Ex Parte Rijn

Board of Patent Appeals and Interferences

Dec 27, 2011

11145503 (B.P.A.I. Dec. 27, 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.
11/145,503 06/02/2005 Percy van Rijn PA3291REI 2927
7590 12/28/2011
Percy van Rijn
252 Via Presa
San Clemente, CA 92672
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
12/28/2011 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 PERCY VAN RIJN
____________

Appeal 2011-008733
Application 11/145,503
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

2

Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.52(a) (3)
(2008) of the Decision of August 11, 2011.
Our Decision held that “the Examiner did not err in rejecting claims 25-33
and 37-40 under 35 U.S.C. § 103(a) over Ludwig in view of Buckley. (Decision 7).
Concerning independent claims 37 and 39, we found that
1. Ludwig explicitly1 “discloses the claim requirement of the audio and video
data transmitted to a recipient via a plurality of networks, wherein at least
one network of the plurality of networks is a wireless network. That is, the
field office to which the laptop connects would inherently use a hard wired
or fiber cable system land based network in contrast to the wireless
connection used between the laptop and the field office.” (Decision 4).
2. “…Appellant’s argument as to any deficiency in motivation used by the
Examiner to arrive at the claim requirement from the teachings of Ludwig is
moot given the explicit disclosure thereof.” (Decision 4-5).
Concerning independent claims 25, 27, 29, 31, 32 and 33, our Decision makes the
following findings:
3. The Examiner found that Buckley discloses returning “to pre-recorded audio
and visual messages when the user selection is not received within a
specified time period" at column 11, lines 19 and 20. (Answer 8). Here,
Buckley discloses “[i]f he or she does not do so [(decide to purchase)] after a
certain time interval the operation reverts to the start condition.” (Decision

1 In our Decision we also found that “the Examiner found that Ludwig discloses a
caller using a ‘laptop with two wireless modems permitting dial-up access to two
data connections in the nearest field office (through which his calls were routed).’
(Answer 6).” (Decision 4).
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Application 11/145,503

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5).
4. Buckley discloses at column 11, lines 13 and 14, “upon touching the screen
11 an explanatory video is generated with associated sound ….” We read
the explanatory video of Buckley as the start condition, and hence find that
the claim limitation is met by Buckley returning to the start condition
playing the explanatory video. (Decision 5).
5. [e]ven if we were to read the invitation message in Buckley as the start
condition which invites the customer to touch the screen to obtain more
information as to the operation of the machine (col.11, ll. 9-10), the
Examiner has made a number of findings (Answer 21-23) showing that
sound and graphics are inextricably connected with one another in the
Buckley system such that the invitation message alone by inference would
have both visual and audio components. See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). (In making the obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”) (Decision 5-6).
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Application 11/145,503

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6. [Concerning the combination of Ludwig and Buckley,] the Examiner
found that ‘“both references belong to the same field of endeavor and
employ same elements.’ (Answer 24).” (Decision 6).
7. [t]he Examiner found that each reference discloses ‘“a system comprising
a processor, a display and a memory configured to enable a customer to
generate a personalized messages/products. The only difference is the
type of software employed for certain operations.’ (Answer 24)”.
(Decision 6)
8. Appellant does not challenge these findings. (Decision 6).
9. Thus, left unchallenged these findings alone support our finding that the
references used in the combination under 35 U.S.C. § 103(a) are
analogous art. (Decision 6).
10. [W]e find rationale support in the record for the combination under 35
U.S.C. § 103(a) because the Examiner reasoned that because the
references share the same field of endeavor, it would be reasonable to
combine them. (Decision 6).

REQUEST POINT 1
Appellant states on reconsideration that: “[b]y making a finding of fact that
Ludwig discloses the transmission of audio and video data over a wireless network
even though that is not explicitly disclosed in Ludwig, the Board has misapplied
Ludwig, and rehearing is warranted.” (Request 3).
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Application 11/145,503

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We disagree with Appellant because our Decision at page 4 (see #1 above)
found that the Examiner cited to an explicit disclosure in Buckley of audio and
video data transmitted to a recipient via a plurality of networks, wherein at least
one network of the plurality of networks is a wireless network. The text of Ludwig
spanning pages 6-7 in the Answer is copied from Ludwig at col 38, line 65 to col.
39, line 31. From this disclosure, it is apparent that there are at least two networks
through which audio and video data is transmitted (the laptop transmits digital
video and voice data), namely, 1) the wireless network connecting the laptop to the
field office and 2) the wired network to which the field office is connected.
As such, Appellant’s challenge to the Examiner’s alleged failing to provide
motivation to modify Ludwig (Request 3) to include a feature which is explicitly
disclosed is moot.
REQUEST POINT 2
Appellant argues that “[s]imply because the Buckley invention has the
capability of both an audio and visual display does not make it reasonable to infer
that the start condition graphics automatically contains corresponding audio.”
(Request 4).
We are not persuaded by Appellant arguments because our Decision found
Buckley both explicitly, or by an obvious standard, discloses wherein the
personalized message module is further executable to return to pre-recorded audio
and visual messages when the user selection is not received within a specified time
period. Specifically, we found as set forth above at (#3, 4 above) that “that
Buckley discloses at column 11, lines 13 and 14, “upon touching the screen 11 an
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explanatory video is generated with associated sound ….” We read the
explanatory video of Buckley as the start condition, and hence find that the claim
limitation is met by Buckley at these portions of his disclosure.” (# 4 above). The
fact that Buckley discloses that the explanatory video and sound can be skipped at
the election of a user, does not preclude our finding that Buckley discloses the
required claim feature when the user chooses to hear the explanatory message by
not touching the screen to skip the message.
Moreover our decision alternatively finds (#5 above) that even if we were to
alternatively read the invitation message of Buckley (col. 11, 5-8) and not the
explanatory message as the personalized message, the Examiner has made a
number of findings (Answer 26-28) showing that sound and graphics are
inextricably connected with one another in the Buckley system such that the
invitation message by inference would be presented both visually and audibly.
See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In making the
obviousness determination one “can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”) Among these
findings presented in the Answer at pages 26-28 that support our inference are:
personalized products including greeting cards and/or visual and audio media
(Answer 26); features are identified both audibly and visually (Answer 26); a
direct connection 115 is provided between optical disc 114 and the speaker unit
112 for developing an audio signal corresponding to the display developed by the
monitor 106 (Answer 27).
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Appellant also argues “Buckley device does not provide the same function
as the instant invention where a pre-recorded audio and visual message is
presented to the user when a user selection is not received within the specified time
period.” (Request 4).
This is a new argument not presented by Appellant in his Brief, and thus will
not be considered on reconsideration. Appellant now changes the argument and
presents a new argument for what they should have otherwise at least presented in
their Appeal Brief. “A party cannot wait until after the Board has rendered an
adverse decision and then present new arguments in a request for reconsideration.”
Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (citing Moller v.
Harding, 214 USPQ 730, 731 (BPAI 1982), aff'd, 714 F.2d 160 (Fed. Cir. 1983)
(table)).
REQUEST POINT 3
Appellant asserts that “the Board failed to provide a reasonable basis as to the
Examiner's assertion that a person of ordinary skill would combine the references
relied upon in the Office Action.” (Request 5).
We are un-persuaded by this argument because we found that the Examiner did
provide a reason why a person of ordinary skill in the art would have combined
these specific prior art elements in the specific manner claimed, namely, that “both
references belong to the same field of endeavor and employ same elements.”
(# 6, 7 above).
We found that Appellant did not challenge this finding of same field of
endeavor on Brief (# 8 above), and it was not until this Request for
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Reconsideration that Appellant argued with it with any particularly, namely that it
is “is an extremely broad interpretation of the field of endeavor that would
encompass a multitude of existing patents, and it is unreasonable to assume that a
person of ordinary skill in the art will automatically look to combine all references
comprising these elements.” (Request 4).
This is a new argument not presented by Appellant in his Brief, and thus will
not be considered on reconsideration. Appellant now changes the argument and
presents a new argument for what they should have otherwise at least presented in
their Appeal Brief. “A party cannot wait until after the Board has rendered an
adverse decision and then present new arguments in a request for reconsideration.”
Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998).
Notwithstanding, our Decision amply provided findings showing why the
Examiner established a reasonable rationale as to why the references were in the
same field of endeavor insuring the completeness of our rationale in support of the
combination under 35 U.S.C. § 103(a). (#s 6, 7, 9, 10 above).
For the reasons above, we are not convinced that Appellant has shown with
particularity points believed to have been misapprehended or overlooked by the
Board in rendering its earlier decision. Accordingly, Appellant’s request for
rehearing insofar as Appellant seeks an establishment error in the Decision of the
Board is denied.
DENIED
MP/nlk