Ex Parte Pierce

Board of Patent Appeals and Interferences

Jan 30, 2008

10377539 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES W. PIERCE
____________________

Appeal 2007-36461
Application 10/377,539
Technology Center 2100
____________________

Decided: January 30, 2008
____________________

Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
JEAN R. HOMERE, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

1 Heard January 17, 2008.
Appeal 2007-3646
Application 10/377,539

2
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
According to Appellant, Appellant invented a display system which
couples existing Rapid Sequential Visualization Presentation (RSVP)
technology with a mathematically calculated color scheme to indicate the
position of a sequentially presented word relative to the complete sentence
that comprises the word. (Spec. ¶ [0006]).
Representative claims 1 and 2 under appeal reads as follows:
1. A display system for increasing the legibility of text presented
on the space limited displays of small electrical devices by indicating the
position of a word displayed by Rapid Sequential Visualization Presentation
within its respective sentence, said system comprising:

a text frame; and

a position indicator frame positioned proximate to said text frame;

whereby said text frame utilizes Rapid Sequential Visualization
Presentation and said position indicator frame indicates the position of a
presented word with respect to its comprising sentence.

2. The system of Claim 1 wherein said position indicator frame
employs a color scheme to indicate the position of a presented word within
its respective sentence.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Campbell US 2002/0133521 A1 Sep. 19, 2002
Appeal 2007-3646
Application 10/377,539

3
The Examiner rejected claims 1-14 under 35 U.S.C. § 102(e) as being
unpatentable over Campbell.
Appellant contends that the claimed subject matter is not anticipated
by Campbell. More specifically, Appellant contends that Campbell’s
display window 502 only displays an indicator when paused and thus does
not indicate the position of the text within the sentence as required by claims
1, 5, 7, and 11 (Reply Br. 10-11). Appellant further contends that Campbell
does not teach a color scheme as required by claims 2, 6, 8, and 12 (Reply
Br. 12). Appellant also contends that Campbell does not teach a gradual
color change as required by claims 3, 9, 13, and 14 (Reply Br. 14).
Appellant also contends that Campbell does not teach a new paragraph
indicator using a color (different than the word position color) as required by
claims 4 and 10 (Reply Br. 10).
We affirm-in-part.

II. ISSUE(S)
Has Appellant shown that the Examiner has failed to establish that
Campbell describes a position indicator frame as required by claims 1, 5, 7,
and 11?
Has Appellant shown that the Examiner has failed to establish that
Campbell describes a color scheme as required by claims 2, 6, 8, and 12?
Appeal 2007-3646
Application 10/377,539

4
Has Appellant shown that the Examiner has failed to establish that
Campbell describes a gradual color change as required by claims 3, 9, 13,
and 14?
Has Appellant shown that the Examiner has failed to establish that
Campbell describes a new paragraph indicator as required by claims 4
and 10?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Campbell - US 2002/0133521 A1
1. Campbell teaches a text delivery system and corresponding
methods for a user-configurable delivery and display of a body of text to a
user in a "stacked" manner. The body of text (e.g., a document) contains a
number of components (e.g., words). The system and methods stack the
components making up the body of text (for example, one behind another)
and separately present each stacked component in sequence in a display for
viewing by the user. The user may control the parameters associated with
the delivery and display of the body of text. (¶ [0033].)
2. Screen display window 100 provides an interface through
which a user can receive and view, for example, contents of a document
delivered by the text player application. (¶ [0043].)
Appeal 2007-3646
Application 10/377,539

5
3. The document may be a text file, a Microsoft Word file, an
HTML file, a data stream, and the like, which has contents that may be
displayed and viewed by the user. (¶ [0044].)
4. A textual element may be a word and a punctuation character
(i.e., comma, period, etc.) immediately following the word. A terminal
character may also be an indicator identifying the last word or character to
display. (¶ [0045].)
5. In response to a user's "pushing" or activating start button icon
110, the text player application starts to process the textual elements
contained in the user specified document and displays the textual elements in
display area 108 as a sequence of text groupings. (¶ [0056].)
6. Tempo control 130 generally functions to permit the user to
control the tempo or delivery speed of the text player application. For
example, moving tempo control 130 to the left may decrease the delivery
speed, while moving tempo control 130 to the right may increase the
delivery speed. The delivery speed may be a factor in determining the rate
at which the text player application delivers and displays a sequence of text
groupings in display area 108 of screen display window 100. (¶ [0067].)
7. Number of words selection box 208 generally functions to
define the size of the text grouping. As illustrated, number of words
selection box 208 provides a user the ability to select "one word," "three
words," or "contrasted three words." The user's selection of one of the
selectable options presented in number of words selection box 208
Appeal 2007-3646
Application 10/377,539

6
determines the number of textual elements contained in a text grouping.
(¶ [0074].)
8. If "three words" or "contrasted three words" is selected, a text
grouping is comprised of no more than three consecutive textual elements.
Furthermore, if "contrasted three words" is selected, the display of the
middle textual element (i.e., the current textual element) in the text grouping
is contrasted from the display of the surrounding textual elements in display
area 108. For example, the middle textual element may be displayed in
reverse or contrasted video. If "three words" is selected, a text grouping is
comprised of no more than three textual elements. (¶¶ [0078]-[0079].)
9. The text player application may substitute and/or insert certain
characters or symbols into the text grouping to increase readability. For
example, when the text player application reaches the end of a sentence, it
may indicate the end-of-sentence by inserting a symbol, for example, a
colored square, into the last text grouping for the sentence. The colored
square is readily detectable by a user as the text groupings are presented in
display area 108. In like manner, the text player application may insert
other, readily detectable symbols to indicate, for example, the end of a
paragraph, the end of a chapter, the end of a page, and the like. The text
player application may provide the user with an option to activate and
deactivate this feature, and also the ability to select the visual symbols that
are displayed. (¶ [0086].)
Appeal 2007-3646
Application 10/377,539

7
10. The text player application may provide a user with the option
to receive the contents of a document in the stacked manner as well as view
the document's contents through a conventional display. FIG. 6 illustrates
an exemplary stacked display and an associated conventional display,
according to an embodiment of the present invention. As illustrated, the text
player application delivers the contents of a document through screen
display window 100 in the stacked manner. At the same time, the text
player application may display a portion, up to all, of the document's
contents in a separate display window 502. As the sequence of text
groupings are displayed in display area 108, display window 502 may
display the document's contents surrounding the particular text grouping that
is presently displayed in display area 108. (¶ [0087].)
11. When the text player application is stopped or paused, an
indicator, such as, by way of example, a pointer, a cursor, an underline, and
the like, may appear in display window 502 to identify where the text player
application stopped or paused processing. For example, the cursor may
indicate the current position in the document. As illustrated in FIG. 6, the
user may have stopped or paused the text player application while the text
grouping "the" is displayed in display area 108. Here, the textual element
"the" is underlined in display area 502 to identify the last or most recently
processed position in the document. (¶ [0088].)

Appeal 2007-3646
Application 10/377,539

8
IV. PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Appellant may sustain this burden by showing that the prior art
reference relied upon by the Examiner fails to disclose an element of the
claim. It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).

V. § 102 ANALYSIS
A. Claims 1, 5, 7, and 11
As we have already found at FF 11, Campbell explicitly describes a
display window 502 to identify where the text player application stopped or
paused processing. This language is a teaching of a position indicator frame
(means) as claimed.
Appeal 2007-3646
Application 10/377,539

9
Contrary to Appellant’s contentions (Reply Br. 10-11), nothing in the
claim limitations precludes the position indication occurring during a pause.
Thus, Appellant has not established that the Examiner erred with respect to
this rejection.

B. Claims 2, 6, 8, and 12
1. 35 U.S.C. § 102
Appellant essentially argues that for these claims the Examiner is
referencing a different embodiment in Campbell than that referenced for the
claims from which these depend. Therefore, the Examiner’s rejection does
not set forth a proper prima facie case of anticipation under 35 U.S.C. § 102.
We agree. Thus, Appellant has established that the Examiner erred in
rejecting these claims.
2. New Grounds of Rejection
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 2, 6,
8, and 12 under 35 U.S.C. § 102(e).
We note that the embodiment of Campbell referenced by the
Examiner in rejecting claims 1, 5, 7, and 11, also explicitly describes
underlining to identify a word (FF 11). This language is a teaching of a
color scheme as claimed because the underlining is either on or off.

Appeal 2007-3646
Application 10/377,539

10
C. Claims 3, 9, 13, and 14
Appellant argues that Campbell does not teach “using a transition
between two colors to indicate the position of a word within a sentence.”
(App. Br. 20.)
We agree. Contrary to the Examiner’s finding, Campbell does not
teach a gradual color change as required by claims 3, 9, 13, and 14
(Answer 5). Thus, Appellant has established that the Examiner erred in
rejecting these claims.
D. Claims 4 and 10
1. New Grounds of Rejection
Using our authority under 37 C.F.R. § 41.50(b), we reject reissue
claims 4 and 10 under 35 U.S.C. § 112, second paragraph.
The phrase “the colors associated with word position” has no
antecedent basis in either claim from which claims 4 and 10 depend
respectively. Thus, claims 4 and 10 are indefinite.
2. 35 U.S.C. § 102
Additionally, we reverse the outstanding rejection of claims 4 and 10
under 35 U.S.C. § 102 because the subject matter encompassed by the
claims on appeal must be reasonably understood without resort to
speculation. Presently, speculation and conjecture must be utilized by us
and by the artisan inasmuch as the claims on appeal do not adequately reflect
what the disclosed invention is. Note In re Steele, 305 F.2d 859, 862 (CCPA
1962) (A prior art rejection cannot be sustained if the hypothetical person of
Appeal 2007-3646
Application 10/377,539

11
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.); Note also In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970).

VI. 37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

VII. CONCLUSION OF LAW
(1) Appellant has failed to establish that the Examiner erred in
rejecting claims 1, 5, 7, and 11 as being unpatentable under
35 U.S.C. § 102(e) over Campbell.
Appeal 2007-3646
Application 10/377,539

12
(2) Appellant has established that the Examiner erred in rejecting
claims 2, 3, 6, 8, 9, 12, 13, and 14 as being unpatentable under
35 U.S.C. § 102(e) over Campbell.
(3) Claims 1, 2, 4-8, and 10-12 are not patentable.
(4) On this record, claims 3, 9, 13, and 14 have not been shown to be
unpatentable.
(5) Since we have entered a new rejection, our decision is not a final
agency action.

VIII. DECISION
The Examiner's rejection of claims 1, 5, 7, and 11 is affirmed.
The Examiner's rejection of claims 2-4, 6, 8-10, and 12-14 is reversed.
We reject claims 4 and 10 under 35 U.S.C. § 112, second paragraph.
We reject claims 2, 6, 8, and 12 under 35 U.S.C. § 102(e).

Appeal 2007-3646
Application 10/377,539

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)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

rwk

PITTS AND BRITTIAN P C
P O BOX 51295
KNOXVILLE TN 37950-1295