Ex parte SPECTOR

Board of Patent Appeals and Interferences

Nov 23, 1998

08218822 - (D) (B.P.A.I. Nov. 23, 1998)

Application for patent filed March 28, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD SPECTOR
_____________
Appeal No. 96-1766
Application 08/218,8221
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and LEE, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 1, 3, 4 and 7-10.
Claims 2, 5 and 6 have been canceled. No claim has been
allowed.
References relied on by the Examiner
Maurer 3,301,626 Jan. 31, 1967
Appeal No. 96-1766
Application 08/218,822
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"A well known photographic technique in view of the
acknowledged prior art."
Appeal No. 96-1766
Application 08/218,822
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The Rejections on Appeal
Claims 1, 3, 4 and 7-10 stand finally rejected under
35 U.S.C. § 103 as being unpatentable over Maurer.
The following three new grounds of rejection were entered
in the examiner’s answer:
(1) Claims 1, 3, 4 and 7-10 are rejected under 35 U.S.C.
§ 103 as being unpatentable "over a well known photographic
technique in view of the acknowledged prior art";
(2) Claims 1, 3, 4 and 7-10 are rejected under 35 U.S.C.
§ 112, first paragraph, as lacking "support" in the
specification.
(3) Claims 1, 3, 4 and 7-10 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.
The Invention
The invention is directed to a method for producing
animated films. Specifically, cartoon characters are created
in real time by living actors wearing suits which are
invisible to the camera because of matte cinema photography
which excludes surfaces colored by a particular color, and a
Appeal No. 96-1766
Application 08/218,822
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painting of the cartoon characters are drawn on the body suits
in colors that are visible to the camera. Independent claim 1
is reproduced below:
1. A technique for producing an animated film whose
cartoon character and its movements are impersonated by a
living actor, having a particular appearance, said technique
comprising the steps of:
A. enveloping the actor in a body suit dyed a
specific solid color which totally covers the actor from head
to toe except for small openings permitting the actor to see
and breathe;
B. painting on the surfaces of the body suit in
colors other than the specific color a drawing of said cartoon
character whose appearance is that of the cartoon character
and is unrelated to the appearance of the actor; and
C. photographing the body-suite covered actor with a
special-effects, matte cinemaphotography system adapted to
exclude surfaces colored with the specific color from the
camera filming the cartoon character, thereby rendering the
covered actor invisible to the camera, the filmed cartoon
character being animated in real time by the invisible actor’s
movements, said specific color being blue and the
cinemaphotography system is of the blue-screen type, said
system yielding a film which is a composite of the animated
cartoon character and background scenes appropriate to the
character.
Opinion
We reverse.
The obviousness rejections
Appeal No. 96-1766
Application 08/218,822
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According to claim 1, a living actor is enveloped, except
for small openings to enable the actor to see and breathe, in
a body suit dyed in a specific blue color excluded from a
special-effects, blue-screen type, matte cinemaphotography
system used to photograph the body-suit covered actor,
"thereby rendering the covered actor invisible to the camera."
What is visible to the camera, instead, is "painting on the
surfaces of the body suit in colors other than the specific
color a drawing of said cartoon character whose appearance is
that of the cartoon character and is unrelated to the
appearance of the actor."
With regard to the above-noted features of claim 1, the
specification explains on page 9, lines 20, to page 10, line
2:
It is important to bear in mind that in this
technique, the actor is not dressed and made up to
resemble a cartoon character for there is a highly
perceptible difference between a drawing of a
cartoon character and [an] individual made up to
resemble a cartoon character. Thus in the movie
"Popeye," the actor Robin Williams who clenches a
corncob pipe in his teeth was made up to resemble
the Popeye of the classic Popeye animated films.
But Popeye, the actor, could never be confused with
Popeye, the cartoon character, for a cartoon
character drawing is an abstraction of an animal-
like or humanoid figure.
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Application 08/218,822
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In our view, the examiner has failed to give proper
weight to the claim requirement that the cartoon character
painting is unrelated to the appearance of the actor. In the
context of claim 1, the actor is completely covered by a body-
suit whose color is invisible to the photographing apparatus.
Thus, the drawings made on the body suit, in colors which are
visible to the camera, indeed do not relate to the appearance
of the actor. If there is any resemblance between the cartoon
character and the actor inside the body-suit, the resemblance
is purely by happenstance and not by design. It is
unreasonable for the examiner to say the two are related
simply because some cartoon characters take on a humanoid form
and the actor or actress inside the body-suit is a human.
That kind of generic or overall likeness in the number of
limbs, a torso and a head is not the type of "related
appearance" pertinent to the claimed invention. Claims must
be reasonably interpreted in light of the specification. The
above-quoted portion of the specification makes clear what is
meant by "not related" to the appearance of the actor or
actress. At issue is the personal features of the person, not
features common to all humans.
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Maurer would not have reasonably suggested the
appellant’s inventive concept because Maurer’s method
contemplates drawing directly on the face of an actress
(column 2, lines 33-35). Even though care is taken to
minimize 3-dimensional shading, the pictures taken relate very
much to the specific contours and outline of the particular
actor or actress playing the role of the cartoon character.
Moreover, Maurer’s method of painting directly on the face of
the actor or actress is antithetical to enveloping the actor
or actress in a body-suit except for small openings to permit
the actor or actress to see and breathe. Note that claim 1
specifically recites the step of:
A. enveloping the actor in a body suit dyed a
specific solid color which totally covers the actor
from head to toe except for small openings
permitting the actor to see and breathe.
For the foregoing reasons, we do not sustain the
rejection of claims 1, 3, 4 and 7-10 as being unpatentable
over Maurer.
Beginning on the last paragraph commencing on page 5 of
the examiner’s answer to line 7 on page 6, the examiner
describes what he regards as "[a] notoriously old and well
known photographic technique in the field of cinematography."
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The sole difference between that and the appellant’s claimed
invention, according to the examiner, is that the body suit is
dyed cobalt blue and the enveloped actor or actress is filmed
with a blue-screen type cinemaphotography system. That
difference is made up by reliance on the appellant’s admission
that blue-screen type cinema photograph is well known in the
art. The problem with the examiner’s position is that nothing
has been cited, on this record, to support his assertion that
the photographic technique, of covering an actor in a black
body-suit with small openings for him or her to see and
breathe and painting a skeletal figure on the black body suit
in colors other than black, such as white, is notoriously old
and well known. In the reply, the appellant properly points
out this inadequacy in the examiner’s new ground of rejection.
In a supplemental answer on page 3, the examiner states:
However, the Examiner, an avid television viewer, is
aware of and has seen numerous television programs
and movies employing this "well known photographic
technique." To the best of Examiner’s knowledge, an
episode of the very popular "The Little Rascals"
series employed this technique. Examiner would also
like to add that he has personally seen the type of
animation described in the new grounds of rejection
in a "Las Vegas" style stage show.
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The above-quoted representation by the examiner does not
constitute evidence, very much like the notion that mere
counsel’s argument does not take the place of evidence. It is
the initial burden of the examiner to establish a case of
prima facie obviousness based on evidentiary facts, not
speculations or vague recollections. Because the appellant
has attacked the lack of foundation of the examiner’s position
as to what is notoriously well known, it is incumbent upon the
examiner to produce evidentiary proof of his factual
assertions and determinations, such as an affidavit under 37
CFR § 1.107(b), which states:
(b) When a rejection in an application is based
on facts within the personal knowledge of an
employee of the Office, the data shall be as
specific as possible, and the reference must be
supported, when called for by the applicant, by the
affidavit of such employee, and such affidavit shall
be subject to contradiction or explanation by the
affidavits of the applicant and other persons.
The examiner has produced no such affidavit to support the
position relied on. Moreover, even if similar statements were
repeated in an affidavit by the examiner, they would not be
sufficiently specific so as to constitute meaningful evidence.
The examiner has not identified any specific episode of the
show "Little Rascals" or the particular "Las Vegas" stage show
Appeal No. 96-1766
Application 08/218,822
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referred to by the examiner in the supplemental answer.
Absent such specific identification, not only does the
appellant not have an opportunity to contradict the
representations, there is nothing sufficiently specific to
contradict in a meaningful manner. On this record, there is
insufficient support for the examiner’s finding. Accordingly,
we do not sustain the obviousness rejection of claims 1, 3, 4,
and 7-10 as being unpatentable over "a well known photographic
technique in view of the acknowledged prior art."
The § 112, First ¶ Rejection
According to the examiner (answer at 7), the
specification "does not provide support for the claim
limitation of ’said cartoon character whose form is unrelated
to the appearance of the actor.’" It is not clear whether the
examiner is referring to the enabling disclosure requirement
or the written description requirement of 35 U.S.C. § 112,
first paragraph. The two requirements are distinct from each
other. This lack of specificity is itself sufficient basis
for reversing the rejection. In any event, in our view the
specification is neither unenabling nor without written
Appeal No. 96-1766
Application 08/218,822
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description for the particular claim feature identified by the
examiner.
On page 8 of the specification, it is described that an
actor is enveloped from head-to-toe in a body suit 10 and the
fabric is dyed cobalt blue or whatever other shade of blue
which is appropriate to the blue-screen matte system 11 being
used to photograph the actor. Also, it is described that no
part of the actor is exposed except for eye openings 12,
nostril openings 13 and a mouth opening 13. On page 10 of the
specification, it is described that the eye, nose, and mouth
openings are integrated into the character drawing painted on
the exterior of the suits that they are obscured. On the same
page, it is further described that thus the living actor is
"invisible" to the blue-screen matte camera photographing the
character.
Thus, the particular and personal features of the actor
inside the body suit are entirely unrelated to the cartoon
character drawing painted on the outside of the body suit.
While the painted cartoon character may generally exhibit a
humanoid form, in the context of this invention that does not
render the character’s appearance "related" to the appearance
Appeal No. 96-1766
Application 08/218,822
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of the actor inside the body suit. Note that claim language
must not be interpreted in a vacuum, but must be accorded a
reasonable interpretation in light of the specification.
For the foregoing reasons, we do not sustain the
rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C. § 112,
first paragraph as lacking support in the specification.
The § 112, Second ¶ Rejection
On page 8 of the answer, the examiner states:
The limitation of "said cartoon character whose
form is unrelated to the appearance of the actor" is
indefinite. That is, the metes and bounds of this
limitation can not be determined since the
specification fails to define or describe the
difference(s) that must exists in order for the
cartoon character to have a form that "is unrelated
to the appearance of the actor." In addition, it
should be noted that the specification and drawings
fail to describe or show the "appearance of the
actor," thus, the comparison set forth in the claim
is difficult if not impossible to determine.
In our view, it is reasonably clear from the
specification, pertinent portions of which have been cited and
reproduced above, that the unrelatedness as required by the
claim refers to a masking or obscuring of the personal and
particular features of the actor such that their personal
features are made completely invisible to the camera. The
specification describes that the actor is covered from head-
Appeal No. 96-1766
Application 08/218,822
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to-toe in a body suit dyed with a color not visible to the
camera, and only the openings of the eyes, nostrils, and mouth
are exposed to allow the actor to see and breathe. Any
generic resemblance of the cartoon painting to a humanoid form
does not constitute a sufficient relationship with respect to
the personal and particular features of the actor. The
examiner has failed to appreciate a distinction between a
general resemblance to a humanoid form and particular
resemblance to the personal and specific features of the
actor. In the context of the rejected claims, reasonably
construed in
light of the appellant’s specification, the "unrelated"
appearance requirement concerns only a lack of resemblance
with respect to the personal features of the actor or actress
inside the body suit. Moreover, a resemblance merely by
coincidence or happenstance and not by design is still within
the confines of the unrelatedness recited in these claims. In
the context of this invention, actual comparison between the
cartoon character and the actor is necessary to determine that
the cartoon’s appearance is unrelated to the appearance of the
actor.
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Application 08/218,822
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For the foregoing reasons, we do not sustain the
rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim subject matter
which the applicant regards as his invention.
Conclusion
The rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C.
§ 103 as being unpatentable over Maurer is reversed.
The rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C.
§ 103 as being unpatentable "over a well known photographic
technique in view of the acknowledged prior art" is reversed.
The rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C.
§ 112, first paragraph, as lacking "support" in the
specification is reversed.
The rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
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Application 08/218,822
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particularly point out and distinctly claim the subject matter
which the applicant regards as the invention is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
sd
Appeal No. 96-1766
Application 08/218,822
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Michael Ebert
Hopgood, Calimafde, Kalil,
Blaustein & Judlowe
60 E. 42nd Street
New York, NY 10165