Ex Parte Carro

Patent Trial and Appeal Board

Jan 25, 2013

10993231 (P.T.A.B. Jan. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FERNANDO INCERTIS CARRO
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Appeal 2010-011398
Application 10/993,231
Technology Center 3700
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and JAMES
A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE1
Fernando Incertis Carro (Appellant) seeks our review under 35 U.S.C
§ 134 of the Examiner’s final decision rejecting claims 1, 3-6, 8, 9, and 11-
15. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellant’s claimed invention relates to computer systems, and more
particularly to access of information relating to an audio-visual presentation.
Spec. 1, ll. 6-7.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of supplying information to an audience
member, said method comprising [the] steps of:
using a first computing device, initiating presentation of a
plurality of informational screens during respective time
intervals to the audience member;
said first computing device recording start and stop times
for the presentation of each of said informational screens;
during the presentation of one of said informational
screens, the audience member, using a second computing
device, requesting additional information not created nor
presented during the presentation of said plurality of
informational screens but relating to said one informational
screen, and in response, said second computing device
recording a time that said audience member made the request;
and
comparing the time that said audience member made the
request to the start and stop times for the presentation of each of
said informational screens, and based on the comparison,
determining that said audience member made said request
during the presentation of said one presentation screen: and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug. 3, 2009) and the Examiner’s Answer (“Ans.,” mailed Sep. 4,
2007).
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wherein based on the determining step, supplying to said
second computing device said additional information not
created nor presented during the presentation of said plurality of
informational screens but relating to said one informational
screen or a hyper link to said additional information not created
nor presented during the presentation of said plurality of
informational screens but relating to said one informational
screen.
The Examiner relies upon the following evidence:
Mortimer US 6,091,930 Jul. 18, 2000
Moskowitz US 6,654,588 B2 Nov. 25, 2003
Vivian US 2003/0036045 A1 Feb. 20, 2003
Lamming EP 0 495 612 B1 Apr. 10, 1996
Claims 1, 3, 6, 9, 12, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mortimer and Lamming.
Claims 4, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mortimer, Lamming, and Moskowitz.
Claims 5, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mortimer, Lamming, and Vivian.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Appellant argues claims 1, 3-6, 8, 9, and 11-15 as a group (App. Br. 5-
9). We select claim 1 as the representative claim for this group, and the
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remaining claims 3-6, 8, 9, and 11-15 each stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).
We find unpersuasive Appellant’s argument that neither Mortimer nor
Lamming teaches “an audience member requesting additional information
during the presentation of an information screen and then recording that
request.” App. Br. 10. We note that Appellant’s argument is not
commensurate with the scope of claim 1, which requires “recording a time
that said audience member made the request,” not “recording that request.”
The Examiner found that Mortimer discloses requesting additional
information during the presentation of an information screen and that
Lamming discloses time correlation with regards to what is being requested,
that is, recording a time when an entry is made by a user that is associated
with a time during a presentation. See Ans. 10, App. Br. 6-7.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). We find that Appellant has not addressed the combination of prior
art references as a whole but simply improperly argues the merits of
Mortimer and Lamming individually. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not . . . that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art”). Thus we find that Appellant
has not overcome the Examiner’s determination that Mortimer and
Lamming, in combination, disclose the claim limitations at issue.
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We also find unpersuasive Appellant’s contention that one of ordinary
skill in the art would not combine the teachings of Mortimer and Lamming
because they “have different purposes from one another.” See App. Br. 8.
Appellant asserts that a user of the learning system disclosed by Mortimer
would not need time correlation with respect to a request for additional
information because the presentation “never disappears or goes away.” App.
Br. 8. Appellant also contends that a user of the methods disclosed by
Lamming has no need to request additional information because Lamming
limits access by the user to what was recorded at the time the marks were
made. App. Br. 8.
Contrary to Appellant’s assertion, a “reference may be read for all that
it teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418-21 (2007). Furthermore, Appellant has not addressed the
combination of prior art references as a whole but again simply improperly
argues the merits of Mortimer and Lamming individually. Appellant’s
contention with respect to the purposes of the cited references does not
overcome the Examiner’s determination that requesting additional
information during the presentation of an information screen and time
correlation with regards to what is being requested are both familiar
elements based on the disclosures of Mortimer and Lamming. Appellant
also has not shown that the claimed combination of these familiar elements
yielded anything but predictable results. Accordingly, we find Appellant has
not overcome the Examiner’s obviousness determination. See KSR, 550
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U.S. at 416 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
CONCLUSIONS OF LAW
We conclude that Appellant has not overcome the Examiner’s
rejection of claims 1, 3, 6, 9, 12, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Mortimer and Lamming.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 4, 13, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Mortimer, Lamming, and Moskowitz.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 5, 8, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Mortimer, Lamming, and Vivian.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3-6, 8,
9, and 11-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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