Ex Parte Edmark

Patent Trial and Appeal Board

Jun 10, 2013

12040241 (P.T.A.B. Jun. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TOMIMA L. EDMARK
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Appeal 2011-008326
Application 12/040,241
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008326
Application 12/040,241

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-26. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

BACKGROUND
Appellant’s invention is directed to a system and method for
displaying a video (Specification 1:3-4).
Claim 1 is illustrative:
1. A method of displaying a video, comprising:
providing a display field on a webpage;
displaying an article of clothing within the display field;
providing, on the webpage, a first link to a first video;
receiving a selection from a user of the first link; and
in response to the selection, displaying the video,
wherein the video depicts a human form wearing the article of
clothing and performing a test motion to demonstrate the ability
of the article of clothing to stay in place during regular wear
and varying conditions of body movement.
Appellant appeals the following rejections:
Claims 1-3, 6-8, 11-18, and 22-261 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Kim (WO 2007/055524 A1, pub. May 18, 2007).
Claims 4, 5, 9, 10, and 19-212 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim and Weaver (US 6,404,426 B1, iss. Jun. 11, 2002).

1 Although the statement of rejection at page 4 of the Examiner’s Answer
does not include claim 26, the analysis at page 7 makes clear that the
omission is an inadvertent error.
Appeal 2011-008326
Application 12/040,241

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ISSUES
The issues of anticipation and obviousness turn on whether the
disputed claim language, directed to the content of video presentations, are
given patentable weight.

ANALYSIS
Claims 1-3, 6-8, 11-18, and 22-25
Independent claims 1 and 26 each recite a web page with a displayed
image and link, where upon selecting the link, a video presentation is
displayed. We construe that the content of the video does not affect the
function of the claim, which is to display the image and link, and respond to
selecting the link by displaying the video. Although the content of the video
may affect the mental state of the viewer, any such potential function is
outside the scope of the claimed method. In the scope of the claims, if the
link is selected, the video displays independent of the content of that video.
The content of the video is not utilized in order to display the video, so the
content of the video has no functional relationship to displaying the video in
response to selecting the link for the video. Therefore, the content of the
video is non-functional descriptive material that does not deserve patentable
weight. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). We construe
the subject matter of all the dependent claims as directed solely to the
content of the video.
We are not persuaded by the Appellant’s arguments, directed to each
of the claims in this rejection, that the content of the video has a functional

2 Although the statement of rejection at page 9 of the Examiner’s Answer
does not include claim 19, the analysis at page 10 makes clear the omission
is an inadvertent error.
Appeal 2011-008326
Application 12/040,241

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relationship with the claimed method so as to deserve patentable weight
(App. Br. 18-35, Reply Br. 2-8), for the reasons set forth above. Consistent
with our claim construction, we agree with the Examiner’s analysis, set forth
at pages 4-8 and 10-15 of the Examiner’s Answer. It is undisputed that Kim
and Weaver disclose the claim limitations to which we give patentable
weight.
For these reasons, we sustain the rejection under 35 U.S.C. § 102(e) of
independent claims 1 and 26, and dependent claims 2, 3, 6-8, 11-18, and 22-
25.
Claims 4, 5, 9, 10, and 19-21
The rejection of these claims is argued only by reference to the
arguments above. App. Br. 36, Reply Br. 8. We agree with the Examiner’s
analysis (Ans. 9-15), and therefore we sustain the rejection under 35 U.S.C.
§ 103(a) for the reasons set forth above.

DECISION
We AFFIRM the rejections of claims 1-26.
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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