Ex Parte Rising

Board of Patent Appeals and Interferences

Mar 20, 2007

09905524 (B.P.A.I. Mar. 20, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAWLEY K. RISING III
____________

Appeal 2007-0438
Application 09/905,524
Technology Center 2100
____________

Decided: March 20, 2007
____________

Before JOSEPH F. RUGGIERO, ALLEN R. MACDONALD
and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellant appeals from the Examiner’s final rejection of claims 1
through 22 pursuant to 35 U.S.C. § 134. We have jurisdiction under 35
U.S.C. § 6(b) to decide this appeal.
The Examiner rejects the pending claims as follows:
Appeal 2007-0438
Application 09/905,524

A. Claims 1 through 22 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of APA and Smith.
The Examiner relies on the following references:
Smith US 6,223,183 B1 Apr. 24, 2001
Applicant’s Admitted Prior Art (APA), Specification, pages 1-3
Independent claim 1 is illustrative and representative of the
Appellant’s invention. It reads as follows:
1. A computerized method for processing descriptions of audiovisual
content, the method comprising:

evaluating a description of audiovisual content;

determining whether the description is an abstraction; and

if the description is an abstraction,

determining a level of abstraction, wherein the level of
abstraction identifies one of plurality of types of abstraction, and

storing an indicator of the level of abstraction with description
of audiovisual content.

Appellant contends that claims 1 through 22 are not unpatentable over
the combination of APA and Smith.1 Particularly, Appellant contends that
the cited combination does not fairly teach or suggest a computerized
mechanism for evaluating a description of an audio visual content to
determine if it is an abstraction as well as to determine the level and type of

1 This decision considers only those arguments that Appellant
submitted in the Appeal Brief. Arguments that Appellant could have made
but chose not to make in the Brief are deemed to have been waived. See 37
CFR § 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d
1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
2
Appeal 2007-0438
Application 09/905,524

abstraction, as recited in representative claim 1 (Br. 3-4; Reply Br. 2). The
Examiner, in contrast, contends that APA teaches the claimed limitation
(Answer 3, 7). Consequently, The Examiner concludes that APA, taken in
combination with Smith renders claims 1 through 22 unpatentable.
We reverse.
ISSUES
The pivotal issue in the appeal before us is as follows:
(1) Under 35 U.S.C. § 103 (a), would one of ordinary skill in the art,
at the time of the present invention, have found that the disclosures of APA
and Smith render the claimed invention unpatentable?
FINDINGS OF FACT
Appellant invented a computer-implemented method and an
electronic system for evaluating a description of audiovisual content (Figure
2). Particularly, the invention determines whether the description of an
audio visual content is an abstraction. If it is, the invention then identifies
the level and type of abstraction. Additionally, the invention stores an
indicator of the level and type of identified abstraction in conjunction with
the description of the audio visual content (Specification 10).
APA discloses a general overview of descriptions of audiovisual
content. Particularly, APA discloses that descriptions of audiovisual content
are divided into structural and semantic descriptions. That latter category is
further divided into concrete and abstract entities. More particularly, the
APA discloses that an abstraction may have one of a plurality of levels, and
one of many types (e.g. media abstraction, formal or lambda abstraction)
(Specification 2). APA also indicates that no mechanism currently exists to
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Appeal 2007-0438
Application 09/905,524

readily identify a description of an audiovisual content as being an
abstraction, as well as to identify the type of abstraction (Specification 3).
Smith discloses an interface for audiovisual content description
schemes that indicates how different regions relate to one another.
Particularly, Smith discloses how space and frequency view description
schemes within multimedia applications can be graphically represented (col.
4, ll. 42-56).
PRINCIPLES OF LAW
OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing that some
objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shifts to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner
must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are
deemed to support the Examiner’s conclusion.

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Appeal 2007-0438
Application 09/905,524

ANALYSIS
As set forth above, Appellant’s representative claim 1 requires a
computerized mechanism for evaluating a description of an audiovisual
content to determine if it is an abstraction as well as to determine the level
and type of abstraction. As set forth in the facts section above, APA merely
discloses a general overview of descriptions of audiovisual content.
However, this overview expressly identifies the shortcomings of the prior art
as not having an established mechanism for indicating that a description is
an abstraction, and as not being able to identify the type of abstraction.
Thus, we find that APA cannot be properly relied upon to teach the claimed
limitation when it expressly states that such mechanism is lacking in the
prior art. Further, we find that Smith’s teaching of graphically representing
the relationship between different regions does not cure the deficiencies of
APA. After considering the entire record before us, we find that the
Examiner erred in rejecting representative claim 1 as being unpatentable
over the combination of APA and Smith. We also find for the same reasons
that the Examiner erred in rejecting claims 2 through 22 as being
unpatentable over APA and Smith.2

OTHER ISSUES
In any further prosecution of the present application, the Examiner should
consider rejecting claim 22 under 35 U.S.C. § 101, as not being directed to

2 Our decision to reverse the Examiner’s prior art rejection is based solely
on the lack of evidence on the record before us to substantiate the
Examiner’s contentions. However, our reversal of the rejection should not
be construed as an indication that the claims are patentable. We recommend
that the Examiner consider US Patent No. 6,735,583 as relevant prior art.
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Application 09/905,524

statutory subject matter. Claim 22 recites a computer-readable medium,
which Appellants define at page 15 of the Specification to include carrier
wave signals.3
CONCLUSION OF LAW
On the record before us, one of ordinary skill in the art at the time of
the present invention would not have found that the combination of APA
and Smith renders the claimed invention unpatentable under 35 U.S.C.
§ 103(a).

DECISION
We reverse the Examiner’s decision to reject claims 1 through 22
under 35 U.S.C. § 103(a) as being unpatentable over APA and Smith.

REVERSED

tdl/ce

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3 A case involving this issue is presented on appeal to the Federal Circuit: In
re Nuijten, No. 06-1301.
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