Ex Parte Reese et al

Board of Patent Appeals and Interferences

Oct 23, 2009

09819788 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL J. REESE,
DOUGLAS M. CAMENS, and PAULJ. BODELL
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Appeal 2009-003172
Application 09/819,788
Technology Center 2600
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Decided: October 23, 2009
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Before KENNETH W. HAIRSTON, KARL D. EASTHOM,
and ELENI MANTIS-MERCADER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 20. We have jurisdiction under 35
U.S.C. § 6(b).
We will sustain the rejections.
Appellants’ disclosed and claimed invention relates to a digital video
recorder-controller (DVRC) apparatus, digital video system, and a method
for expanding a digital video system (Abs.; claims 1, 12, and 17; Figs. 1 and
2). The system, method, and DVRC apparatus all include a network and a
network port for communicating with another apparatus on the network
(Abs.; Spec. 2-4; claims 1, 12, and 17). The DVRC apparatus (i) transmits a
first selection of digitized video signals through the network port to a first
other apparatus on the network, and (ii) receives a second selection of
digitized video signals transmitted by a second other apparatus on the
network through the network port (claim 1).
Claim 1 is representative of the claimed invention, and read as
follows:
1. A digital video recorder-controller apparatus (DVRC) comprising:

a network port for communicatively connecting the DVRC with at
least one other apparatus on a network;

wherein the DVRC is adapted to transmit through the network port a
first selection of digitized video signals, wherein the first selection includes
one or more digitized video signals being transmitted to a first other
apparatus on the network;

and wherein the DVRC is further adapted to receive through the
network port a second selection of digitized video signals, wherein the
second selection includes one or more digitized video signals being
transmitted by a second other apparatus on the network;
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wherein the DVRC is adapted to facilitate designation of the digitized
video signals of the second selection.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lang US 4,963,995 Oct. 16, 1990
Osakabe US 5,666,363 Sep. 9, 1997
Teng US 5,930,473 Jul. 27, 1999
Arazi US 6,330,025 B1 Dec. 11, 2001

(i) The Examiner rejected claims 1 to 6, 10, 11, 17, and 18 under 35
U.S.C. § 102(b) based upon the teachings of Lang.
(ii) The Examiner rejected claim 7 under 35 U.S.C. § 103(a) based
upon the teachings of Lang and Teng.
(iii) The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a)
based upon the teachings of Lang and Osakabe.
(iv) The Examiner rejected claims 12 to 16 and 19 under 35 U.S.C.
§ 103(a) based upon the teachings of Lang and Arazi.
(v) The Examiner rejected claim 20 under 35 U.S.C. § 103(a) based
upon the teachings of Lang, Arazi, and Osakabe.
In establishing a prima facie case of anticipation under § 102(b)
(rejection (i) supra), as well as obviousness under § 103(a) (rejections (ii)
through (v) supra), the Examiner relies upon Lang as teaching a DVRC
including a network port 22 for (i) transmitting a first selection of digitized
video signals to a first other apparatus, and (ii) receiving a designated second
selection of digitized video signals from a second other apparatus (Ans. 3-5).
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The Examiner determines (Ans. 3, 5, 8, and 12-13) that Lang’s elements 22
and 46 are a network port.

FINDINGS OF FACT (FF)
1. Appellants describe a DVRC 200 including a network port for
connection to a network (see Fig. 2; Spec. 2:10 to 4:3). The DVRC
200 can communicate through the network port with other DVRCs
(see DVRC-1 through DVRC-N in Fig. 1).
2. Appellants disclose that the network may be an Ethernet network
(Spec. 4:5, 13; Spec. 5:1-6; Spec. 13:11-12). Appellants also disclose
that “the network need not be limited to an ‘ethernet’ network, but
may be of any other known or future digital network technology
having sufficient bandwidth and being otherwise capable of
transmitting the digital video signals and control signals” (Spec.
15:16-19) (emphasis added).
3. Lang describes an audio/video recorder transmitter-editor 10 (VCR-
ET) with a digital control unit 14, audio/video transmitter/receiver 22
with keypad 45, and output port 46 for connection via modem to other
VCR-ETs (Figs. 1, 2; col. 8, ll. 20-50; col. 9, l. 31 to col. 10, l. 21).
“Output port 46 of transmitter/receiver 22 connects directly to the
telephone line” (col. 8, ll. 49-50).
4. Lang describes transmitting digitized video signals from VCR-ET 10
to another VCR-ET over a phone line via port 46 (col. 8, ll. 29-50;
col. 9, l. 55-68). A destination phone number may be entered using
keypad 45 (col. 8, ll. 46-47).
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5. Lang describes that VCR-ET 10 may also receive selected digitized
video signals from a remote VCR-ET through port 46 (col. 10, ll. 14-
16), the selection being made by digital control unit 14 which can edit
and select the video signals/frames as desired by the user (col. 6, ll.
23-42; col. 9, ll. 31-54). A digitized program of video signals may be
stored in a memory 13 “either in its entirety or in random segments,
based on user preference” (col. 10, ll. 4-5), and these video signals
may be received by one VCR-ET from another VCR-ET over the
phone line through port 46 and transmitter/receiver 22 (col. 10, ll. 14-
20).
6. Osakabe describes a bi-directional bus system (Figs. 6, 7) for
transmitting video signals and control signals between plural video
tape recorders 20/30 and video deck players 40 over a bi-directional
bus 1 (see Abstract; col. 6, ll. 54-58; col. 7, l. 14 to col. 8, l. 14).
Osakabe describes a master-slave relationship between the plural
video devices using a “control command” including a master address
field 102, slave address field 103, control field 104, and data field 105
(Figs. 1-3, 9; col. 1, l. 49 to col. 2, l. 31).

ISSUES
Anticipation
With regard to the anticipation rejection of independent claims 1 and
17 and dependent claims 2 to 6, 10, 11, and 18, Appellants argue, inter alia,
(App. Br. 5-8; Reply Br. 2-5) that Lang fails to teach or suggest a network
port for transmitting and receiving first and second selections of digitized
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video signals to respective first and second other apparatuses on the
network, as set forth in claim 1.
Based on Appellants’ arguments, the following anticipation issue is
presented: Have Appellants shown that the Examiner erred in determining
that Lang teaches a network port for connection to a network, as set forth in
independent claim 1?
Obviousness
With regard to the obviousness rejection of independent claim 12 and
dependent claims 7 to 9, 13 to 16, 19, and 20, Appellants argue, inter alia,
(App. Br. 8-12; Reply Br. 6-9) that Lang, taken singly or in combination,
fails to teach or suggest the network and network port recited in these
claims. In other words, Appellants contend that none of the secondary
references cures the deficiencies of Lang. Id. With regard to claims 8 and 9,
Appellants contend (App. Br. 10; Reply Br. 6-7) that (i) Osakabe fails to
teach the first control signal, and (ii) there is no motivation to combine
Osakabe with Lang because Lang has no possibility of external control.
With regard to claims 12 to 16, 19, and 20, Appellants contend (App. Br. 11-
12; Reply Br. 7-9) that there is no motivation to combine Arazi with Lange
because Lang deals with only one data source as opposed to several.
Based on Appellants’ arguments, the following obviousness issue is
presented: Have Appellants shown that the Examiner erred in determining
that Lang and the various secondary references (Teng, Osakabe, and Arazi),
taken singly or in combination, teach or suggest the DVRC apparatus,
system, and method, as set forth in claims 7 to 9, 12 to 16, 19, and 20?

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PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997).
Anticipation
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).
Obviousness
Appellant has the burden, when on appeal to the Board, to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006). The Examiner bears the initial burden of
presenting a prima facie case of obviousness, and Appellant has the burden
of presenting a rebuttal to the prima facie case. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Anticipation Rejection of Claims 1 to 6, 10, 11, 17, and 18
Representative claim 1 recites a DVRC having “a network port for
communicatively connecting the DVRC with at least one other apparatus on
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a network” (claim 1). The DVRC transmits and receives digitized video
signals to and from first and second other apparatuses on the network (see
claim 1).
Broadly interpreted, claim 1 only requires a DVRC with a network
port for connecting to other devices over a network. See Am. Acad. of Sci.
Tech. Cir., 367 F.3d at 1364. The phrase “network” broadly encompasses a
point-to-point or telephone connection between two devices, especially such
a connection which allows for transmission of digitized video signals.
The Examiner is correct that port 46 is a network port and the
telephone line and modem connection between devices is a network since
the lines making the connection transmit digital video signals and control
signals between devices (Ans. 12-13; Final Rej. 12; Advisory Action 3).
This is especially true in view of Appellants’ description of a “network” in
the Specification as any known technology capable of transmitting digital
video and control signals (FF 2).
Appellants’ argument that one of skill in the art would interpret the
term “network” as being synonymous with “Ethernet network” instead of
“point-to-point network” is unconvincing (Reply Br. 4-5). A proper
interpretation of claim 1, giving the claim its broadest reasonable
interpretation consistent with the Specification as understood by one of
ordinary skill in the art (Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005), has to rely on the meaning of “network” defined in the originally
filed Specification (FF 2). Appellants can be their own lexicographer, and
choose the words to be used in the claims. However, Appellants have
chosen to broaden the scope of the claims by using the term “network” in the
claims, and not “Ethernet network” (see claims 1, 12).
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Appellants’ contention (App. Br. 6-7; Reply Br. 5) that Lang fails to
teach a network port because element 22 is an audio/video
transmitter/receiver or modem for conventional telephone connection is
unpersuasive because (i) Lang’s output port 46 operates in cooperation with
modem 22 as a port to connect the VCR-ET to other VCR-ETs (FF 3, 4), (ii)
the Examiner relies on column 8, lines 28 to 50; column 9, lines 60 to 69;
and column 10, lines 14 to 20 which describe both elements 22 and 46 as
teaching a network port (see Ans. 12), and (iii) Lang discloses that the
transmitter/receiver 22 includes the output port 46 (FF 3). Therefore, the
Examiner’s reliance upon element 22 as being a network port is correct
inasmuch as element 22 includes output port 46, and elements 22 and 46
together perform the function of a network port.
Appellants’ arguments (App. Br. 7-8; Reply Br. 3-4) that Lang neither
enables nor teaches the limitation of claim 1 that “the DVRC is adapted to
facilitate designation of the digitized video signals of the second selection”
are unpersuasive. Lang describes receiving a DVRC 10 for receiving a
second selection of digitized video signals (e.g., the video signals are
selected either in their entirety or in random segments using digital control
unit 14) through port 46 from another DVRC (FF 5).
Thus, we find no error in the Examiner’s reliance on Lang as teaching
or suggesting a digital video device including a network port for connecting
to other digital video devices on a network (see Ans. 3-4; FF 3-5), at least to
the extent this feature is broadly claimed. See Am. Acad. of Sci. Tech. Cir.,
supra. Appellants have not shown that the Examiner erred in determining
that Lang teaches a network port for connection to a network, as set forth in
independent claim 1. Accordingly we will sustain the Examiner’s
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anticipation rejection of claim 1. Because (i) Appellants only present
nominal arguments as to claims 2 to 6, 10, 11, 17, and 18 (App. Br. 8; Reply
Br. 6), (ii) claim 17 contains features similar to claim 1, and (iii) for similar
reasons as discussed with respect to claim 1, we will also sustain the
Examiner’s anticipation rejection of claims 2 to 6, 10, 11, 17, and 18.
Obviousness Rejections of Claims 7 to 9, 12 to 16, 19, and 20
Turning next to the obviousness rejections of independent claim 12
and dependent claims 7 to 9, 13 to 16, 19, and 20, we find that Appellants
have not persuasively rebutted the Examiner's prima facie case of
obviousness for these claims (see Ans. 4-11). Kahn, 441 F.3d at 985-86;
Oetiker, 977 F.2d at 1445.
As indicated supra, Appellants argue that (i) Lang fails to teach or
suggest the network and network port recited in these claims for similar
reasons as argued with respect to claim 1, and (ii) that none of the secondary
references to Teng, Osakabe, and Arazi cures the deficiencies of Lang.
Appellants’ arguments are unpersuasive in light of our findings concerning
Lang (i.e., Lang teaches all of the limitations of claim 1 of a DVRC
apparatus having a network port for connecting to other devices on a
network) (see FF 3-5).
With regard to claims 8 and 9, Appellants’ contention (App. Br. 10;
Reply Br. 6-7) that (i) Osakabe fails to teach the first control signal, and (ii)
there is no motivation to combine Osakabe with Lang because Lang has no
possibility of external control is unconvincing. Osakabe describes a bi-
directional bus system for transmitting video signals and control signals
between plural video tape recorders 20/30 and video deck players 40 over a
bi-directional bus 1 (FF 6). Osakabe also describes a master-slave
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relationship between the plural video devices using a “control command”
including a master address field 102, slave address field 103, control field
104, and data field 105 (FF 6). The Examiner has provided a reason for
combining the teachings of Osakabe with those of Lang (i.e., generating
control signals from one apparatus to another to enhance functionality) (Ans.
7). Appellants have not adequately shown otherwise.
With regard to claims 12 to 16, 19, and 20, Appellants’ contention
(App. Br. 11-12; Reply Br. 7-9) that there is no motivation to combine Arazi
with Lang because Lang deals with only one data source as opposed to
several is unconvincing. Arazi describes plural data sources and the
Examiner has provided a reason for combining the teachings of Arazi (i.e.,
plural video cameras) with those of Lang (i.e., receiving video information
from plural cameras to enhance the capacity of Lang’s digital video recorder
by receiving additional video sources for recording) (Ans. 9). Appellants
have not adequately shown otherwise.
Appellants have not shown that the Examiner erred in determining
that Lang and the various secondary references (Teng, Osakabe, and Arazi),
taken singly or in combination, fail to teach or suggest the DVRC apparatus,
system, and method, as set forth in claims 7 to 9, 12 to 16, 19, and 20.
For all of the foregoing reasons, we sustain the Examiner’s
obviousness rejections of claims 7 to 9 and 12 to 16 which are based on the
teachings of Lang (see rejections (ii) through (iv) supra) for similar reasons
as claim 1. Appellants present no substantive arguments concerning the
obviousness rejections of claims 19 and 20 (see rejections (iv) and (v)
supra), and rely on the arguments for the patentability of claims 1 and 17
discussed supra (see App. Br. 11-12). We therefore sustain the Examiner’s
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rejection of (i) claim 19 over Lang and Arazi, and (ii) claim 20 over Lang,
Arazi, and Osakabe for the same reasons as those provided with respect to
claims 1 and 17.

CONCLUSIONS OF LAW
(i) Appellants have not shown that the Examiner erred in determining
that Lang teaches a network port for connection to a network, as set forth in
independent claim 1. Accordingly, we conclude that Appellants have not
shown the Examiner erred in rejecting claims 1 to 6, 10, 11, 17, and 18
under 35 U.S.C. § 102(b).
(ii) Appellants have not shown that the Examiner erred in determining
that Lang and the various secondary references (Teng, Osakabe, and Arazi),
taken singly or in combination, teach or suggest the DVRC apparatus,
system, and method, as set forth in claims 7 to 9, 12 to 16, 19, and 20.
Accordingly, we conclude that Appellants have not shown the Examiner
erred in rejecting claims 7 to 9, 12 to 16, 19, and 20 under 35 U.S.C.
§ 103(a).

ORDER
The decision of the Examiner rejecting claims 1 to 20 is affirmed.

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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).

AFFIRMED

KIS

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