Appeal No. 1999-0189
Application No. 08/344,691
different general inventive concept -- i.e., the
recovery of information stored on the disc.
The different general inventive concepts claimed
in the appealed recording claims and the claims of
the ‘131 patent are further exemplified by the
disparate language recited in those groups of
claim[s]. For example, the apparatuses and methods
recited in the appealed recording claims are
directed to devices and steps for receiving a video
signal to be recorded and an audio signal to be
recorded. Clearly, no such devices or steps are
required in playing back information from a disc.
Because the appealed recording claims recite a
general inventive concept different from that of the
claims of the ‘131 patent, Applicant was prevented,
by operation of 37 C.F.R. § 1.141 (1985), from
presenting the appealed recording claims for
examination during prosecution of the ‘131 patent in
1985-86. Thus, step 2 of the Schneller-based double
patenting test is not satisfied with respect to the
appealed recording claims, and the rejection of
those claims should be withdrawn.
Similarly, the appealed playback claims (Claims
45, 46, 50, 51, 54, 56 and 58) recite apparatuses
and methods relating to the reproduction of
information from a disc. The subject matter of the
appealed playback claims forms a general inventive
concept different from that of the inventions
defined by the claims of the ‘131 patent for the
following reason: Each of the appealed playback
claims recites a device or step for audio
normalizing a received video/audio signal. The
general inventive concept defined by the appealed
playback claims allows the signal output from the
devices and methods claimed therein to utilize the
full dynamic range of an audio circuit. That same
general inventive concept is not present in any of
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