Ex Parte CHALLAPALI et al - Page 10




          Appeal No. 1996-4091                                                        
          Application 08/167,394                                                      



          quantizer information) into SD macroblock information (e.g., SD             
          type, motion vector and quantizer information).  Appellants argue           
          that Ng's Figure 4 does not transcode HD macroblock information             
          directly into SD macroblock information.                                    
                    On page 4 of the answer, the Examiner argues that Ng              
          discloses all the claimed subject matter of claim 1.  In                    
          particular, the Examiner argues that Figure 4 discloses the                 
          method for deriving SD macroblock information for said co-sited             
          macroblocks directly from said HD macroblock information so as to           
          form said second digital television signal as recited in                    
          Appellants' claim 1.  In particular, the Examiner directs us to             
          column 5, line 30, through column 6, line 45, of Ng for support             
          that Ng discloses the direct conversion of the HD macroblock                
          information into the SD macroblock information.                             
                    As pointed out by our reviewing court, we must first              
          determine the scope of the claim.  "[T]he name of the game is the           
          claim."  In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,            
          1529 (Fed. Cir. 1998).                                                      
                    We note that Appellants' claim 1 recites the step                 
          of deriving from each of the first group of macroblocks,                    
          corresponding HD macroblock information.  We further note                   




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