Ex Parte Madsen et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10012723 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/012,723 11/05/2001 Steve Madsen DYOUP0225US 3096
23908 7590 09/28/2010
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVE MADSEN, TRACY CURRER, and
GRAHAM MICHAEL PULLIN
____________________

Appeal 2009-002127
Application 10/012,723
Technology Center 2100
____________________

Before JAMES D. THOMAS, CAROLYN D. THOMAS, and
STEPHEN SIU, Administrative Patent Judges.

C. THOMAS, 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.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 through 15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

According to Appellants, the invention relates to a graphical user
interface (GUI) for a remote operated vehicle (ROV) (Spec. 1, ll. 4-5).

Claim 1 is illustrative:
1. An icon burn-in process for a graphical user interface of a
remote operated vehicle for leisure use, comprising:

receiving a command signal to create the icon;

presenting a faded representation of the icon on a frame of real-
time video footage from a camera on the remote operated vehicle; and

progressively intensifying the icon from its faded representation
to a normal representation during further frames of the video footage.

Rejections
R1: Claims 1-3, 6, 8, 10-15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ho (US 6,439,956 B1, Aug. 27, 2002), Wheatley
(US 4,078,317, Mar. 14, 1978), and Smith (US 5,933,141, Aug. 3, 1999).
R2: Claims 4, 5, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wheatley, Smith, and Keely (US 6,337,698 B1, Jan.
8, 2002).

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GROUPING OF CLAIMS
1. Appellants argue claims 1-9 on the basis of claim 1 (App. Br. 6-
16; 18-19). We select independent claim 1 as the representative claim. We
will, therefore, treat claims 2-9, as standing or falling with representative
claim 1.
2. Appellants argue claims 10 and 12-15 as a group (App. Br. 16-
17). Claims 12-13 depends from claim 10, and Appellants do not present
separate arguments for claim 12-13 (App. Br. 17). Also, Appellants do not
present separate arguments for claims 14 and 15. Claims 14 and 15 are
commensurate in scope with claim 10 (App. Br. 23-24, see Claims App’x).
We select claim 10 as the representative claim. We will therefore treat
claims 12-15 as standing or falling with representative claim 10.
3. Appellants argue claim 11 separately (App. Br. 17).

FINDINGS OF FACT (FF)
Ho Reference
1a. Ho discloses:
After the start position box is selected to be added as a route
portion, the cursor may be moved to any of the adjacent boxes to
create the next step in the route. Thus, the route will be displayed as a
series of contiguous shaded boxes traveling in a pattern, or route,
around the LCD panel's grid of boxes.
According to this feature of the invention, the user may edit the
route by moving the cursor to one of the shaded boxes and pressing
the ‘delete a route’ button, or B button, and moving the cursor to a
different box and pressing the "add a route portion" button, or A
button. . . .
In operation, a cursor represented by a flashing shaded box or
other icon displays the starting step or position. Thereafter, when a
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box is selected as being added to the route, the corresponding box will
be shaded or bolded and the next set of selectable boxes adjacent the
selected box will be displayed as a series of empty but highlighted
boxes indicating that they, and only they, may be selected by the user
for the next step in the route (because the user must select one of the
contiguous boxes to ensure there are no gaps in route).
(See col. 6, l. 57 - col. 7, l. 16).

1b. Ho discloses:
Still further, a communications channel established between the
remote control unit and RC toy may be bidirectional to provide two-
way communications therebetween. The ‘reverse’ channel from the
RC toy to the game player via the remote control unit may support
such functions as control feedback, position reporting, video imaging
from an RC toy mounted camera, etc.
(Col. 4, ll. 2-9.)

1c. Ho discloses: “According to this aspect of the invention, the
‘Direct Control’ mode provides for real time remote operation of the car. In
this mode, the LCD panel preferably displays a simulated dash board and/or
view through a windshield of a car.” (Col. 6, ll. 10-14).

Wheatley Reference
2a. Wheatley discloses:
As indicated by its title, the aircraft size and intensity generator
124 performs the two functions of reducing the aircraft size and
the aircraft intensity, as it is observed by a viewer of the
simulator television display, so that the target begins to fade in
both size and intensity, as it is observed by a viewer of the
simulator television display, so that the target begins to fade in
both size and intensity as the range increases. This is for the
purpose of giving a more realistic display and is particularly
advantageous when simulating the flight of model aircraft
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which in fact are lost on occasion because they can be no longer
seen by the observer.
(Col. 9, ll. 56-65).

2b. Wheatley discloses:
FIGS. 3 and 4 are drawings of the television receiver 11 with
the illuminated portion of the video display shown as dotted
lines. The use of the dotted lines in the drawing is merely for
the purpose of identifying those illuminated portions of the
video which are to be visible to the observer as he operates the
system. However, these portions, as actually produced on the
screen and as seen by an observer of the TV raster may be
either dotted, dashed or solid lines.
(Col. 4, ll. 42-50).

Smith Reference
3. Smith discloses:
Such a control panel may be completely viewable (i.e., become
completely opaque) only when pointer 506 is moved to a
position above control panel 508. However, such a control
panel may be partially viewable (i.e, semi-transparent or semi-
opaque) when pointer 506 is moved to a position over control
panel 508. In such instance, the controls of this control panel,
as well as the control panel 508, are referred to as progressively
transparent.
(Col. 7, ll. 56-63.)

PRINCIPLES OF LAW
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). If the
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Examiner's burden is met, the burden then shifts to the Appellants to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). To facilitate
review, this analysis should be made explicit. But it need not seek out
precise teachings directed to the challenged claim's specific subject matter,
for a court can consider the inferences and creative steps a person of
ordinary skill in the art would employ. Id. at 418.

ANALYSIS
Claims 1-9
Issue 1a: Did the Examiner err in finding the prior art teaches or
suggests (1) “presenting a faded representation of the icon …,” and (2)
“progressively intensifying the icon from its faded representation to a
normal representation,” as set forth in claim 1?

Appellants contend that Ho’s “direct control” mode and Ho’s
“program route” mode do not include any of the features of claim 1 relating
to the display and fading /intensifying of an icon, as Ho’s “direct control”
mode and Ho’s “program route” mode fail to disclose an icon (App. Br. 9-
10).
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The Examiner finds that Ho discloses a mode in which “the user is
presented with the video of the route and the display of location icons on the
screen simultaneously” (Ans. 3-4). Further, the Examiner finds “these icons
(boxes in the example) [are] capable of being displayed in a[n] empty,
shaded, bolded, and highlighted fashion showing where the ROV [remote
operated vehicle] is and where it is going” (Ans. 4; see also Ans. 10).
The Examiner also finds that Wheatley “teaches the fading of an icon on the
screen in response to moving away from an object” (Ans. 4), both Ho and
Wheatley “overlay additional information over the video display” (Ans. 14),
and Smith discloses “icons being presented in a semi-transparent fashion
(faded) and progressively intensifying the icon until it reaches an opaque
state, during the same time the television source is playing in the
background.” (Ans. 14).
In other words, the Examiner has found in the combination of cited
references icons presented in numerous forms, including faded, highlighted,
transparent, and opaque (FFs 1a-1c, 2a). With respect to the claimed fading
and intensifying features of an icon, Appellants argue the fading/intensifying
aspects of the claim limitations with respect to the Ho reference (App. Br. 9-
10), and not the combination of Ho, Wheatley, and Smith. We note that
“[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Thus, Appellants have not persuaded us of error in the Examiner’s
finding that the combination of Ho, Wheatley, and Smith teaches or suggests
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(1) “presenting a faded representation of the icon …,” and (2) “progressively
intensifying the icon from its faded representation to a normal
representation,” as set forth in claim 1?

Issue 1b: Did the Examiner err in finding the prior art teaches or
suggests “presenting a … representation of the icon on a frame of real-time
video footage from a camera on the remote operated vehicle,” as set forth in
claim 1?

Appellants acknowledge that Ho discloses video images from a
camera mounted on a vehicle (App. Br. 10). However Appellants contend
“[t]here is no description of how such images should be integrated into
either the ‘direct control’ mode or the ‘program route’ mode.” (Id.).
The Examiner finds that Ho discloses a “dashboard being simulated
while the video footage is [being] seen through the windshield [and thus,]
allowing for real-time view” (Ans. 13). Further, the Examiner finds that
“[b]oth of these systems further overlay additional information over the
video” (Ans. 14). We agree with the Examiner.
For example, Ho discloses obtaining video form a camera mounted on
a remote controlled toy (i.e., remote operated vehicle) (FF 1b). Further, Ho
suggests obtaining real-time video from a camera, as Ho provides for real-
time remote operation of the car, where the LCD panel displays a view
through a windshield of a car (FF 1c).
Further, the Examiner cites Wheatley for disclosing displaying
information over video (Ans. 14). For example, Wheatley discloses placing
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dotted lines over video (FF 2b). Thus, we find that the combination of at
least Ho and Wheatley suggest the above argued features.
Accordingly, Appellants have not persuaded us of error in the
Examiner’s finding that the prior art teaches or suggests “presenting a . . .
representation of the icon on a frame of real-time video footage from a
camera on the remote operated vehicle,” as set forth in claim 1.

Issue 1c: Did the Examiner err in combining Ho, Wheatley, and
Smith?

Appellants argue that Wheatley does not have any “real[-]time video
footage to display since Wheatley relates to a flight simulator.” (App. Br.
12) (emphasis omitted). Appellants conclude “[t]hus, Wheatley offers little
if any guidance as to how a skilled person might modify the device of Ho . .
. in a manner yielding the subject matter of claim 1” (App. Br. 12) (emphasis
omitted). Additionally, Appellants contend “the fading feature of Wheatley
has no application in this [Ho’s program] mode” (see App. Br. 14).
The Examiner finds that “Wheatley teaches an analogous system [to
Ho] for displaying a virtual world on [a] display screen where the
user/operator is provided with a control means for effecting a ROV (whether
virtual or actual)” (Ans. 17). Further, the Examiner finds “[b]oth of these
systems further overlay additional information over the video display.” (Ans.
17).
In other words, the Examiner finds “[h]ere it would have been obvious
to one of ordinary skill in the art to apply the icon gradually fading (in/out)
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to the display of Ho to provide the predictable result of enabling a user to
know more about their location and feasible further actions.” (Ans. 18). We
agree.
Given that Ho teaches a remote control unit that displays a video view
from a windshield (FF 1c) and Wheatley teaches the overlay of information
over video (FF 2b), we find the Examiner’s rationale for combining Ho and
Wheatley (i.e., it would have been obvious to one of ordinary skill in the art
to apply the icon gradually fading (in / out), as suggested by Wheatley, to
the display of Ho, to provide the predictable result of enabling a user to
know more about their location and feasible further actions) reasonable.
With respect to Smith, the Examiner finds “Smith teaches … a means
for providing for the display of a set of controls (iconic elements), where the
icons are provided over the display of a television source, similar to the
display of icons over a video source of Ho and Wheatley” (Ans. 18).
Further, the Examiner finds “[t]his superimposing of graphics over a video
display is analogous to the issues faced in Ho and Wheatley, and further
shows a means of emphasizing a newly available element (runway, button,
etc.)” (App. Br. 18-19). We agree.
The Examiner’s articulated reasoning for combining Ho, Wheatley,
and Smith is sufficient to show a reason to combine the teachings of them.
We note that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
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Accordingly, we find that the Examiner did not err in combining the Ho,
Wheatley, and Smith references.
Thus, for all of the reasons noted above, we affirm the Examiner’s
§ 103(a) rejection of claim 1 and claims 2-9, which fall therewith.

Claims 10 and 12-15
Issue 2: Did the Examiner err in finding that the prior art teaches or
suggests progressively decreasing the opacity of an icon, as set forth in claim
10?

Appellants contends “Wheatley discloses decreasing intensity and the
Examiner does not explain how this relates to decreasing opacity[,]” as
recited in claim 10 (App. Br. 16).
The Examiner finds that “Smith teaches gradually changing the
opacity of a[n] icon” (Ans. 19).
As discussed supra, with respect to independent claim 1, Smith
suggests that the control panel moves between an opaque state (i.e., a normal
state) and a partially viewable state (i.e., a semi-transparent or semi-opaque,
or faded state), according to whether the pointer is moved towards, over,
above, or away from the control panel (FF 3). We find it would have been
obvious to one of ordinary skill in the art that Smith’s control panel
decreases in opacity when the control panel moves from an opaque state to a
partially viewable state.
Accordingly, we find Appellants have not persuaded us of error in the
Examiner’s finding that the prior art teaches or suggests decreasing opacity,
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as set forth in claim 10. Thus, we affirm the Examiner’s § 103 rejection of
claim 10, and claims 12-15 which fall therewith.

Claim 11
Issue 3: Did the Examiner err in finding that the prior art teaches or
suggests “the icon is progressively blurred simultaneously with
progressively decreasing its opacity,” as set forth in claim 11.

Appellants contend that the Examiner does not explain how the
reference to dithering and alpha blending suggests progressive blurring
simultaneously with progressive decreasing of an icon’s opacity” (App. Br.
17).
The Examiner finds “Smith teaches gradually changing the opacity of
a[n] icon … where dithering is [a] representation of an image by dots where
the blurring of the dot creates the image” and “whereas alpha bending
pertains to rendering an image via transparent and semi-transparent images”
(Ans. 19).
While the Examiner has shown that the concepts of blurring and
gradually changing the opacity of an icon are taught, we find that the
Examiner has not shown where the references suggest/teach progressively
blurring simultaneously with progressively decreasing the opacity, as
claimed in claim 11.
Therefore, we are persuaded of error in the Examiner’s findings that
the prior art teaches or suggests that “the icon is progressively blurred
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simultaneously with progressively decreasing its opacity,” as set forth in
claim 11. Accordingly, we reverse the rejection of claim 11 under
35 U.S.C. § 103.

Motivation to Combine
Issue 4: Did the Examiner err in combining Ho, Wheatley, Smith and
Keely?

Appellants contend “Keely in no way relates to the technical field of
remote control vehicles, actual or simulated” (App. Br. 19) (emphasis
omitted).
The Examiner finds that Keely teaches “a system in which a faded
representation of an icon is shown in an interface” and that “this icon goes
through a sequence of representation in a fade in process, similar to that of
the system of Ho, Wheatley, and Smith.” (Ans. 9). The Examiner further
finds that Keely teaches “an increasing . . . saturation of an icon that gives it
a glow and the impression of being newly ready to take action.” (Ans. 9).
Further, the Examiner finds that “[d]isplaying an icon in different phases has
shown to be a common theme in Ho, Wheatley, and Smith.” (Ans. 20). We
agree with the Examiner.
While Keely does not relate to remote control vehicles, Keely does
indeed relate to changes in an icon presentation. Thus, we find that it is
reasonable to combine the teaching of Keely with the teachings of Ho,
Wheatley and Smith.
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results,”
KSR, 550 U.S. at 416, especially if the combination would not be “uniquely
challenging or difficult for one of ordinary skill in the art,” Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418). Here, the Examiner merely combined familiar elements in
Keely with the other cited art according to known methods.
Thus, we find the Examiner did not err in combining Ho, Wheatley,
Smith, and Keely.

DECISION
The Examiner’s rejection of claims 1-3, 6, 8, 10, and 12-15 as
unpatentable over Ho, Wheatley, and Smith under 35 U.S.C. § 103(a) is
affirmed.
The Examiner’s rejection of claim 11 as unpatentable over Ho,
Wheatley, and Smith under 35 U.S.C. § 103(a) is reversed.
The Examiner’s rejection of claims 4, 5, 7, and 9 as unpatentable over
Ho, Wheatley, Smith, and Keely under 35 U.S.C. § 103(a) 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) (2009).

AFFIRMED-IN-PART

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RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115