Ex Parte Wistendahl et al

Board of Patent Appeals and Interferences

Jan 14, 2009

09815020 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DOUGLASS A. WISTENDAHL and
LEIGHTON K. CHONG
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Appeal 2008-4845
Application 09/815,020
Technology Center 2400
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Decided: January 14, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and JOHN A.
JEFFERY, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 2-9 and 14-16.1
We affirm the Examiner’s rejection of these claims.

1 Claims 1 and 13 were previously cancelled. Claims 10-12 were previously
withdrawn from consideration.

Appeal 2008-4845
Application 09/815,020

INVENTION
The invention is directed to a system for converting existing TV
content to an interactive TV program. Claim 4 is representative of the
invention and reproduced below:
4. A system for converting existing TV content to an
interactive TV program comprising:
(a) TV content in the form of a series of successive
display frames in a time sequence which is transmitted to a TV
set top box;
(b) object mapping data specifying display locations of
objects as hot spot positions appearing in the display frames of
the TV content to be rendered interactive which are transmitted
to the TV set top box;
(c) an interactive TV utility program stored in the TV set
top box which processes linkages from objects specified by the
object mapping data to respective interactive functions to be
performed upon viewer selection of the objects in conjunction
with a display of the TV content; and
(d) a TV display system including the TV set-top box and
associated remote control unit for receiving the transmitted TV
content and object mapping data and operating the interactive
TV utility program in conjunction with the display of the TV
content by using the object mapping data to determine when the
viewer is pointing to and selecting an object appearing in a
display frame with the remote control unit and causing the
interactive function linked by the corresponding linkage of the
interactive TV utility program to be performed, wherein the
remote control unit has directional buttons and a selecting
button that are adapted as a pointing device.

REFERENCES
Thompson US 5,236,199 Aug. 17, 1993

Gibson US 5,539,871 Jul. 23, 1996

Iwamura US 5,602,564 Feb. 11, 1997
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Hendricks US 5,990,927 Nov. 23, 1999
Mills US 6,055,560 Apr. 25, 2000
(filed Nov. 6, 1996)

Butler US 2002/0007493 A1 Jan. 17, 2002
(filed Jul. 29, 1997)

Hiraki US 6,392,674 B1 May 21, 2002
(filed Jul. 28, 1999)

REJECTIONS AT ISSUE
The Examiner rejected independent claims 4 and 16 and dependent
claims 2, 7, and 14 under 35 U.S.C. § 103(a) as unpatentable over Hendricks
in view of Gibson.
The Examiner rejected claims 3 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Hendricks in view of Gibson and further in view of
Butler.
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Hendricks in view of Gibson and further in view of Mills.
The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Hendricks in view of Gibson and further in view of
Hiraki.
The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Hendricks in view of Gibson and further in view of
Thompson.
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ISSUES
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson.
Appellants argue on pages 7 through 9 of the Appeal Brief that the
Examiner’s rejection of claims 2, 4, 7, 14, and 16 is in error.2 Appellants
argue that Gibson is not analogous art. App. Br. 9. Appellants additionally
argue that the Examiner’s rejection is in error because the combination of
Hendricks’ TV set top box with Gibson’s interactive functions linked to “hot
spot” objects amounts to hindsight reconstruction. App. Br. 9. Appellants
further assert there is no teaching, suggestion, or motivation to combine the
Hendricks and Gibson references. App. Br. 9.
Thus, with respect to claims 2, 3, 4, 7, 14, and 16, Appellants’
contentions present us with two issues. First, did the Examiner err in finding
Gibson is analogous art? Second, did the Examiner err in finding that one
skilled in the art would combine Hendricks’ TV set top box with Gibson’s
interactive functions linked to “hot spot” objects?

2 We note that Appellants do not specifically mention claims 4, 7, or 16
within the body of the first argument. Therefore, we select independent
claim 4 as representative of the group comprising claims 4, 7, and 16.
Claims 2 and 14 are grouped together and we select claim 2 to be
representative of the group comprising claims 2 and 14. Additionally, claim
3 is argued within the body of the first argument even though the rejection of
claim 3 contains an additional reference and is not included in the first
argument’s heading. However, we will still address claim 3 under this
argument.
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Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Butler.
Appellants argue on page 10 of the Appeal Brief that the Examiner’s
rejection of claims 3 and 15 is in error. Appellants argue that the Butler
reference is not prior art because the filing date of Appellants’ original
patent application antedates the Butler reference. App. Br. 10. In addition,
Appellants argue that “[t]he original application described and claimed the
system of converting existing TV programs into interactive TV programs by
defining 'hot spots' as marker positions in a mask overlay on the TV content
display.” App. Br. 10.
Thus, with respect to claims 3 and 15, Appellants’ contentions present
us with the issue: did the Examiner err in finding the Butler reference is
prior art?
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Mills.
Appellants argue on pages 10 through 11 of the Appeal Brief that the
Examiner’s rejection of claims 5 and 6 is in error. Appellants argue that the
Mills reference is not prior art because the filing date of Appellants’ original
patent application antedates the Mills reference. App. Br. 11.
Thus, with respect to claims 5 and 6, Appellants’ contentions present
us with the issue: did the Examiner err in finding the Mills reference is prior
art?
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Hiraki.
Appellants argue on page 11 of the Appeal Brief that the Examiner’s
rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable
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over Hendricks in view of Gibson and further in view of Hiraki is in error.
Appellants’ reason that the claims are allowable based on their dependency
from claim 4. App. Br. 11.
Thus, Appellants’ contentions present the same issues as presented
with respect to claim 4.
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Thompson.
Appellants argue on page 12 of the Appeal Brief that the Examiner’s
rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable
over Hendricks in view of Gibson and further in view of Thompson is in
error. Appellants reason that the claims are allowable based on their
dependency from claim 4. App. Br. 11.
Thus, Appellants’ contentions present the same issues as presented
with respect to claim 4.
FINDINGS OF FACT
Gibson
1. Gibson discloses “a data processing system for selectively
associating stored data with an animated element within a
multimedia presentation in a data processing system.” Gibson,
Abstract.
2. The data processing system includes video storage devices such as
“laser disk players and video recording devices.” Gibson, col. 3, ll.
19-25.
3. A display is used to show the visual portion of a multimedia
presentation. Gibson, col. 3, ll. 46-50.
4. A skilled artisan knows a television is a type of display.
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5. “[D]uring the multimedia presentation, the existence of the data set
and the association between the data set and the selected animated
element is graphically indicated utilizing a rectangle surrounding
the animated element, a blinking figure near the animated element
or any other suitable graphic indicator,” i.e., a hot spot. Gibson,
Abstract.
Hendricks
6. Hendricks discloses an “advanced set top terminal capable of
digital decompression, menu generation, interactivity and other
advanced functional capabilities for use in a television program
delivery system.” Hendricks, Abstract.
7. “The primary conduit for communication between the subscriber
and the set top terminal is through … a remote control device.”
Hendricks, col. 11, ll. 64-66.
8. One skilled in the art would have used a remote control to select a
hot spot during a multimedia presentation to provide additional
information.

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PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348,
(emphasis in original) (citations and quotations omitted).
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. References are selected as being
reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
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use of prior art elements according to their established
functions.

Id. at 1740. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 1742.

35 U.S.C. § 120 states that:
[a]n application for patent for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in an application
previously filed . . . shall have the same effect, as to such invention, as
though filed on the date of the prior application . . . if filed before the
patenting or abandonment of or termination of proceedings . . . on an
application similarly entitled to the benefit of the filing date of the first
application . . . .

35 U.S.C. § 112, first paragraph, states that “[t]he specification shall
contain a written description of the invention . . . in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which it pertains,
. . . to make and use the same . . . .” To satisfy the description requirement,
one must show “possession” of the invention by describing the claimed
invention, with all its claimed limitations, using descriptive means such as
words, structures, figures, diagrams, formulas, etc. See Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). While the
prior application need not describe the claimed subject matter in exactly the
same terms as used in the claims, the specification must contain an
equivalent description of the claimed subject matter. Id.

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ANALYSIS
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson.
Claims 4, 7, and 16
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 4, 7, and 16. Appellants argue that Gibson is
non-analogous art because a television is not analogous to a computer
system. Reply Br. 2-4. Appellants reason that a “TV does not have a
keyboard, and the TV remote control was a channel or program selector that
was not analogous to a mouse used as a pointer on a personal computer.”
Reply Br. 4. However, the Examiner has found that Gibson comprises a
“data processing system” and is not limited to a computer system. Ans. 14.
We agree with the Examiner.
Prior art is considered analogous art when the reference comes from
the same field as applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned. Kahn, 441 F.3d at 986-87.
Gibson comes from the same field of endeavor as Appellants’ invention
because both discuss systems that utilize displays for multimedia
presentations. FF 3. Gibson teaches “a data processing system for
selectively associating stored data with an animated element within a
multimedia presentation in a data processing system.” FF 1. The data
processing system includes video storage devices such as “laser disk players
and video recording devices.” FF 2. A display is used to show the visual
portion of a multimedia presentation. FF 3. A skilled artisan knows a
television is a type of display. FF 4. Thus, Gibson is analogous art.
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Appellants further assert that there is “no teaching, suggestion or
motivation in the Gibson reference or the Hendricks reference to modify the
Gibson interactive PC game program operable in the PC environment to run
'hot spot' data on a television set-top box and use the TV remote control as a
pointer.” App. Br. 9. However, the Examiner has found that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
combine the references in order to provide selectable hotspots to the viewer
to indicate when relevant information is available during a multimedia
presentation. Ans. 14. Appellants have provided no argument or evidence
to show that this finding is in error. In the absence of such argument and
evidence, we find the Examiner’s finding to be sufficient.
Nevertheless, the Court explained in KSR, 127 S. Ct. at 1739, “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Hendricks
discloses a an “advanced set top terminal capable of digital decompression,
menu generation, interactivity and other advanced functional capabilities for
use in a television program delivery system.” FF 6. “The primary conduit
for communication between the subscriber and the set top terminal is
through … a remote control device.” FF 7. Gibson, as discussed above,
discloses “a data processing system for selectively associating stored data
with an animated element within a multimedia presentation in a data
processing system.” FF 1. “[D]uring the multimedia presentation, the
existence of the data set and the association between the data set and the
selected animated element is graphically indicated utilizing a rectangle
surrounding the animated element, a blinking figure near the animated
element or any other suitable graphic indicator,” i.e., a hot spot. FF 5. One
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skilled in the art would have found that a remote control can be used to
select a hot spot during a multimedia presentation to provide additional
information. FF 8. Appellants have not satisfied their burden of rebutting
this fact. Therefore, modifying the remote control device of Hendricks with
the hot spot indicator as taught in Gibson would have yielded predictable
results, and therefore, would have been obvious to one of ordinary skill at
the time of the invention. See KSR, 127 S. Ct. at 1739.
For the above reasons, Appellants have not shown the Examiner erred
in rejecting claims 4, 7, and 16.
Claims 2 and 14
Appellants’ arguments on page 9 of the Appeal Brief are the same as
those discussed above with respect to independent claim 4.3 Further,
Appellants’ arguments group claim 14 with claim 2. Thus, Appellants’
arguments with respect to the Examiner’s rejection of claims 2 and 14
present us with the same issues as claim 4.
Claim 3
Appellants’ arguments on page 9 of the Appeal Brief are the same as
those discussed above with respect to independent claim 4.4 Thus,
Appellants’ arguments with respect to the Examiner’s rejection of claim 3
present us with the same issues as claim 4.

3 While claims 2 and 14 contain additional limitations not found in claim 4,
Appellants provide no additional arguments with regard to the additional
limitations.
4 As we indicated previously, claim 3 is not properly argued under the
rejection of Hendricks in view of Gibson since it contains an additional
reference. However, we have addressed Appellants’ arguments as if they
were properly argued.
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Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Butler.
The Examiner finds that Butler teaches the user of a HTML mask
overlay. Ans. 8. Appellants do not dispute the Examiner’s findings with
respect to the content of the Butler reference. Nor do Appellants dispute the
Examiner’s findings that Butler fully meets the limitations in claims 3 and
15. Rather, Appellants argue that the Butler reference, filed July 29, 1997, is
antedated by the filing date of the Appellants’ original patent application
(08/536,107) on September 29, 1995. App. Br. 10. Appellants argue that
“[t]he original application described and claimed the system of converting
existing TV programs into interactive TV programs by defining 'hot spots' as
marker positions in a mask overlay on the TV content display.” App. Br. 10.
However, the Examiner has found Butler is prior art since Appellants are not
entitled to the benefit of the earlier filing date. Ans. 15-16. The Examiner
agrees that the original application discloses the use of an “overlay.” Ans.
15. However, the Examiner has not found the original application includes
an HTML mask overlay. Ans. 15. Thus, the Examiner has found that the
original application fails to meet the written description requirements of
35 U.S.C. § 112, first paragraph, as required by 35 U.S.C. § 120. We agree.
Appellants have not shown where the claim limitation “HTML mask
overlay” is found in the Original Specification. Additionally, Appellants do
not indicate how or why an HTML mask overlay is the same as a mask
overlay. As a result, we find that the original patent application
(08/536,107) does not provide sufficient description to establish that
Appellants were in possession of the invention now claimed. Thus,
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Appellants have not shown the Examiner erred in applying Butler as a prior
art reference in rejecting claims 3 and 15.

Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Mills.
The Examiner finds that Mills teaches the use of a halo for
highlighting hotspots. Ans. 9. Appellants do not dispute the Examiner’s
findings with respect to the content of the Mills reference. Nor do
Appellants dispute the Examiner’s findings that Mills fully meets the
limitations in claims 5 and 6. Rather, Appellants argue that the Mills
reference, filed on November 8, 1996, is antedated by the filing date of the
Appellants’ original patent application, 08/536,107, on September 29, 1995.
App. Br. 10. The Examiner has found Mills is prior art since Appellants are
not entitled to the benefit of the earlier filing date. Ans. 16. The Examiner
agrees that the Original Specification discloses “hot spots.” Ans. 16.
However, the Examiner has found the original patent application does not
support the recited limitation “halo.” Ans. 16. Thus, the Examiner has
found that the original application fails to meet the written description
requirements of 35 U.S.C. § 112, first paragraph, as required by 35 U.S.C.
§ 120. We agree.
Appellants have not shown where the claim limitation “halo” is found
in the Original Specification nor do Appellants indicate the Original
Specification contained the limitation “haloing.” Therefore, we find that the
original patent application (08/536,107) does not provide sufficient
description to establish the Appellants were in possession of the invention
now claimed. Thus, Appellants have not shown the Examiner erred in
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applying Mills as a prior art reference in rejecting claims 5 and 6 as lacking
novelty.
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Hiraki.
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 8 and 9. Appellants’ arguments that the
rejection of these claims is in error for the reasons discussed with respect to
claim 4 is not persuasive for the reasons discussed supra with respect to
claim 4. Therefore, we sustain the Examiner’s rejection of claims 8 and 9.
Rejection under 35 U.S.C. § 103(a) as unpatentable over Hendricks in view
of Gibson and further in view of Thompson.
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 8 and 9. Appellants’ arguments that the
rejection of these claims is in error for the reasons discussed with respect to
claim 4 is not persuasive for the reasons discussed supra with respect to
claim 4. Therefore, we sustain the Examiner’s rejection of claims 8 and 9.

CONCLUSIONS OF LAW
Appellants have not shown the Examiner erred in either finding
Hendricks and Gibson are analogous art or that one skilled in the art would
have combined Hendrick’s TV set top box with Gibson’s interactive
functions linked to “hot spot” objects.
Appellants have not shown the Examiner erred in finding Butler is
prior art.
Appellants have not shown the Examiner erred in finding Mills is
prior art.
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ORDER
The Examiner’s rejection of claims 2-9 and 14-16 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

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