Ex Parte Bessel

Board of Patent Appeals and Interferences

Jun 21, 2012

09826198 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/826,198 04/04/2001 David H. Bessel SOA-0472 (50P4377) 2595
23353 7590 06/22/2012
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
PARRY, CHRISTOPHER L
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
06/22/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID H. BESSEL
____________

Appeal 2011-010817
Application 09/826,198
Technology Center 2400
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 5, 7-11, and 28-34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to processing analog and digital video signals
for output to a television set and a digital recording device. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A television signal processing and recording system for
handling both digital and analog video signals, said system
comprising:

an analog signal path comprising an analog tuner, a video
decoder for converting an analog signal to a digital signal, and
an encoder for compressing said digital signal output by said
video decoder;

a digital signal path comprising a digital tuner and a
demultiplexer; and

a connection for routing said compressed digital signal from
said encoder of said analog signal path to said demultiplexer;

wherein said demultiplexer outputs a demultiplexed signal to
either a decoder with output to a display device or a digital data
storage device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barton US 6,233,389 B1 May 15, 2001

Applicant’s Admitted Prior Art (“AAPA”)

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REJECTIONS
Claims 1 and 28 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 5, 7-11, and 28-34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over AAPA and Barton.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
“whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). "[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite." Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).

ANALYSIS
The Indefiniteness Rejection
Appellant contends that the claimed “demultiplexer” should be given
the conventional meaning of the term—“an electronic device that separates a
multiplex signal into its component parts”—which Appellant argues is
consistent with the Specification (App. Br. 10-11) (citing Merriam-Webster,
http://www.merriam-webster.com/dictionary/demultiplexer). The Examiner
responds that one of ordinary skill in the art would interpret the claimed
“demultiplexer” as a switch because it determines where to route an output
signal (Ans. 13). The Examiner thus finds that the term “demultiplexer” is
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indefinite because it is unclear whether the “demultiplexer” should be given
its conventional meaning or a specialized meaning similar to the function of
a switch (Id.).
We construe the claimed “demultiplexer” as a conventional
demultiplexer with the additional capability to switch output signals either to
a decoder for output to a display device or to a digital data storage device,
for the following reasons. First, the claim 1 language “said demultiplexer
outputs a demultiplexed signal” recites a demultiplexing functionality of the
“demultiplexer.” This interpretation is consistent with Appellant’s
Specification which describes routing a digital signal to demultiplexer 103
(Spec. ¶ 45), and then performing the following actions:
After demultiplexing, the digital signal, which was
compressed before broadcasting, can be sent to and recorded on
a hard disk drive (107) or other digital recording medium.
Alternatively, the signal can be decompressed by an MPEG2
decoder (104). The decompressed digital signal can then be
sent to a television set (106) for display.

(Spec. ¶ 46) (emphasis added). Further, the Examiner has not pointed to any
description in the Specification defining a demultiplexer in a contrary
manner, that is, as inoperable to demultiplex an input signal. Thus,
regardless of any other functions the claimed “demultiplexer” is capable of
performing, one of ordinary skill in the art would understand that the
claimed “demultiplexer” is at least capable of demultiplexing an input
signal.
Second, claim 1 recites that the “demultiplexer outputs . . . to either a
decoder with output to a display device or a digital data storage device.”
The language “outputs . . . to either . . . or” recites a switching functionality
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of the “demultiplexer.” This interpretation is consistent with Appellant’s
Specification, (see Spec. ¶¶ 45- 46), and with Appellant’s Figure 2 which
shows two separate output paths from demultiplexer 103—one to the PVR
hard disk drive 107, and another to the MPEG2 decoder 104. The
configuration in Figure 2 indicates that the switching or routing between the
two output paths occurs in demultiplexer 103. Thus, one of ordinary skill in
the art would understand that the claimed “demultiplexer” is operable to
switch between two different output paths, in addition to demultiplexing an
input signal.
We therefore find that the Examiner erred in rejecting claim 1 as
indefinite in view of the clear and unambiguous construction of
“demultiplexer” as a conventional demultiplexer with the additional
capability to switch the output between two different output paths. Claim 28
recites a commensurate “demultiplexer” limitation, and the rejection thereof
is also not sustained for similar reasons.

The Obviousness Rejection
Appellant contends that Barton does not disclose a demultiplexer, and
thus, Barton is not relevant to claim 1 (App. Br. 12). Accordingly, AAPA
and Barton fail to collectively disclose “a connection for routing said
compressed digital signal from said encoder of said analog signal path to
said demultiplexer” (App. Br. 12-13).
We disagree. The Examiner relies on AAPA for the limitation “said
demultiplexer outputs a demultiplexed signal” (see Ans. 6). However, the
claimed “demultiplexer” also includes output switching functionality, as
discussed above. The AAPA’s demultiplexer 103 in Appellant’s Figure 1
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includes output switching functionality—the output can be routed to PVR
hard disk drive 107 or to MPEG2 decoder 104 for display on television set
106 (see Ans. 6, 15; Spec. ¶ 19). Barton also discloses switching a signal
between a hard disk and an MPEG decoder, but further discloses that the
switched signal can be an MPEG encoded signal from an analog signal path
(see Ans. 7, 15-16; Barton, col. 6, l. 26-col. 7, l. 4).
Appellant argues that “Barton only becomes relevant to Applicant’s
claims if, as the [Office] Action attempts, one inappropriately redefines the
term ‘demultiplexer’ to mean switch” (App. Br. 12). However, Appellant
does not explain why Barton would not be relevant where the claimed
“demultiplexer” is construed to include certain switching functionality, as is
the case here. Thus, we are not persuaded that it would have been
nonobvious, in view of Barton, to connect the output of AAPA’s MPEG2
encoder 105 in the analog signal path to the AAPA’s demultiplexer 103 to
switch the MPEG2 encoder output to either PVR hard disk drive 107 or
MPEG2 decoder 104. Therefore, we find that the Examiner did not err in
rejecting claim 1, and claims 5, 7-11, and 28-34 not separately argued.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1 and 28 under 35 U.S.C.
§ 112, second paragraph, but did not err in rejecting claims 1, 5, 7-11, and
28-34 under 35 U.S.C. § 103(a).

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DECISION
For the above reasons, we affirm the rejections of claims 1, 5, 7-11,
and 28-34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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