Ex Parte Shintani et al

Patent Trial and Appeal Board

Dec 28, 2018

12655723 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/655,723 01/06/2010
36738 7590 01/02/2019
ROGITZ & AS SOCIA TES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
FIRST NAMED INVENTOR
Peter Rae Shintani
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
200902754.01 2270
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/02/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER RAE SHINTANI and
BRANTL.CANDELORE
Appeal2017-007968
Application 12/655,723
Technology Center 3600
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5 and 20-27. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
Claims 1-5 and 20-27 are rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as indefinite. Final Act. 2.
Claims 1-5 and 20-27 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more. Final Act. 3--4.
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Claims 1 and 4 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Bill (US 2006/0143647 Al; June 29, 2006), Yuxin (US
2010/0207874 Al; Aug. 19, 2010), and Christoff (US 6,518,998 Bl; Feb.
11, 2003). Final Act. 4---6.
Claims 2 and 3 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Bill, Yuxin, Christoff, and Mortensen (US 2009/0153736 Al;
Jun. 18, 2009). Final Act. 6-7.
Claim 5 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious over
Bill, Ogawa (US 2008/0037841 Al; Feb. 14, 2008), and Kilner (US
2005/0197923 Al; Sep. 8, 2005). Final Act. 7-8.
Claims 20, 21, and 23-26 are rejected under pre-AIA 35 U.S.C. §
I03(a) as obvious over Bill and Yuxin. Final Act. 8-10.
Claim 22 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Bill, Yuxin, and Mortenson. Final Act. 10-11.
Claim 27 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Jung (US 2009/0112617 Al; Apr. 20, 2009), Ogawa, and Tung (US
2010/0268594 Al; Oct. 21, 2010). Final Act. 11-12.
We affirm, and for claim 27 we denominate the affirmance under
§ I03(a) as a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 4I.50(b).
STATEMENT OF THE CASE
Appellants' invention relates to a television having demonstration
capabilities. Claim 1 is illustrative and reproduced below:
1. A video display system having demonstration capabilities,
compnsmg:
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at least one computer processor configured for receiving a video
image from a camera;
the computer processor having face detection and smile detection
programmmg;
the at least one computer processor configured to access a computer
memory; and
the computer memory, comprising instructions executable by the
computer processor for:
causing an image to be displayed on a display for a potential customer
viewing the display;
the displayed image caused by the computer processor on the display
including a prompt that instructs the potential customer to smile if the
potential customer wishes to obtain a demonstration relating to a specific
feature relating to the video display, the specific feature being specified in
the prompt;
capturing the video image from the camera that contains an image of
the potential customer's face;
determining if the image of the potential customer's face includes a
smile; and
responsive to a determination that the potential customer's face
includes a smile, retrieving and playing a demonstration video segment on
the display as a response to determining that the potential customer has
responded to the prompt by smiling.
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PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
THE INDEFINITENESS REJECTION OF CLAIMS 1-5 AND 20-27
Contentions
The Examiner concludes
The term "smile" in claim[ s] 1, 5, and 20 is a relative term which
renders the claim indefinite. The term "smile" is not defined by
the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the
art would not be reasonably apprised of the scope of the
invention.
Final Act. 2.
Appellants argue "the specification clearly teaches on the top of page
5 that software exists that can detect smiles." App. Br. 5.
In response, the Examiner explains "The term 'smile['] is not defined
by the claim, the specification does not provide a standard for ascertaining
the requisite degree and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention." Ans. 2.
In the Reply Brief, Appellants further argue "the claim does not recite
any words of degree, such as 'large smile' or 'small smile'. The claim recites
a well-understood term, 'smile', without any terms of degree." Reply Br. 2.
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Our Review
Appellants' Specification discloses "Currently available cameras are
equipped with software, hardware or firmware that can detect faces and
smiles to aid in focus and timing of a photograph, and similar technology
can be applied here." Spec. 5:3-5.
Turning to claim 1, claim 1 recites the term "smile."
Although the term "smile" is not defined by the claim, based on the
disclosure in Appellants' Specification, we conclude that an ordinary skilled
artisan would have understood what is claimed when the claims are read in
light of the Specification, because according to the Specification smile
detection technology is currently available.
We also agree with Appellants that words of degree are not recited in
the claims, and accordingly, we see no need for any further disclosure in the
Specification than provided by Appellants. The Examiner has not provided
any additional explanation as to why the Specification is insufficient.
We, therefore, do not sustain the Examiner's indefiniteness rejection
of claims 1-5 and 20-27.
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1-5 AND 20-27
Contentions
The Examiner concludes
Claim 1-5, and 20-27 are directed to the abstract idea of receiving
a video image from a camera with a gesture and provide a video
segment or content based on the gesture. The claim( s) do not
include additional elements that are sufficient to amount to
significantly more than the judicial exception because the
additional computer elements, which are recited at a high level
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of granularity, provide, conventional computer functions that do
not add meaningful limits to practicing the abstract idea.
Final Act. 3; see also Final Act. 3--4 ("Financial: intermediate settlement in
Alice, risk hedging in Bilksi or tax-free investing in Fort Properties.").
Among other arguments, Appellants present the following principal
argument:
"[N]o Supreme Court case ever has held that a machine prompting for
a smile and presenting a specific type of video in response is 'abstract'."
App. Br. 7. "Applicant can see no plausible manner in which presenting a
demonstration video in response to a prompted-for smile bears any
resemblance whatsoever to risk hedging, intermediate settlement, or tax-free
investing." App. Br. 7-8. "[ A ]s in Enfish, the present claims are not directed
to fundamental economic practices or mathematical equations or well-
known business practices." App. Br. 9.
In response, the Examiner, again, concludes the claims are directed to
an abstract idea. Ans. 2-3 ( citing Electric Power Group); see also Ans. 3--4
("Contrary to Enfzsh, the instant claimed invention includes an abstract
idea.").
In the Reply Brief, Appellants further argue the claims are nothing
like the claims in Electric Power Group. See Reply Br. 3 ("Providing
demonstration videos, much less in the various, technically explicit ways
recited in the claims, has nothing to do with monitoring power grids.")
Appellants further argue the claims are like the claims in Enfzsh:
[T]he present application indeed teaches specific technical
benefits, just as in Enfzsh. On page 4, for example, the
specification teaches that the "camera can be used for triggering
a demo, which can be made to be very interactive with the
potential customer in a retail setting and can be a fun way for a
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user to interact with a TV in a manner that avoids problems
associated with giving the user full access to a TV's controls"
which "could leave the TV in an undesirable mode of operation"
(page 5) ( emphasis added). Thus, Enfish is closer to the instant
fact pattern than is Electric Power Group.
Reply Br. 5.
Our Review
In Alice, the Supreme Court applied the framework as set forth in
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) for
determining whether the claims are directed to patent-eligible subject matter.
Alice, 134 S. Ct. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of [the judicially-recognized]
patent-ineligible concepts." Id. If the claims are directed to a patent-
ineligible concept, then the second step in the analysis is to consider the
elements of the claims "individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 78,
79). However, the Federal Circuit has articulated that "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. Accordingly, the Federal Circuit
determined, if "the claims are directed to a specific implementation of a
solution to a problem in the software arts," then "the claims at issue are not
directed to an abstract idea." Id. at 1339.
The Federal Circuit has also found claims directed to "collecting
information, analyzing it, and displaying certain results of the collection and
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analysis" as directed to a patent-ineligible abstract idea. Electric Power
Group, LLC v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Appellants' Specification discloses the following:
Turning now to FIGURE 1, an example of an
implementation of a method consistent with the present
invention is depicted in flow chart 10, starting at 14. If the TV
has been set in a demonstration interactive mode wherein the
system is awaiting a customer's appropriate gesture to enable the
demo at 18, then the system's camera looks for the appropriate
gesture. A suitable and readily implemented gesture is a smile.
Currently available cameras are equipped with software,
hardware or firmware that can detect faces and smiles to aid in
focus and timing of a photograph, and similar technology can be
applied here. In the case of detection of a smile, the face is
detected at 22 and analyzed for the presence of a smile. If a smile
is detected at 26, then the TV can enter a demonstration mode at
30 which pre-empts other video inputs. Hence, at the prompting
or spontaneous occurrence of the pre-determined gesture, the TV
enters the demo mode at 3 0 and a demo can play to completion
at 34 without need for the user to interact using a remote
controller or other device that could leave the TV in an
undesirable mode of operation. Once the demo is completed, in
this implementation, the process can return to await the next
occurrence of the specified gesture.
Spec. 4:31-5:13 (emphasis added).
We conclude Appellants' claims are not at all directed to a
fundamental economic practice as concluded by the Examiner in the Final
Action; we also conclude Appellants' claims are not directed to "collecting
information, analyzing it, and displaying certain results of the collection and
analysis" as in Electric Power Group as concluded by the Examiner in the
Examiner's Answer. We conclude the Examiner's analysis is untethered
from the actual claim language. Instead, we agree with Appellants that "the
present application indeed teaches specific technical benefits, just as in
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Enfzsh." Reply Br. 5. We conclude Appellants' claims provide more than
merely displaying results of collection and analysis because the claims
provide "responsive to a determination that the potential customer's face
includes a smile, retrieving and playing a demonstration video segment on
the display as a response to determining that the potential customer has
responded to the prompt by smiling." Claim 1. The demonstration video
segment is not merely the results of collection and analysis. Rather, the
claim as a whole solves the particular industry problem where, upon
completion of a demo, "a remote controller or other device [] could leave the
TV in an undesirable mode of operation." Spec. 5: 10-11.
In short, we conclude the claimed invention is a "specific asserted
improvement in computer capabilities" rather than "a process that qualifies
as an 'abstract idea' for which computers are invoked merely as a tool." See
Enfzsh, 822 F.3d at 1335-36. Accordingly, because "the claims are directed
to a specific implementation of a solution to a problem in the software arts,"
claim 1 is not directed toward an abstract idea. See id. at 1339. Therefore,
the § 101 inquiry ends here.
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 101. We also do not sustain the rejection of claims 2-5
and 20-27 for the same reasons discussed with respect to claim 1.
THE OBVIOUSNESS REJECTIONS OF CLAIMS 1-5 AND 20-27
Claims 1 and 4
The Examiner finds Bill, Yuxin, and Christoff teach all limitations of
claim 1. Final Act. 4---6.
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The Examiner finds Yuxin teaches "the computer processor having
face detection and smile detection programming"; "the displayed image
caused by the computer processor on the display including a prompt that
instructs the potential customer to smile if the potential customer wishes to
obtain a demonstration relating to a specific feature relating to the video
display, the specific feature being specified in the prompt"; "responsive to a
determination that the potential customer's face includes a smile, retrieving
and playing a demonstration video segment on the display as a response to
determining that the potential customer has responded to the prompt by
smiling" as recited in claim 1. Final Act. 5 (citing Yuxin ,r,r 3, 28, 31, 35,
36); see also Ans. 5 (citing Yuxin ,r,r 17, 26, 28, 36).
The Examiner finds Christoff teaches "capturing the video image
from the camera that contains an image of the potential customer's face";
"determining if the image of the potential customer's face includes a smile"
as recited in claim 1. Final Act. 6 ( citing Christoff col. 2, 11. 15-26); see also
Ans. 5 (citing col. 2, 11. 15-26).
Appellants present the following principal arguments:
1.
[T]he RUSM [(relied upon subject matter in Yuxin)]
generally teaches eliciting responses and providing outputs in
response, whereas Claim 1 is quite specific and is not found in
the RUSM, e.g., there is zero understanding in the RUSM of
prompting a person to smile for the purpose required by the
claim.
Moreover, as paragraph 36 clearly and unambiguously
declares, "the response has to be implemented by a group of
people rather than one single distinct individual" ( emphasis
added). This statement is not a mere preferred embodiment; it is
an imperative.
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In contrast, Claim 1 requires "the" potential customer
(singular) to be determined to have smiled, and playing the demo
video as a response to determining that "the" potential customer
(singular) has responded to the prompt by smiling-precisely
what Yuxin says must not be done.
App. Br. 12-13; see also Reply Br. 5-6.
11. The relied upon subject matter in Yuxin "leads the skilled
artisan away from a singular customer gesture control." App. Br. 13.
111. Christoff does not teach "capturing the video image from the
camera that contains an image of the potential customer's face";
"determining if the image of the potential customer's face includes a smile"
as recited in claim 1. App. Br. 13-14.
1v. "The rejection fails to explain how the PHOSITA would use the
information from Yuxin in addition to the information Bill already teaches."
App. Br. 15. "[T]he proferred motivation to toss Christoff into the mix ...
fails to explain how the PHOSITA would use the information from Christoff
in addition to the information Bill/Yuxin already teach." App. Br. 15.
We do not see any error in the Examiner's findings. We concur with
the Examiner's conclusions.
Regarding Appellants' argument (i), Yuxin discloses "[t]his content
can include overt suggestions, requests, or other types of prompts for
audience response in the form of some gesture." Yuxin ,r 28. Yuxin further
discloses "the content expressly instructs or requests the audience to make a
particular gesture." Yuxin ,r 28. Yuxin discloses "particular gestures, such as
a smile." Thus, we find Yuxin teaches "the computer processor having face
detection and smile detection programming"; "the displayed image caused
by the computer processor on the display including a prompt that instructs
the potential customer to smile if the potential customer wishes to obtain a
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demonstration relating to a specific feature relating to the video display, the
specific feature being specified in the prompt" as recited in claim 1 because
Yuxin prompts for audience response in the form of a smile. Yuxin ,r 28. We
find a skilled artisan would have understood Yuxin's teachings as readily
applicable to any size audience, including an audience consisting of a single
person. Yuxin ,r 28.
Further, we find Yuxin teaches "responsive to a determination that the
potential customer's face includes a smile, retrieving and playing a
demonstration video segment on the display as a response to determining
that the potential customer has responded to the prompt by smiling" as
recited in claim 1 because Yuxin discloses "the system can modify the
display output based upon the collective behavior (step 58). This can involve
triggering one or more outputs from the display computer (24 in FIG. 1)
based on the detected gesture." Yuxin ,r 36. Put another way, Yuxin's
modified display output reasonably describes the recited "demonstration
video segment" of claim 1. Yuxin ,r 36.
We emphasize that Yuxin discloses modifying display output based
on a gesture; claim 1 's recitations describing the content of the prompt and
the content of the demonstration are non-functional descriptive material. In
short, no functional relationship exists between the recited structures and the
content of the data.
Regarding Appellants' argument (ii), while an alternative may be
inferior to or less desirable than another, that alone is insufficient to teach
away from the inferior alternative unless the disclosure criticizes, discredits,
or otherwise discourages that alternative. In re Fulton, 391 F.3d 1195, 1200-
01 (Fed. Cir. 2004). Here, to the extent Yuxin teaches responding to
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collective behavior, a mere lack of explicitly stating that the audience may
consist of a single person does not criticize, discredit, or otherwise
discourage as audience consisting of a single person. Yuxin ,r 28. Further, as
stated above, we find a skilled artisan would have understood Yuxin's
teachings as readily applicable to any size audience, including an audience
consisting of a single person. Yuxin ,r 28.
Regarding Appellants' argument (iii), Chirstoff discloses
As summarized above, the invention in one embodiment
allows a video camera system having a fixed and relatively small
aperture, such as an intraoral camera having a light source at its
distal end, to automatically capture brighter and clear images of
the patient's smile and face. In a particular embodiment, the
video camera system is configured to raise the black level of the
video signal as the camera is removed from the patient's mouth
to capture the headshot. The automatic change in the black level
is done in response to reduced image brightness which, in this
case, is due to the camera light source now being outside the
patient's mouth and not sufficiently illuminating the patient's
face.
Christoff col. 2, 11. 15-26.
Thus, when the teachings of Christoff are combined with Yuxin, the
prior art teaches "capturing the video image from the camera that contains
an image of the potential customer's face" (Chirstoff captures an image of a
patient's smile and face); "determining if the image of the potential
customer's face includes a smile" (Yuxin detects a smile (gesture)) as recited
in claim 1. Christoff col. 2, 11. 15-26; Yuxin ,r 28.
Regarding Appellants' argument (iv), the Examiner provides a reason
to combine the teachings of Yuxin with the teachings of Bill that is rational
on its face and supported by evidence drawn from the record. See Final Act.
5 ("help the merchant to determine if the potential customer is interested in
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viewing the content that will be displayed on the screen"); see also Bill
Abstract ("The image is analyzed to determine a mood for the user so that
content may be selected responsive to the mood of the user."). In addition,
the Examiner provides a reason to combine the teachings of Christoff with
the teachings of Bill and Yuxin that is rational on its face and supported by
evidence drawn from the record. See Final Act. 6 ("help the merchant
identify if the customer face includes a smile before displaying a content on
the screen to the viewing customer"); see also Yuxin Abstract ("The control
system (26) is configured to modify the content in response to the collective
gesture."). Appellants do not provide a particularized explanation of why the
Examiner's reasoning is incorrect; accordingly, on the record before us, the
Examiner's reasoning supported by evidence drawn from the record weighed
against Appellants naked arguments leads us to concur with the Examiner's
conclusion of obviousness.
We, therefore, sustain the Examiner's obviousness rejection of claim
1. We also sustain the Examiner's obviousness rejection of claim 4, which is
not separately argued with particularity.
Claims 2 and 3
The Examiner finds Bill, Yuxin, Christoff, and Mortensen teach all
limitations of claims 2 and 3. Final Act. 6-7.
Claim 2 further recites "retrieving the demonstration video segment
initiates operation of the video display system in a demonstration mode."
Claim 3 further recites "retrieving the demonstration video segment
branches an existing demonstration to demonstrate a feature specified by the
prompt."
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The Examiner finds Mortenson teaches the additional recitations in
claims 2 and 3. Final Act. 6-7 (citing Mortenson ,r,r 4, 24); see also Ans. 5-
6.
Appellants argue "the complex demonstration mode requirements of
Mortensen, paragraph 24 do not lend themselves to the coarse control
inherent in the gesture engine of Bill." App. Br. 15; see also Reply Br. 6-7.
Appellants further argue "[t]he intended detailed control of Mortensen
would lead the skilled artisan away from dropping it into Bill using the
coarse control afforded by gestures." App. Br. 16.
We not see any error in the Examiner's findings. We concur with the
Examiner's conclusions.
Regarding claim 2, Mortenson discloses "[i]f the operator selects the
'demo' feature in the 'setup' menu 312, the operator is presented with a
decision 314 of turning the 'demo' mode 'On' or 'Off'." Mortenson ,r 24.
Thus, Mortenson teaches "initiat[ing] operation of the video display system
in a demonstration mode." Thus, when combined with Bill, Yuxin, and
Christoff, the prior art teaches "retrieving the demonstration video segment
initiates operation of the video display system in a demonstration mode."
The Examiner provides a reason to combine the teachings of
Mortenson with the teachings of Bill, Yuxin, and Christoff that is rational on
its face and supported by evidence drawn from the record. See Final Act. 7
("content will be played automatically by itself'); see also Yuxin ,r 36
("triggering one or more outputs from the display computer (24 in FIG. 1)
based on the detected gesture"). Regarding Appellants' arguments,
Mortenson is not relied upon for any complex requirements; rather,
Mortenson is relied on for teaching "initiat[ing] operation of the video
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display system in a demonstration mode." Therefore, Mortenson's teachings
are readily applicable to Yuxin such that a detected gesture may trigger the
demonstration mode.
Regarding claim 3, Mortenson discloses "[w]hen the embedded video
is set to play ... the television's on-screen-display (OSD) controller blocks a
primary video ... from being displayed on the television's screen."
Mortenson ,r 4. Thus, Mortenson teaches "branch[ing] an existing
demonstration to demonstrate a feature specified by the prompt." Thus,
when combined with Bill, Yuxin, and Christoff, the prior art teaches
"retrieving the demonstration video segment branches an existing
demonstration to demonstrate a feature specified by the prompt."
The Examiner provides a reason to combine the teachings of
Mortenson with the teachings of Bill, Yuxin, and Christoff that is rational on
its face and supported by evidence drawn from the record. See Final Act. 7
("help the merchant to display a preloaded content that will demonstrate to
users by the prompt"); see also Yuxin ,r 36 ("triggering one or more outputs
from the display computer (24 in FIG. 1) based on the detected gesture").
Regarding Appellants' arguments, again, Mortenson is not relied upon for
any complex requirements; rather, Mortenson is relied on for teaching
"branch[ing] an existing demonstration to demonstrate a feature specified by
the prompt." Therefore, Mortenson's teachings are readily applicable to
Yuxin such that a detected gesture may trigger branching to demonstrate a
feature.
We, therefore, sustain the Examiner's obviousness rejection of claims
2 and 3.
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Claim 5
The Examiner finds Bill, Ogawa, and Kilner teach all limitations of
claim 5. Final Act. 7-8; see also Ans. 6-8. Claim 5 is an independent claim
directed to a video demonstration system. In particular, claim 5 recites
"responsive to a determination that the potential customer is a child,
retrieving and playing a children's video." The Examiner finds Kilner
teaches "responsive to a determination that the potential customer is a child,
retrieving and playing a children's video" as recited in claim 5. Final Act. 8
( citing Kilner ,r 59); see also Kilner ,r 59 ("At a stage 420 the face
detection/recognition module determines if the detected face is the face of a
child and, if so, displays a promotion for a cartoon digital video disc (DVD)
offer.").
Appellants argue that, "contrary to the Office Action, paragraph 59
does not in fact teach retrieving and playing a children's video. It teaches
displaying a promotion for a DVD. That promotion is not said to be a video,
much less of the genre claimed. A promotion for a DVD of a video is not the
video itself. App. Br. 16-17; see also Reply Br. 7.
We not see any error in the Examiner's findings. We concur with the
Examiner's conclusions.
We find Kilner teaches "responsive to a determination that the
potential customer is a child, retrieving and playing a children's video" as
recited in claim 5 because we find Kilner's promotion for a cartoon DVD
offer reasonably describes a children's video. First, we find that the cartoon
DVD is a children's video; then, we further find that the promotion is also a
children's video. Kilner ,r 59.
We, therefore, sustain the Examiner's obvious rejection of claim 5.
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Claims 20, 21, and 23-26
The Examiner finds Bill and Yuxin teach all limitations of claim 20.
Final Act. 8-9; see also Ans. 8-10. In particular, claim 20 recites "where the
prompt asks the potential customer to make the gesture in response to the
prompt in the event the potential customer wishes to see a specified video
segment demonstrating operation of a function of the television."
Appellants present the following principal arguments:
1. Yuxin does not teach "prompting a person to make a gesture for
the purpose required by the claim." App. Br. 17; see also Reply Br. 7-8.
11. Yuxin requires a group of people and teaches away from a
single individual. App. Br. 17; see also Reply Br. 8.
We not see any error in the Examiner's findings. We concur with the
Examiner's conclusions.
Regarding Appellants' argument (i) and (ii), these arguments with
respect to Yuxin are the same as arguments presented with respect to Yuxin
for claim 1. For the same reasons discussed above when addressing claim 1,
the arguments do not show any error in the Examiner's findings.
We, therefore, sustain the Examiner's obviousness rejection of claim
20. We also sustain the Examiner's obviousness rejection of claims 21 and
23-26, which are not separately argued with particularity.
Claim 22
The Examiner finds Bill, Yuxin, and Mortenson teach all limitations
of claim 22. Final Act. 10-11; see also Ans. 10-11. Claim 22 further recites
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"retrieving the specified video segment initiates operation in a demonstration
mode."
The Examiner finds Mortenson teaches the additional recitations in
claim 22. Final Act. 10-11 (citing Mortenson ,r 24); see also Ans. 10-11.
Appellants argue the following.
The allegation is clear reversible error that a suggestion
exists to use the menu-driven demo mode concept of Mortensen
altered in an untaught way to be driven by the gesture engine of
Bill. Bill, as admitted in the rejection, fails to teach application
of its concept to demonstration modes, and the complex
demonstration mode requirements of Mortensen, paragraph 24
do not lend themselves to the coarse control inherent in the
gesture engine of Bill. The rationale for reversal expressed above
in relation to Claims 2 and 3 is incorporated herein.
App. Br. 18; see also Reply Br. 8.
We do not see any error in the Examiner's findings. We concur with
the Examiner's conclusions.
Regarding Appellants' arguments, these arguments with respect to
Mortenson are the same as arguments presented with respect to Mortenson
for claims 2 and 3. For the same reasons discussed above when addressing
claims 2 and 3, the arguments do not show any error in the Examiner's
findings.
We, therefore, sustain the Examiner's obviousness rejection of claim
22.
Claim 27
The Examiner finds Jung, Ogawa, and Tung teach all limitations of
claim 27. Final Act. 11-12; see also Ans. 11-12.
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In particular, the Examiner finds Tung teaches "determining whether
or not the potential customer makes the predetermined gesture; and
retrieving and playing a specified video segment on the display associated
with the predetermined gesture in response to determining that the viewer
has made the predetermined gesture" as recited in claim 27. Final Act. 11-
12 (citing Tung ,r 41); see also Ans. 12.
Appellants present the following principal argument:
The allegation is clear reversible error that Tung,
paragraph 41 teaches what Jung and Ogawa admittedly lack,
namely, determining whether or not the potential customer
makes the predetermined gesture, and retrieving and playing a
specified video segment on the display associated with the
predetermined gesture in response to determining that the viewer
has made the predetermined gesture. Paragraph 41 teaches
playing advertising in an elevator responsive to the door opening
or the elevator moving up and down. Nothing to do with gestures
of people. The door can open or the elevator can move up and
down without any people, much less people making gestures.
App. Br. 18; see also Reply Br. 8-9.
Tung discloses
In FIG. 7, if the advertising site 4 is an elevator 40, the
advertising device 41 will be installed in the elevator 40, and a
sensor 431 for detecting an opened or closed elevator door or a
gravity sensor 432 for detecting an up-and-down movement of
the elevator is installed on the advertising device 41, such that if
the elevator door is opened to allow passengers to enter into the
elevator or the elevator is moving up or down, the advertising
device 41 will play the advertising content.
Tung ,r 41.
Based on the record before us, we determine the Examiner erred in
finding Tung teaches "determining whether or not the potential customer
makes the predetermined gesture; and retrieving and playing a specified
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video segment on the display associated with the predetermined gesture in
response to determining that the viewer has made the predetermined
gesture" as recited in claim 27.
We agree with Appellants that "Paragraph 41 [ of Tung] teaches
playing advertising in an elevator responsive to the door opening or the
elevator moving up and down" and does not teach the argued limitation.
App. Br. 18.
We, therefore, do not sustain the Examiner's obviousness rejection of
claim 27.
New Ground of Rejection for Claim 27
Claim 2 7 is reproduced below:
27. A computer memory that is not a transitory signal and that
comprises instructions executable by one or more programmed processors
for:
causing an image to be displayed on a video display, where display of
the image on the display provides a prompt for a potential customer that
instructs the potential customer to make a predetermined gesture if the
potential customer wishes to obtain a demonstration relating to the video
display;
receiving a video image from a camera;
capturing the video image from the camera to determine if the
potential customer makes the predetermined gesture;
determining whether or not the potential customer makes the
predetermined gesture; and
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retrieving and playing a specified video segment on the display
associated with the predetermined gesture in response to determining that
the viewer has made the predetermined gesture.
We adopt as our own the Examiner's uncontested findings based on
Jung and Ogawa. See Final Act. 11-12.
We find Yuxin teaches "determining whether or not the potential
customer makes the predetermined gesture" as recited in claim 27 because
Yuxin discloses"[t]his content can include overt suggestions, requests, or
other types of prompts for audience response in the form of some gesture ...
the content expressly instructs or requests the audience to make a particular
gesture." Yuxin ,r 28.
We further find Yuxin teaches "retrieving and playing a specified
video segment on the display associated with the predetermined gesture in
response to determining that the viewer has made the predetermined
gesture" as recited in claim 27 because Yuxin discloses "the system can
modify the display output based upon the collective behavior (step 58). This
can involve triggering one or more outputs from the display computer (24 in
FIG. 1) based on the detected gesture." Yuxin ,r 36. Put another way,
Yuxin's modified display output reasonably describes the recited "specified
video segment" of claim 27. Yuxin ,r 36. Further, we find a skilled artisan
would understand Yuxin's teachings as readily applicable to any size
audience, including an audience consisting of a single person. Yuxin ,r 28.
We emphasize that Yuxin discloses modifying display output based
on a gesture; claim 27's recitations describing the content of the prompt and
the content of the demonstration are non-functional descriptive material. In
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short, no functional relationship exists between the recited structures and the
content of the data.
We conclude it would have been obvious to one of ordinary skill in
the art to combine the teachings of Yuxin with the teachings of Jung and
Ogawa to "help the merchant to determine if the potential customer is
interested in viewing the content that will be displayed on the screen." Final
Act. 12; see also Yuxin Abstract ("The control system (26) is configured to
modify the content in response to the collective gesture."), Jung Abstract
("specifying at least one of a plurality of user-health test functions
responsive to an interaction between a user and at least one advertiser-
specified attribute").
We, therefore, reject claim 27 under 35 U.S.C. § 103(a) as obvious
over Jung, Ogawa, and Yuxin. This is a new ground of rejection.
ORDER
The Examiner's decision rejecting claims 1-5 and 20-27 is affirmed.
We denominate the affirmance as involving a new ground of rejection
under 37 C.F.R. § 4I.50(b) for claim 27 because we now reject claim 27
under 35 U.S.C. § 103(a) as obvious over Jung, Ogawa, and Yuxin, instead
of over Jung, Ogawa, and Tung.
Rule 37 C.F.R. § 4I.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Furthermore, 37 C.F.R. § 41.50 (b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 4I.50(b)
24