Ex Parte Holtz et al

Board of Patent Appeals and Interferences

Feb 23, 2011

10191467 (B.P.A.I. Feb. 23, 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.
10/191,467 07/10/2002 Alex Holtz PU040186 DIV 2 8044
24498 7590 02/23/2011
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
P.O. Box 5312
Princeton, NJ 08543-5312
EXAMINER
HUYNH, BA
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
02/23/2011 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 ALEX HOLTZ, DAVID E. BUEHNEMANN, GILBERTO FRES,
HARRISON T. HICKENLOOPER, III, CHARLES M. HOEPPNER,
KEVIN K. MORROW, BRADLEY E. NEIDER, LOREN J. NORDIN, III,
TODD D. PARKER and ROBERT J. SNYDER
____________________

Appeal 2009-008977
Application 10/191,467
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008977
Application 10/191,467

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 51-53, 101-104 and 117-135. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

According to Appellants, the invention relates to video production,
and involves “a system, method and computer program product for
automating the execution of a live or live-to-tape video show.”
(Spec. 1:5-7).

Claim 51 is illustrative:
51. A method for producing a video production, comprising
the steps of:

creating a plurality of transition macros, wherein each transition
macro defines a set of video production commands;

saving each transition macro to a unique transition macro file,
thereby creating a plurality of transition macro files, each transition
macro stored in a file independent of news content;

creating a transition macro play-list, wherein said transition
macro play-list defines a group of transition macro files having a
predetermined order; and

executing each transition macro file within said defined group
according to said predetermined order,

wherein the step of executing a transition macro file includes
the step of executing the set of commands defined by the transition
macro saved to said transition macro file; and

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wherein the step of executing said set of commands includes
the step of transmitting a control command from a processing unit to a
video production device.

Rejection
Claims 51-53, 101-104 and 117-135 stand rejected under
35 U.S.C. § 102(b) based upon purported public use or sale of the invention
more than one year prior to the filing of the application as evidenced by
Alex Holtz’s declaration (Exhibit E) (Holtz Dep. at 1-6, Dec. 18, 1998)
“Holtz”.

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification discloses: “A transition macro play-
list is a queue of two or more transition macros. The play-list can be
specified as either automatic or manual. (Spec. 9:13-14).
Exhibit A
CameraMan Studio, CSS-200-N/P, ParkerVision, April 1997, 2 pages
2a. Exhibit A discloses: “Transition Macros used to store complex
production sequences, then recall them with the click of the mouse.” (see
page 1, col. 1, System Features).
2b. Exhibit A discloses: “The powerful Transition Macro feature
allows directors to spend their pre-production time inventing new shots, then
performing them with the touch of a button.” (see page 1, col. 1, second
para.).

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PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Public Use or On Sale
The Supreme Court in Pfaff v. Wells Electronics, Inc. held that the
onsale bar applies when two conditions are satisfied: “[f]irst, the product
must be the subject of a commercial offer for sale…. Second, the invention
must be ready for patenting.” 525 U.S. 55, 67 (1998).
“Whether something is ‘in public use or on sale’ within the meaning
of section 102(b), and thus properly considered prior art, is a question of law
with subsidiary issues of fact.” In re Epstein, 32 F.3d 1559, 1564 (Fed. Cir.
1994). The activities of third parties can establish the public use and on sale
bars. Id. The standard of proof that must be met by the examiner in making
a rejection of the appealed claims under the public use and on-sale bars of
§ 102(b) is a preponderance of the evidence. Id., quoting In re Caveney, 761
F.2d 671, 674 (Fed. Cir. 1985).

ANALYSIS
Claims 51-53, 101-104, and 117-125
Issue 1: Did the Examiner err in finding that Exhibit A provides
evidence that the claimed “transition macro play-list” was made known to
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the public and available for sale to the public more than one year prior to the
filing data of this application?

The Examiner found that “Exhibit A provides evidence that the
transition macro play-list was made known to the public and available for
sale to the public for more than a year prior to the filing data of this
application.” (Ans. 9.)
Appellants contend that “[t]he invention in claim 51 was not ready for
patenting because features recited in the claim were not conceived prior to
the critical date” (App. Br. 11). Appellants further contend that “Exhibit A
merely describes storing one or more prototype versions of transition macros
and recalling individual transition macros with the click of a mouse. Exhibit
“A” does not disclose that separate transition macro files are ordered within
a play list” (Id. at 13). We agree with Appellants.

The evidence of record, the CameraMan Studio April 1997 document
(Exhibit A), relied upon by the Examiner to show an on-sale or public use
bar fails to convince us that the invention was ready for patenting prior to
the critical date.
For example, while Exhibit A discloses “transition macros” being
used to store complex production sequences and recalling them with the
click of the mouse (FF 2a-2b), the Examiner has not shown, and we do not
readily find, where Exhibit A discloses a “transition macro play-list” as a
group of transition macro files having a predetermined order. Appellants’
Specification discloses that a transition macro play-list is a queue of two or
more transition macros (FF 1a) and claim 51 requires that such macros have
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a predetermined order, i.e., an ordered play-list. Exhibit A fails to clearly
depict any ordered play-list of macros, as required by claim 51.
Exhibit A merely discloses that Transition Macros are used to store complex
production sequences and can be recalled with a click of the mouse or button
(see FF 2a-2b). As such, it is not clear from the facts before us that the
invention was ready for patenting and the subject of a commercial offer for
sale one year prior to the critical date, as the claimed transition macro files
having a predetermined order is not readily found in the Examiner’s
evidence, i.e., Exhibit A.
Accordingly, we reverse the Examiner’s rejection of (1) independent
claim 51, and claims 52-53 which stand therewith; (2) independent claim
101, and claims 102-104 which stand therewith; and (3) independent claim
117, and claims 118-125 which stand therewith.

Claims 126-135
Issue 2: Did the Examiner err in finding that Exhibit A teaches
“accessing two or more separate sequences of video production commands,”
and “assembling the two or more sequences into a preferred order,” as set
forth in independent claim 126?

Appellants contend that “the feature of accessing and assembling two
or more sequences of video production commands into a preferred order was
not ready for patenting prior to the critical date” (App. Br. 20).
The Examiner finds that “[c]laims 126 and 134 do not recite the
transition macro files and transition macro play-list,” but “[i]nstead, …
recites the assembling [of] separate sequences of video production
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commands in a preferred order” (Ans. 10). The Examiner further finds that
“[t]his limitation is disclosed in [E]xhibit A as set forth above wherein
(‘Transition Macros used to stored complex production sequences then
recall them with the click of the mouse’)”(see Ans. 10). The Examiner
concludes, that “in light of Exhibit A, it appears that the invention, as recited
in the claims, was introduced at the above various trade shows more than a
year prior to the filing date of this application” (Ans. 10) (emphasis
omitted). Here, we agree with the Examiner.

Independent claim 126 does not recite a “transition macro play-list” as
described supra, but merely “assembling the two or more sequences into a
preferred order” (see Claim 126). As noted supra, Exhibit A discloses
transition macros that can be recalled with a click of the mouse (FFs 2a-2b).
We view any recalling of two or more macros by the user as being consistent
with recalling in a preferred order, as a “preferred order” reads on any order
chosen by the user.
“The first determination in the § 102 (b) analysis must be whether the
subject of the barring activity met each of the limitations of the claims, and
thus was an embodiment of the claimed invention.” Scaltech, Inc. v.
Retec/Tetra, L.L.C., 178 F.3d 1378, 1383 (Fed. Cir. 1999). Here, we find
that the Examiner has shown that Exhibit A meets each of the limitations of
claim 126. Thus, it appears that the invention as set forth in claim 126 was
ready for patenting before the critical date.
Next, in order to demonstrate that the claimed product encompassed
by one or more of the appealed claims was, prima facie, in public use within
the meaning of § 102 (b), the examiner must establish that the claimed
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product was used for any purpose “by a person other than the inventor who
is under no limitation, restriction or obligation of secrecy to the inventor.”
See, e.g., Lough v. Brunswick Corp., 86 F.3d 1113, 1120 (Fed. Cir. 1996),
quoting In re Smith, 714 F.2d 1127, 1134 (Fed. Cir. 1983).
Here, the Examiner found that Alex Holtz’s declaration disclosed
“numerous marketing activities by the applicants since 1996,” (Ans. 3). In
response to these findings, Appellants merely contends that “the feature of
creating a transition macro play list was not ready for patenting prior to the
critical date.” (App. Br. 21.) In other words, Appellants contend that the
arguments made for claim 51’s “macro play list” are applicable here.
However, as noted supra, the Examiner found, and we agree, that claim 126
does not include a “macro play list,” as recited in claim 51. Appellants have
made no arguments directed to whether the system described in Exhibit A
meets the “public use or sale” portion of the statue. Instead, Appellants’
arguments (App. Br. 20-21) are directed solely to whether what is described
in Exhibit A anticipates the claimed invention. We agree with the Examiner
that Exhibit A illustrates and describes the claimed “assembling the two or
more sequences into a preferred order” as Exhibit A discloses “Transition
Macros used to stored complex production sequences then recall them with
the click of the mouse” (Ans. 10).
While the Examiner has couched that stated rejection as being based
on the “public use or sale” provision of 35 U.S.C. § 102(b), Appellants have
made no arguments directed to the “public use or sale” portion of the statute.
Instead, as noted supra, Appellants arguments are directed solely to
anticipation. As Exhibit A is also anticipatory of the claimed invention
under the “printed publication” clause of the statute, as its publication date
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of April 1997 is more than one year prior to Appellants’ December 18, 1998
critical date, we conclude that the Examiner did not err in rejecting claim
126, and claims 127-135 which fall therewith, for anticipation under
35 U.S.C. § 102.

DECISION
The Examiner’s rejection of claims 51-53, 101-104, and 117-125
under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 126-135 under 35 U.S.C. § 102(b)
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) (2009).

AFFIRMED-IN-PART

ke
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
P.O. Box 5312
Princeton, NJ 08543-5312