Ex Parte Antley

Patent Trial and Appeal Board

Jan 24, 2013

11267851 (P.T.A.B. Jan. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY T. ANTLEY

Appeal 2010-008705
Application 11/267,851
Technology Center 2100
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Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008705
Application 11/267,851

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is directed to a method and system for
generating translatable and accessible multimedia presentations. See Spec.
18, Abstract of the Disclosure.
Claim 1 is illustrative, with key disputed limitations emphasized:
1. A multimedia presentation data processing system
comprising:

a transformation loaded in a development platform of the
multimedia presentation data processing system and enabled
during execution of the transformation in memory by a
processor of the development platform to transform a
presentation master file defining a multimedia presentation into
a text file, a variables file and a visual markup language
specified form of the multimedia presentation; and,

a multimedia engine executing in a runtime platform of
the multimedia presentation data processing and enabled during
execution of the multimedia engine in memory by a processor
of the runtime platform to generate a slide show using text
strings extracted from the text file, and
imagery and audiovisual elements extracted from the
variables file.

The Examiner relies on the following as evidence of unpatentability:
Flanagan US 5,966,685 Oct. 12, 1999
Mewherter US Pat. App. Pub. No.: 2005/0091579 A1 Apr. 28, 2005
Cohrs US Pat. App. Pub. No.: 2007/0074167 A1 Mar. 29, 2007
(Filed Aug. 31, 2005)
Appeal 2010-008705
Application 11/267,851

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THE REJECTIONS
1. The Examiner rejected claims 1, 5, 7, 8, 12, and 13 under
35 U.S.C. §102(a) as anticipated by Mewherter. Ans. 3-4.1
2. The Examiner rejected claims 2, 4, 10, 11, 15, and 16 under
35 U.S.C. §103(a) as unpatentable over Mewherter and Flanagan.
Ans. 5-6.
3. The Examiner rejected claims 3, 9, and 14 under 35 U.S.C. §103(a)
as unpatentable over Mewherter and Cohrs. Ans. 6-7.
4. The Examiner rejected claim 6 under 35 U.S.C. §103(a) as
unpatentable over Mewherter. Ans. 7

ISSUE
Based upon our review of the record, the arguments proffered by
Appellant and the findings of the Examiner, we find the following issue to
be dispositive of all of the claims on appeal:
Under § 102, has the Examiner erred in rejecting independent claims
1, 7 and 12 by finding that Mewherter discloses a “variables file” as set forth
in those claims?

1 Throughout this opinion, we refer to the Appeal Brief filed December 11,
2009; the Examiner’s Answer mailed February 19, 2010; and, the Reply
Brief filed June 2, 2010.
Appeal 2010-008705
Application 11/267,851

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ANALYSIS
Based upon Appellant’s arguments we will decide the appeal of
claims 2-16 on the basis of claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Appellant argues that the Examiner has failed to “map any portion of
Mewherter to the claimed teaching of ‘variables file.’” App. Br. 5-7.
Specifically, Appellant references ¶[0013] of his Specification which
provides that the “variables file” is a “file that contains a listing of sets of
multimedia elements and display parameters extracted from a master file and
the language specific forms of the master file” and argues that the Examiner
has improperly interpreted that term. Reply Br. 2.
The Examiner finds that Mewherter discloses a method for processing
a presentation that extracts text from a master file, referencing Mewherter,
Figure 2, item 225. Further, the Examiner finds that Mewherter discloses
capturing an image of a slide (Figure 2, Item 230). The Examiner points out
that the captured image contains imagery information, and therefore
constitutes the claimed variable information. Ans. 7.
We find the Examiner’s findings persuasive. It is beyond cavil that the
image data contained within a slide is variable data.
Further, we find that the portion of claim 1 which recites that the
claimed transformation is loaded and enabled “to transform a presentation
master file defining a multimedia presentation into a text file, a variables file
and a visual markup language specified form of the multimedia
presentation” to be a mere statement of intended use.
"An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.'' Boehringer Ingelheim Vetmedica, Inc. v.
Appeal 2010-008705
Application 11/267,851

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Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
''[s]uch statements often . . . appear in the claim's preamble,'' In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id.
Here the phrase “to transform a presentation master file defining a
multimedia presentation into a text file, a variables file and a visual markup
language specified form of the multimedia presentation” merely states an
intended use or purpose for the claimed transformation. Consequently, the
phrase will not limit the scope of the claim and will not distinguish the
claimed invention from the prior art in terms of patentability.

CONCLUSION
The Examiner did not err in rejecting claims 1, 5, 7, 8, 12, and 13
under § 102, and claims 2-4, 6, 9-11, and 14-16 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-16 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

Vsh