Ex Parte Harvey et al

Board of Patent Appeals and Interferences

Jun 24, 2009

08470571 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN C. HARVEY
and JAMES W. CUDDIHY
____________
Appeal 2007-001837
Application 08/470,571
Technology Center 2600
____________
Decided:1 June 24, 2009
____________

Before LEE E. BARRETT, JAMESON LEE, and MARK NAGUMO,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our decision entered March 20, 2009.
In particular, Appellants argue that we erred in interpreting the term
"coordinated display" in the limitation "a coordinated display using said
generated image and said video image" in claims 93 and 187.
The request for rehearing is granted.

1 The two month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2007-001837
Application 08/470,571

2
DISCUSSION
Our original decision affirmed the rejection of claims 56, 57, 58,
60-63, 65, 66, 73, 89, 90, 93, 100, 102, 107, 108, 187, 191, 192, 195, and
196 under § 103(a) over Hedger and Sedman and either one of Yoshino or
Bart. Appellants argue that we erred in interpreting "a coordinated display
using said generated image and said video image" in claims 93 and 187.
We stated in our decision, that the sole issue as to claim 93 is: "Does
the combination of references teach or suggest 'outputting said video
presentation . . . comprising . . . a coordinated display using said generated
image and said video image'?" (Decision 83). We noted that "[t]he
Examiner interprets a 'coordinated display using' to only require that the
generated image (stock performance in Hedger) and the television video
image are in a certain relationship, such as generated image being
superimposed on the video image in a certain place, for which the rejection
relies on the teachings of Yoshino or Bart" (Decision 83-84). We agreed
with the Examiner and interpreted that "Claim 93 does not define the
'coordinated display' as requiring more than 'using' the two images, i.e., it is
the display that is coordinated, not the display of the generated image with
the display of the video image" (Decision 84). Accordingly, we affirmed the
rejection of claim 93 and claim 187 which contains identical language.
Appeal 2007-001837
Application 08/470,571

3
Appellants argue that we erred in our interpretation by failing to give
the words "coordinated" and "using" different meanings (Req. Reh'g 4). It is
argued:

In accordance with a fair reading of the claim language, the recited
display uses the two images together to advance the required
coordination―it is the relationship between the combined
presentation of the two images that provides the meaning to the
viewer. Accordingly, the display using the generated image and the
video image is coordinated on the basis of the information used to
generate those images.

Req. Reh'g 5. It is argued that "[t]he 'coordinated display' limitation does
require the information upon which the generated image and the video image
are based be used to create the required coordination of the 'coordinated
display'" (Req. Reh'g 6). It is argued: "The information of the generated
image need not be coordinated with the video image. On the contrary, the
generated image itself must be 'coordinated' with the video image."
Req. Reh'g 7. Appellants explain how Figure 1C in the "Wall Street Week"
example shows a "coordinated display" (Req. Reh'g 8-11). "Appellants
submit that the term, 'coordinated display,' is properly interpreted to mean a
display where the images used in the display are displayed dependent on a
defined relationship between the content of the images." Req. Reh'g 12.
We are persuaded by Appellants' arguments. We adopt Appellants'
definition of a "coordinated display" as "a display where the images used in
the display are displayed dependent on a defined relationship between the
content of the images" (Req. Reh'g 12). Therefore, we agree that merely
superimposing a "generated image," such as the stock performance in
Appeal 2007-001837
Application 08/470,571

4
Hedger (p. 564), at a certain location on the display of the television
program, where the generated image has no defined relationship to the
content of the television program, is not "a coordinated display using said
generated image and said video image." Critical to our decision is the fact
that the "generated image" in Hedger has no defined relationship to the
content of the television program―the stock portfolio values are calculated
and displayed independent of the television program and, indeed, the
rejection relied on Yoshino and Bart to show that computer generated data
can be superimposed on television video.
While it appears that the display of closed captions for a television
program would have a defined relationship to the television program image
so as to constitute a "coordinated display," this does not satisfy the other
limitations of claims 93 and 187. In particular, claims 93 and 187 require
generating an image by processing a user specific subscriber datum which is
stored at the receiver station prior to organizing a signal that causes
generating the image (claim 93) or outputting the video presentation
(claim 187), which limitations are not met by closed captioning. Hedger
operates on stored data, but as we have noted, it does not teach a
"coordinated display" as we now define it.

CONCLUSION
The request for rehearing is granted. Accordingly, our original
decision is modified to the extent that the rejection of claims 93, 100, 102,
107, 108, 187, 191, 192, 195, and 196 under § 103(a) over Hedger and
Sedman and either one of Yoshino or Bart is reversed.
Appeal 2007-001837
Application 08/470,571

5
Requests for extensions of time are governed by 37 C.F.R. § 1.136(b).
See 37 C.F.R. § 41.52(b).

GRANTED

rwk

Goodwin Procter LLP
901 New York Avenue, N.W.
Washington, DC 20001