Ex Parte Miller et al

Patent Trial and Appeal Board

May 5, 2014

10977271 (P.T.A.B. May. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARK S. MILLER, ALAN H. KARP,
MARK YOSHIKAWA, and SUSIE WEE
__________

Appeal 2012-000515
Application 10/977,271
Technology Center 2100
__________

Before, JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of providing a user a non-degraded presentation experience from data. The
Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Hewlett-Packard
Development Company, LP (see App. Br. 1).
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Statement of the Case
Background
“Substantial effort and costs have been invested in protecting every
type of electronic data (e.g., software programs, movies, music, books, text,
graphics, etc.) from unauthorized use” (Spec. 1, ll. 13-15). According to the
Specification, “[e]ven if an impenetrable protection scheme is crafted, the
data may still be susceptible to unauthorized copying via the ‘analog hole’”
(Spec. 1, ll. 28-29).
The Specification teaches that “the ‘analog hole’ is ‘plugged’ by
introducing customization into the presentation experience. The
customization is achieved by adapting the data using nondeterministic
information (e.g., user attribute from the user, environmental attribute,
presentation attribute of a presentation device)” (Spec. 6, ll. 16-19).
The Claims
Claims 1-36 and 51-68 are on appeal. Claim 1 is representative and
reads as follows:
1. A method of providing a user a non-degraded
presentation experience from data while limiting access to
said non-degraded presentation experience, said method
comprising:
gathering one or more attributes from one or more
sources;
accessing said data; and
adapting said data using said one or more attributes so
that said non-degraded presentation is available solely to
said user and is dependent on said one or more attributes.

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The issues
A. The Examiner rejected claims 1, 2, 4-6, 8-11, 16-19, and 24 under
35 U.S.C. § 102(b) as anticipated by Andreyko2,3 (Ans. 5-14).
B. The Examiner rejected claims 3, 7, 25-27, 30-33, 36, 51, 59, 60, and
68 under 35 U.S.C. § 103(a) as obvious over Andreyko and Shuttleworth4
(Ans. 14-26).
C. The Examiner rejected claims 12, 13, 20, and 21 under 35 U.S.C.
§ 103(a) as obvious over Andreyko and Pellegrini5,6 (Ans. 26-29).
D. The Examiner rejected claims 14, 15, 22, and 23 under 35 U.S.C.
§ 103(a) as obvious over Andreyko and Kake7 (Ans. 29-31).
E. The Examiner rejected claims 28, 29, 34, 35, 56-58, and 65-67 under
35 U.S.C. § 103(a) as obvious over Andreyko, Shuttleworth, and Barth8
(Ans. 31-34).
F. The Examiner rejected claims 52-55 and 61-64 under 35 U.S.C.
§ 103(a) as obvious over Andreyko, Shuttleworth, Pellegrini, and Kake
(Ans. 34-36).

2 Andreyko et al., WO 03/063470 A1, published Jul. 31, 2003.
3 The Examiner relies upon Andreyko et al., US 2005/0073576 A1,
published April 7, 2005 for translation of the Andreyko ’470 WO
document. All further citations to “Andreyko” will reference pages
and paragraphs in the US published application.
4 Shuttleworth et al., US 2005/0063552 A1, published Mar. 24, 2005.
5 Pellegrini et al., WO 03/101150 A1, published Dec. 4, 2003.
6 The Examiner relies upon Pellegrini et al., US 2005/0226437 A1,
published Oct. 13, 2005 for translation of the Pellegrini ’150 WO
document. All further citations to “Pellegrini” will reference pages
and paragraphs in the US published application.
7 Kake et al., US 2003/0126035 A1, published Jul. 3, 2003.
8 Barth et al., US 6,229,577 B1, issued May 8, 2001.
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A. 35 U.S.C. § 102(b) over Andreyko
The Examiner finds that
Andreyko discloses “A method of interactive
television providing for generating, transforming, or
displaying video information taking into account individual
peculiarities of the user’s eye.” Andreyko, Abstract.
Further, Andreyko discloses that the method results in
“protection of video information again non-authorized
access, distribution and use.” . . . Andreyko discloses that
“sensor or sensors are used for the dynamic determination of
the eye characteristics with respect to the video image
perceived by the user with formation of data interrogation
signals coding eye characteristics.” . . . Andreyko discloses
that “Video signals are transmitted through data channels
from one source of video signals to one consumer of video
signals.” . . . Andreyko discloses that “. . . the task of the
minimum video data redundancy is solved by reduction of
the video signal quality level down to the minimum level,
when the user perceives video image as the real image
within the stated eye sectors.” . . . Accordingly, the
computing facility degrades the video outside of the
determined sector that the authorized user perceives.)

(Ans. 6-8.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Andreyko anticipates claims 1 and
9?
Findings of Fact
1. The Specification teaches that the “user attributes can be static
or dynamic. Examples of static user attributes are user’s audio acuity and
user’s visual acuity. Examples of dynamic user attributes include eye
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movement, head movement, and virtual movement in a virtual environment”
(Spec. 9, ll. 6-9).
2. The Specification teaches that
[T]he user attribute unit 30 may utilize one or more eye
tracking techniques. Examples of eye tracking techniques
include reflected light tracking techniques, electro-
aculography tracking techniques, and contact lens tracking
techniques. . . . [O]ther eye tracking techniques are also
well-suited for the user attribute unit 30.

(Spec. 9, ll. 22-28.)
3. The Specification teaches that “adaptation of the data using
static or dynamic user attributes ensures that a non-degraded presentation
experience produced by the presentation device 40 is available solely to the
user 50” (Spec. 10, ll. 12-15).
4. Andreyko teaches a “method of interactive television using eye
foveal faculties of individual and grouped users, which protects video
information against non-authorized access and distribution . . . and for, at
least, one individual user perceiving a video item in one information display
facility” (Andreyko 6 ¶ 0087).
5. Andreyko teaches that
[D]ynamically changed characteristics such as coordinates
and direction of eye optical axes, eye accommodation depth
is dynamically transmitted (O1-1), whereas slowly changed
characteristics, such as eye apple diameter, function of eye
resolution dependence with respect to the eye optical axis
are transmitted to the computing facility by periodical or
initial entering into the memory of the computing facility.
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(Andreyko 8 ¶ 0131.)
6. Andreyko teaches providing coding information (i.e. data)
regarding the “quality level of video image (K2), within which the
requirements of the user’s or the users’ eye perceiving video image are
generated by the signals coding user’s eye dynamical characteristics taking
into account the function of the eye resolution dependence in the computing
facility” (Andreyko 8 ¶ 0133).
7. Andreyko teaches that:
When boundaries and quality levels of video image
sectors are determined, the task of the minimum video data
redundancy is solved by reduction of the video signal quality
level down to the minimum level, when the user perceives
video image as the real image within the stated eye sectors.
Quality level of video image sectors is minimized and
dimensions of video image sectors of high level are reduced
at the earliest possible stages of video signal formation,
conversion, transmission or data information display.

(Andreyko 8 ¶ 0134.)
8. Andreyko teaches that:
The video signal sequentially reduces its redundancy down
to the level corresponding to the eye requirement of one
individual user taking into account individual faculties of its
eye and its demand with the display of video image covering
sectors with different quality level on the screen of the data
information display facility.

(Andreyko 9 ¶ 0140.)
9. Andreyko teaches that “eye characteristics may be used
dynamically measured by means of a sensor or sensors: eye orientation, eye
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coordinates with respect to the video image and other characteristics”
(Andreyko 8 ¶ 0130).
Principles of Law
“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).
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art (Ans. 4-53; FF 1-9).
Andreyko teaches a method “of interactive television using eye foveal
faculties of individual and grouped users, which protects video information
against non-authorized access and distribution” (Andreyko 6 ¶ 0087; FF 4).
Andreyko teaches gathering attributes, consistent with the
Specification, which defines static user attributes as encompassing visual
acuity and dynamic user attributes as encompassing eye movement (FF 1).
Specifically Andreyko teaches static attributes such as eye resolution (i.e.,
visual acuity) as well as “dynamically changed characteristics such as
coordinates and direction of eye optical axes” which represent eye
movement (Andreyko 8 ¶ 0131; FF 5).
Andreyko teaches accessing this data where “the requirements of the
user’s or the users’ eye perceiving video image are generated by the signals
coding user’s eye dynamical characteristics taking into account the function
of the eye resolution dependence in the computing facility” (Andreyko 8 ¶
0133; FF 6).
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Andreyko teaches to adapt the data based on the attributes, to present
a non-degraded presentation to a user, where the “video signal sequentially
reduces its redundancy down to the level corresponding to the eye
requirement of one individual user taking into account individual faculties of
its eye and its demand with the display of video image covering sectors with
different quality level on the screen” (Andreyko 9 ¶ 0140; FF 8).
We therefore agree with the Examiner that Andreyko teaches each
element of claims 1 and 9 as arranged in the claim (see Ans. 5-8). We
address Appellants’ arguments below.
Appellants contend that “that Andreyko does not teach ‘adapting said
data using said one or more attributes so that non-degraded presentation is
available solely to said user. . . ,’ (emphasis added) as recited by Claim 1”
(App. Br. 12).
We are not persuaded. Andreyko teaches that the method may be
applied to a single user, teaching application of a method which “protects
video information against non-authorized access and distribution . . . for, at
least, one individual user perceiving a video item in one information display
facility” (Andreyko 6 ¶ 0087; FF 4). Andreyko further teaches that
The video signal sequentially reduces its redundancy down
to the level corresponding to the eye requirement of one
individual user taking into account individual faculties of its
eye and its demand with the display of video image covering
sectors with different quality level on the screen of the data
information display facility.

(Andreyko 9 ¶ 0140; FF 8.) Andreyko is clearly teaching adapting the data
to obtain a non-degraded presentation that is available to a single user based
on the attributes of the user (FF 4-8).
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To the extent that Appellants rely upon the word “solely,” in the
situation where the method is being provided to a single user as expressly
taught by Andreyko (FF 4, 8), the method necessarily, and thus inherently,
provides the non-degraded presentation solely to that single user as required
by claim 1. See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
1366 (Fed. Cir. 1999) (“Where … the result is a necessary consequence of
what was deliberately intended, it is of no import that the article’s authors
did not appreciate the results.”) There is no requirement in claim 1 that
other users be present, from whom the non-degraded presentation is
shielded.
Appellants also contend that they
[U]nderstand Andreyko to teach using sectors to limit the
area for collecting information for generating interrogation
signals (eye or eye characteristics) to the boundaries of the
sectors (see Andreyko first sentence of 0133 quoted herein).
Therefore, Appellants do not understand Andreyko’s sector
to be the result of determining Andreyko’s eye
characteristics

(App. Br. 13).
We are not persuaded. Claim 1 simply requires the use of
“attributes.” The Specification discusses “attributes” as either static or
dynamic, where visual acuity is identified by the Specification as a static
attribute, and eye movement is identified by the Specification as a dynamic
attribute (FF 1). As discussed above, Andreyko teaches a sensor to measure
eye characteristics (FF 9) where dynamic characteristics include direction of
the eye optical axes, i.e., eye movement as well as characteristics such as eye
resolution, i.e., visual acuity (FF 5).
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Andreyko then specifically teaches that “quality level of video image
(K2), within which the requirements of the user’s or the users’ eye
perceiving video image are generated by the signals coding user’s eye
dynamical characteristics taking into account the function of the eye
resolution dependence in the computing facility” (Andreyko 8 ¶ 0133; FF 6).
Thus, Andreyko is adapting the image quality or data, using the eye
attributes, so that the quality of the image is dependent upon the attributes
(FF 6).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Andreyko anticipates claims 1 and 9.
B. 35 U.S.C. § 103(a) over Andreyko and Shuttleworth
Appellants separately argue claims 25 and 51, which were not rejected
in the anticipation rejection over Andreyko, but rather, were subject to the
Examiner’s obviousness rejection over Andreyko and Shuttleworth.
Appellants contend that “none of Shuttleworth, Pellegrini, and Kake
remedy the deficiency in Andreyko in that none of Andreyko Shuttleworth,
Pellegrini and Kake describe[s], teach[es,] or suggest[s] ‘adapting said data
using said one or more user attributes and said one or more environmental
attributes to generate adapted data that is presented to said user,’ as recited
by Claim 51” (App. Br. 25).
We are not persuaded. The Examiner finds that:
Shuttleworth illustrates a system 500 that compensates for
ambient noise levels in figure 5. The ambient noise
compensator 514 receives the ambient noise level signal 560
and calculates a compensation signal 564. see Id., ¶ 0070.
Shuttleworth discloses that “the ambient noise compensator
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514 may generate the compensation signal 564 in such a
way as to ensure that the audio output signal 554 has a
sound level that is higher than the ambient noise.” Id., ¶
0071.), for the purpose of adapting data “so that the desired
sound is audible over undesirable noise, whose sound level
may vary over time in the listening area.” see Shuttleworth,
¶ 0014.

(Ans. 25.) The Examiner finds that “[a]ccordingly, a user in listening area
101 (as illustrated in FIG. 1 [of Shuttleworth]) is presented a presentation
that is not degraded by background and ambient noise. Users outside of
listening area 101 would be presented a presentation without the
compensation for background and ambient noise, i.e. they would hear
additional noise to the presentation” (Ans. 43-44). We again note that where
a single user is present in the listening area 101, which is not excluded by
the claims, the data will be adapted solely to that user, and will not be
available to users outside that area in a non-degraded state.
Appellants respectfully submit that Shuttleworth
[T]eaches away from “adapting said data using said one or
more environmental attributes so that said nondegraded
presentation is available solely in said environment when
said adapted data is presented to said user,” (emphasis
added) as recited by independent Claim 25 since for
example people outside of an auditorium can hear what is
going on inside of an auditorium

(App. Br. 19). Appellants “submit that Shuttleworth teaches away from
‘adapting said data using said one or more user attributes and said one or
more environmental attributes to generate adapted data that is presented to
said user,’ as recited by independent Claim 51” (App. Br. 25).
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We are not persuaded. A teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed”).
Appellants do not identify, and we do not find, any teaching in either
Andreyko or Shuttleworth that criticizes, discredits or discourages the use of
Shuttleworth’s sound compensation system in a video presentation, such as
that of Andreyko. Further, while Appellants speculate that people outside an
auditorium may hear some sound “data” being presented within the
auditorium, Appellants have not established that that the sound “data” is not
degraded when heard outside the auditorium. As the Examiner points out
“[u]sers outside of listening area 101 would be presented a presentation
without the compensation for background and ambient noise, i.e. they would
hear additional noise to the presentation” (Ans. 44).
C-F. 35 U.S.C. § 103(a)
Appellants do not argue separately the claims in these obviousness
rejections, instead repeating arguments regarding claims 1, 9, 25, and 51.
Having affirmed the anticipation rejection of claims 1 and 9 over Andreyko,
and the obviousness rejection of claims 25 and 51 over Andreyko and
Shuttleworth, we also find that the further combinations with Pellegrini,
Kake, and Barth renders the remaining claims obvious for the reasons given
by the Examiner (see Ans. 14-34).

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SUMMARY
In summary, we affirm the rejection of claims 1 and 9 under
35 U.S.C. § 102(b) as anticipated by Andreyko. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 2, 4-6, 8, 10, 11, 16-19,
and 24, as these claims were not argued separately.
We affirm the rejection of claims 25 and 51 under 35 U.S.C. § 103(a)
as obvious over Andreyko and Shuttleworth. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 3, 7, 26, 27, 30-33, 36,
59, 60, and 68, as these claims were not argued separately.
We affirm the rejection of claims 12, 13, 20, and 21 under 35 U.S.C.
§ 103(a) as obvious over Andreyko and Pellegrini (37 C.F.R. § 41.37(c)(1)).
We affirm the rejection of claims 14, 15, 22, and 23 under 35 U.S.C.
§ 103(a) as obvious over Andreyko and Kake (37 C.F.R. § 41.37(c)(1)).
We affirm the rejection of claims 28, 29, 34, 35, 56-58, and 65-67
under 35 U.S.C. § 103(a) as obvious over Andreyko, Shuttleworth, and
Barth (37 C.F.R. § 41.37(c)(1)).
We affirm the rejection of claims 52-55 and 61-64 under 35 U.S.C.
§ 103(a) as obvious over Andreyko, Shuttleworth, Pellegrini, and Kake
(37 C.F.R. § 41.37(c)(1)).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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