Ex Parte Harris

Patent Trial and Appeal Board

Jul 29, 2013

10754120 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SCOTT C. HARRIS
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Appeal 2010-0104511
Application 10/754,120
Technology Center 2400
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Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
JEREMY J. CURCURI, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Harris Technology, LLC. (App Br. 2.)
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-20. (App. Br. 4.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for displaying video content
in non-overlapping portions of a screen, whereby the greater portion of the
screen is allocated to video content deemed to be of interest to the user, and
whereas undesired content occupies a relatively smaller portion thereof.
(Fig.4, [0024].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A system, comprising:
a first element which characterizes content of a video
source, where the video source which includes information for
first and second separated display parts; and
a display driver which produces outputs for said first and
second display parts to be separately displayed from one
another on separate portions of a display screen with said first
and second display parts displayed on non-overlapping portions
on said display screen, said first and second display parts being
separated based on a determination of said content, where the
determination is a type of content in each of said first and
second display parts, and where said display driver sets a
portion size of the display said first display part will occupy
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relative to an amount that said second display part will occupy,
and where at a first time when a first content is displayed as
said first display part, said first and second display parts are
displayed with a first size ratio therebetween formed of first and
second outer shapes; and where at a second time when a second
content is displayed as said first display part, said first and
second display parts are displayed with a second size ratio
therebetween, and with said first and second outer shapes,
where said second size ratio is different than said first size ratio.

Prior Art Relied Upon
DeLuca US 5,973,723 Oct. 26, 1999
Cavallerano US 6,320,623 B1 Nov. 20, 2001
Dimitrova US 2002/0140862 A1 Oct. 3, 2002
Hasegawa US 2003/0018979 A1 Jan. 23, 2003
Gutta US 2002/0066077 A1 Apr. 3, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-4, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dimitrova, DeLuca,
and Gutta.
2. Claims 5, 6, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dimitrova, DeLuca,
Gutta, and Hasegawa.
3. Claims 8 and 10 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Dimitrova.
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4. Claims 11, 14-16, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dimitrova
and DeLuca.
5. Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dimitrova and Cavallerano.

ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 9-24, and the Reply Brief, pages 2-4.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Dimitrova, DeLuca, and Gutta teaches or
suggests displaying first and second display parts on non-overlapping
portions of a screen, as recited in claim 1?

Appellant argues that the proposed combination of references does not
teach or suggest the disputed limitations emphasized above. (App. Br. 9-24;
Reply Br. 2-4.) According to Appellant, Dimitrova discloses reducing the
size of or rendering semitransparent an undesired video portion displayed
together with a desired video on a screen in an overlapping manner. (App.
Br. 9-11.) However, Appellant argues that Gutta’s disclosure of displaying
two windows side by side would render Dimitrova unsuitable for its
intended purpose because it would no longer be suitable to redress
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overlapping windows problem, and thereby teaches away from the
invention. (Id. 9-12; Reply Br. 2-3.)
In response, the Examiner finds Gutta’s disclosure of displaying
video portions side by side on a single screen would not render Dimitrova’s
system of displaying the windows in an overlapping manner unsuitable for
its intended purpose. Rather, it would provide the ordinarily skilled artisan
with additional techniques for conveniently displaying the video portions
thereon. Accordingly, such proposed combination does not teach away from
the invention. (Ans. 22-23.)
Based upon our review of the record before us, we find no error with
the Examiner’s obviousness rejection regarding claim 1. We note at the
outset that there is no material dispute as to the above teachings of
Dimitrova and Gutta stipulated by both Appellant and the Examiner. Rather,
Appellant disputes the Examiner’s conclusion that one of ordinary skill in
the art would have found it obvious to combine Dimitrova’s teaching of
displaying the video portions in a picture-in-picture format with Gutta’s
system of displaying the videos in a split screen format. (App. Br. 9-15;
Reply Br. 2-3.) Therefore, the pivotal issue before us turns on whether the
combination of the afore-cited teachings of Gutta and Dimitrova as proposed
the Examiner would be proper within the context of obviousness. We
answer this inquiry in the affirmative. The U.S. Supreme Court has held that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
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KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further
instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418.
Additionally, the Court instructs that:
[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements. Instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.… [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted).
We find that the ordinarily skilled artisan, being a creative individual
would have been able to fit the teachings of Dimitrova and Gutta (including
established knowledge in the art) together like pieces of a puzzle to
predictably result in the disputed limitations. In particular, we agree with
the Examiner that the proffered combination of Dimitrova with Gutta would
predictably result in a system capable of displaying multiple video images
on a single screen in a picture-in-picture format as well as in a split-screen
format as depicted in Figures 5B and 5C of Gutta. (Ans. 23.) While it may
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be necessary for an Examiner to identify a reason for modifying the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some rational underpinning to substantiate the obviousness rejection,
such a conclusion is proper. In this case, the Examiner provides more than
just a mere conclusory statement. The Examiner notes that at the time of the
claimed invention, an ordinarily skilled artisan would have “recognized that
the split-screen display technique of Gutta would allow the display screen of
Dimitrova to display both screen portions on non-overlapping sections so
that a user can view both display portions with no interruption.” (Ans. 22.)
In our view, such a statement suffices as an articulated reason with a rational
underpinning to support the proffered combination. As noted above, the
case law allows the Examiner to look to the state of the prior art, including
the knowledge of the ordinarily skilled artisan to arrive at such a reason for
combining the known elements of the prior art. Consequently, the
Examiner’s reliance upon widely available knowledge in order to arrive at
an articulated reason with a rational underpinning to support the proffered
combination is proper.
Further, we do not agree with Appellant that not displaying the videos
in an overlapping manner would render moot the need to make a video semi-
transparent thereby making the solution proposed in Dimitrova unsuitable
for its intended purpose. (App. Br. 10.) First, we note that the intended
purpose of Dimitrova is not to render a video image transparent. Rather, it is
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to accommodate the simultaneous and unobstructed display of multiple
videos on a single screen. Consequently, Dimitrova proposes, inter alia,
rendering one of the videos semi-transparent on the screen when the videos
are superimposed in a picture-in-picture format. ([0011], [0021].) Second,
we note that because Gutta’s disclosure of displaying the videos in a split-
screen format is not criticism or discouragement from using Dimitrova’s
solution of displaying the videos in a picture-in-picture format, it does not
teach away from the invention. Rather, Gutta’s approach is viable
alternative for displaying the videos on the screen in an unobstructed
manner. Therefore, we find unavailing Appellant’s argument that Gutta’s
disclosure would render Dimitrova’s solution unsuitable for its intended
purpose or that it teaches away from the same.2 We are satisfied that because
the proposed combination would predictably result in a system that can
alternatively display the videos in a picture-in-picture format as well as in a
split-screen format, it teaches or suggests the disputed limitations. It follows
that Appellant has not shown error in the Examiner rejection of claim 1.

2 An argument that the system is rendered “unsuitable for its intended
purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, “French teaches away
from the board's proposed modification” because “if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose”). The Federal Circuit has held “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed.Cir.1994)).
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Regarding the rejection of claim 7, Appellant argues that the
combination of Dimitrova and Gutta does not teach or suggest a display
driver that limits a rate of change of the viewing size per specified time.
(App. Br. 15-19.) In response, the Examiner finds that “[b]y using a timer to
limit when he PIP can be changed, the threshold value of the timer
represents the unit of time and delaying when the PIP can displayed (sic) is
clearly controlling a rate of change.” (Ans. 24.) While Appellant generally
discusses the rejection of claim 7 in the Reply Brief (Reply Br. 3-4),
Appellant has failed to address the afore-cited specific new finding made by
the Examiner in the Answer. Consequently, Appellant has failed to show
error in the Examiner’s rejection of claim 7.
Regarding the rejection of claims 2-6 and 8-20, because Appellant has
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claims 1 and 7 above, claims 2-6 and 8-20 fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii). Further, while Appellant raised additional
arguments for patentability of the cited claims, we find that the Examiner
has rebutted in the Answer each and every one of those arguments by a
preponderance of the evidence. (Ans. 24-26.) Therefore, we adopt the
Examiner’s findings and underlying reasoning incorporated herein by
reference. Consequently, we find no error in the Examiner’s rejection of
claims 2-6 and 8-20.
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DECISION
We affirm the Examiner’s rejection of claims 1-20 as set forth above.

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

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