Ex Parte Gambino et alDownload PDFBoard of Patent Appeals and InterferencesAug 17, 201110163884 (B.P.A.I. Aug. 17, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/163,884 06/06/2002 Anthony L. Gambino 5124 81099 7590 08/18/2011 Thomas M. Galgano 20 W. Park Avenue Suite 204 Long Beach, NY 11561 EXAMINER SHEPARD, JUSTIN E ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 08/18/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANTHONY L. GAMBINO and JOHN H. WILLIAMS ____________ Appeal 2009-011677 Application 10/163,884 Technology Center 2400 ____________ Before ALLEN R. MACDONALD, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011677 Application 10/163,884 2 STATEMENT OF THE CASE Anthony L. Gambino and John H. Williams (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claim 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claimed invention is directed to a representation of the play in a golf tournament to be displayed on the screen of a television set and audio presented to the television set. Claim 2 is reproduced below. 2. A representation of the play in a golf tournament to be displayed on the screen of a television set, comprising: A. a golf course putting green including a cylindrical bottomed cup located within the confines of said green and below the surface thereof; B. a golf ball being struck by a golf club and urged in rolling movement on said putting green into said cup; C. a television monitor screen for displaying the image of play on said putting green to an audience; D. the display on said screen comprising the image of said cup being viewed from the bottom of said cup by a camera located therein, said image consisting of the peripheral top circular edge of the cup; E. ambient light viewed within the circular edge of said cup opening into the cylindrical cup which forms a background of the center of the displayed image; F. a golf ball having a diameter smaller than the diameter of said cup which provides the foreground of the image representing the falling of the golf ball into said cup; and G. audio presented to the television set by a microphone located within the cup providing the sound of the golf ball dropping therein. Appeal 2009-011677 Application 10/163,884 3 THE EVIDENCE The Examiner relies upon the following evidence: Umeno JP 03-168169 A July 19, 1991 Image from the movie “Caddyshack”, Warner Brothers (released July 1980) (“Caddyshack”) Image from music video “Feel the Pain” by Dinosaur Jr., broadcast on MTV during an episode of “Beavis and Butthead” show (January 5, 1995) (“Dinosaur Jr.”) THE REJECTIONS Appellants seek review of the following rejections: 1. The Examiner rejected claim 2 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Caddyshack and Umeno. 3. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Dinosaur Jr. and Umeno. ISSUES The issues presented by this appeal are: Is claim 2 directed to a television signal? Would a person having ordinary skill in the art have been led to the subject matter of claim 2 in view of Caddyshack and Umeno? Would a person having ordinary skill in the art have been led to the subject matter of claim 2 in view of Dinosaur Jr. and Umeno? Appeal 2009-011677 Application 10/163,884 4 ANALYSIS Claim Construction Claim 2 is directed to a “representation of the play in a golf tournament to be displayed on the screen of a television set.” While the preamble of claim 2 appears to be directed only to a representation of play to be displayed on a screen, the body of claim 2 recites “a television monitor screen” and “audio presented to the television set by a microphone located within the cup providing the sound of the golf ball dropping therein.” As such, we understand claim 2 to be directed to the combination of a television monitor screen, the display on the screen, and the audio presented by a microphone located within the cup. The features of the claim directed to images on the screen (elements A, B, D, E, and F) are non-functional descriptive material, as there is no new and unobvious functional relationship between the representations of the play displayed on the screen and the television monitor screen. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983)). In other words, any conventional television monitor screen is structurally capable of displaying all different kinds of images, including the claimed particular images.1 1 Appellants’ Specification describes that “[t]he photographed activity recorded by the camera [at the bottom of the cup 22] is transmitted by known wireless technology to a broadcasting station which in turn is operatively connected to produce the image 36 on the TV screen 34.” Spec. 3, ll. 18-20. Appeal 2009-011677 Application 10/163,884 5 Likewise, the feature of the claim directed to the specific sound being transmitted via the television set (element G) is non-functional descriptive material, as there is no new and unobvious functional relationship between the particular sound of a golf ball dropping in a cup and the television set. See Ngai, 367 F.3d at 1338 (quoting Gulack, 703 F.2d at 1386). This sound is not functionally related to the television set because a conventional television set is structurally capable of broadcasting all kinds of sounds, including the particular claimed sound. Rejection under 35 U.S.C. § 101 The Examiner’s rejection of claim 2 under 35 U.S.C. § 101 is based on an interpretation of claim 2 as being directed solely to a television signal. As we concluded supra, claim 2 is directed to the combination of a television monitor screen and a television signal (audio and video) and thus is not limited to a signal. As such, we cannot sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Rejection under 35 U.S.C. § 103 based on Caddyshack and Umeno As we concluded supra, elements A, B, D, E, and F, which relate to the particular image(s) being displayed on the screen, and element G, which relates to the particular sound being provided to the television set, are non- functional descriptive material that cannot be relied on to distinguish the claimed invention from the prior art. As such, Appellants’ arguments as to the distinctions between the “special effect” in Caddyshack and photographing a golf event in real time (App. Br. 4-7) are not persuasive Appeal 2009-011677 Application 10/163,884 6 because these arguments are directed to the images displayed on the screen, which are non-functional descriptive material. If we were to allow Appellants to distinguish their invention from the prior art based on the contents of the display, then anyone could continue patenting a television monitor screen indefinitely provided that they claim a new image displayed on the screen. See Ngai, 367 F.3d at 1339. In this case, the image on display and the screen are not interrelated so as to produce a new or nonobvious product. See id. Likewise, Appellants’ argument against the use of Umeno to modify Caddyshack to include the claimed audio of a golf ball landing in the cup (Supp. Reply Br. 1) is not persuasive to the extent this argument is directed to the particular sound being claimed, which is also non-functional descriptive material. In this case, the sound provided to the television set and the television set are not interrelated so as to produce a new or nonobvious product. See id. Further, to the extent elements A, B, D, E, and F can be relied upon to distinguish the claimed invention from the prior art, we are not convinced by Appellants’ arguments or the Declaration of the inventor Anthony Gambino. First, contrary to Appellants’ argument, we do not read the claim to call for photographing a golf event “in real time.” App. Br. 4. The claim calls for a “representation of the play” displayed on the screen. A “representation” of play is broad enough to include an image of play, such as a special effect, that represents the play without being a video of the actual play in real time. See Ans. 8. While claim 2 calls for the image to include a golf course putting green, a golf ball being struck by a golf club, an image of the cup Appeal 2009-011677 Application 10/163,884 7 viewed from the bottom of the cup, ambient light viewed within the circular edge of the cup opening, and falling of the golf ball into the cup, claim 2 does not claim any of the specifics of how the image would be produced and has not claimed that the action must happen in real time. Rather, the language of claim 2 is broad enough to encompass a re-creation of some or all of the aspects of the golf shot to be captured on camera, which would constitute a “representation of the play in a golf tournament.” As such, Appellants’ arguments and declaration evidence directed to drawing a distinction between a representation of the play using special effects and a representation of the play captured by a video taken in real time are not persuasive because these arguments and evidence are not commensurate with the scope of the claim. Second, we are not convinced that Caddyshack’s screen image was a special effect rather than a photograph of a golf ball entering an actual cup. We agree with the Examiner that Mr. Gambino’s declaration fails to prove or disprove that the Caddyshack screen image was a “special effect.” Ans. 8. Mr. Gambino’s declaration provides conclusory opinion evidence as to how the image from Caddyshack was created based on his experience in sports photography. The declaration fails to provide an explanation of how Mr. Gambino’s experience in sports photography led him to the opinion, upon viewing the scene in the movie, that the method outlined in his declaration was the method used in the filming of this scene in Caddyshack. The declaration also fails to explain why, based on Mr. Gambino’s experience, the scene in the movie could not have been made using an actual Appeal 2009-011677 Application 10/163,884 8 golf cup on a green in ambient light. As such, we have no way to evaluate the basis for Mr. Gambino’s statements. Third, Mr. Gambino’s opinion as to how the prior art screen image was made appears inconsistent with the actual screen image evidence supplied by the Examiner. Mr. Gambino declares that the screen image in Caddyshack was created, in part, by positioning a pair of sources of illumination 28 and 30 below the bottom of cup 24 to illuminate the interior of the cup 24. Gambino Decl., para. 3 and accompanying figure. The screen image evidence provided by the Examiner that was taken from the Caddyshack movie, which Mr. Gambino states he viewed in preparation of his declaration, shows, however, ambient light coming from above the cup. This is evidenced by the light visible in the screen image impinging on the top left of the golf ball (where the dimples are visible) and by the shadows cast on the inner surface of the cup by the left side of the cup and the ball. We fail to see how such lighting and shadows could be achieved using sources of illumination below the cup, as asserted by Mr. Gambino. Because Mr. Gambino’s declaration consists of conclusory opinion evidence that appears inconsistent with the evidence provided by the Examiner, the declaration is entitled to little evidentiary weight, and does not overcome the strong showing of obviousness provided by the combined teachings of Caddyshack and Umeno. The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[A]ccord[ing] little weight to broad conclusory statements [in Appeal 2009-011677 Application 10/163,884 9 expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Opinion testimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.” (citations omitted)). Although there is “no reason why opinion evidence relating to a fact issue should not be considered by an examiner,” In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996), the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations, see Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). Appellants further argue that the Examiner’s motivation to combine Caddyshack with Umeno is inadequate because Umeno does not teach using a video camera in a golf cup. Supp. Reply 1. The Examiner relies on Caddyshack to teach positioning a camera below a golf cup so as to capture an image from below the golf cup of the golf ball as it enters the cup. Ans. 4-5 (finding Caddyshack discloses the display on said screen including the image of the cup being viewed from the bottom of the cup by a camera located therein). The Examiner relies on Umeno to teach disposing a Appeal 2009-011677 Application 10/163,884 10 microphone within a golf cup to provide the sound of the golf ball dropping therein. Ans. 5, 7; see also Umeno 2, ll. 9-10; fig. 1 (element 19).2 Umeno teaches that “the sound generated by the ball entering a conventional hole cup is small and does not reach the gallery” and thus “conventional hole cups have the shortcoming of inhibiting the thrill of balls entering the cups from being experienced fully.” Umeno 3, ll. 19-21 and 23- 25. Umeno teaches that an aim of its invention is “to supply hole cups capable of allowing the thrill of balls entering the hole cups from being fully experienced by . . . television audiences . . . .” Umeno 4, ll. 1-3. Umeno teaches that by placing a microphone in the cup to pick up the sound of impact when the golf ball collides with a diaphragm placed in the cup, “the pleasurable sound that the ball makes when it enters the hole can be enjoyed by the player, gallery, and television audiences.” Umeno 5, ll. 17-23. Umeno further teaches that the sound of impact “can increase the real joys of golf in a more modern manner by allowing the thrill of balls entering the hole cups from being fully experienced by powerfully utilizing elegant and splendid . . . auditory effects.” Umeno 10, ll. 15-21. In light of these teachings in Umeno that the use of a microphone to provide audiences with the sound of impact of the ball in the cup increases the audience’s enjoyment in viewing the game by allowing audiences to fully experience the thrill of balls entering the cup, we find that the Examiner’s proposed modification of the video camera used for filming the 2 Citations to Umeno refer to the English language translation provided by the Examiner (PTO 09-0899; translated by FLS, Inc. (November 2008)). Appeal 2009-011677 Application 10/163,884 11 scene in Caddyshack to add a microphone, as taught in Umeno, to provide the sound of impact of the golf ball would have been obvious to a person of ordinary skill in the art. The motivation is found in Umeno itself, which suggests that providing audiences with the sound of impact of the ball in the cup increases the audience’s enjoyment in viewing the game by allowing audiences to fully experience the thrill of balls entering the cup. We find the Examiner’s proposed combination particularly compelling in the case of Caddyshack, because, as noted by the Examiner, the scene in Caddyshack discloses the sound of a golf ball striking the bottom of a golf cup. Ans. 5. Rejection under 35 U.S.C. § 103 based on Dinosaur Jr. and Umeno Appellants’ argument for this ground of rejection is to “repeat the argument addressed to [the rejection based on Caddyshack and Umeno].” App. Br. 7.3 The argument fails to persuade us of error in the Examiner’s rejection, in part, because the Gambino Declaration, relied on to argue the patentability of claim 2 over Caddyshack and Umeno, makes no mention of the Dinosaur Jr. video. In particular, the Gambino Declaration does not state that Mr. Gambino viewed the Dinosaur Jr. video and provides no opinion as to how the Dinosaur Jr. video was made. Further, as we concluded supra, the argument distinguishing a special effect representation of play and a 3 Appellants also argue that the Examiner failed to provide to Appellants an image from the Dinosaur Jr. music video. App. Br. 7. According to the official record of the prosecution as found in the Image File Wrapper, the Examiner provided Appellants with a copy of the screen shot from the Dinosaur Jr. music video as an attachment to the non-final Office action of December 15, 2005. See Form PTO-892, dated Dec. 15, 2005 (reference V). Appeal 2009-011677 Application 10/163,884 12 representation of play made in “real time” is not commensurate with the scope of claim 2. To the extent Appellants’ argument in the Supplemental Reply Brief regarding Umeno is meant to apply to the rejection based on Dinosaur Jr. and Umeno, this argument does not persuade us of error in the Examiner’s rejection for the same reasons provided supra. See Ans. 6-7 (finding that Dinosaur Jr. discloses the display on said screen including the image of the cup being viewed from the bottom of the cup by a camera located therein and relying on Umeno to teach using a microphone located within the cup to provide the sound of the golf ball dropping in the cup). CONCLUSIONS Claim 2 is directed to a television signal in combination with a television monitor screen. A person having ordinary skill in the art would have been led to the subject matter of claim 2 in view of Caddyshack and Umeno. A person having ordinary skill in the art would have been led to the subject matter of claim 2 in view of Dinosaur Jr. and Umeno. DECISION The decision of the Examiner to reject claim 2 under 35 U.S.C. § 101 is REVERSED. The decision of the Examiner to reject claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Caddyshack and Umeno and as being unpatentable over Dinosaur Jr. and Umeno is AFFIRMED. Appeal 2009-011677 Application 10/163,884 13 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). AFFIRMED nlk Copy with citationCopy as parenthetical citation