Ex parte ABT et al.

Board of Patent Appeals and Interferences

Mar 20, 1998

08029343 (B.P.A.I. Mar. 20, 1998)

Application for patent filed March 10, 1993. According to1
the appellants, this application is a continuation of Application
07/715,287, filed June 14, 1991, now abandoned.
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN ABT and
JAMES A. DELWICHE
_____________
Appeal No. 95-0840
Application 08/029,3431
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and FLEMING, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0840
Application 08/029,343
2
Appellants have appealed to the Board from the examiner’s
final rejection of claims 27 to 32, 34 to 40 and 42 to 51, which
constitute all the claims remaining in the application.
Representative independent claim 27 is reproduced below:
27. A non-additive mixer for video signals, comprising:
a first chrominance filter for receiving a first video input
and producing a first luminance signal;
a second chrominance filter for receiving a second video
input and producing a second luminance signal;
summation means coupled to receive the first luminance
signal and the second luminance signal and producing a mixer
control signal that is a linear function of the difference
between the first luminance signal and the second luminance
signal; and
a mixer coupled to receive the first video input and the
second video input and producing a video output representative of
the product of the first video input and the mixer control signal
plus the product of the second video input and the complement of
the mixer control signal.
There are no references relied on by the examiner.
All pending claims stand rejected under the first paragraph
of 35 U.S.C. § 112 as being based upon a non-enabling disclosure,
as well as the second paragraph of 35 U.S.C. § 112 since, in the
examiner’s view, the claims fail to particularly point out and
distinctly claim the subject matter which appellants regard as
their invention.
Appeal No. 95-0840
Application 08/029,343
3
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
Turning first to the rejection of the claims under the
second paragraph of 35 U.S.C. § 112, it is to be noted that to
comply with the requirements of the cited paragraph, a claim must
set out and circumscribe a particular area with a reasonable
degree of precision and particularity when read in light of the
disclosure and the teachings of the prior art as it would be by
the artisan. Note In re Johnson, 558 F.2d 1008, 1016, 194 USPQ
187, 194 (CCPA 1977); In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
Generally speaking, “[t]he test of enablement is whether one
reasonably skilled in the art could make or [sic and] use the
invention from the disclosures in the patent coupled with
information known in the art without undue experimentation.”
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d
1217, 1223 (Fed. Cir. 1988), citing Hybritech, Inc. V. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir.
1986).
Appeal No. 95-0840
Application 08/029,343
4
Under both tests the claimed invention must be viewed from
the artisan’s perspective, the one reasonably skilled in the art.
As to the enablement issue, we are in agreement with appellants’
position briefly stated at the middle of page 3 of the brief on
appeal that each of the recited elements in the claims on appeal
have corresponding structural and/or functional correlation to
the structural elements shown in Figs. 2 and 3 of the
specification’s drawing figures. Each of the respectively shown
elements is well known in the video signal processing art anyway.
Irrespective of the label attached to the claimed invention, we
are not persuaded by any of the examiner’s reasoning that the
artisan would have required undue experimentation to make and use
the presently claimed invention.
The real position apparently advocated by the examiner is
some form of misdescriptive labeling of the claimed invention in
the preamble as a non-additive video mixer. Initially, we note
that no such corresponding language appears in the body of each
independent claim on appeal. Therefore, the label of a non-
additive mixer in the preamble of each of these independent
claims appears to us to be a mere end use limitation that has no
real significant meaning in the body of the claim. Even if it
did, the examiner’s reasoning, even if it were correct, does not
Appeal No. 95-0840
Application 08/029,343
5
lead us to conclude that the artisan would have been in any way
deceived as to or find indefinite or vague the subject matter and
scope of the claimed invention.
Again, consistent with our enablement discussion, the claims
are clearly consistent with the written description and drawing
figures associated therewith. If the artisan were to agree with
the examiner’s view that in some manner the body of the claims
does not recite structure consistent with conventional meanings
in the art of a non-additive mixer, the artisan would have
clearly recognized this from the disclosure, the drawing figures
and the claims. Therefore, in this sense, the artisan clearly
would not have been deceived or otherwise view the presently
claimed subject matter as being unclear or indefinite in some
manner since the artisan clearly would have recognized the
misdescriptive nature of the invention as departing significantly
from prior art conventional understandings of non-additive
mixers.
We are also not convinced that the artisan would have been
convinced of such misdescriptive nature of each independent claim
on appeal since each in some form recites language to the effect
that the output of a mixer circuit is representative of the
product of the first video input and a mixer control signal plus
Appeal No. 95-0840
Application 08/029,343
6
the product of a second video input signal and the complement of
the same mixer control signal. This feature is recited in some
manner at least once in each independent claim on appeal. This
language corresponds to appellants’ implementation of the art-
recognized non-additive mixer equation introduced at the bottom
of page 4 of appellants’ specification.
At page 7 of the answer, the examiner considers this
equation to represent non-additive mixing as conventionally
defined in the art when the modifying values are exclusively “1”
or “0.” Page 5 of appellants’ specification at lines 9 through
13 indicate that appellants’ version of a non-additive video
mixer is functionally equivalent to what is known in the prior
art when, in rare instances, both offset signals of
representative Fig. 2 are zero and the gain control signal is at
a maximum or infinity. The so-called “softening” the transition
feature between the input video signals discussed at the bottom
of page 5 of the invention is clearly consistent with the aim of
the disclosure set forth in the first sentence of page 1 of the
written description where appellants indicate that the invention
is an improved video non-additive mixer circuit that provides
control over the point and rate of transition of video signals.
Appeal No. 95-0840
Application 08/029,343
7
The end result of appellants’ invention is a mixer control
signal that varies from 0.0 to 1.0 which the artisan would have
well recognized by definition is some form of modified version of
a conventionally defined non-additive mixer which traditionally
provides only variations of zero or one as modifying elements to
the conventional equation represented at the bottom of page 4 of
appellants’ written description. Accordingly, we find that
appellants’ claimed invention is definite within the second
paragraph and adequately disclosed within the first paragraph of
35 U.S.C. § 112.
In view of the foregoing, the decision of the examiner
rejecting claims 27 to 32, 34 to 40 and 42 to 51 under the first
and second paragraphs of 35 U.S.C. § 112 is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 95-0840
Application 08/029,343
8
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )

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