Ex Parte Ortiz et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09902348 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUIS M. ORTIZ and KERMIT D. LOPEZ
_____________

Appeal 2008-2833
Application 09/902,3481
Technology Center 2600
____________

Decided:2 January 30, 2009
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO,
and KEVIN F. TURNER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

1 Application filed July 10, 2001, claiming benefit of priority from provisional
application 60/243,561 filed October 26, 2000. The real parties in interest are Luis
M. Ortiz and Kermit D. Lopez.

2 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).
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DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1 to 56. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Appellants’ invention is directed to a system and method for providing
venue-based data to hand held devices such as PDAs, wireless telephones, or other
hand held video-enabled devices (Figs. 4-9; Spec. 1, 3, 5, and 6). The venue-based
data can be video data captured by one or more video cameras located in the venue
to provide one or more perspective views of a venue event (see claims 1 and 21).
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. A method for providing venue-based data to hand held devices, said
method comprising the steps of:
capturing video images from more than one perspective of a venue-based
activity using more than one video camera; and
processing said video images into venue-based data formatted for wireless
transmission via a wireless network for use by more than one hand held device
each having a display screen adapted for simultaneously viewing more than one
perspective of venue-based data captured by more than one video camera.
The Rejections
The Examiner relies upon the following as evidence of unpatentability:
McClintock US 5,598,208 Jan. 28, 1997
Jain US 5,729,471 Mar. 17, 1998
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Ausems US 6,434,403 B1 Aug. 13, 2002
(filed Feb. 19, 1999)
Treyz US 6,526,335 B1 Feb. 25, 2003
(filed Jan. 24, 2000)
Anderson US 6,578,203 B1 Jun. 10, 2003
(filed May 28, 1999)
Hendricks US 6,675,386 B1 Jan. 6, 2004
(filed Sep. 4, 1997)
Blanchard US 6,782,102 B2 Aug. 24, 2004
(filed Dec. 21, 2000)3

The following six rejections are before us for review:
(i) The Examiner rejected claims 1 to 4, 6 to 10, 12, 13, 15, 18 to 23, 26, 27,
31, 32, 35, 37, 39, and 56 under 35 U.S.C. § 103(a) as being unpatentable over
Anderson and Jain.
(ii) The Examiner rejected claims 5, 14, 16, 17, 24, 33, and 34 under 35
U.S.C. § 103(a) as being unpatentable over Anderson and Jain, further in view of
Hendricks.
(iii) The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over Anderson and Jain, further in view of McClintock.

3 We note that although Appellants’ claimed priority date of October 26, 2000, is
prior to Blanchard’s filing date of December 21, 2000, Appellants have not
asserted that Blanchard is not prior art, and the Examiner has not made a
determination as to whether the instant application is entitled to the benefit of the
October 26, 2000, filing date of provisional application 60/243,561. See MPEP
201.11.

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(iv) The Examiner rejected claims 11, 28 to 30, 36, 38, 41, and 42 under 35
U.S.C. § 103(a) as being unpatentable over Anderson and Jain, further in view of
Blanchard.
(v) The Examiner rejected claims 40, 43, and 45 to 54 under 35 U.S.C. §
103(a) as being unpatentable over Anderson and Jain, further in view of Ausems.
(vi) The Examiner rejected claims 44 and 55 under 35 U.S.C. § 103(a) as
being unpatentable over Anderson and Jain, further in view of Treyz.
Rather than repeat the arguments of Appellants or the Examiner, we refer to
the Brief4 and the Answer5 for their respective details. In this decision, we have
considered only those arguments actually made by Appellants. Arguments which
Appellants could have made but did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Notably, Appellants present no arguments with respect to rejections (ii), (iii), and
(vi) listed above.

FINDINGS OF FACT
Findings of fact throughout this decision are supported by a preponderance
of the evidence of record. The relevant facts include the following:
Appellants’ Disclosure
1. Appellants’ invention relates to a system and method of providing venue-
based data to hand held devices (Figs. 4-9; Spec. 1, 3, 5, and 6). As

4 We refer to the Appeal Brief filed March 2, 2006, throughout this opinion.

5 We refer to the Examiner’s Answer mailed May 16, 2006, throughout this
opinion.
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indicated supra, Appellants describe and claim a method for providing
formatted venue-based data for wireless transmission over a wireless
network for use by more than one hand held device each having a display
screen for simultaneously viewing more than one perspective captured by
more than one video camera (Fig. 4, 5, 7-9; claim 1).
2. Appellants describe “hand held devices” as including “wireless electronic
hand held devices, such as Personal Digital Assistants (PDAs), hand held
televisions, and data-enabled wireless telephones” (Spec. 1:16-18), as well
as “data/video-enabled cellular telephones, and other hand held wireless
video-enabled devices” (Spec. 3:13-14).
Anderson
3. Anderson teaches a system and method for providing venue-based data (i.e.,
video images of multiple perspectives of an activity in the venue from more
than one video camera) including processing the video images for wireless
transmission to more than one hand held device (Fig. 3; Abs.; col. 2, ll. 15-
17; col. 2, l. 66 to col. 3, l. 6; col. 5, ll. 22-37; col. 6, ll. 9-13).
4. Anderson’s hand held device(s) can be either head mounted displays (Fig.
4), or can be any other portable devices (col. 5, ll. 22-37; col. 6, ll. 7-13).
Anderson discloses that although using a head mounted display is the
preferred embodiment, this is merely a possible example of implementation
to set forth a clear understanding of the principles of the invention, and the
invention is not limited thereto (col. 7, ll. 4-11). Anderson broadly sets forth
claims drawn to a “portable receiver and portable display” that are not
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limited to a head mounted display (independent claims 1, 4, 7, and 11), and
discloses that the portable receiver/display can be hand held (i.e., carried)
(see claim 6 at col. 7, ll. 61-62, “wherein a spectator carries said portable
receiver and portable display”).
Jain
5. Jain teaches a system and method for providing a display for simultaneous
viewing of more than one perspective of a venue-based event captured by
more than one video camera (Figs. 17-21; col. 33, ll. 30-34 and 61-67).
6. Jain’s display is not hand held, but is physically wired to a computer
workstation (see Figs. 1, 3, 11b, and 15).
Blanchard
7. Blanchard teaches hand held communication devices which use encryption
(col. 1, ll. 11-13). Blanchard discloses that the use of encryption algorithms
for security of information is well known (col. 2, ll. 9-21). Blanchard also
discloses “[i]n many instances, it is desirable to provide secure or encrypted
communications to prevent interception of the information by outside
parties” (col. 1, ll. 14-17).
Ausems
8. Ausems teaches a wireless telephone and PDA 100 (i.e., hand held device),
having a smart card module 160 (Figs. 1; Abs.; col. 1, ll. 12-30 and 54-60;
col. 4, ll. 40-50).

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ISSUES
First Issue: Anderson and Jain

The Examiner rejected all claims 1 to 56 using the basic combination of
Anderson and Jain (see rejections (i) – (vi) discussed supra).
Appellants primarily argue in the Brief that Anderson does not teach or
suggest a hand held device, but instead teaches a head mounted display (HMD)
(Br. 10-12, 15, 18-19). Appellants also argue that as a result, the combination of
Anderson and Jain fails to teach or suggest a hand held device (Br. 15, 18-19).
The Examiner contends that Anderson’s HMD is a preferred embodiment
and that Anderson also teaches alternate embodiments (see col. 5, ll. 33-37; col. 6,
ll. 9-13) including a portable display device which meets the broadly recited
limitation, hand held device (Ans. 4-9; Final Rej. 2-3).
Thus, the first and most significant issue is: Have the Appellants
demonstrated that the Examiner erred in determining that Anderson teaches or
suggests a hand held device?
Second Issue: Anderson, Jain, and Blanchard

The Examiner added Blanchard for a teaching of a data encryption process
to provide security of transmitted information (Ans. 9-11; Final Rej. 5-6). The
Examiner points out that Blanchard discloses encryption for securing
communications is well known (Ans. 11).
Appellants assert that Anderson, Jain, and Blanchard, taken individually or
in combination, do not teach or suggest the features of claim 41 of processing

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using encryption, broadcasting wirelessly to hand held devices, and transmitting
encrypted video signals (Br. 20-22).
Thus, the second issue is: Have the Appellants demonstrated that the
Examiner erred in determining that the combination of Anderson, Jain, and
Blanchard teaches or suggests a system as recited in claim 41 including a processor
and transmitter for encryption encoding of video images?
Third Issue: Anderson, Jain, and Ausems

The Examiner added Ausems for a teaching of a wireless telephone and a
wireless PDA having a smart card (Ans. 11-13; Final Rej. 6-7).
Appellants argue that Anderson’s HMD teaches away from Ausems’ hand
held device, there is no motivation to combine these two references, and that
therefore the combination of Anderson, Jain, and Ausems fails to teach or suggest
a hand held device that receives, processes, and transmits video perspectives as
recited in claims 45 and 50 (Br. 22-24).
Thus, the third issue is: Have the Appellants demonstrated that the Examiner
erred in determining that Anderson, Jain, and Ausems are (i) properly combinable
and (ii) teach or suggest a hand held device for receiving, processing, and
transmitting video perspectives as recited in claims 45 to 54?

PRINCIPLES OF LAW
“During examination, ‘claims … are to be given their broadest reasonable
interpretation consistent with the specification, and … claim language should be
read in light of the specification as it would be interpreted by one of ordinary skill

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in the art.’” In re Am. Acad. of Sci. Tech. Cir., 367 F.3d 1359, 1364 (Fed. Cir.
2004); In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997).
The test for obviousness is what the combined teachings of the references
would have suggested to the artisan. Accordingly, one can not show
nonobviousness by attacking references individually where the rejection is based
on a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
The Examiner rejected claims 1 to 40, 55, and 56 over Anderson and Jain,
claims 41 to 44 over Anderson and Jain combined with Blanchard, and claims 45
to 54 over Anderson and Jain combined with Ausems.
Appellants do not dispute the individual teachings of Anderson, Jain,
Blanchard, or Ausems other than contesting Anderson’s disclosure of a hand held
device. Appellants’ arguments that Anderson only allows one perspective view
(Br. 15), and that Jain is a wired device and not a hand held wireless device (Br. 15
and 18) are unpersuasive. Anderson teaches a hand held wireless device (Finding
of Fact 4), Jain teaches multiple perspective views (Finding of Fact 5), and the
rejection is based on a combination of these references. See Keller, 642 F.2d at
426. Because one of ordinary skill in the art would have been motivated to
improve Anderson’s hand held device and video processor/display with Jain’s
simultaneous viewing and editing features (Ans. 6-9), we are not persuaded by
Appellants that Jain’s wired device teaches away from Anderson’s HMD device
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(see Br. 18-19). Appellants’ remaining arguments are not persuasive for reasons
that follow infra.
We agree with the Examiner’s findings of fact and conclusions of
obviousness with respect to claims 1 to 56 (Ans. 4-13; Final Rej. 2-8), and adopt
them as our own, along with some amplification of the Examiner’s explanation of
the teachings of Anderson (see Findings of Fact 3 and 4) and Jain (see Finding of
Fact 5).
The first issue before us relates to Anderson (pertaining to all claims 1 to
56), the second issue concerns Blanchard (pertaining only to claims 41 to 44), and
the third issue relates to the motivation to combine Ausems with Anderson and
Jain (pertaining only to claims 45 to 54). We will discuss the three issues before us
in turn below.

First Issue: Did the Examiner err in determining that Anderson teaches or
suggests a hand held device?

Each and every independent claim recites the term(s) “hand held device”
and/or “hand held devices” (see independent claims 1, 18, 19, 20, 21, 35, 37, 41,
45, and 50).
Anderson both teaches and strongly suggests the use of hand held devices
(Finding of Fact 4). Specifically, Anderson teaches a wireless and portable version
of the display and receiver, and also teaches at least in claim 6 that the portable
receiver/display can be carried (i.e., hand held) (see Finding of Fact 4). In
addition, because any head mounted display would have to be placed on the head

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using the hands, Anderson’s head mounted display broadly suggests a hand held
device.
We agree with the Examiner that Anderson’s teaching of a portable wireless
device meets the broadly recited term hand held device (Ans. 4-5), especially to the
extent these limitations are broadly set forth in the claims and Specification (see
independent claims 1, 18, 19, 20, 21, 35, 37, 41, 45, and 50; Finding of Fact 2).
Because “claims … are to be given their broadest reasonable interpretation
consistent with the specification, and … claim language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the art” (Am.
Acad. of Sci. Tech. Cir., 367 F.3d at 1364; Morris, 127 F.3d at 1053-54), one of
ordinary skill in the art would interpret the phrase hand held device in light of the
Specification. Appellants provide a definition for the term hand held devices in the
Specification as including “wireless electronic hand held devices, such as Personal
Digital Assistants (PDAs), hand held televisions, and data-enabled wireless
telephones,” as well as “data/video-enabled cellular telephones, and other hand
held wireless video-enabled devices” (Finding of Fact 2).
Inasmuch as Appellants have defined hand held devices in the Specification,
and inasmuch as “‘claims … are to be given their broadest reasonable
interpretation consistent with the specification’” (Am. Acad. of Sci. Tech. Cir., 367
F.3d at 1364; Morris, 127 F.3d at 1053-54), we conclude that Anderson teaches
and suggests a hand held device.
In view of the foregoing, Appellants have not shown that the Examiner erred
in determining that Anderson teaches or suggests a hand held device.

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Second Issue: Did the Examiner err in determining that the combination of
Anderson, Jain, and Blanchard teaches or suggests a system as recited in claims
41 to 44 including a processor and transmitter for encryption encoding of video
images?

Claim 41 recites “a processor for processing said video images with
encryption coding” and “at least one transmitter for transmitting encrypted video
signals” (claim 41). Claims 42 to 44 depend from claim 41 and therefore include
the same limitations.
We agree with the Examiner that Blanchard teaches it is well known in the
field of hand held devices to process and transmit signals using encryption for
security purposes (Finding of Fact 7). We also agree with the Examiner that it
would have been obvious to modify Anderson and Jain with Blanchard’s
encryption teachings (Ans. 9-11; Final Rej. 5-6). Appellants’ arguments
throughout the Brief do not convince us of any error in the Examiner’s positions in
the rejection. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In view of the foregoing, Appellants have not shown that the Examiner erred
in determining that the combination of Anderson, Jain, and Blanchard teaches or
suggests a processor and transmitter for encryption encoding of video images, as
recited in claims independent claim 41 and claims 42 to 44 which depend
therefrom.

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Third Issue: Did the Examiner err in determining that Anderson, Jain, and Ausems
are (i) properly combinable and (ii) teach or suggest a hand held device for
receiving, processing, and transmitting video perspectives as recited in claims 45
to 54?

Independent claims 45 and 50 each recite a system having “a data processing
system adapted for receiving, processing and transmitting video perspectives
received from more than one camera for simultaneous display at a single display
integrated with at least one wireless personal digital assistant” (claim 45)
(emphasis added) or “… integrated with said at least one wireless telephone”
(claim 50) (emphasis added).
Appellants contend that Ausems’ wireless PDA/telephone combination
device teaches away from Anderson’s HMD, there is no motivation to combine
these two references, and therefore the combination of Anderson, Jain, and
Ausems fails to teach or suggest a hand held device that receives, processes, and
transmits video perspectives as recited in claims 45 and 50 (Br. 22-24).
As discussed above with respect to the first issue, Anderson is in fact drawn
to portable wireless or held hand devices (see Finding of Fact 4). Accordingly, we
are not persuaded by Appellants’ argument that Ausems (which is also drawn to
wireless hand held devices) teaches away since both Anderson and Ausems
concern hand held devices and are therefore analogous art.
In view of the foregoing, Appellants have not shown that the Examiner erred
in determining that Anderson, Jain, and Ausems are properly combinable and teach
or suggest all of the limitations of claims 45 to 54.

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Summary
Appellants’ arguments have not persuaded us of error in the Examiner’s
rejections of claims 1 to 56 under 35 U.S.C. § 103(a) as being unpatentable over
various combinations of references, all using Anderson and Jain as base references.
In our view, Anderson and Jain teach or suggest all of the limitations recited in
Appellants’ independent claims 1, 18, 19, 20, 21, 35, and 37, including the use of
hand held devices. In addition, Anderson and Jain modified by Blanchard and
Ausems teach or suggest all of the limitations recited in Appellants’ independent
claims 41, and 45 and 50, respectively. Appellants present no arguments with
respect to rejections (ii), (iii), and (vi) as discussed earlier, and we find no error in
these rejections which are also based on the basic combination of Anderson and
Jain. Appellants present no separate arguments with respect to dependent claims 2
to 17, 22 to 34, 36, 38 to 40, 42 to 44, 46 to 49, and 51 to 56, and instead rely on
the arguments presented with respect to the independent claims already addressed
above (see Br. 25). For all of the above reasons, we sustain each of the Examiner’s
rejections ((i)-(vi) listed supra).

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in determining that
Anderson teaches or suggests a hand held device.
Appellants have not shown that the Examiner erred in determining that the
combination of Anderson, Jain, and Blanchard teaches or suggests a system as
recited in claims 41 to 44 including a processor and transmitter for encryption
encoding of video images.
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Appellants have not shown that the Examiner erred in determining that
Anderson, Jain, and Ausems are (i) properly combinable and (ii) teach or suggest a
hand held device for receiving, processing, and transmitting video perspectives as
recited in claims 45 to 54.

ORDER
The decision of the Examiner to reject claims 1 to 56 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).

AFFIRMED

KIS

KERMIT D. LOPEZ/LUIS M. ORTIZ
ORTIZ & LOPEZ PLLC
P. O. BOX 4484
ALBUQUERQUE, NM 87196-4484