Ex Parte Gambino et al

Board of Patent Appeals and Interferences

Aug 17, 2011

10163884 (B.P.A.I. Aug. 17, 2011)

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
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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.
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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?
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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.
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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
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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
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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
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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
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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
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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)).
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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).
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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.

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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

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