Ex Parte Gershfeld

Board of Patent Appeals and Interferences

Jan 8, 2009

09740065 (B.P.A.I. Jan. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JACK GERSHFELD
_____________

Appeal 2008-2879
Application 09/740,065
Technology Center 2400
______________

Decided: January 8, 2009
_______________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and R. EUGENE
VARNDELL, Jr. Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claim 1.
We affirm the Examiner’s rejection of this claim.

INVENTION
The invention is directed towards a method of testing a video system
for degradation of a video signal by simultaneously displaying two images.
The first image is from a signal which has traversed the system (degraded
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Application 09/740,065

signal) and the second image is from an identical signal that has not
traversed the system. See pages 4 and 5 of Appellant’s Specification. Claim
1 is reproduced below:
1. A method of evaluating degradation of a video signal caused
by a circuit comprising the steps of:
(a) placing a first video signal in communication with an input
of the circuit;
(b) passing the first video signal through the circuit thereby
causing the circuit to output a degraded video signal;
(c) providing a means of synchronizing and combining video
signals having at least a first and a second input and one output,
placing the degraded video signal in communication with the first
input of the means of synchronizing and combining video signals;
(d) placing a reference video signal, identical to the first video
signal, in communication with the second input of the means of
synchronizing and combining video signals;
(e) placing the output of the means of synchronizing and
combining video signals in communication with a video display such
that full images of the degraded and reference video signals are
displayed simultaneously on different portions of the video display;
and
(f) visually comparing said full images to assess degradation of
the degraded video signal versus the reference video signal.

REFERENCE

Kaneko US 4,257,066 Mar. 17, 1981

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REJECTIONS AT ISSUE
The Examiner has rejected claim 1 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
The Examiner’s rejection is on pages 4 and 5 of the Answer1.
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Kaneko. The Examiner’s rejection is on pages 5 through
7 of the Answer.
ISSUES
Rejection under 35 U.S.C. § 112
Appellant argues on pages 3 through 5 of the Brief2 that the
Examiner’s rejection of claim 1 under 35 U.S.C. § 112 first paragraph is in
error. Appellant argues that contrary to the Examiner’s findings the term
“full image” is supported by the original Specification.
Thus, we are presented with the issue of whether Appellant has shown
that the Examiner erred in finding that the originally filed Specification lacks
support for the limitation of displaying the full image.

Rejection under 35 U.S.C. § 103
Appellant argues on pages 6 through 10 of the Brief that the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103 is in error. Appellant
argues that Kaneko teaches a system which displays half of one image and

1 Throughout the opinion, we make reference to the Answer, mailed
November 28, 2007, for the respective details thereof.

2 Throughout the opinion, we make reference to the Brief, received February
28, 2006 (as corrected via the paper received August 6, 2007) for the
respective details thereof.
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half of another image at the same time. Br. 8. Appellant, thus, concludes
that Kaneko does not teach displaying full images of two video signals
simultaneously. Br. 8.
Thus, we are presented with the issue of whether Appellant has shown
that the Examiner erred in finding that Kaneko teaches displaying two full
images simultaneously as claimed.

PRINCIPLES OF LAW
The written description requirement serves "to ensure that the inventor
had possession, as of the filing date of the application relied on, of the
specific subject matter later claimed by him; how the specification
accomplishes this is not material." In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). In order to meet the written description requirement, the
Appellant does not have to utilize any particular form of disclosure to
describe the subject matter claimed, but "the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed." In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). Put
another way, "the applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991) (emphasis in original). Finally, "[p]recisely how close the
original description must come to comply with the description requirement
of § 112 must be determined on a case-by-case basis." Eiselstein v. Frank,
52 F.3d 1035, 1039 (Fed. Cir. 1995) (quoting Vas-Cath, 935 F.2d at 1561).
In analyzing the scope of the claim, Office personnel must rely on
Appellant’s disclosure to properly determine the meaning of the terms used
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in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980
(Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to
be confused with adding an extraneous limitation appearing in the
specification, which is improper.’” (Emphasis original) In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (citations and
quotations omitted).

FINDINGS OF FACT
1. Appellant’s disclosure teaches, in Figure 1, a display 40 which
includes an image of a triangle and surrounding areas.
2. Appellant’s disclosure teaches, in Figure 2, a display 40 which
includes two images side by side. Each image includes a triangle and
surrounding area, the ratio of the surrounding area to the size of the
triangle in the images depicted in Figure 2 is different than in Figure
1.
3. Kaneko teaches a video system where there are two independently
tuneable sources that are simultaneously displayed. Abstract.
4. Kaneko teaches that the scan information is stripped from a first of the
signals. The system then operates using the scan information and
video information from the first signal for half of the scan interval,
and the scan information from the first signal with the video
information from the second video signal for the second half of the
scan interval. Col. 7, ll. 60-68, col. 8, ll. 5-10.
5. Based upon Fact 4, one skilled in the art would recognize that the
display during one scan interval would contain half of the image data
from the first signal and half of the image data from the second signal.
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6. Kaneko teaches that the images may be vertically arranged (first
above second below) or horizontally (first left, second right). Col. 9,
ll. 5-10.
ANALYSIS

Rejection under 35 U.S.C. § 112
Appellant has not persuaded us that the Examiner erred in finding that
the originally filed Specification lacks support for the limitation of
displaying the full image. Appellant argues that:
the originally filed specification and drawings make it clear that “full
image" means an image that has not been split, clipped, or otherwise
broken in parts. It is also clear from the originally filed specification
and drawings that "full image" can be scaled to fit on a certain portion
of the screen without being split, clipped or broken in parts.

Br. 4. Appellant argues that this definition is supported by Figures 1 and 2
which depict a full triangle in the display 40 of both figures, and because the
Specification does not discuss degradation of the image. Br 4-5. While we
are in partial agreement with Appellant’s proffered claim interpretation,
Appellant has not persuaded us that the originally filed Specification
provides adequate support under 35 U.S.C. § 112.
Claim 1 recites “combining video signals in communication with a
video display such that full images of the degraded and reference video
signals are displayed simultaneously on different portions of the video
display.” Thus, it is clear from the claim that the term “full image” is
referring to the image conveyed by the video signal. As identified by the
Examiner (Ans. 5), the term is not defined by Appellant’s Specification.
Appellant has not shown that the term is defined by the Specification, but
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rather proffers a definition and asserts that it is supported by the
Specification. Br. 4-5. Within the context of the claim, however, we find
that one skilled in the art would understand that the term “full image” would
mean that all of the image data in the video signal is displayed. Thus, we
find the scope of the term “full image” to be broader than argued by
Appellant, but agree with Appellant that the scope of the claim includes that
the image is not split or clipped.
However, we disagree with Appellant that the Specification
demonstrates that Appellant was in possession of the claimed feature of
displaying the full images of both video images side by side. As discussed
above, for the Specification to provide support, it must convey with
reasonable clarity that the Appellant was in possession of the invention.
Vas-Cath, 935 F.2d at 1563. Vas-Cath, 935 F.2d at 1561 Appellant’s
argument that the triangles shown side by side in display 40 of Figure 2 are
complete and, thus, the Specification supports that full images are displayed
is not persuasive. This argument confuses elements or objects in an image
with the image itself. The image displayed on display 40 of Figure 1
includes a triangle and surrounding area. Fact 1. Further, the image
displayed in display 40 of Figure 2 includes two images. Each image
includes a triangle and surrounding area. Fact 2. Thus, the triangle is an
element of the image and not the complete image transmitted by the signal.
It is unclear from the Specification if the Figure 1 image includes all of the
image data in the video signal. However, even if the display in Figure 1 is
the full image, it is clear that the images displayed in Figure 2 are not the full
images of the signals as the amount of area of the image to the sides of the
triangle is smaller, and the area above/below the triangles is larger (in
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relation to the triangle than in Figure 1). Thus, it is clear to one viewing the
images displayed on display 40 of Figures 1 and 2 that the side by side
images of Figure 2 are not “full images” of the video signals. As Appellant
has not persuaded us that the Examiner erred in finding that the originally
filed Specification provides support for the limitation of displaying the full
image, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112
first paragraph.

Rejection under 35 U.S.C. § 103
Appellant’s arguments have persuaded us that the Examiner erred in
finding that Kaneko teaches displaying two full images simultaneously as
claimed. In rejecting claim 1, the Examiner states:
Examiner finds no support for appellant assertion that the viewer in
Kaneko only sees the images half of the time. In fact, since Kaneko
states the images are simultaneously displayed, it is clear the images
are simultaneously at the same time. Examiner asserts that
simultaneous display was a term of art, well understood at the time the
invention was made, in the field of split screen and PIP TV systems,
to mean that the two images are displayed at the same time.

Ans. 10. We do not find that the evidence of record supports the Examiner’s
findings. As discussed above within the context of claim 1, the term full
image means that all of the image data in the video signal is displayed. We
agree with the Examiner that Kaneko teaches two video signals are
simultaneously displayed. Fact 3. However, we find that during the first
half of the scan interval data from one video signal is displayed, and during
the second half of the scan interval data from the second video signal is
displayed. Facts 4, 5. Thus, the two images displayed do not contain all of
the data in the video signals, and as such we do not find that Kaneko teaches
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or suggests, displaying full images side by side as claimed. Further, the
Examiner has not provided evidence to support the finding that simultaneous
display means that all of each of the images is displayed.3 Accordingly, we
will not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103.

SUMMARY
We sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112
first paragraph and we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103.

ORDER
The decision of the Examiner to reject claim 1 is affirmed.
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).

3 The Examiner has not provided evidence describing implementation of PIP
(Picture In Picture) technology. As such, it is unclear if, when implemented,
a portion of either of the pictures is obstructed (thus preventing a full image
of the obstructed image).
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AFFIRMED

Eld

VLADIMIR KHITERER
KHITERER LAW OFFICE
2901 W. COAST HWY., SUITE 200
NEWPORT BEACH, CA 92663
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