Ex Parte Merril

Board of Patent Appeals and Interferences

Jan 22, 2009

09955939 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN R. MERRIL
____________

Appeal 2008-3185
Application 09/955,939
Technology Center 2100
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Decided: January 22, 2009
____________

Before JAMES D. THOMAS, JEAN R. HOMERE,
and STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
twice rejection of claims 1 through 23. We have jurisdiction under
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Application 09/955,939

35 U.S.C. § 6(b). This application is a CIP of 09/073,871, filed on May 7,
1998, and the subject of appeal 2003-1858 decided on March 12, 2004. An
Oral Hearing was conducted in this appeal on November 18, 2008.
We affirm.

A. The Invention
The disclosed invention relates to apparatus for capturing a live
presentation and/or digitally recording and storing a lecture presentation
using still images. Various means are disclosed for capturing these still
images during a lecture or live presentation. These include digital cameras
such as those in disclosed figures 2 and 4 that feed the video “capture” board
302 within the computer 102 as illustrated in figure 3. The
generation/capturing of still images may also be provided by the well known
software package PowerPoint ®.

B. Illustrative Claim
Claim 1 is considered exemplary and is reproduced below:
1. An apparatus for capturing a live presentation comprising:

means for capturing during the live presentation electronic still images
for display by a display device which displays said electronic still images for
viewing by an audience;

means for recording the audio portion of a speaker’s presentation
during a live presentation; and

means for automatically synchronizing change over from one
electronic still image to another with the audio recording.

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C. Prior Arts and Rejections
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fujioka US 5,414,481 May 9, 1995
Lin US 5,978,818 Nov. 2, 1999
Parasnis US 6,728,753 B1 Apr. 27, 2004
(filing date November 1, 1999)
Karam, Gerald M., “Visualization Using Timeliness”, Proceedings of
the 1995 ACM SIGSOFT International Symposium on Software
Testing and Analysis, August 1995, pp. 125-137.

Uchihashi, Shingo, “Video Manga: Generating Semantically
Meaningful Video Summaries”, Proceedings of the Seventh ACM
International Conference on Multimedia (Part 1), October 1999, pp.
383-392

Claims 1 through 10 and 17 through 22, stand rejected under
35 U.S.C. § 102(e) as being anticipated by Parasnis. In a first rejection
under 35 U.S.C. § 103, the Examiner relies upon Parasnis with Karam as to
dependent claim 11. As to claims 12 through 15, the Examiner relies upon
Uchihashi in view of Parasnis within 35 U.S.C. § 103 in a second stated
rejection under this statutory provision. In a third stated rejection under 35
U.S.C. § 103 as to claim 16, the Examiner relies upon Parasnis in view of
Uchihashi, further in view of Lin. Lastly, in the fourth stated rejection of the
claims under 35 U.S.C. § 103, as to claim 23, the Examiner relies upon
Parasnis in view of Fujioka.

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II. ISSUES
Based upon the contentions between the Examiner and the Appellant
derived from the Brief and Reply Brief as well as the Answer, the pivotal
issue before us is whether Appellant has shown that the Examiner erred in
finding that Parasnis anticipates one clause of independent claim 1 and one
clause of independent claim 20. More specifically, as to claim 1 the issue
focuses upon the claimed “means for capturing during the live presentation
electronic still images for display by a display device which displays said
electronic still images for viewing by an audience.” The corresponding
feature in independent claim 20 is the clause reciting “a capturing
component configured to capture digital still image data from data used to
generate the still image, while the still image is being displayed by the still
image generator.”
Secondary issues are provided by the limitations of dependent claims
2 through 5, and whether the Examiner has erred in finding that these
features are also taught by Parasnis. No other dependent claim within the
anticipation rejection has been argued in the Brief and Reply Brief.
Likewise, none of the first through fourth stated rejections within 35 U.S.C.
§ 103 for various other dependent claims have been argued in the Brief and
Reply Brief. Each of these separately stated rejections discussed at pages 10
and 11 of the principal Brief on appeal rely for patentability upon the quoted
feature with respect to their parent independent claim.

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III. FACTS AND ANAYLSIS
With respect to the Examiner’s initial statement of the rejection of
independent claim 1 on appeal relying upon the teachings at column 4 of
Parasnis as expressed at pages 5 and 6 of the Answer, the Examiner slightly
modifies his views with respect to the teachings of this reference at page 13
of the Answer where the Examiner focuses upon the illustrated NetShow
server capturing during a live presentation electronic still images for display
by a display device which displays said electronic still images for viewing
by an audience. The Examiner also relies upon the assertion that the claim
language does not preclude an alternative interpretation of the use of the
illustrated video camera such as in figure 9 of Parasnis as providing an
independent means of capturing both the presenter of the live presentation as
well as the still image projected on the projection screen as shown in figure
9.
Correspondingly, Appellant basically asserts as to independent claims
1 and 20 that electronic still images are not captured during a live
presentation and that the capturing of video is not a capture of electronic still
images as two major topics in both the Brief and Reply Brief regarding the
alleged absence of anticipatory teachings in Parasnis. The Examiner’s
additional reliance upon the NetShow server is discussed at page 2 of the
Reply Brief urging that Parasnis does not appear to teach sending HTML
slides to this server during a live presentation.

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We do not agree with these urgings. Of particular interest to us, and
in addition to those figures and teachings relied upon by the Examiner as to
Parasnis, we note the Abstract and the Summary of the Invention beginning
at column 3 through column 6 as well as the showings in figures 1, 3, 9
through 12, 19, and 20, for example. The PowerPoint presentation approach
utilized by Appellant in the disclosed invention to provide in part a basis of
capturing slide or still images is also taught extensively in Parasnis as a basis
for a presentation of corresponding still images. Figure 9 shows this to the
left of the figure as well as the actual use of a video camera that captures
both the images of the presenter as well as the projected still images (note
figure 10) which are correspondingly disclosed as video captured and audio
captured by the respective capture devices to the right middle of figure 9.
All of this is fed through encoding computer 1166 and sent to the NetShow
server 1170 and then correspondingly fed to Internet server 1190 and the
respective user display devices illustrated at the bottom of representative
figure 9.
Figure 12 is similar to figure 9 but does not utilize the NetShow server
1170. The encoder computer 1166 performs the running of the PowerPoint
presentation. With respect to the corresponding discussion of this figure in
the paragraph bridging columns 21 and 22, it appears that the capturing in
this embodiment includes the capturing of the audio and video presenter and
images of the live presentation but also the capturing of the presentation
slides which are all embedded within a given data stream for transmission to
the Network hub computer 1190.
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Thus, the artisan would well understand that there is a means for
capturing during a live presentation electronic still images for display by a
display device which displays the electronic still images for viewing by an
audience as claimed which includes the audience of the receiving viewers. It
is noted that claim 1 does not require the capture of the live presentation
itself nor does it require that the capturing be at a display device that
displays electronic still images. Likewise, the artisan would well understand
that there exists in Parasnis a capture component configured to capture
digital still image data from data used to generate the still images at the same
time or while the still image data is being displayed by a still image
generator as recited in independent claim 20.
Even though the bulk of the arguments in the Brief and Reply Brief
focus upon the pre-transmission of the HTML slide information prior to the
beginning of the live presentation such as by or through the NetShow server
relied upon by the Examiner in figure 9, from the viewer’s perspective of the
user looking at the display terminals at the bottom of figure 9, the capturing
is occurring during the live presentation shown at the top of figure 9.
Figure 10 of Parasnis appears to show the capturing of electronic still
images at the same time of the capturing of the actual presentation itself by
the video camera 1160 as in figure 9. In contrast to independent claim 20,
independent claim 1 does not require the capturing of digital still image data
but only the capturing of the “electronic” still images per se. Likewise, even
according to the figure 9 showing, the video camera 1160 does provide
through the video capturing circuits provided the middle of this figure digital
still image data for presentation to the viewers at the bottom of figure 9.
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Although not actually illustrated in figure 10, the video camera 1160
certainly is capable of capturing both the presenter of the live presentation as
well as the still images projected on the projection screen in figure 9 as
argued by the Examiner at the bottom of page 13 of the Answer.
Additionally, the above discussion relative to the showing at figure 12
illustrates the capturing of the actual digital image data per se among the
data that is transmitted in the data stream by the hub 1190 to the viewer at
the bottom of figure 12. Notwithstanding these actual teachings, the artisan
would well understand that video imaging per se encompasses the capturing
of a series of still images which are successively presented.
With respect to the separate arguments as to the features of dependent
claims 2 through 5 at pages 7 and 8 of the Brief, we agree with the
Examiner’s corresponding teachings pointed out in the initial statement of
the rejection as to these claims at page 6 of the Answer and the Responsive
Arguments portion of the Answer at pages 14 and 15 as well. The Reply
Brief itself only addresses at page 7 the feature of dependent claim 2 and
presents no additional arguments as to claims 3 through 5. We agree
initially with the Examiner’s slide presentation trigging signals that are
generated to be streamed with the actual video data as a base for the claimed
routing of signals used or intended to drive the display device. The
corresponding means in Parasnis includes the cabling as well as the
triggering of the signals discussed at column 4 as relied upon by the
Examiner. Even the arguments at page 7 rely in part upon a well known
interface cabling technique that is standard in the electronic arts. Their
remarks at page 7 of the Reply Brief also admit that Parasnis described
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generating certain script commands in response to slide trigger events and
routing them to the receiving computer but alleges that the reference does
not describe routing the signal intended to drive the display device to the
means for synchronizing as in claims 2. In addition to the actual portion of
column 4 relied upon by the Examiner in Parasnis, the discussion following
through a good portion of column 5 expands upon the streaming capabilities
of the actual data signals conveyed to the viewing audience, such as those at
the bottom of figure 9 and 12 of Parasnis. Thus, the arguments at pages 4
and 5 of the Reply Brief regarding this claim are also unpersuasive.
Moreover, the data streaming teachings in Parasnis, well recognized by
Appellant, are also consistent with the Appellant’s own teaching at
Specification page 13 of the “capturing” of video information by computer
102 and automatically detecting slide change information and providing
them all within a single signal encoded data stream.

IV. CONCLUSIONS
In view of the forgoing, we have concluded that Appellant has not
shown that the Examiner erred in rejecting claims 1 through 23 on appeal.
These claims are not patentable.

V. DECISION
In view of the foregoing, we affirm each of the Examiner’s rejections
of claims 1-10 and 17 through 22 under 35 U.S.C. § 102 and the four
separate rejections of dependent claims 11 through 16, and 23 under
35 U.S.C. § 103.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

pgc

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