Ex Parte Proidl et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10015836 (B.P.A.I. Nov. 29, 2010)

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.
10/015,836 11/30/2001 Adolf Proidl AT 000068 3541
24737 7590 11/29/2010
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
SHIBRU, HELEN
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
11/29/2010 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 ADOLF PROIDL and ANDRAS KALMAR
________________

Appeal 2009-004521
Application 10/015,836
Technology Center 2400
________________

Before THOMAS S. HAHN, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004521
Application 10/015,836

STATEMENT OF CASE
Summary
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) over Hennig (US
5,956,455; issued Sep. 21, 1999) in view of Jackson (US 5,963,264; issued
Oct. 5, 1999). Appellants appeal under 35 U.S.C. § 134(a) from this
rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Background
Appellants’ invention relates to an error-tolerant recording
arrangement (claims 1-11) and a recording method (claims 12 and 13) for
recording television broadcasts. The television program, or “information
broadcast,” is delivered by an information signal. The information signal
also includes broadcast identification and a broadcast start time.
Appellants’ recording arrangement includes a recording control means
for evaluating the broadcast identification that is contained in the
information signal. The recording control means also evaluates a recording
start time. The recording start time is reached a lead time interval before the
broadcast start time that is contained in the information signal.
The recording arrangement starts recording the television broadcast
either when the broadcast identification is detected or when the recording
start time is reached (Abstract). By activating the recording upon the first
occurrence of either of these conditions, television broadcasts are supposed
to be recorded more reliably. This is because a program will be recorded
even if it starts early and even if an incorrect broadcast identification has
been provided in the information signal (Spec. 3).
2
Appeal 2009-004521
Application 10/015,836

Appellants assert, inter alia, that the obviousness rejection is improper
because “the combination of Hennig and Jackson fails to show material
elements recited in the independent claim[s]” (App. Br. 6). More
specifically, Appellants note that independent claims 1 and 12 both require
detection of a recording start time that is reached a lead time interval before
the broadcast start time (App. Br. 7, 11). They contend that the combined
prior art fails to disclose this limitation.
In the Response to Arguments section of the Examiner’s Answer, the
Examiner attempts to clarify the rationale underlying this aspect of the
rejection by explaining how the claim language is being interpreted:
[T]he present application specification or claim do not
specifically disclose or recite ‘the use of a recording start time
defined as a lead time interval before the broadcast start time of
the programmed information broadcast (emphasis added).’ the
present application discloses “recording start time is reached a
lead time interval before the broadcast start time of the
programmed information broadcast.” The two statements are
different.
(Ans. 7-8).

ANALYSIS
We understand the Examiner’s general position to be that while the
combined prior art does not disclose a recording start time that is defined to
be a lead time interval before the broadcast start time, the claims may be
interpreted more broadly so as to not require such a feature. We do not,
however, understand the specific point the Examiner is attempting to make
by noting that the claims recite the recording start time is “reached” as
opposed to “defined.” This fact seems to be a distinction without a
difference.
3
Appeal 2009-004521
Application 10/015,836

In order for us to sustain the Examiner’s rejection, then, we would
need to resort to impermissible speculation or unfounded assumptions or
rationales to supply deficiencies in the factual bases of the rejection before
us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we will
not sustain the Examiner’s rejection of independent claims 1 and 12 or of
claims 2-11 and 13, which respectively depend from these claims.

DECISION
We reverse the Examiner’s decision rejecting claims 1-13 as obvious
under 35 U.S.C. § 103(a).

4
Appeal 2009-004521
Application 10/015,836

REVERSED

ELD
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
5