Ex Parte 6305016 et al

Patent Trial and Appeal Board

Feb 27, 2013

90011237 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/011,237 09/16/2010 6305016 003597-0003-503 5242
75563 7590 02/27/2013
ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8704
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/27/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte UNITED VIDEO PROPERTIES, INC.
____________

Appeal 2012-010801
Reexamination Control 90/011237
Patent 6,305,016 B1
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
1

This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s final
rejection of claims 8, 21, 28, and 30-32. According to Appellant, claims 7

1
This appeal is related to Appeal No. 2012-010796, Control No. 90/011231
and Appeal No. 2012-010809, Control Nos. 90/011236 and 90/011548.
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and 20 have been cancelled. Claims 9-11, 22-24, and 29 have been
indicated to be patentable. Claims 1-6, 12-19, 25-27, and 33-35 are also
under final rejection but Appellant does not appeal the rejection of those
claims.
We have jurisdiction under 35 U.S.C. § 306. Oral hearing was on
November 28, 2012.
We affirm.

Invention
The '016 patent is directed to a video mix program guide whereby a
base programming signal has superimposed thereon a scroll information
picture image signal which may be displayed on a viewer’s television. Col.
2, ll. 36-55.
Figure 9 of the '016 patent is reproduced below.
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Figure 9 is said to illustrate a sixty percent video mix, the percentage
indicating the weight of the programming guide signal superimposed on the
base programming signal. Col. 3, ll. 44-49.

Representative Claims
15. A method for presenting a computer-generated
image with a television program, comprising:

receiving digital data;

generating an image using the digital data;

receiving the television program; and
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presenting the image and the television program
simultaneously so that the image has a perceived partial
transparency.

21. The method of claim 15, wherein the image has a
weight of transparency with respect to the television program
and the weight of transparency is variable.

32. The method of claim 15, wherein a portion of the
image is displayed without transparency such that the portion is
opaque with respect to a portion of the television program.

Prior Art
Reiter US 4,751,578 June 14, 1988
Okura
2
JP 04291582 October 15, 1992
Yoshio EP 0 342 803 B1 November 23, 1989

Examiner’s Rejections
Claims 8, 21, 28, and 32 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Okura.
Claims 8, 21, and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reiter and Okura.
Claims 30-32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reiter and Okura or Yoshio.

2
With English translation provided by USPTO, September 2011.
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Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of representative claims 21 and 32. See 37 C.F.R.
§ 41.37(c)(1)(iv).

FINDINGS OF FACT
1. Okura discloses that prior art television or other video signal
display devices included the channel number of the program image
superimposed on the program image. Okura ¶ [0003].

2. Figure 6 of Okura is reproduced below.

Figure 6 is said to show the image of the sun displayed as program
image BG on a display screen in a conventional channel display. ¶ [0007].
Some of program image BG is displayed as replaced by channel number
character CH (e.g., channel “1”). Id.

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3. Okura notes that a problem with the prior art display was that
the program image BG in the background of the channel number character
CH will not be visible. ¶ [0008].

4. Figure 1 of Okura is reproduced below.

Figure 1 is said to be an improved circuit such that character CH and
display image BG may be displayed simultaneously. ¶¶ [0011] - [0013].

5. Character output control circuit 12 (Fig. 1) outputs red (R),
green (G), and blue (B) signals as primary color signals for the character
image signal (channel number). ¶ [0013].
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6. Character output control circuit 12 also raises background
removal signal SYS1 to “H” level so as not to display the program image in
the synthesized portion where the channel number will be displayed.
¶ [0017].

7. Background removal signal SYS1 output by character output
control circuit 12 is amplified to a prescribed signal level, yielding signal
SYS2. ¶ [0018].

8. Character output control circuit 12 also raises background color
halftone signal SYM1 to “H” level so as to lower the brightness of program
image BG in the synthesized portion where the channel number will be
displayed, while also making the hue lighter, in a process that Okura calls
“halftone processing.” ¶ [0019].

9. Background color halftone signal SYM1 output by character
output control circuit 12 is amplified to a prescribed signal level, yielding
signal SYM2. ¶ [0020].

10. Background processing circuit 13B (Fig. 1) accepts the video
signal SV1 and applies background processing to attenuate the video signal
corresponding to the synthesized portion within the video signal where the
channel number will be displayed, during the period that the background
removal amplified signal SYS2 is at “H” level. ¶ [0021]. In an obvious
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informality, Okura refers to the background removal amplified signal as
“SYM2” in paragraph [0021].

11. RGB switching circuit 13A (Fig. 1) removes the video signal
corresponding to the synthesized portion, where the channel number will be
displayed, from video signal SV1. The switching circuit obtains synthesized
video signal SCOM2 by superimposing character video signals (SR2, SG2,
and SB2) onto the primary color signals for red, green, and blue in video
signal SV1, which is output to the display. ¶ [0022].

12. Okura further discloses that brightness and hue of the respective
character and video signals in the synthesized portion of the display may be
reduced 50 per cent to enhance viewing of both images. ¶¶ [0031]-[0037].

13. In particular, background removal signal SYS1 may be held at
“L” level while background color halftone signal SYM1 is raised to “H”
level synchronized to character video signals SR2, SG2, and SB2. Thus, in
the portion where channel number character CH is displayed, the brightness
of program image BG based on video signal SV1 drops while the hue
becomes lighter. ¶ [0033].

14. Figure 3 of Okura is reproduced below.
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Figure 3 is said to illustrate the display image during halftone
processing. ¶ [0049]. As shown in Figure 3(A), the channel number
character may be selected by the viewer to have maximum brightness such
that it has priority over program image BG. ¶ [0030]. When program image
BG and channel number character CH are each halftoned and synthesized,
program image BG can be displayed through channel character number CH
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such that program image BG can be seen in its entirety. ¶ [0034]-[0037];
Fig. 3(B).

ANALYSIS
Claim 32
In related appeal 2012-010809, the Board found that Okura teaches
combining a character image and a program image such that the character
image is superimposed on the program image, the program image being
perceived through the character image. See FF 12-13; Okura Fig. 3(B). In
the instant appeal Appellant seems to present arguments commensurate with
base claim 15, contending that Okura fails to teach combining the relevant
signals. However, claim 15 sets forth, inter alia, “presenting the image and
the television program simultaneously so that the image has a perceived
partial transparency.” Our analysis begins with the premise that the applied
prior art renders obvious the subject matter of claim 15, because Appellant
has chosen not to appeal the rejection of that claim.
Appellant states, in a footnote at page 9 of the Appeal Brief, that “for
the sake of expediency on this appeal, and without waiver of or admitting
anything to the contrary, Patent Owner for purposes of this appeal only does
not press this issue with respect to independent claims 1, 2, and 15.”
Although the waiver of arguments will not be extended to the related
appeals, in this appeal we will not review the rejection of non-appealed
claim 15.
The relevant issue in this appeal thus reduces to the question as to
whether the ordinarily skilled artisan would have found it obvious to have a
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portion of the image displayed without transparency such that the portion is
opaque with respect to a portion of the television program, in combination
with the subject matter of claim 15, which subject matter has been
effectively admitted to be obvious. Yet, Appellant admits that Okura
discloses, during what Appellant calls “Phase I,” that when background
removal signal SYS1 is at the “H” level, channel number CH is displayed
opaque relative to the underlying video. See App. Br. 10-11; FF 6-7, 10-11;
Okura Fig. 3(A).
Appellant alleges that Okura does not teach, and even teaches away
from, “producing a display that is both opaque and partially transparent at
the same time.” Reply Br. 5. Appellant’s allegation presupposes some kind
of temporal restriction in claim 32, which we do not find to be a requirement
of the claim. Base claim 15 calls for presenting the image, having a
perceived partial transparency, and the television program simultaneously
while dependent claim 32 calls for a portion of the image being displayed
without transparency (i.e., opaque). Okura teaches a circuit (FF 4) that first
displays a character image that is opaque (“Phase I”), and later a character
image that is displayed with a perceived partial transparency (“Phase II”).
See App. Br. 10-13. We therefore are not persuaded that claim 32 has been
rejected in error.
Even if the claims were to require simultaneous display of a perceived
partial transparency and an opaque portion, Appellant acknowledges that
Okura teaches each type of display, although not at the same time. Further,
it is undisputed that Reiter teaches an opaque program guide. See App. Br.
8. “[I]f a technique has been used to improve one device, and a person of
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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.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007). The operative question is “whether the improvement
is more than the predictable use of prior art elements according to their
established functions.” Id. An improvement such that a perceived partial
transparency and an opaque portion are simultaneously displayed represents
no more than the predictable use of prior art elements according to their
established functions, rendering the predictable result of a displayed image
that simultaneously contains a perceived partial transparency and an opaque
portion.
As the subject matter as a whole of claim 32 has not been shown to be
patentable over the combination of Reiter and Okura, we consider Yoshio to
be merely cumulative in the rejection of claim 32.

Claim 21
Claim 21 recites the method of base claim 15 further comprising
wherein the image has a weight of transparency with respect to the television
program and the weight of transparency is variable.
Okura discloses a 50 per cent perceived partial transparency that may
be changed to various levels by changing the voltage ratio of the resistors in
the circuit. Okura ¶¶ [0042]-[0043]. Appellant seems to contend that claim
21 requires that varying the perceived partial transparency must occur during
normal operation of the display. However, Okura not only discloses varying
the perceived partial transparency, but also how one may do it. We note that
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claim 22 is not rejected, which further limits claim 21 in “further comprising
receiving a user selection of the weight of transparency.”
We therefore are not persuaded of error in the rejection of claim 21,
whether rejected under § 102(b) as being anticipated by Okura or under
§ 103(a) over the combination of Reiter and Okura.
.
DECISION
The Examiner’s decision to reject claims 8, 21, 28, and 30-32 is
affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

ack

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PATENT OWNER:

ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8704

THIRD PARTY REQUESTER

TONY D. CHEN
CHEN YOSHIMURA LLP
255 S. GRAND., #215
LOS ANGELES, CA 90012