Ex Parte KayamaDownload PDFPatent Trial and Appeal BoardMay 17, 201813961273 (P.T.A.B. May. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/961,273 08/07/2013 Rokuro Kayama 52835 7590 05/21/2018 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20419.0019US01 7083 EXAMINER LIU, ZHENGXI ART UNIT PAPER NUMBER 2611 NOTIFICATION DATE DELIVERY MODE 05/21/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROKURO KAY AMA and KEN OGAWA Appeal2017-009099 Application 13/961,273 1 Technology Center 2600 Before CAROLYN D. THOMAS, DAVID J. CUTITTA II, and PHILLIP A. BENNETT, Administrative Patent Judges. CUTITT A, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-8 and 10-17. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify 4COLORS Inc., Rokuro Kayama, and Ken Ogawa as the real party in interest. See Br. 1. 2 Claim 9 is cancelled. See Br. 27. Claims 18 and 19 are indicated as allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Final Act. 39. Appeal2017-009099 Application 13/961,273 STATEMENT OF THE CASE Introduction According to Appellants, the claimed invention relates to "[a] program image creation method that allows two-way communication for communication in a format of questions and answers." Abstract. 3 Exemplary Claim Claims 1, 10, and 12 are independent. Claim 1 is exemplary of the claimed subject matter and is reproduced below with disputed limitations emphasized: 1. A program image creation method that creates a program image based on input voice input information, image selection information, avatar selection information, decoration selection information, and interactive selection information, the program image creation method comprising: an image processing step of setting a description image based on the image selection information, the description image appears in the created program image; a voice processing step of synchronizing a voice from the voice input information with the created program image; an avatar processing step of combining an avatar that is set based on the avatar selection information with the description image, the avatar appearing in a predetermined location of the description image within the created program image; a decoration processing step of combining a decoration material that is set based on the decoration selection 3 Throughout this Decision, we refer to: (1) Appellants' Specification, filed August 7, 2013 ("Spec."); (2) the Final Office Action ("Final Act."), mailed July 14, 2016; (3) the Appeal Brief filed December 13, 2016 ("Br."); and (4) the Examiner's Answer ("Ans.") mailed March 22, 2017. 2 Appeal2017-009099 Application 13/961,273 information with the description image, the decoration material appearing in the created program image; an interactive processing step of setting a hyperlink based on the interactive selection information, the hyperlink appearing in the created program image and the hyperlink is selectable, wherein the hyperlink is in the form of a selectable button separate from the avatar, the interactive processing step including overlaying the selectable button on the description image such that when the hyperlink is selected, the description image appearing in the created program image is replaced by a different description image that is displayed in the created program image; and displaying the created program image on a display device, the created program image including a reproduction player displayed at a bottom of the description image. Br. 25-26 (Claims App'x). REFERENCES The Examiner relies upon the following prior art in rejecting the claims on appeal: Flath er Yamamoto et al. ("Yamamoto") Laurito et al. ("Laurito") US 2006/0020548 Al US 2011/0113423 Al US 2011/0298805 Al Jan. 26, 2006 May 12, 2011 Dec. 8, 2011 Cathy Moore, Avatars in elearning: Helpful? Annoying? (Aug. 15, 2007), https://web.archive.org/web/20150 l l 52 l 3 l 49/http://blog.cathy- moore.com: 80/2007 /08/avatars-in-eleaming-helpful-annoying/ ("Moore"). XTRANORMAL TUTORIAL, https://www.youtube.com/watch?v=9k3cKlc2dpA (last visited May 3, 2018) ("Xtranormal"). Jared Newman, Make Your Own Cartoons and Slideshows on YouTube, TIME (Mar. 24, 2011 ), http://techland.time.com/2011/03/24/make-your- own-cartoons-and-slideshows-on-youtube/ ("Newman"). 3 Appeal2017-009099 Application 13/961,273 REJECTIONS Claims 1, 2, 4--8, 10-13, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xtranormal, Moore, and Flather. Final Act. 6-34. Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xtranormal, Moore, Flather, and Newman. Final Act. 35. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Xtranormal, Moore, Flather, and Laurito. Final Act. 37. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Xtranormal, Moore, Flather, and Yamamoto. Final Act. 38-39. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. Arguments not made are waived. See Manual of Patent Examining Procedure ("MPEP") § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(l). ISSUE Whether the Examiner errs in finding the combination of Xtranormal and Moore teaches or suggests an interactive processing step of setting a hyperlink based on the interactive selection information, the hyperlink appearing in the created program image and the hyperlink is selectable, wherein ... the description image appearing in the created program image is replaced by a different description image that is displayed in the created program image, as recited in claim 1. 4 Appeal2017-009099 Application 13/961,273 ANALYSIS Appellants argue Xtranonnal "does not teach or suggest setting a hyperlink based on the interactive selection information," as in claim 1. Br. 9 (citing Xtranormal 44, 48) (emphasis omitted). Specifically, Appellants argue "the hyperlink generated in Xtranormal is not based on the interactive selection information" because "the hyperlink is merely a means by which the animated video can be shared. That is, the hyperlink can be used to share the animated video with others if the hyperlink is followed." Br. 9. We are unpersuaded of Examiner error. The Examiner relies in part on Xtranormal (page 48). 4 The Examiner-annotated Figure below incorporates Xtranormal's page 48 and relates to Xtranormal's teaching of generating and publishing an avatar-based animation clip. Created animation clip 4 Xtranormal is not paginated, so the page numbers shown are estimates. 5 Appeal2017-009099 Application 13/961,273 Xtranonnal's page 48 Figure shows a user-generated hyperlink may be provided that links to a URL of a user-generated animation clip. The Examiner finds, and we agree, that Xtranormal' s teaching of providing programming means for a user to generate a URL (Xtranormal 44) pointing to a specific animation clip (user-generated animation clip in Xtranormal, page 48) teaches "setting a hyperlink based on the interactive selection information," as recited in claim 1. See Final Act. 12-13; see also Ans. 4. Appellants fail to demonstrate Xtranormal's creation of a user- selectable icon, including a hyperlink taking the user to a specific animation clip, is not sufficiently interactive to teach "setting a hyperlink based on the interactive selection information." Appellants further argue Xtranormal' s "hyper link does not appear in the created program image, as required by claim 1" because "Xtranormal shows a hyperlink window that is separate from the video created by the video creator" and, thus, the "hyperlink is not included within the video itself." Br. 10 (citing Xtranormal 48). We are unpersuaded. Appellants' argument relies on aspects of the invention not recited in claim 1, because the claim does not require the hyperlink to be "included within the video." Br. 10. In fact, claim 1 does not recite the term video. Furthermore, we agree with the Examiner that Appellants' proposed interpretation of the claimed "program image" as a video is unreasonable in view of Appellants' Specification, which also "never uses the word 'video'." Ans. 9. Moreover, Appellants' argument unpersuasively attacks Xtranormal alone when the rejection is based on the combination of Xtranormal and Moore. 6 Appeal2017-009099 Application 13/961,273 The drawing below illustrates the Examiner's annotated combination of Xtranormal and Moore . . ·:·:·.· ... :::::. ·:··:;:;:,:,:: :·::::; .. ···::·:::::. .. ·::·: .. · n··.·.··-··;:'''"'''. ·,·· .. -· .. ' . In the Figure, Moore's avatar animation is replaced by Xtranormal's user-created avatar-based animation clips. The Examiner finds, and we agree, that the above-cited combination teaches "the hyperlink appearing in the created program image," as claimed, because "Xtranormal in view of Moore, does show that URL 1 and URL 2, hyperlinks, are placed within a container screen[]. The container screen and its content forms a created program image. Therefore, the hyperlinks are placed within the created program image." Ans. 9 (citing Xtranormal 43- 45, 48). 7 Appeal2017-009099 Application 13/961,273 Appellants next argue "Moore does not disclose setting a hyperlink as claimed" because "there is no teaching or suggestion that clicking on a sales rep would result in the description image appearing in the created program image being replaced by a different description image that is displayed in the created program image, as required by claim 1." Br. 14. We are unpersuaded because Appellants' arguments are not responsive to the Examiner's findings. The Examiner finds, and we agree, the combination of Xtranormal and Moore teaches or suggests "an interactive processing step ... wherein ... the description image appearing in the created program image is replaced by a different description image that is displayed in the created program image," as recited in claim 1. Ans. 6; see also Final Act. 14--18. Specifically, the Examiner finds, and we agree, the combination teaches "the description image appearing in the created program image is replaced by a different description image that is displayed in the created program image," because in the drawing on page 7 above, "[ w ]hen URL 1 is clicked, a first animation clip will be played as a first example and when URL2 is clicked, a second animation clip will be played." Ans. 7. Because Appellants attack Moore alone when the rejection is based on the combination of Xtranormal and Moore, we find the argument unpersuasive of error. Appellants further argue "[ t ]here is not sufficient reasoning for combining the Xtranormal and Moore references" because "[t]he rejection does not include an articulated reasoning with some rational underpinning to support the conclusion of obviousness." Br. 22. 8 Appeal2017-009099 Application 13/961,273 Appellants' argument is not persuasive of error because Appellants do not address the reasoning provided by the Examiner. That is, the Examiner has found actual teachings in the prior art for each of the claimed elements and has additionally provided a rationale for the combination. Namely, for the combination of Extranormal and Moore, the Examiner indicates: It would have been well-known in the art that a hyperlink may be set based on a selection. For instance, the location, appearance, and content ofhyperlinks as shown in Moore' figures may be set by selection. The benefits of combining this well-known knowledge would have been that a designer may customize the hyperlinks, and a software system may guide the customization process, which makes the software system more user friendlier. Final Act. 14--15. And for the combination of Extranormal and Moore with Flather, the Examiner indicates: At the time of invention, it would have been obvious to a person of ordinary skill in the art to combine Xtranormal in view of Moore with Flather. The suggestion/motivation would have been in order to allow a user to control when and how to watch the presentation created by the invention of Xtranormal in view of Moore. Final Act. 18. Accordingly, the Examiner has provided reasoning with rational underpinnings for combining the teachings of Extranormal, Moore, and Flather. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds ... [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants, in tum, fail to provide sufficient evidence that the Examiner's 9 Appeal2017-009099 Application 13/961,273 proffered combination would have been "uniquely challenging or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). For the reasons discussed, Appellants have not shown error in the Examiner's factual findings or conclusion of obviousness. Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of independent claim 1. The Examiner determines Appellants use "substantially identical arguments for [c]laims 10 and 12." Ans. 18. Appellants do not dispute the Examiner's determination and, therefore, we sustain the Examiner's 35 U.S.C. § 103 rejection of independent claims 10 and 12 for reasons similar to those provided for claim 1. Dependent claims 2-8, 11, and 13-17 are not argued separately and so the rejections of these claims are sustained for the reasons given for independent claim 1. See Br. 24. DECISION We affirm the Examiner's decision rejecting claims 1-8 and 10-17 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation