Ex Parte Iima et al

Board of Patent Appeals and Interferences

Sep 16, 2010

09920883 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte SHIN IIMA and HIROFUMI KANEMAKI
_____________

Appeal 2010-005875
Application 09/920,883
Technology Center 2600
______________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and CARL W.
WHITEHEAD, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-005875
Application 09/920,883

This is a decision on appeal under 35 U.S.C. § 6(b) of the rejection of
claims 1 through 14.
We affirm.
INVENTION
The invention is directed to a communication system which allows the
user to select the type of output of additional information such as
advertisements the user receives. See Paragraphs 2 of Appellants’
Specification. Claim 1 is reproduced below:
1. A communication apparatus comprising:
a receiving means for receiving a signal comprised of a
program signal and an additional signal;
a separating means for separating the program signal and the
additional signal from said received signal;
a determining means for determining whether to output in
accordance with said additional signal;
an output signal generating means for generating an output
signal by using said separated program signal and additional signal
upon determination to output in accordance with said additional signal
and for generating the output signal by using said separated program
signal where it is determined not to output in accordance with said
additional signal; and
an outputting means for outputting information in accordance
with said generated output signal;
wherein the additional signal is displayed simultaneously with
the program signal inside or outside a window of a program
corresponding to the program signal; and
wherein a viewing fee is reduced by a predetermined amount
when the displayed additional signal is an advertisement and the
viewing fee is increased by a predetermined amount when the
displayed additional signal is an additional service.

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Appeal 2010-005875
Application 09/920,883

REFERENCE
Kim (Provisional) US 60/176,121 Jan. 14, 2000
Kim US 2002/0010927 A1 Jan. 24, 2002
Zigmond US 6,698,020 B1 Feb. 24, 2004

REJECTION AT ISSUE
The Examiner has rejected claims 1 through 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Zigmond in view of Kim. The
Examiner’s rejection is on pages 3 through 19 of the Answer.2

ISSUES
Appellants argue on pages 8 and 9 of the Brief3 and pages 3 and 4 of
the Reply Brief that the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a) is in error. Appellants argue that the provisional application upon
which Kim derives a claim for priority does not teach simultaneously
displaying the program and the additional signal as claimed. Brief 7.
Initially, we note that subsequent to filing of the Briefs and the
Answer, we remanded this appeal, on June 8, 2008, for the Examiner to
determine whether the application on appeal is entitled to the foreign priority
date which would antedate the Kim reference and require a determination as
to whether Kim’s priority document taught the argued claim limitation.
Appellants provided a certified translation of the priority document on

2 Throughout this decision we refer to the Examiner’s Answer dated
November 3, 2006.
3 Throughout this decision we refer to the Appeal Brief dated September 28,
2006 and Reply Brief dated January 3, 2007.
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Appeal 2010-005875
Application 09/920,883

February 21, 2008. On May 29, 2009, the Examiner identified in an
annotation to the file that the certified translation is sufficient under 35
U.S.C. § 112 to support a claim for priority, although it is not clear whether
the Examiner communicated this determination to Appellants. Thus,
Appellants and Examiner have complied with the order of our January 8,
2008 Remand.
Thus, Appellants’ contentions present us with the issue: did the
Examiner properly find that the provisional application, upon which Kim
derives a claim for priority, teaches that the additional signal is displayed
simultaneously with the program signal inside or outside a window of a
program corresponding to the program signal?

ANALYSIS
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that provisional application 60/176,121 (hereinafter 121
application), from which Kim derives priority, teaches that the additional
signal is displayed simultaneously with the program signal inside or outside
a window of a program corresponding to the program signal. The Examiner
finds that page 1 and Figure 2 of the 121 application teach that the video
reconstruction unit outputs both the decoded signal (claimed program) and
the banner information (claimed additional signal) together, and that this
teaching meets the claim simultaneous display. Answer 20. The Examiner
further finds that the disclosure on page 4 of the 121 application discusses
that Kim’s purpose is to allow the user to watch a program along with a
commercial advertisement. Answer 21. We concur with the Examiner’s
findings. We recognize that Kim does not use the word “simultaneously” to
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Application 09/920,883

describe the display of the advertisement and the program. The Examiner
reasoned that simultaneous display is taught by Kim’s combining the
decoded video signal and the rendered banner information by the video
reconstruction signal to one video output. We find this reasoning to be
reasonable. We find no teaching or suggestion in the 121 application that the
display of the program information and the banner information is not to be
displayed simultaneously, e.g. we find no teaching that the program and
banner information are displayed sequentially. Further, we do not consider
the portions of the 121 application which Appellants cite to in the Briefs to
contradict the findings of the Examiner.
Further, in as much as Appellants’ arguments are not intended to be
directed to the claimed feature of simultaneous display but rather to the
claimed “inside our outside a window of a program” we are similarly un-
persuaded. As discussed above, we consider the Examiner’s finding that the
121 application teaches simultaneous display is reasonable; hence they are
both on the display device at the same time. While it is not clear whether the
application teaches the additional display is displayed inside or outside of
the same window as the program, the claim is met in either event, i.e. if the
additional information is not inside the display window and it is displayed
simultaneously, it must be displayed outside the window and the scope of
the claim encompasses either situation.
Accordingly, Appellants’ arguments have not persuaded us that the
Examiner erred in finding that provisional application 60/176,121, from
which Kim derives a claim for priority, teaches that the additional signal is
displayed simultaneously with the program signal inside or outside a
window of a program corresponding to the program signal.
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CONCLUSION
Appellant has not persuaded us of error in the Examiner’s error in the
Examiner’s rejection of 1 through 14.

ORDER
The decision of the Examiner to reject claims 1 through 14 is
affirmed.
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).

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Appeal 2010-005875
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AFFIRMED

ELD

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