Ex Parte Keskinen

Patent Trial and Appeal Board

Sep 23, 2013

11571225 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUKKA ANTERO KESKINEN1
____________________

Appeal 2011-003173
Application 11/571,225
Technology Center 2400
____________________

Before JEAN R. HOMERE, MARC S. HOFF, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-5, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Jukka Antero Keskinen. (App. Br. 1.)
Appeal 2011-003173
Application 11/571,225

2
STATEMENT OF THE CASE 2
The Invention
Appellant’s invention relates to the presentation of gestures of sign
language in different digital environments, such as television, video, DVD,
and with special equipment at movie theaters. Spec. 1:10-12.
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which we reproduce below (emphases added to disputed limitations):
1. A method for facilitating the watching of programs
shown on a screen, meant for deaf people and people with
hearing damage, comprising:
providing a digital picture screen showing a program;
producing a sign language interpretation with a
transparent hand and/or facial expression interpreting the
program shown on the digital picture screen; and
displaying gestures of the transparent hand and/or facial
expression on top of the program shown on the digital picture
screen so that the program displayed behind the transparent
hand and/or facial expression is visible through the transparent
hand and/or facial expression.

2 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
June 16, 2010); Examiner’s Answer (“Ans.,” mailed Sep. 2, 2010); Final
Office Action (“FOA,” mailed Apr. 15, 2010); and the original Specification
(“Spec.,” filed Dec. 22, 2006).
Appeal 2011-003173
Application 11/571,225

3
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
DeLeeuw U.S. 6,353,450 B1 Mar. 5, 2002
Horii U.S. 6,460,056 B1 Oct. 1, 2002
Van Der Meer U.S. 6,661,467 B1 Dec. 9, 2003
Rejection on Appeal
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Horii, Van Der Meer, and DeLeeuw.
Ans. 8.
ISSUE
Appellant argues (App. Br. 5-12) that the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Horii, Van Der Meer, and DeLeeuw is in error. These
contentions present us with the following issue:
Did the Examiner err in finding that the reference combination teaches
or suggests all the limitations of claim 1?
ANALYSIS
We have only considered those arguments actually made by Appellant
in reaching this decision, and we have not considered arguments which
Appellant could have made but chose not to make in the Brief and which are
therefore deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003173
Application 11/571,225

4
We disagree with Appellant’s conclusions with respect to claim 1, and
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellant admits, “Appellant does not claim to have invented the use
of transparent images displayed on a screen per se” (App. Br. 5), and that
The focus of the present invention is on displaying the sign
language interpretation with a transparent hand and/or facial
expression interpreting the program shown on the digital
picture screen so that the gestures of the transparent hand and/or
facial expression are displayed on top of the program shown on
the digital picture screen so that the program displayed behind
the transparent hand and/or facial expression is visible through
the transparent hand and/or facial expression.
App. Br. 5-6.
With respect to the cited prior art, Appellant contends DeLeeuw’s
transparent hand is merely a reflected image of the user’s hand displayed on
a computer screen used in a graphical user interface for interaction with
desktop icons, and that DeLeeuw’s concept would not be useful in
Appellant’s invention because the display of a deaf viewer’s own hand on
the screen would be meaningless, since display of sign language
interpretation is the aim. App. Br. 6-7. Further in this regard, Appellant
contends DeLeeuw does not teach use of another’s transparent hand, or a
step of producing sign language interpretation using a transparent hand
Appeal 2011-003173
Application 11/571,225

5
(and/or facial expression) that interprets the program shown on the screen.
App. Br. 9.
Appellant further contends that Horii does not make up for the
deficiencies of DeLeeuw because “Horii merely discloses displaying sign
language images in a frame in the corner of the screen and the signs are not
transparent.” App. Br. 7. In addition, Appellant contends Van der Meer
“merely shows boxes of subtitled text, as shown in Figs. 1-3.” Id.
Appellant also contends
[T]he cited reference[s] would require extensive modifications
that are not taught or suggested to arrive at the features of the
present invention. Appellant fails to see why a person of
ordinary skill in the art would look at the cited reference[s] to
learn about the method steps of the present invention when the
cited reference[s] fail to teach or suggest these method steps.
For example, none of the cited reference[s] teaches the step of
producing a sign language interpretation with a transparent
hand and/or facial expression interpreting the program shown
on the digital picture screen.
App. Br. 9.
Finally, Appellant contends the Examiner has not met the necessary
burden3 in establishing a prima facie case for unpatentability because the

3 The U.S. Supreme Court has held that “[t]he obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the
Examiner has set forth “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
Appeal 2011-003173
Application 11/571,225

6
only rationale provided to combine the references in the manner suggested is
an asserted benefit of the combination, and not an “articulated reasoning
with some rationale underpinning to support the legal conclusion of
obviousness, required under KSR” (App. Br. 11) and, in addition, the
Examiner has not provided facts in support of his legal conclusion that a
prima facie case for unpatentability has been made. App. Br. 12.
In response, the Examiner points out that DeLeeuw teaches a well-
known technique for producing a transparent hand gesture on a digital
picture screen and that DeLeeuw is not cited as teaching the claimed “ sign
language interpretation,” but instead is applied for its teaching of the recited
“creating a transparent hand gesture.” Ans. 8. Contrary to Appellant’s
contentions, the Examiner also points out that Horii is cited as teaching the
recited “method for facilitating the watching of programs shown on a
screen,” which is “meant for deaf people and people with hearing damage,”
and that the Final Rejection does not cite Horii as teaching transparent sign
language images. Ans. 8 (citing Horii Abstract, col. 5:8-13 and 14-22).
Finally, the Examiner points out that Van Der Meer discusses the
concept of using sign language to interpret the program showing on a digital
picture screen, but is not relied upon as teaching producing transparent hand
and/or facial expressions that interpret the digital picture screen. Ans. 9-10.
The Examiner concludes that the combination of Horii, Van der Meer and
DeLeeuw discloses all the claimed limitations of claim 1. Ans. 11.

441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at
418).
Appeal 2011-003173
Application 11/571,225

7
In response to Appellant’s contention that the Examiner had not
previously provided a rational underpinning to the unpatentability analysis,
cited supra, the Examiner provides an alternative motivation for combining
the references in the manner suggested, i.e.,
[I]t would have been obvious to one of ordinary skill in the art
to apply the techniques of producing transparent hand gesture
as taught in DeLeeuw, to improve the apparatus for displaying
sign language interpretation of the program shown in the digital
screen of Horii and Van Der Meer for the predictable result of
enabling hearing impaired television viewer aware of what is
going on in Television program that is being shown on the
television display.
Ans. 13. We find that this stated basis of motivation to combine the
references as set forth by the Examiner is reasonable, remains unrebutted by
Appellant, and meets the requirements imposed on the Examiner by KSR.
We therefore agree with the Examiner’s finding that the combination
of Horii, Van Der Meer, and DeLeeuw teaches or suggests Appellant’s
claimed method since, as discussed above, each of the claimed limitations
has been shown by the Examiner as being known in the art. Ans. 7-11. We
further agree with the Examiner that a person with skill in the art would have
been motivated to combine the references in the manner suggested. Ans. 13.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 1. As
Appellant has not provided separate arguments with respect to dependent
Appeal 2011-003173
Application 11/571,225

8
claims 2-5, we similarly sustain the Examiner’s rejection of these claims
under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner did not err with respect to the unpatentability rejection
of claims 1-5 under 35 U.S.C. § 103(a) over the combination of Horii, Van
Der Meer, and DeLeeuw, and the rejection is sustained.
DECISION
The decision of the Examiner to reject claims 1-5 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) (2011).
AFFIRMED

msc