Ex parte SRIVASTAVA et al.

Board of Patent Appeals and Interferences

May 29, 1998

08089320 (B.P.A.I. May. 29, 1998)

Application for patent filed July 9, 1993. 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journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GOPAL K. SRIVASTAVA and PETER C. SKERLOS
____________
Appeal No. 95-4131
Application No. 08/089,3201
____________
ON BRIEF
____________
Before HAIRSTON, BARRETT and TORCZON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 8.
The disclosed invention relates to a method and apparatus
for operating an interactive video communications system.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
Appeal No. 95-4131
Application No. 08/089,320
2
1. A method of operating a video communication system
comprising:
repetitively transmitting sequential video data defining a
video program organized into equal duration segments, each
segment comprising a fixed number of fields, in a fifo memory
having individual segment taps corresponding to said segments,
said video data including information identifying the beginning
and ending segments of said video program;
selecting a segment tap corresponding to the beginning of
said video program responsive to a viewer request;
supplying said video program from the selected segment tap
to a one segment-long resettable fifo memory having field taps
corresponding to said fields; and
supplying said video program to said viewer from one of said
field taps.
No references were relied on by the examiner.
Claims 1 through 8 stand rejected under the first paragraph
of 35 U.S.C. § 112 as being based upon a non-enabling disclosure.
Reference is made to the brief and the answer for the
respective positions of the appellants and the examiner.
OPINION
According to the examiner (Answer, pages 3 and 4), the lack
of enablement rejection was instituted because:
Applicant has failed to adequately describe the
memory means (segment memory (12)) as shown in the
Figure which is a FIFO memory having the capability of
storing at all times an entire video program as stated
within the specification on page 2, lines 16-21.
Examiner is unaware of any presently available single
Appeal No. 95-4131
Application No. 08/089,320
3
FIFO memory device having sufficient storage
capabilities to store an entire video program at all
times.
In addition, as previously mentioned above,
Applicant has disclosed within the specification on
page 2, lines 16-17, that the segment memory (12) is a
first-in-first-out memory (FIFO). However, the segment
memory (12) is disclosed as being divided into segment
taps each of which can be individually accessed by a
program request from the viewer to be a starting point.
Therefore, the first segment tap need not be selected
as the starting point. This would lead one of ordinary
skill in the art to the conclusion that the segment
memory is not a single FIFO memory device as disclosed
by applicant but instead must comprise several segment
taps each representing a FIFO memory device. If the
memory was a FIFO memory device as disclosed by the
specification, drawing, and claims then the data first
stored in the first segment tap would have to be read
out first, as is inherent of a FIFO memory device.
However, Applicant discloses in the specification that
such is not the case because the user may make a
selection such that the data stored within the first
segment tap is not accessed first. This once again
reinforces the conclusion that the device as disclosed
in the specification, drawing, and claim[s] fails to
provide enabling disclosure.
Appellants response (Brief, pages 3 and 4) to the examiner’s
position is that:
The Examiner is arbitrarily defining a fifo memory
as a single device. Presumably this means that the
memory must be available in a single package. It is
respectfully submitted that there is absolutely no
justification for this position. While it seems clear
that those skilled in the art would recognize that no
currently available single memory device could contain
an hour or so of video program, they would certainly
know to cascade a plurality of memories or delay lines.
Appeal No. 95-4131
Application No. 08/089,320
4
Since the disclosed and claimed invention never mentions a
“single” FIFO, we are of the opinion that the examiner is reading
the claimed invention in a much too restrictive light. During
patent examination, claims must be interpreted as broadly as
their terms reasonably allow. See In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The examiner has
astutely recognized that a single FIFO does not possess
sufficient storage capability to store a whole program, and that
a FIFO does not have taps. The examiner has likewise recognized
that a FIFO type memory with taps would have to be implemented
using a FIFO memory at each tap. The program data from each tap
would then be read out in a first-in-first-out manner. Thus, we
agree with appellants (Brief, page 4) that the skilled artisan
“would certainly know to cascade a plurality of memories” to
properly implement a FIFO type memory with taps. The skilled
artisan would not have to resort to undue experimentation to
arrive at such an implementation. As indicated in Genentech,
Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364, 42 USPQ2d 1001,
1004 (Fed. Cir.), cert. denied, 118 S.Ct. 397 (1997), the
enablement clause of the first paragraph of 35 U.S.C. § 112 only
requires that the disclosure adequately describe the claimed
invention so that the artisan could practice it without undue
Appeal No. 95-4131
Application No. 08/089,320
5
experimentation. The lack of enablement rejection of claims 1
through 8 is reversed.
DECISION
The decision of the examiner rejecting claims 1 through 8
under the first paragraph of 35 U.S.C. § 112 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-4131
Application No. 08/089,320
6
Patent Department
Zenith Electronics Corporation
1000 Milwaukee Avenue
Glenview, IL 60025
KWH/jrg
APPEAL NO. 95-4131 - JUDGE HAIRSTON
APPLICATION NO. 08/089,320
APJ HAIRSTON
APJ TORCZON
APJ BARRETT
DECISION: REVERSED
Typed By: Jenine Gillis
DRAFT TYPED: 12 Jan 99
FINAL TYPED:
3 MEMBER CONF. Yes No