable "head end." ('414 patent, abstract, col. 182, ll. 7-10 and 37-44,
col. 198, ll. 33-44, Figures 6A, 6B; see also Transcript of Oral Hearing
at 2:2-7.)
Figures 6A and 6B of the '414 patent are reproduced below:
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Figures 6A and 6B "are a block diagram of one example of signal
processing apparatus and methods at an intermediate transmission station, in
this case a cable system headend." ('414 patent, col. 12, ll. 12-15.)
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The Specification teaches that various disclosed embodiments of
signal processing apparatus "can be used to automate the operations of
intermediate transmission stations that receive and retransmit programming."
('414 patent, col. 181, ll. 64-68.) "The stations so automated may transmit
any form of electronically transmitted programming, including television,
radio, print, data, and combined medium programming and may range in
scale of operation from wireless broadcast stations that transmit a single
programming transmission to cable systems that cablecast many channels
simultaneously." ('414 patent, col. 181, l. 68 to col. 182, l. 6.)
In particular, "FIG. 6 illustrates Signal Processing Apparatus and
Methods at an intermediate transmission station that is a cable television
system 'head end' and that cablecasts several channels of television
programming." ('414 patent, col. 182, ll. 7-10.) "The station receives
programming from many sources," ('414 patent, col. 182, ll. 12-13) such as:
(1) transmissions from a satellite received by satellite antenna 50, low noise
amplifiers 51 and 52, and TV receivers 53, 54, 55, and 56; (2) microwave
transmissions received by microwave antenna 57 and television video and
audio receivers 58 and 59; (3) conventional TV broadcast transmissions
received by antenna 60 and TV demodulator 61; and (4) other electronic
programming transmissions received by other programming input means 62.
('414 patent, col. 182, ll. 14-21.) After receiving the transmissions,
[e]ach receiver/modulator/input apparatus, 53 through 62,
transfers its received transmissions into the station by hard-wire
to a conventional matrix switch, 75, well known in the art, that
outputs to one or more recorder/players, 76 and 78, and/or to
apparatus that outputs said transmissions over various channels
to the cable system's field distribution system, 93, which
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apparatus includes cable channel modulators, 83, 87, and 91,
and channel combining and multiplexing system, 92.
Programming can also be manually delivered to said station on
prerecorded videotapes and videodiscs. When played on video
recorders, 76 and 78, or other similar equipment well known in
the art, such prerecorded programming can be transmitted via
switch 75 to field distribution system, 93.

('414 patent, col. 182, ll. 22-36.)
According to the Specification, "[i]n the prior art, the identification of
incoming programming, however received; the operation of video player and
recorder equipment, 76 and 78; and the maintenance of records of
programming transmissions are all largely manual operations." ('414 patent,
col. 182, ll. 37-41.) "FIG. 6 shows the introduction of signal processing
apparatus and methods to automate these and other operations." ('414
patent, col. 182, ll. 42-44.)
A dedicated distribution amplifier 63, 64, 65, 66, 67, 68, 69, or 70 is
"[i]n line between each of the aforementioned receiver/demodulator/input
apparatus, 53, 54, 55, 56, 57, 58, 59, 60, 61, or 62, and matrix switch, 75."
('414 patent, col. 182, ll. 45-49.) The distribution amplifier splits each
incoming feed into two paths. (Id.) "One path is the conventional path
whereby programming flows from each given receiver/demodulator/input
apparatus, 53, 54, 55, 56, 57, 58, 59, 60, 61, or 62, to matrix switch, 75."
('414 patent, col. 182, ll. 49-53.) "The other path inputs the transmission of
said given receiver/demodulator/input apparatus, 53, 54, 55, 56, 57, 58, 59,
60, 61, or 62 individually to signal processor system, 71." ('414 patent,
col. 182, ll. 53-56.) "In other words, distribution amplifier, 63, continuously
inputs the programming transmission of receiver, 53, to matrix switch, 75,
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and separately to signal processor system, 71; distribution amplifier, 64,
inputs the programming transmission of receiver, 54, to matrix switch, 75,
and separately to signal processor system, 71; etc." ('414 patent, col. 182,
ll. 56-62.)
At signal processor system, 71 . . . the outputted transmission of
each distribution amplifier, 63, 64, 65, 66, 67, 68, 69, or 70, is
inputted into a dedicated decoder . . . that processes
continuously the inputted transmission of said distribution
amplifier, 63, 64, 65, 66, 67, 68, 69, or 70; selects SPAM
[Signal Processing Apparatus and Methods] messages in said
transmission that are addresses to ITS [Intermediate
Transmission Station] apparatus of said intermediate
transmission station; automatically adds, in a predetermined
fashion, source mark information that identifies said associated
distribution amplifier, 63, 64, 65, 66, 67, 68, 69, or 70; and
transfers said selected messages, with said source mark
information, to code reader, 72. Signal processor system, 71,
also has signal processor means to control signal processor
system, 71, to record meter-monitor information of said
message information, and to transfer recorded information to
external communications network, 97.

('414 patent, col. 182, l. 63 to col. 183, l. 12.)
The code reader 72 "buffers and passes the received SPAM message
information, with source mark information, to cable program controller and
computer, 73." ('414 patent, col. 183, ll. 13-15.) The cable program
controller and computer 73 is described as "the central automatic control
unit for the transmission station[]" ('414 patent, col. 183, ll. 16-18) and
performs various monitoring and control functions (see, e.g., '414 patent,
col. 183, l. 22 to col. 187, l. 48).

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The claims
Claims 1, 6, 23, and 26 are exemplary and reproduced below (with
minor formatting added):

1. In a signal processing system,

a plurality of receiver/distribution means for receiving
programming from a program source and for inputting said
programming to a switch means and a plurality of detector
means,

a switch means for receiving output from said plurality of
receiver/distribution means, said switch means being capable of
directing a selected portion of said programming received from
one or more said receiver/distribution means to an associated
output device,

a plurality of detector means for detecting control signals
respecting said programming,

a first processor means operatively connected to said
plurality of detector means for identifying each detected control
signal as having been detected by a particular detector means,

a storage means for receiving and storing said detected
control signals, and

a second processor means for controlling the output
directing function of said switch means.

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6. In a signal processing system,

a receiver/distribution means for receiving programming
from a plurality of program sources and for outputting said
programming to a matrix switch means and a control signal
detector means,

a matrix switch means for receiving said programming
from said receiver/distributor means and for outputting selected
portions of said received programming to a broadcast
transmission means and/or a recording device operatively
connected to said broadcast transmission means,

a control signal detector means for detecting control
signals respecting said programming and transferring said
control signals to a storage/transfer means, said control signal
detector means being configured to detected [sic] said control
signals in a predetermined frequency range or at a
predetermined location within said programming,

a storage/transfer means for receiving and storing said
control signals and for transferring at least a portion of said
control signals for further processing, and

a processor means for controlling the output functions of
said matrix switch means and the transfer functions of said
storage/transfer means.

23. A method of inputting data in a system that consists of a
first input means, at least one intermediate input means, and a
plurality of processors consisting of the steps of:

transmitting a plurality of data units,

causing memory means associated with a selected
intermediate input means to record a selected data unit, and

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causing said memory means to transmit selected
information of said selected data unit at a selected time,

thereby to cause said intermediate input means to input
data of said selected data unit to at least one selected processor
at said selected time and cause said processor to process said
input data.

26. A method of communicating television programming in a
system that consists of a transmission station and a plurality of
receiving stations, each receiving station having at least one
detector, one video recorder and one video player with at least
one said detectors pre-programmed to detect program
identification information, consisting of the steps of:

transmitting a plurality of units of television pre-
programming containing embedded program identification
information,

causing a selected receiving station to record a selected
television program unit,

causing said station to position the start of said program
unit at the play head of a video player,

causing said player thereafter to play and transmit at a
selected time

thereby to cause said selected station to transmit said
selected unit at said selected time.

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The references
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Summers US 3,848,082 Nov. 12, 1974
Haselwood US 4,025,851 May 24, 1977
Watson US 4,625,235 Nov. 25, 1986
(filed May 19, 1983)
Harry A. Etkin, Vertical Interval Signal Applications,
Broadcast Engineering, pp. 30-35, April 1970 ("Etkin").

P. R. Hutt, A System of Data Transmission in the Field
Blanking Period of the Television Signal, SLICE, June 1973
("Hutt").

W. Niessner, Remote control of the Austrian television network
using insertion data signals, E.B.U. Technical Review, No.
179, February 1980 ("Niessner").

The rejections
The Examiner rejected claims 1, 2, 5-12, 23, and 262 as being
unpatentable over the prior art.

Anticipation
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Niessner. (Ans. 11.)
Claim 2 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Niessner. (Ans. 16.)

2 Claims 1, 2, 5-12, 23, and 26 have not been amended during the instant
reexamination proceeding.
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Claim 6 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Niessner. (Ans. 18.)
Claim 7 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Niessner. (Ans. 23.)
Claim 8 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Niessner. (Ans. 24.)
Claim 10 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Niessner. (Ans. 25.)
Claim 12 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Niessner. (Ans. 26.)
Claim 23 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Summers. (Ans. 27.)
Claim 26 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Haselwood. (Ans. 29.)
Claim 7 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Watson. 3 (Ans. 31.)

3 Although the Examiner's rejection initially states that claim 7 is rejected
under § 102(b), it goes on to explain that Watson qualifies as prior art under
§ 102(e). (Ans. 31.) According to the Examiner's rejection, the earliest
priority date available to claim 7 is September 11, 1987. (Ans. 31.) Watson
was patented November 25, 1986. We note that under the Examiner's
rationale Watson also would qualify as prior art under § 102(a). The precise
ground of rejection is not important because, as discussed infra, we disagree
with the Examiner's finding (Ans. 7-9, 31, 39-48) that claim 7 is not entitled
to claim priority from the 1981 application. Thus, we conclude that Watson
is not prior art as to claim 7.
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Obviousness
Claims 5, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Niessner, Hutt, and Etkin. (Ans. 33.)

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Niessner
1. Niessner describes the use of insertion data signals (IDS) over existing
video links between switching and control points to remotely control
switching operations for the Austrian television network. (Abstract;
p. 25, last paragraph of left hand column.) In particular, insertion data
signals are used "to remotely control the switching operations."
(P. 25, last line of left hand column.)

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2. Figure 3 of Niessner is reproduced below:

Figure 3 shows a video switching point at a main transmitting station.
(P. 25, first paragraph of right hand column.)

3. Niessner teaches that "[a]ll the inputs to the video switching matrices
which carry information are fitted with IDS decoders [5, 6, 7] and all
information-conveying outputs are fitted with coders [16, 17]."
(P. 26, first paragraph of right hand column.) Micro-computer
systems were developed "[f]or the processing of the incoming
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information" (p. 27, first paragraph of left hand column) and "[t]hey
receive signals from the IDS decoders or control panels and pass
control signals to the video switching matrix and display panels : they
also send information to the IDS coders[]" (id.). A data bus is used to
exchange information between the processing system and the IDS
coders and decoders. (P. 27, second paragraph of left hand column.)

4. Niessner teaches that "[i]f the power supply voltage falls below a
safety level, the implementation of instructions is inhibited before
incorrect operations can occur." (P. 27, last paragraph of left hand
column to first paragraph of right hand column.) "When the supply
returns to normal, all the instructions . . . are reintroduced and must be
repeated in successive cycles, before being implemented." (P. 27,
first paragraph of right hand column.) "These arrangements are
needed to ensure that the response to an instruction is sufficiently
rapid (less than 0.1 s) and to re-establish the correct switching pattern
after a mains supply failure." (P. 27, second paragraph of right hand
column.) "Until such time as they are cancelled, all the instructions
are stored after decoding to protect them against a failure of the mains
supply." (P. 27, third paragraph of right hand column.) "This avoids
random operations during the switching of a circuit." (Id.) The
memory is located outside the data processing system, and the data
processing system "may be removed from service for maintenance
without altering the matrix switching." (Id.) "If the data transmission
is interrupted or the coding or data processing system fails, the video
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switching matrix may be operated manually by means of the existing
remote-control and monitoring system for the transmitters." (Id.)

Summers
5. Summers describes transmitting and utilizing supplemental data via
television signals. (Abstract.)

6. Figure 2 of Summers is reproduced below:

Figure 2 "is a schematic view of the receiving portion of a
supplemental data system." (Col. 2, ll. 32-34.)

7. Supplemental data is entered into the system, mixed with a video
signal, transmitted by a television transmitter, and received by a
television receiver 14. (Col. 1, ll. 45-59; col. 4, ll. 3-6.) Summers
teaches that
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[t]he supplemental data signal transmitted and received
through the use of the system of the present invention
could also be utilized to program a data storage means 36
(FIG. 2) such as a computer at the receiving end for
various purposes. In this manner, the supplemental data
can be stored and used subsequently if and when desired.
Thus, it is not necessary that the data transmitted and
received by the present system be viewed or otherwise
utilized in real time. As an illustrative example,
subsequent use of the data could be at a preselected time,
upon sensing of an event or completion of a prior
program, or upon user command.

(Col. 7, ll. 56-67.)

Haselwood
8. Haselwood describes a system for automatically monitoring programs
that are broadcast by commercial television stations. (Col. 1, ll. 7-10.)

9. Figure 2 of Haselwood is reproduced below:

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Figure 2 is a block diagram of one embodiment of a monitoring
system. (Col. 3, ll. 1-3.)

10. Haselwood teaches that "[t]he decoder 28 processes the video signal
. . . and recovers the information encoded . . . and applies the
information thus recovered to a mini-computer 30 via a suitable
computer interface 32." (Col. 3, ll. 59-64.)

11. Figure 3 of Haselwood is reproduced below:

Figure 3 is a block diagram of another embodiment of a monitoring
system. (Col. 3, ll. 4-5.)

12. Television network outlet 18 receives video information combined
with coding information from a network feed line 16. (Col. 3, ll. 23-
28.) "A program selector 46 is used selectively to connect the
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network feed line 16 or the program source 44 to the transmitter 42 so
that either a network or a local program may be broadcast." (Col. 4,
ll. 29-32.) "The local program source 44 may be one of various
program sources including a television camera for broadcasting live
programs, a flying spot scanner for showing movies, or a video tape
recorder for playing back video taped programs including network
programs that had been previously taped for delayed broadcast."
(Col. 4, ll. 32-38.) "The output of the program selector 46 feeds a
transmitter feed line 50 which applies the selected video program to
the transmitter 42." (Col. 4, ll. 38-41.)

13. Haselwood teaches that a decoder and stripper 28' retrieves the code
encoded on the signal received by the network outlet 18 and "applies
it to the computer interface 32 for application to the mini-computer
30." (Col. 4, ll. 45-48.)

Hutt
14. Hutt describes a system for transmitting data in the vertical interval of
a television signal. (Abstract.)

Etkin
15. Etkin describes "[v]ertical interval signal transmission methods and
applications." (P. 30, second paragraph of leftmost column.)

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PRINCIPLES OF LAW
"It is elementary patent law that a patent application is entitled to the
benefit of the filing date of an earlier filed application only if the disclosure
of the earlier application provides support for the claims of the later
application, as required by [the first paragraph of] 35 U.S.C. § 112."
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir.
2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)). Different
claims of a continuation-in-part (CIP) application may receive different
effective filing dates because subject matter arising "for the first time in the
CIP application does not receive the benefit of the filing date of the parent
application." Augustine Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d
1291, 1302 (Fed. Cir. 1999). Under 35 U.S.C. § 120, "in a chain of
continuing applications, a claim in a later application receives the benefit of
the filing date of an earlier application so long as the disclosure in the earlier
application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the
written description requirement, with respect to that claim." Technology
Licensing Corp. v. Videotek, Inc., No. 2007-1441, -1463, 2008 WL 4529095,
at *7 (Fed. Cir. Oct. 10, 2008) (citing Transco Prods. Inc. v. Performance
Contracting, Inc., 38 F.3d 551, 556 (Fed. Cir. 1994)).
Under the written description requirement of 35 U.S.C. § 112, first
paragraph, the disclosure of the prior application relied upon must
reasonably convey to one of ordinary skill in the art that, as of the filing date
of the prior application, the inventor had possession of the later claimed
subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991). The specification need not describe the claimed subject matter in
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exactly the same terms as used in the claims, but it must contain an
equivalent description of the claimed subject matter. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994). Under the principles of inherency, a reference anticipates
if it necessarily includes or functions in accordance with the claimed
limitations. Atlas Powder, 190 F.3d at 1347. Inherency may be established
by extrinsic evidence, but "[s]uch evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill."
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). Inherency may not be established by probabilities or possibilities,
and "[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Id.
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). In KSR, the Supreme Court reaffirmed that "[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Id. at 1739.
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"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d at 988. "To facilitate review, this
analysis should be made explicit." KSR, 127 S. Ct. at 1741. However, "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.

ANALYSIS
Overview
Appellant contends that the Examiner erred in rejecting claims 1, 2,
5-12, 23, and 26. Reviewing the record before us and the findings of facts
cited above, we agree. In particular, Appellant has shown that the Examiner
erred in finding that claim 7 not entitled to the benefit of the filing date of
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the 1981 application. Appellant also has shown that the Examiner failed to
make a prima facie showing of anticipation with respect to claims 1, 2, 6-8,
10, 12, 23, and 26 and has shown that the Examiner failed to make a prima
facie showing of obviousness with respect to claims 5, 9, and 11.

Effective Filing Date Issue
The Examiner found that claim 7 of the '414 patent is not entitled to
the effective filing date of the 1981 application. (Ans. 7-9, 38-48.) The
Examiner's position is "that the issue of Section 120 priority, given the
current fact pattern, boils down to the question of whether (or not) there is
'continuity of disclosure' between the instant 557 page 1987 CIP
specification and the original 44 page 1981 parent specification, to which
priority is alleged, with respect to 'the invention' being claimed." (Ans. 7.)
The Examiner characterizes "the present fact pattern" as "one in which the
instant 557 page 1987 CIP specification failed to incorporate the original 44
page 1981 parent specification in any immediately discernible fashion."
(Id.)
According to the Examiner, to determine whether "continuity of
disclosure" exists, claim 7 of the '414 patent, "which recites 'programming'
must be read and construed in accordance with the definition that is
explicitly set forth in the instant 1987 CIP specification, i.e., using the
'broadest reasonable interpretation' standard, to determine 'the
invention'/''subject matter' that is being claimed." (Ans. 8.) After that,
according to the Examiner, "one looks to the original 1981 disclosure to see
if this claimed 'the invention'/'subject matter' was described, in accordance
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with the requirements of Section 112-1, in the original 1981 specification."
(Id.)
The Examiner found that the recited claim term "programming" was
defined differently (i.e., more broadly) in the 1987 (CIP) application ('825
patent) than in the 1981 application ('490 patent). (Id.) Thus, the Examiner
found that, "[g]iven the expanded defining [sic] of 'programming' that is
necessarily being claimed [by claim 7], being that the 1987 CIP disclosure is
the . . . disclosure that defines the scope/meaning of the claim, . . . continuity
of disclosure does not exist between the respective 1981 and 1987 CIP
disclosures with respect to 'the invention' being claimed." (Id.)
Appellant argues that the Examiner erred in finding that claim 7 of the
'414 patent is not entitled to the benefit of the 1981 application filing date.
(App. Br. 32-36; Reply Br. 6-10.) Appellant argues that the declaration of
Dr. Alan C. Bovik establishes 35 U.S.C. § 112 first paragraph written
description support for claim 7 in the present '414 patent and the 1981
specification ('490 patent). (App. Br. 33, 35-36; Reply Br. 7-10.) Appellant
further contends that "[t]he Examiner has failed to point to any errors or
inadequacies in the Bovik Declaration." (Reply Br. 7.)
Appellant argues that "a proper determination of whether a claim is
entitled to priority under § 120 requires an analysis of whether the claimed
invention is sufficiently described and enabled by the parent specification"
(App. Br. 33). Appellant further contends that "[t]he Examiner has not
analyzed claim 7 to determine that it is not disclosed by the parent
application in the manner provided by the first paragraph of 35 U.S.C.
§ 112." (Reply Br. 6.) And even if the "continuity of disclosure test"
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applied by the Examiner is correct, Appellant argues that claim 7 satisfies
this test. (Reply Br. 7-10.) In addition, "Appellant notes that the Examiner
has failed to identify a single limitation that when construed according to the
instant CIP specification is not disclosed in the 1981 parent specification."
(Reply Br. 7.)
Based on Appellant's contentions, the issue presented is:
Has Appellant shown that the Examiner erred in finding that claim 7 is not
entitled, under 35 U.S.C. § 120, to the effective filing date of the 1981
application?
We agree with Appellant that the Examiner has failed to show how
the subject matter of claim 7 lacks written description in the 1981
application. A rejection for lack of written description is established by
identifying a specific claim limitation and explaining why the limitation is
not described in the patent which is relied upon for § 120 priority. In this
case, where Appellant has provided a declaration to show support in the
1981 application ('490 patent) and the '414 patent, it is incumbent on the
Examiner to address why the declaration is in error. General discussions
about differences in the scope of disclosure are not enough to establish lack
of support.
The Examiner's reasoning that the 1987 CIP application is of different
scope than the parent 1981 application fails to establish lack of written
description support. A CIP application, by definition, contains new subject
matter not found in the parent, so the "scope" of disclosure will, of course,
be different. The Examiner fails to explain why claim 7 of the '414 patent is
not supported by the 1981 application or why, if the claim is supported by
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the more basic 1981 application, the basic subject matter is not common to
the 1987 application.
The fact that the 1981 application is not incorporated by reference and
is not physically incorporated into the 1987 application in "any immediately
discernable fashion" does not prove a lack of written description support.
"An invention may be described in many different ways and still be the same
invention." Kennecott Corp. v. Kyocera Int'l Inc., 835 F.2d 1419, 1422
(Fed. Cir. 1987). "[T]he invention claimed [in the later application] does not
have to be described [in the parent] in ipsis verbis in order to satisfy the
description requirement of § 112." In re Lukach, 442 F.2d 967, 969 (CCPA
1971).
Appellant has provided the Bovik Declaration to describe the written
description support in the 1981 application ('490 patent) and in the 1987
application ('825 patent). Thus, Appellant has specifically pointed out what
portion of the patents it relies upon for support. The burden of going
forward with the evidence now shifts to the Examiner to prove why the
declaration does not show written description support for the claims. This
must be done with particularity. However, the Examiner does not point to a
single claim limitation that is not discussed in the Bovik Declaration and that
is thought to be unsupported.
Accordingly, Appellant has shown that the Examiner erred in finding
that claim 7 is not entitled to claim the benefit of the 1981 application filing
date.

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§ 102(b) Rejections - Niessner
Claims 1 and 2.
With respect to claim 1, Appellant argues that Niessner does not teach
a first processor means for identifying each detected control signal as having
been detected by a particular detector means. (App. Br. 40; Reply
Br. 11-12.) Appellant contends that the Examiner's rejection "reads the term
'particular' out of the claimed first processor means." (App. Br. 40.)
Appellant further argues that Niessner does not teach a plurality of detector
means for detecting control signals respecting said programming. (App.
Br. 40-41.) Appellant argues that the Examiner erred in rejecting claim 2 for
the same reasons given with respect to claim 1. (App. Br. 41-42.)
Regarding claim 2, Appellant also argues that Niessner does not teach "a
buffer/memory storage means for receiving and storing said detected control
signals." (App. Br. 41.)
Appellant's arguments present the following issue:
Has Appellant shown that the Examiner erred in rejecting claims 1 and 2
under 35 U.S.C. § 102(b) as being anticipated by Niessner?
The resolution of this issue turns on the following subsidiary issues:
1. Has Appellant shown that the Examiner erred in finding that
Niessner teaches a first processor means for identifying each detected
control signal as having been detected by a particular detector?
2. Has Appellant shown that the Examiner erred in finding that
Niessner teaches a plurality of detector means for detecting control signals
respecting said programming?
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3. Has Appellant shown that the Examiner erred in finding that
Niessner teaches a buffer/memory storage means for receiving and storing
said detected control signals?
Regarding the second subsidiary issue, Appellant has not shown that
the Examiner erred in finding that Niessner teaches a plurality of detector
means for detecting control signals "respecting said programming." The
term "respecting" is quite broad. Appellant has not presented any
convincing evidence or argument that the Specification imparts a special
meaning to this term. The relevant plain meaning of "respecting" is
"concerning; about." Webster's New World Dictionary Third College
Edition 1143 (1994).
The Examiner correctly found that the insertion data signals of
Niessner concern the programming because they "identify how each of the
distributed programs is to be routed through the network by providing
control, locally, over the matrix switching circuitry." (Ans. 12; see also FF
1-3.) The Examiner also found that the IDS decoders detect and extract the
insertion data signals. (Ans. 11; see also FF 1-3.) Thus, under the broadest
reasonable interpretation of the claim consistent with the Specification, the
insertion data signals and IDS decoders of Niessner meet the claimed
"plurality of detector means for detecting control signals respecting said
programming."
Regarding the third subsidiary issue, Appellant has not presented any
convincing evidence or argument that the Examiner erred in finding that
Niessner teaches a buffer/memory storage means for receiving and storing
said detected control signals, as recited by claim 2. The Examiner correctly
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found that Niessner teaches storing received IDS instructions (i.e., control
signals) after decoding (i.e., detecting). (Ans. 17; FF 4.) Thus, under the
broadest reasonable interpretation of the claim consistent with the
Specification, this memory teaching of Niessner also teaches the recited
buffer/memory storage means.
Nevertheless, Appellant's argument that the Examiner erred in
rejecting claims 1 and 2 as being anticipated by Niessner is persuasive
because Niessner does not teach "a first processor means operatively
connected to said plurality of detector means for identifying each detected
control signal as having been detected by a particular detector means," as
claimed.
The Examiner found that the data processor of Niessner (see Fig. 3,
FF 2) "detects each received control signal [IDS] that is directed to it by
each of the decoders [5, 6, 7] and, in this way, 'identifies' each respective
control signal as having been detected by 'a particular detecting means.'"
(Ans. 13.)
We agree with Appellant that the Examiner's interpretation of
Niessner reads the term "particular" out of the claim. Niessner does not
expressly or inherently teach that the data processor identifies each detected
IDS as having been detected by a particular one of the IDS detectors 5, 6, 7.
Niessner's teaching that an IDS signal is received from one of several IDS
detectors does not also teach identifying the particular IDS detector which
detected the signal. (FF 2, 3.)
The Examiner also found that the data bus described by Niessner (see
FF 3) teaches "identifying each detected control signal as being detected by
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a particular detector means." (Ans. 14-15.) In particular, the Examiner
found that the data bus "necessarily includes circuitry/programming for
identifying (i.e. enabling) a particular one of the decoders to transfer a
respective one of its received data signals thereto over said data bus during
any given transfer cycle" (Ans. 14) because "[i]n systems that contain only
one data processor, as in the case of the Niessner system, the data processor
was typically configured to control all input/output activities over the bus
thereby preventing 'conflicts' from occurring" (Ans. 14).
Appellant argues that "conflict prevention does not inherently require
that the source of each device writing to the bus be identified" and therefore
"it is not inherent that the data processor relied upon by the Examiner does
in fact identify for any incoming signal which decoder detected the signal."
(Reply Br. 12.)
Appellant's argument is convincing. Niessner does not mention
conflict prevention in connection with its data bus, and does not provide any
detail concerning the data bus that would lead to a conclusion that conflict
prevention as described by the Examiner is inherent in that data bus. In
short, the Examiner has not pointed to any convincing evidence that the data
bus of Niessner expressly or inherently enables the identification of a
detected control signal as having been detected by a particular detector
means.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 1 and 2 under 35 U.S.C. § 102(b).

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Claims 6-8, 10, and 12.
With respect to claim 6, Appellant initially argues, similar to claim 1,
that Niessner does not teach a control signal detector means for detecting
control signals respecting said programming. (App. Br. 42-43.) This
argument is not convincing for the reasons discussed with respect to claim 1.
Appellant further argues that "the Examiner overlooks the recited
relationships between the claimed control signal detector means, the
storage/transfer means, and the processor means" of claim 6. (App. Br. 43;
Reply Br. 13.) Appellant argues that neither the memory of Niessner nor the
data bus of Niessner teaches the storage/transfer means recited by claim 6.
(Reply Br. 13.) In particular, Appellant argues that the memory of Niessner
does not transfer at least a portion of said control signals for further
processing (App. Br. 43; Reply Br. 13), that there is no teaching that the
processor controls the transfer functions of the memory (App. Br. 43), and
that the data bus of Niessner does not store control signals (Reply Br. 13).
Appellant also argues that the Examiner erred in finding (at
Ans. 19-20) that the data bus could be the storage/transfer means used to
transfer data between the control signal detector means and the processor
means. (App. Br. 43-44.) Appellant notes that the Examiner found (at
Ans. 19-20) that the data bus necessarily includes appropriate handshaking
circuitry to control the transfer functions. (App. Br. 43-44.) Thus,
Appellant argues that, given this finding regarding the handshaking circuitry,
the processor of Niessner would not control the transfer functions of the data
bus as required by the claim. (Id.) Instead, Appellant argues, the data bus
would perform that function. (Id.)
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With respect to claims 7, 8, 10 and 12, Appellant argues that the
Examiner erred in rejecting these claims for the same reasons given with
respect to claim 6. (App. Br. 44-48.) Regarding claim 12, Appellant also
argues that the Niessner does not teach the recited processor means for
controlling the transfer functions of the storage/transfer means in response to
the control signals or local command. (App. Br. 48; Reply Br. 14-15.)
Appellant's arguments present the following issue:
Has Appellant shown that the Examiner erred in rejecting claims 6-8, 10 and
12 under 35 U.S.C. § 102(b) as being anticipated by Niessner?
The resolution of this issue turns on the following subsidiary issues:
1. Has Appellant shown that the Examiner erred in finding that
Niessner teaches a storage/transfer means for receiving and storing said
control signals and for transferring at least a portion of said control signals
for further processing?
2. Has Appellant shown that the Examiner erred in finding that
Niessner teaches a processor means for controlling the transfer functions of
the storage/transfer means?
3. Has Appellant shown that the Examiner erred in finding that
Niessner teaches a processor means for controlling the transfer functions of
the storage/transfer means in response to the control signals or local
command, as recited by claim 12?
Appellant's arguments that the Examiner erred in rejecting claims 6-8,
10, and 12 as being anticipated by Niessner are persuasive. We agree with
Appellant that Niessner does not teach a storage/transfer means for receiving
and storing said control signals and for transferring at least a portion of said
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control signals for further processing. We also agree that Niessner does not
teach a processor means for controlling the transfer functions of the
storage/transfer means, and therefore does not teach a processor means for
controlling the transfer functions of the storage/transfer means in response to
the control signals or local command.
The Examiner found that the memory of Niessner (see FF 4) or,
alternatively, the data bus of Niessner (see FF 3), meets the storage/transfer
means limitation. (Ans. 19-20.) The Examiner also found that the processor
shown in Figure 3 of Niessner implicitly provides control for the transfer
functions of the data bus and memory. (Ans. 21.) We do not agree.
Regarding the memory, Niessner teaches that the IDS instructions are
stored to protect against a "failure of the mains supply." (FF 4.) However,
Niessner is silent with respect to the memory transferring at least a portion
of the IDS instructions for further processing, as required by claims 6-8, 10,
and 12. While it may be possible that the memory transfers at least a portion
of the IDS instructions for further processing, the Examiner has not
convincingly demonstrated that the memory inherently performs this
function. In addition, Niessner is silent with respect to the data bus storing
IDS instructions, and the Examiner has not convincingly demonstrated that
the memory inherently performs this function.
Although a data processor is disclosed in Figure 3 (FF 2), Niessner is
silent as to the functions performed by that data processor. In particular,
Niessner does not teach that the processor controls transfer functions of the
memory or the data bus. While it may be possible that the data processor
could control transfer functions of the memory or data bus, the Examiner has
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not convincingly demonstrated that the data processor inherently performs
this function.
Because the Examiner has not shown that Niessner teaches a
processor means for controlling the transfer functions of the storage/transfer
means, the Examiner also has not shown that Niessner teaches a processor
means for controlling the transfer functions of the storage/transfer means in
response to the control signals or local command, as recited by claim 12.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 6-8, 10, and 12 under 35 U.S.C. § 102(b).

§ 102(b) Rejection - Summers
Appellant argues that Summers does not teach the step of "thereby to
cause said intermediate input means to input data of said selected data unit to
at least one selected processor at said selected time," as recited by claim 23.
(App. Br. 52-53; Reply Br. 15.) In particular, Appellant argues that "under
the claim language, the transmission of selected information of the selected
data unit by the memory means causes the intermediate input means to input
data" (App. Br. 52) but "the data storage means 36 of Summers does not
cause elements 14-26 of Summers [i.e., the intermediate input means] to do
anything" (id.). "In FIG. 2 of Summers, one can see very plainly that the
data storage means 36 receives signals from elements 14-26 [i.e., the
intermediate input means] but does not send any signals to elements 14-26."
(Id.)
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Appellant's arguments present the following issue:
Has Appellant shown that the Examiner erred in rejecting claim 23 under 35
U.S.C. § 102(b) as being anticipated by Summers?
The resolution of this issue turns on the following subsidiary issue:
Has Appellant shown that the Examiner erred in finding that Summers
teaches the step of "thereby to cause said intermediate input means to input
data of said selected data unit to at least one selected processor at said
selected time"?
Appellant's arguments that the Examiner erred in rejecting claim 23 as
being anticipated by Summers are persuasive. We agree with Appellant that
Summers does not teach the step of "thereby to cause said intermediate input
means to input data of said selected data unit to at least one selected
processor at said selected time," as claimed.
The Examiner found that elements 14-26 shown in Figure 2 of
Summers (see FF 6) correspond to the recited "intermediate input means"
and element 36 corresponds to the recited "memory means." (Ans. 27.) The
Examiner then found that the intermediate input means (elements 14-26)
input selected data units "into at least one selected 'processor means' (e.g.,
'such as a computer') via a 'memory means' (e.g., 36 of figure 2) that is
associated with the 'intermediate input means'." (Ans. 27.) According to the
Examiner, "Thereby, this configuration enables the 'intermediate input
means' to input the selected data unit to the 'processor means' (e.g., to the
computer) at [the] 'selected time' by permitting the selected data units . . . to
be held/delayed in said associated 'memory means' until said selected time."
(Ans. 27-28.)
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The Examiner relied upon the teachings of Summers found at
column 7, lines 56-68 to make the above-noted findings. (Ans. 27-28.) This
portion of Summers teaches that supplemental data could be used "to
program a data storage means 36 (FIG. 2) such as a computer at the
receiving end." (FF 7.) The supplemental data can be stored and used at a
later time, such as a pre-selected time. (FF 7.)
According to the language of claim 23, the step of "causing said
memory means to transmit selected information of said selected data unit at
a selected time" thereby causes the intermediate input means to input data to
at least one selected processor at a selected time. Summers does not teach
this interaction. Instead, Figure 2 of Summers merely shows that the data
storage means 36 receives data from elements 14-26. (FF 6.) There is no
indication that causing the data storage means 36 to transmit selected
information thereby causes elements 14-26 to input data to at least one
selected processor at a selected time.
In addition, claim 23 requires the intermediate input means to input
data to at least one selected processor at a selected time. The Examiner did
not find that the intermediate input means (elements 14-26) inputs data
directly to at least one selected processor. Instead, the Examiner found that
the intermediate input means inputs data to a memory means, where the data
is held or delayed until a predetermined time when the data is then input to
at least one selected processor. However, the Examiner's interpretation is
not consistent with the plain language of the claim which requires the
intermediate input means, not the memory means, to input data to the at least
one selected processor.
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Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 23 under 35 U.S.C. § 102(b).

§ 102(b) Rejection - Haselwood
Appellant argues that the detectors of Haselwood are not
pre-programmed to detect program identification information, as recited by
claim 26. (App. Br. 54; Reply Br. 16.) Appellant points out that the
Specification of the '414 patent distinguishes Haselwood and other prior art
references at column 6, lines 35-40, by stating that the prior art
has assumed monitored signals of particular format in particular
transmission locations and has lacked capacity to vary formats
or locations or to distinguish and act on the absence of signals
or to interpret and process in any fashion signals that appear in
monitored locations that are not monitored signals.

Appellant argues that, in contrast to the claimed detectors pre-programmed
to detect program identification information, "the decoder 28 in Haselwood
recovers information regardless of what that information is" (App. Br. 54)
and "all signals in Haselwood are treated in an identical manner by the
decoder 28" (App. Br. 54).
Appellant's arguments present the following issue:
Has Appellant shown that the Examiner erred in rejecting claim 26 under 35
U.S.C. § 102(b) as being anticipated by Haselwood?
The resolution of this issue turns on the following subsidiary issue:
Has Appellant shown that the Examiner erred in finding that
Haselwood teaches a detector pre-programmed to detect program
identification information?
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Appellant's arguments that the Examiner erred in rejecting claim 26 as
being anticipated by Haselwood are persuasive. We agree with Appellant
that Haselwood does not teach a detector pre-programmed to detect program
identification information, as claimed.
The Examiner found that the detector of Haselwood "must be
'preprogrammed,' . . . to operate to detect the embedded data . . . in order to
be detected (as described)." (Ans. 30.)
However, Haselwood teaches that the decoder 28 recovers encoded
information and applies that information to mini-computer 30. (FF 10; see
also FF 13.) Haselwood does not teach that the decoder 28 is pre-
programmed to detect program identification information. Instead,
Haselwood teaches that all information recovered by the decoder is applied
to the mini-computer. In addition, an interpretation that the decoders 28 of
Haselwood were pre-programmed to detect program identification
information would be contrary to the above-noted portion of Appellant's
Specification.
Furthermore, we note that the Examiner found that Haselwood's
teaching concerning the playing of a delayed broadcast (see FF 12)
"implicitly/necessarily" includes the steps recited in claim 26 of causing a
receiving station to record a selected television program unit, causing the
station to position the start of the program unit at the play head of a video
player, and causing the player to play and transmit at a selected time thereby
to cause the selected station to transmit the selected unit at the selected time.
(Ans. 29-30.) However, although such steps may possibly be performed by
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Haselwood, the Examiner has not convincingly demonstrated why these
steps are inherently performed by Haselwood.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 26 under 35 U.S.C. § 102(b).

§ 102(b) Rejection - Watson
The Examiner found that Watson qualifies as prior art under 35
U.S.C. § 102 because claim 7 is not entitled to claim the benefit of the 1981
application filing date. (Ans. 7, 31.)
However, as discussed supra, Appellant has shown that the Examiner
erred in finding that claim 7 is not entitled to claim the benefit of the 1981
application filing date. Therefore, Watson does not qualify as prior art.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 7 as being anticipated by Watson.

§ 103 Rejection - Niessner / Hutt / Etkin
The Examiner found that the subject matter of claims 5, 9, and 11
would have been obvious over Niessner, Hutt, and Etkin. (Ans. 33-35.) The
Examiner cited Etkin "because it evidences the fact that it was known to
have been desirable to have used automated programming recording
techniques to control the transfer of programming between stations during
the 'dark' hours [note part '8.' in the center column of page 32]" (Ans. 34)
and cited Hutt "because it evidences the fact that it was known to have used
the IDS data described in the Niessner publication for many control purposes
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beyond that which was explicitly described in the Niessner publication"
(Ans. 34-35).
Appellant argues that the Examiner erred in rejecting the subject
matter of claims 5, 9, and 11 as being obvious over Niessner, Hutt, and Etkin
for the same reasons discussed above with respect to claims 1, 2, and 6.
(App. Br. 57-59.) In particular, Appellant argues that Hutt and Etkin do not
remedy the above noted deficiencies of Niessner. (Id.)
Appellant's arguments are persuasive. As noted above with respect to
claims 1, 2, and 6, Niessner does not teach a first processor means for
identifying each detected control signal as having been detected by a
particular detector. Nor does Niessner suggest this subject matter. In
addition, there is no evidence before us to show that this limitation is a
predictable variation of the prior art. Nor is there evidence before us to
show that this limitation would be common sense or a creative step that a
person of ordinary skill in the art would employ. Furthermore, Hutt and
Etkin fail to remedy the deficiencies of Niessner.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 5, 9, and 11 under 35 U.S.C. § 103(a).

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CONCLUSIONS
Based on the findings of facts and analysis above, we conclude that:
(1) Appellant has shown that the Examiner erred in finding that claim
7 is not entitled to the benefit of the effective filing date of the 1981
application.
(2) Appellant has shown that the Examiner erred in rejecting claims
1, 2, 6-8, 10, and 12 as being anticipated by Niessner.
(3) Appellant has shown that the Examiner erred in rejecting claim 23
as being anticipated by Summers.
(4) Appellant has shown that the Examiner erred in rejecting claim 26
as being anticipated by Haselwood.
(5) Appellant has shown that the Examiner erred in rejecting claim 7
as being anticipated by Watson.
(6) Appellant has shown that the Examiner erred in rejecting claims
5, 9, and 11 as being obvious over Niessner, Hutt, and Etkin.

DECISION
The rejection of claims 1, 2, 5-12, 23, and 26 is reversed.

REVERSED

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MAT

Counsel for Patent Owner:

Goodwin Procter LLP
901 New York Avenue, N.W.
Washington, DC 20001

Counsel for Third Party Requester:

Banner & Witcoff
1001 G Street, N.W.
Washington, DC 20001