Ex Parte Davis

Board of Patent Appeals and Interferences

Mar 19, 2008

09862884 (B.P.A.I. Mar. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH L. DAVIS
____________________

Appeal 2007-3011
Application 09/862,8841
Technology Center 2100
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Decided: March 19, 2008
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Before: LANCE LEONARD BARRY, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellant appeals from a final rejection of claims 1 to 24 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed May 21, 2001. The real party in interest is Autodesk, Inc.

Appeal 2007-3011
Application 09/862,884

Appellant’s invention relates to a method, apparatus and computer
program (method) for annotating a video comprising a series of frames. At a
certain frame, the video pauses and displays an annotation on the frame.
When the user elects to proceed, the video continues. In the words of the
Appellant:
Annotation information is obtained from a user or
application that specifies an annotation, the frame to be
annotated, and the location on the frame where the annotation is
to be displayed. A sequence of frames such as a video clip or
animation is then displayed. When the indicated frame is
displayed, the display process is paused and the annotation is
displayed/overlaid on the frame at the location specified.

(Spec.: 3).

Claim 1 is exemplary:
1. A computer-implemented method for annotating, comprising:

(a) obtaining a sequence of frames to be consecutively displayed
on a display device, wherein a frame comprises one or more images;

(b) obtaining annotation information, wherein the annotation
information comprises:

(i) an identification of an identified frame within the
sequence of frames;

(ii) an annotation, and

(iii) a location on the identified frame to display the
annotation;

(c) consecutively displaying one or more of the sequence of
frames;
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Application 09/862,884

(d) determining when the identified frame is displayed and
automatically pausing the display of the sequence of frames at the identified
frame;

(e) displaying the annotation at the location on the identified frame
while the display is paused; and

(f) continue displaying the sequence of frames subsequent to the
identified frame when a user elects to proceed.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Russell, Jr. 5,526,478 Jun. 11, 1996
Wistendahl 5,708,845 Jan. 13, 1998
Gupta 6,484,156 Nov. 19, 2002

Rejections:
R1: Claims 1 to 6, 8 to 14, 16 to 22 and 24 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Wistendahl in view of Russell.
R2: Claims 7, 15 and 23 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Wistendahl in view of Russell in further view of Gupta.

Appellant contends that the claimed subject matter is not anticipated
by Wistendahl in combination with Russell and Gupta, for failure of the
references to teach claimed features. The Examiner contends that each of
the claims is properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments which Appellant could have made but chose not to
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Application 09/862,884

make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We affirm the rejections.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the references teach the claimed automatic pausing of the display of a
sequence of frames at an identified frame, the display of an annotation when
paused, and the continuing of the display of the sequence of frames when the
user elects to proceed, as claimed.

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

2 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740. Appellant has the
burden on appeal to the Board to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d 1032, 1036
(CCPA 1979) and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Furthermore, “‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’ . . . [H]owever,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellant’s claims
under 35 U.S.C. § 103. The prima facie case is presented on pages 3 to 10
of the Answer.
In opposition, Appellant presents three main arguments summarized
on page 7 of the Brief, discussed on the following pages, and in the Reply
Brief.
The first argument contends that the references Wistendahl, Russell
and Gupta do not teach, disclose or suggest automatically pausing a display
of a sequence of frames at a particular identified frame. The Wistendahl
patent teaches adding to media content (video), which may be encoded as a
series of successive display frames, object mapping data keyed to specific
locations on certain of the frames. (Col. 2, line 45+). This object mapping
data, called N Data in the Wistendahl patent, maps to hot spots on certain
frames. (Col. 5, line 57). For example, the video may be the movie “The
Maltese Falcon,” per an example in the patent, and when the user gets to the
point in the movie where the Maltese falcon is shown, the N Data can
display a pop-up window on the screen, and indicate that a replica of the
statue can be purchased at a certain site on the World Wide Web. (Col. 8,
line 64). When the user clicks on that object, the system will pause the
movie to allow time for the user to consider the offer. (Col. 9, line 7). By
clicking on the remote control pointer 36 on a displayed “Save” button, the
user of the Wistendahl patent continues the program, storing the data about
the replica statue. (Col. 9, lines 11-14). Appellant argues that this pausing
of the movie is not “automatic” as claimed. (Brief, page 9, top). Examiner
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argues that the claim does not recite “without human intervention” but only
“automatically pausing the display.” (Answer, page 5). Effectively, the
Examiner argues that the Wistendahl reference teaches programming a
system to display a pop-up window at a particular frame, and permit a
clicking of a portion of the display to pause the movie. It would be an
obvious variation of this teaching to program a pause in the display to allow
the user more time to consider the N Data in the pop-up, i.e. the statue offer.
The motivation for this change is right in Wistendahl, where he indicates,
“to pause the running of the movie to allow time for the user to absorb the
IDM program response.” (Col. 9, l. 7).
We do not see error in the Examiner’s reasoning. “When there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill in the
art has good reason to pursue the known options within his or her technical
grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.” KSR Int’l v. Teleflex
Inc., 127 S. Ct. 1727, 1732 (2007). We find that in view of the teachings of
Wistendahl as expressed above and explained in the Answer (pages 13+), we
cannot support Appellant’s argument.
Appellant further argues that the references do not teach displaying an
annotation at a defined location on the identified frame when the sequence
has been paused. (Brief, page 7, top). In view of Wistendahl’s teaching that
the movie display can be paused, column 9, line 7, and his demonstration of
an annotation at a defined location (e.g. around the airplane in Figure 2), we
find no support for this argument.
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Thirdly, Appellant contends that the references do not teach, disclose,
or suggest continuing the display of the sequence of frames when the user
selects to proceed. (Brief, page 7, top). Wistendahl indicates,
“Alternatively, the user may wish to bypass the response [to the annotation,
in the form of a message] and store it to be reviewed after the movie is
finished. By input from the remote control pointer 36 …”. (Col. 9, lines 8-
11). This section of the Wistendahl patent suggests to us that the display of
the sequence of frames is continued when the user elects to proceed, as
claimed.
As Wistendahl and Russell are both concerned with annotations on
video displays, a common field of endeavor, we consider them from
analogous arts, and properly combinable. See In re Deminski, cited above.

Rejection of claims 7, 15 and 23 for being obvious over Wistendahl in view
of Russell in further view of Gupta.

Appellant argues that the teachings of Gupta are general in nature, and
not related to the annotation of a video sequence of frames. (Brief, page 12,
bottom). Examiner has expressed how Gupta teaches the annotations being
in XML (Answer, page 17, bottom). Added to the reasoning concerning
Wistendahl and Russell expressed above, we do not find support for the
Appellant’s contention.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 24.
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Appeal 2007-3011
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DECISION
The Examiner's rejection of claims 1 to 24 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

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