Ex Parte Nguyen

Board of Patent Appeals and Interferences

Sep 10, 2010

10060644 (B.P.A.I. Sep. 10, 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.
10/060,644 01/30/2002 Nga Marie Nguyen 50N3463.03 1796
36738 7590 09/13/2010
ROGITZ & ASSOCIATES
750 B STREET
SUITE 3120
SAN DIEGO, CA 92101
EXAMINER
TRAN, MYLINH T
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
09/13/2010 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 NGA MARIE NGUYEN
____________

Appeal 2009-004496
Application 10/060,644
Technology Center 2100
____________

Before JOSEPH L. DIXON, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, 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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Application 10/060,644

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The Appellant appeals the rejection of claims 1-5, 13-17, and 25-29
under 35 U.S.C. § 134(a). Claims 6-12, 18-24, and 30-75 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and apparatus for
generating a transparent section of the browser and overlapping the video
content in the transparent section (Spec. 3).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method of displaying a desired video content frame within
a WEB browser based content frame in a windowless
environment, comprising the steps of:

a) directing the WEB browser to load a page having a desired
video content frame definition;

b) generating a transparent section in the browser based content
frame based on the decoded frame definition; and

c) overlapping the video content frame in the transparent
section of the browser based content frame.

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The References
The Examiner relies on the following references as evidence:
Anderson US 6,219,042 B1 Apr. 17, 2001
Gerba US 6,445,398 B1 Sep. 3, 2002
(filed Jun. 24, 1998)
Houghton US 6,757,707 B1 Jun. 29, 2004
(filed Feb. 1, 2000)

The Rejections
The following rejections are before us for review:
Claims 1, 2, 4-5, 13-14, 16-17, 25-26, and 28-29 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Anderson and Gerba.
Claims 3, 15, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Anderson, Gerba, and
Houghton.
Only those arguments actually made by the Appellant has been
considered in this decision. Arguments which the Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

II. ISSUE
Has the Examiner erred in finding that the combination of Anderson
and Gerba teaches or fairly suggests “b) generating a transparent section in
the browser based content frame based on the decoded frame definition; and
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c) overlapping the video content frame in the transparent section of the
browser based content frame,” as recited in claim 1?

III. PRINCIPLES OF LAW
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Gerba
1. Gerba discloses a Picture In Graphics (PIG) cell may be
overlaid on part of the tool screen and positioned near Intelligent Program
Guide Tool (IPG):
[T]he graphics memory is organized into layers of graphics
planes such that IPG is displayed in the foreground while the
plane with the reduced video images is in the background. The
foreground IPG plane is then depicted in a transparent color to
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allow the moving video in the PIG to be viewed through the
IPG plane.

(Col. 27, ll. 13-19; Fig. 8). (Emphasis added).
Anderson
2. Anderson discloses a method and system of interspersing
Internet browsing and television viewing using the well known technique of
Picture In Graphics (PIG), in which when the modes interchange, the TV
window 98 is active in the Web mode the sound and picture of TV images
are continuous without any jarring video and audio discontinuities (col. 1, ll.
58-67, col. 5, ll. 15-24, col. 6, ll. 47-56, Figs. 3 and 9).

V. ANALYSIS
The Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellant’s Brief to show error in the proffered reasoned conclusion.
Id.

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Grouping of Claims
The Appellant has elected to argue claims 1, 2, 4-5, 13-14, 16-17,
25-26, and 28-29 together as a group (App. Br. 4). Therefore, we select
independent claim 1 as the representative claim for this group, and we will
address the Appellant’s arguments with respect thereto. 37 C.F.R. § 41.37
(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 103(a) rejections

With respect to claim 1, the Appellant contends that Gerba fails to
teach allowing moving video to be viewed when it is overlapped by another
window as the Examiner asserted (App. Br. 6, Reply Br. 2). According to
the Appellant, even if the references were combined in some suggested
fashion, the present claims would not result (a TV window would be
superimposed over a Web browser as taught by Anderson, and another
transparent portion of program guide as taught by Gerba covers the browser)
(App. Br. 5). The Appellant further contends that the purpose of the Gerba
reference is to allow viewing of a program at the same time the title appears
on the program guide while the purpose of the Anderson reference is
directed to viewing a TV pane in a browser window. Thus, there is no
proper prior art suggestion to combine the references as proposed (App. Br.
4-5, Reply Br. 1-2).
We disagree with the Appellant’s contentions. First, we find Gerba
teaches that a transparent section (the transparent foreground plane) of the
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IPG overlaps the moving video in the PIG cell allowing the viewer to see the
TV (FF 1). We also find Anderson teaches displaying a TV window in a
Web browser (FF 2). Furthermore, the Supreme Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418. The knowledge that adding a
transparent window into the layers of a browser is a desirable way to make
rapid changes the modes would have been within the skill in the art, as
evidenced by Gerba and Anderson. Moreover, one of ordinary skill in the
art is also a person of ordinary creativity, not an automaton. KSR, 550 U.S.
at 421. It would have been obvious at the time the invention was made to
use the prior art of creating a transparent section in a layer of the IPG in
Gerba in the Web browser of Anderson, which would predictably increase
the efficiency of the system taught by Anderson. Finally, we find that the
combination of Anderson and Gerba is “a design step well within the grasp
of a person of ordinary skill in the relevant art” and the benefit of doing so
would be obvious. Id. at 427. The Appellants’ Specification as well as the
Appellants’ arguments do not present any evidence that employing the
transparent section of Gerba overlapping in the TV window of Anderson
would have been uniquely challenging or difficult for one of ordinary skill in
the art or would have represented an unobvious step over the prior art.

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Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
We, therefore, find that combining the well-known elements of
creating a transparent overlaid section taught by Gerba with the well-known
technique of combining TV and Web browser taught by Anderson is nothing
more than a “predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1. We also sustain the Examiner’s obviousness rejection of claims 2,
4-5, 13-14, 16-17, 25-26, and 28-29, which has not been separately argued,
and falls with the same group.
With respect to dependent claims 3, 15, and 27, we also sustain the
Examiner’s obviousness rejections of these claims, which have analogous
wording, are not separately argued, and fall with their respective base
claims.
VI. CONCLUSION
We conclude that the Examiner did not err in finding that the
combination of Anderson and Gerba teaches or fairly suggests “b)
generating a transparent section in the browser based content frame based on
the decoded frame definition; and c) overlapping the video content frame in
the transparent section of the browser based content frame,” as recited in
independent claim 1.
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VII. ORDER
We affirm the obviousness rejections of claims 1-5, 13-17, and 25-29
under 35 U.S.C. § 103(a).
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

rwk

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