Ex Parte Robinson et al

Patent Trial and Appeal Board

May 1, 2013

10393608 (P.T.A.B. May. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARYSE ROBINSON and JOHN G. THOMAS
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Appeal 2010-012560
Application 10/393,608
Technology Center 2400
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Before ERIC B. CHEN, JUSTIN BUSCH, and PATRICK M. BOUCHER,
Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The disclosure relates to digital shopping systems. Spec. 1:2–4.
Claim 1 is illustrative and is reproduced below:
1. A method, comprising:
identifying at least one element in at least one scene of a
motion picture programming, wherein each element is an
original portion of a corresponding scene and represents a
distinct object in the scene;
storing the motion picture programming with the at least
one element in the at least one scene;
storing digital information about each element on one or
more servers connected to at least one network;
delivering the motion picture programming to a viewer;
the viewer receiving and displaying the motion picture
programming on a display;
obtaining a plurality of still images from the motion
picture programming wherein at least one of the still images
contains at least one of the elements in the at least one scene of
the motion picture programming;
storing on the one or more servers the plurality of still
images obtained from the motion picture programming
displaying a gallery of the still images to at least one of
the viewers, wherein the gallery of the still images is delivered
from the store of still images on the one or more servers to a
viewing device used by the viewer, wherein the viewing device
includes at least one input device;
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wherein the displaying of the gallery of the still images is
performed in connection with the displaying of the motion
picture programming on the display;
wherein the still images are obtained from the motion
picture programming at a time prior to the delivery of the
motion picture programming to the viewer and are displayed at
least in part separately of the motion picture programming;
in response to viewing the motion picture programming
along with at least one of the still images containing at least one
of the elements on the viewer's viewing device, the viewer
using one of the input devices to point to at least one of the
elements shown in a corresponding still image; and
in response to the viewer pointing to the element in the
corresponding still image, displaying the stored digital
information about the element to the viewer, wherein the
information is delivered from the one or more servers to the
viewing device.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dunn
Kikinis
Knudson
Kitsukawa
Honda
Armstrong
US 5,721,829
US 5,929,849
US 6,016,141
US 6,282,713 B1
US 6,988,244 B1
US 7,017,173 B1
Feb. 24, 1998
Jul. 27, 1999
Jan. 18, 2000
Aug. 28, 2001
Jan. 17, 2006
Mar. 21, 2006

Rejections
The Examiner made the following rejections:
Claims 1, 9–16, 18–25, 27, 28, and 30–33 stand rejected under 35
U.S.C § 103(a) as unpatentable over Honda in view of Kikinis and further in
view of Armstrong (Ans. 3).
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Claims 2–6 and 26 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Honda in view of Kikinis, in view of Armstrong, and
further in view of Kitsukawa (Ans. 17).
Claims 7 and 8 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Honda in view of Kikinis, in view of Armstrong, and
further in view of Knudson (Ans. 21).
Claims 17 and 29 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Honda in view of Kikinis, in view of Armstrong, and
further in view of Dunn (Ans. 22).

Appellants’ Contentions
Appellants make the following contentions regarding the rejection of
claim 1.
1

1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because the combination of Honda, Kikinis, and
Armstrong does not disclose any of the following (Br. 12–13):

1
Appellants present arguments for claims 1 and 25 collectively, without
presenting separate arguments for patentability of any other claim. While
they assert that dependent claims 9–16, 18–24, 27, 28, and 30–33 “include
patentable subject matter beyond that recited in their respective base claims”
(Br. 17), they present no reasoning for us to consider. See In re Lovin, 652
F.3d 1349 (Fed. Cir. 2011) (sustaining requirement that Appellants articulate
more substantive arguments if they wish for individual claims to be treated
separately). Claims 2–8, 26, and 29 are addressed under separate headings
(Br. 17–18), but Appellants merely reference the arguments presented for
claims 1 and 25 without presenting any additional arguments to establish
separate patentability. We accordingly treat independent claim 1 as
representative for all claims before us. Except for our ultimate decision,
those other claims are not discussed further herein.
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(i) “identifying at least one element in at least one scene of a
motion picture programming, wherein each element is an original portion of
the scene and represents a[] distinct object in the scene”;
(ii) “obtaining a plurality of still images from the motion
picture programming wherein at least one of the still images contains at least
one of the elements in the at least one scene of the motion picture
programming”;
(iii) “displaying a gallery of the still images to at least one of
the viewers, … wherein the displaying of the gallery of still images is
performed in connection with the displaying of the motion picture
programming on the display”;
(iv) “the still images are obtained from the motion picture
programming at a time prior to the delivery of the motion picture
programming to the viewer”; and
(v) “in response to viewing the motion picture programming
along with at least one of the still images containing at least one of the
elements on the viewer’s viewing device, the viewer using one of the input
devices to point to at least one of the elements shown in a corresponding still
image; and in response to the viewer pointing to the element in the
corresponding still image, displaying the stored digital information about the
element to the viewer.”
2. Appellants contend that the combination of Armstrong with Honda
and/or Kikinis would make Honda’s displaying of still pictures either
inoperable or unsatisfactory for its intended purpose (Br. 16).
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ANALYSIS
We have reviewed Appellants’ arguments in their Appeal Brief and
have reviewed the Examiner’s response to Appellants’ arguments. We
disagree with Appellants’ contentions.
Honda describes a methodology for generating index pictures from a
motion picture (Honda, 1:9–11), with Fig. 4 providing an example in which
a motion picture is displayed with a gallery of still images obtained from the
motion picture (see id. 7:61–8:63). Kikinis illustrates displaying stored
digital information about viewer-selected elements from a program (Kikinis
7:57–63). Armstrong describes a similar display of information in response
to selection of an element from a still image generated as a freeze frame
from a motion picture (Armstrong 10:36–45).
As to Appellants’ first contention, we disagree that the Examiner has
erred. Appellants attack the references individually when the Examiner has,
in fact, relied on the combination of their teachings to support the rejection
under 35 U.S.C. § 103(a). The proper test for obviousness is what the
combined teachings of the prior art would have suggested to the hypothetical
person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Appellants specifically emphasize that Armstrong describes changing
the displayed screen from moving content to paused content so that the
frozen frame is not viewed “along with” the motion picture programming
(Br. 14). We find this argument unpersuasive since it is inconsistent with
how the Examiner’s rationale incorporates Armstrong. Armstrong teaches
that the frozen frame, which is a still image obtained from the motion-
picture programming, includes elements in the form of “hot spots” that are
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original portions of the corresponding scene and represent distinct objects in
the scene (Armstrong 10:36–45). We concur with the Examiner’s reasoning
that one of skill in the art would find it obvious to include this capability in
at least one of the index images that Honda teaches displaying as a gallery
along with the motion-picture programming itself (see Ans. 26–27).
As to Appellants’ second contention, we disagree that the Examiner
has erred. This contention is also drawn from Armstrong’s description of
changing the displayed screen from moving content to paused content, with
Appellants noting that the frozen frame is not obtained until a stop or pause
command is received from a viewer (Br. 15–16). Appellants identify a
“conflict” with Honda, which displays a gallery of still images without the
need to receive a separate stop or pause command. This argument
insufficiently isolates the teaching relied on by the Examiner. Modifying
Honda so that at least one of the still images includes selectable elements, as
taught by Armstrong, would not render Honda inoperable. Instead, the still
images of Honda would retain their capability of acting as index images,
enhanced by the ability to use them to retrieve stored digital information
through element selection. This neither renders the system described by
Honda inoperable nor makes it unsatisfactory for its intended purpose.

CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner has not erred in rejecting claims 1, 9–16, 18–25,
27, 28, and 30–33 under 35 U.S.C. § 103(a) as unpatentable over Honda in
view of Kikinis and further in view of Armstrong.
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(2) The Examiner has not erred in rejecting claims 2–6 and 26 under
35 U.S.C. § 103(a) as unpatentable over Honda in view of Kikinis, in view
of Armstrong, and further in view of Kitsukawa.
(3) The Examiner has not erred in rejecting claims 7 and 8 under 35
U.S.C. § 103(a) as unpatentable over Honda in view of Kikinis, in view of
Armstrong, and further in view of Knudson.
(4) The Examiner has not erred in rejecting claims 17 and 29 under
35 U.S.C. § 103(a) as unpatentable over Honda in view of Kikinis, in view
of Armstrong, and further in view of Dunn.

DECISION
The Examiner’s decision rejecting claims 1–33 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

ELD