Ex parte FRANCIS et al.

Board of Patent Appeals and Interferences

Apr 13, 1998

08260831 (B.P.A.I. Apr. 13, 1998)

Application for patent filed June 16, 1994.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MITCHELL J. FRANCIS and GARY H. PACKMAN
________________
Appeal No. 97-1142
Application 08/260,8311
________________
ON BRIEF
________________
Before ABRAMS, FRANKFORT and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-4, all the claims currently pending in the application.
Appellants’ invention pertains to an amusement ride which
includes a digital video player that projects a 3-D image onto a
Appeal No. 97-1142
Application 08/260,831
-2-
screen. A basic understanding of the invention can be derived
from a reading of exemplary claim 1, which reads as follows:
1. An amusement ride apparatus comprising:
a motion base with up to six degrees of freedom of motion
including a plurality of actuators supporting a platform;
a passenger holding means secured to said platform and
including a plurality of seats;
a 3-D video image means including a screen and a digital
video player and projector attached to move with said platform
wherein said digital video player projects a 3-D picture on said
screen; and
a control system including a computer which receives digital
signals encoded on a digital storage medium for moving said
platform in correspondence with the projected image.
In rejecting appellants’ claims under 35 U.S.C. § 103, the
examiner relies upon the reference listed below:
Trumbull (Trumbull ‘256) 4,066,256 Jan. 3, 1978
The following references of record are relied upon by this
merits panel of the Board in support of new rejections made
pursuant to our authority under 37 CFR § 1.196(b):
Hayes et al. (Hayes) 4,855,842 Aug. 8, 1989
Noble 4,907,860 Mar. 13, 1990
Trumbull (Trumbull ‘670) 5,433,670 Jul. 18, 1995
(filed Feb. 5, 1993)
The Rejection
Claims 1-4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Trumbull ‘256. The examiner concedes that
Appeal No. 97-1142
Application 08/260,831
-3-
Trumbull ‘256 does not specifically teach a 3-D digital video
image means as set forth in claim 1. The examiner has taken the
position, however, that “laser video disc players to produce 3-D
pictures are already commercially available and very well known
in the art” (final rejection, page 3). In this regard, the
examiner further states:
[A]ttention is directed to page 1 of this application,
[sic, .] Applicants admitted that the use of 3-D
technology is well known in the art and that is [the]
reason why the examiner did not cited [sic] a reference
teaching of such technology. Also, it is well known in
the art that the 3-D video player utilizes digital
technology. Therefore, it is submitted that the
Trumbull [’256] reference and the disclosure of this
application are clearly suggestive of the claimed
invention for the reasons as set forth above. This
[is] all that is required to support a prima facie
legal conclusion that the claimed invention would have
been obvious to one of ordinary skill in the art.
[final rejection, page 4]
Appellants’ Position
Appellants contend that the examiner’s assertion that laser
video disc players to produce 3-D pictures are commercially
available and very well known in the art
is neither supported by the disclosure of Trumbull nor
. . . by cited prior art. In fact, the Examiner has
made a fully unsupported assertion of obviousness . . .
and refuses to cite prior art supporting the assertion
of obviousness.
Appeal No. 97-1142
Application 08/260,831
-4-
Specifically, without citing a single piece of
prior art in support of the contention, the Examiner
has broadly asserted that the use of two laser disc
players creating three-dimensional images is well known
. . . . [During prosecution, appellants] respectfully
requested that the Examiner provide prior art
supporting the assertion that such technology is well
known . . . . The Examiner refused to comply. [brief,
pages 5-6]
Appellants assert that “the failure to cite prior art supporting
the modification of Trumbull is fatal to the Examiner’s
rejection” (brief, page 7).
Opinion
Appellants’ point is well taken. The examiner’s reliance on
prior art discussed on page 1 of the specification of the present
application in support of the rejection is improper and
inappropriate since the prior art in question is not included in
the list of prior art relied upon in the rejection and is not
included in the statement of the rejection. If prior art is
relied upon in any capacity to support a rejection, it should be
positively included in the statement of the rejection. See
Manual of Patent Examining Procedure (M.P.E.P.) 706.02(j); In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970)
and Ex parte Raske, 28 USPQ2d 1304-05 (BPAI 1993). Furthermore,
the examiner’s failure to cite a reference to support his
position regarding that which is well known and conventional when
Appeal No. 97-1142
Application 08/260,831
-5-
seasonably challenged by appellants is also improper. See
M.P.E.P. 2144.03 (“. . .the examiner should not be obliged to
spend time to produce documentary proof [of facts which are
capable of instant and unquestionable demonstration as being
“well-known” in the art]. . . . If the applicant traverses such
an assertion the examiner should cite a reference in support of
his or her position.”(emphasis added)).
In the present instance, the examiner has failed to provide
a sufficient factual basis to support his conclusion that the
claimed subject matter would have been obvious to one of ordinary
skill in the art. We are therefore constrained to reverse the
standing § 103 rejection. In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 177-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
New Rejections Pursuant to 37 CFR § 1.196(b)
Claims 1, 2 and 4 are rejected under 35 U.S.C. § 103 as
being unpatentable over Trumbull ‘256 in view of Noble and Hayes.
With respect to claim 1, Trumbull ‘256 discloses a motion
base including a plurality of actuators 24, 26, 28 supporting a
platform 120, a passenger holding means 12 secured to the
platform, video image means including a screen 20 and a motion
picture projector 18 attached to the platform for projecting an
image on the screen, and a control system (Figure 6) for
Appeal No. 97-1142
Application 08/260,831
-6-
receiving signals from storage medium 78 for moving the platform
in correspondence with the projected image. Trumbull ‘256 does
not disclose that the video image means is a 3-D video image
means, nor that the video image means included is a digital video
player.
Noble is cited as evidence that 3-D video image producing
means were known in the art at the time of appellants’ invention.
In this regard, Noble teaches that 3-D video image means may
produce an image that is viewable on a film projection screen
(column 3, lines 17-20). Hayes is cited as evidence that digital
image producing means in the form of laser video disc players
were known in the art at the time of appellants’ invention.
Applying the test for obviousness set forth in In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981), which is what
the combined teachings of the prior art would have suggested to
those of ordinary skill in the art, it would have been obvious to
one of ordinary skill to provide the Trumbull ‘256 apparatus with
video image means that produce a 3-D image, and to utilize a
laser (i.e., digital) video disc player in so doing, in view of
the teachings of Noble and Hayes. Suggestion for the above
modifications is found in the recognition by Trumbull ‘256 at
column 6, lines 63-65 that other imaging systems may be utilized,
Appeal No. 97-1142
Application 08/260,831
-7-
and in the self-evident advantages 3-D imaging (e.g., enhanced
realism) and digital video player technology (e.g., improved
image quality) provide, which the ordinarily skilled artisan
would have readily appreciated. In this regard, the artisan
would have viewed the proposed modification of Trumbull ‘256 as a
straightforward trade-off between the use of the relatively
inexpensive imaging technology of Trumbull ‘256 (column 1, lines
26-29) and the more sophisticated and expensive imaging
technology taught by Noble and Hayes.
As to claim 2, the housing means of Trumbull ‘256 encloses
the seats and the image means. See Figure 4.
In regard to claim 4, the use of a separate laser video disc
player to produce each image component of the 3-D image would
have been obvious to one of ordinary skill, it being noted that
Hayes, in effect, teaches that separate images for the left and
right eye are utilized to produce the 3-D effect.
Claim 3 is rejected under 35 U.S.C. § 103 as being
unpatentable over Trumbull ‘256 in view of Noble and Hayes and
further in view of Trumbull ‘670. In view of the teaching of
Trumbull ‘670 at column 6, lines 32-37 of limiting the overall
height of the simulator system theater thereof to enable its
location within a building having a conventional ceiling height
Appeal No. 97-1142
Application 08/260,831
-8-
of about 14.5 ft., it would have been obvious to dimension the
motion base and housing of Trumbull ‘256 to allow it to be
installed and fully operational in a building with 15 foot
ceilings.
Summary
The standing rejection under 35 U.S.C. § 103 is reversed.
New rejections pursuant to 37 CFR § 1.196(b) have been made.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
Appeal No. 97-1142
Application 08/260,831
-9-
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-1142
Application 08/260,831
-10-
John L. Welsh
2121 Crystal Drive
Suite 503
Arlington, VA 22202