Ex Parte Stevens

Board of Patent Appeals and Interferences

Mar 28, 2008

09977900 (B.P.A.I. Mar. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE W. STEVENS
____________

Appeal 2007-3710
Application 09/977,900
Technology Center 2100
____________

Decided: March 28, 2008
____________

Before JAMES D. THOMAS, ALLEN R. MACDONALD,
and STEPHEN C. SIU, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 21 through 34. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
As best representative of the disclosed and claimed invention,
independent claim 21 is reproduced below:
21. A method for making a coordinated presentation for display on a
plurality of computers utilizing a software control program, said method
comprising:
Appeal 2007-3710
Application 09/977,900

installing the software control computer program on each of said
plurality of computers;

installing at least two different sets of files to be played for said
coordinated presentation on each of said plurality of computers, different
sets of files being installed on at least two of the plurality of computers;

providing at least one scenario file on each of said plurality of
computers, said at least one scenario file associating a playing time for a file
of said at least one set of files on each of said plurality of computers such
that an effective beginning time is associated with each file, said scenario
file scheduling playing of different files on different ones of said plurality of
computers in a coordinated manner;

synchronizing each computer to a common time; and

playing each file in each corresponding at least two set of files for
each of said plurality of computers according to the scenario file on that
computer and the synchronized time a coordinated by the software control
program to result in a coordinated presentation of files on each computer of
said plurality of computers.

The following references are relied on by the Examiner:
Hogie US 5,923,307 Jul. 13, 1999
Suzuki US 6,470,356 B1 Oct. 22, 2002
(filing date August 30, 1999)
Bookspan US 6,636,888 B1 Oct. 21, 2003
(filing date June 15, 1999)
Liang US 6,766,355 B2 Jul. 20, 2004
(filing October 21, 1998)

2
Appeal 2007-3710
Application 09/977,900

Mills, David L., “Network Time Protocol (NTP) General Overview,”
University of Delaware, August 2, 20041

All claims on appeal stand rejected under 35 U.S.C. § 103. As
evidence of obviousness as to claims 21 through 27, 30, 31, and 34, the
Examiner relies upon Bookspan in view of Mills and Liang, further in view
of Suzuki. In a second stated rejection, the Examiner relies upon all of these
references further in view of Hogie as to claims 28, 29, 32, and 33.
Rather than repeat the positions verbatim of the Appellant and the
Examiner, reference is made to the Brief (no Reply Brief has been filed) for
Appellant’s positions, and to the Answer for the Examiner’s positions.

OPINION
For the reasons set forth by the Examiner in the Answer, as slightly
amplified here, we sustain each of the two stated rejection of the claims on
appeal. Both independent claims 21 and 31, to which arguments are
addressed in the Brief, are included in the initial rejection. No arguments are
presented to us as to the second stated rejection.
Appellants have 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

1 We recognize that the apparent publication date of Mills is August 2, 2004. On the other hand, as
revealed at page 4 of the Final Rejection and page 6 of the Answer, the Examiner relies upon the Network
Time Protocol (NTP) teachings of this reference that are at pages 2 and 9 of this document that indicate that
the earlier versions of this protocol have been used since 1992. The Examiner’s reliance upon this data in
Mills has not been contested in the Brief.
3
Appeal 2007-3710
Application 09/977,900

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)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at 1740.
The Court noted that “[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 1742.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) a
processor-driven device capable of playing the sound associated with a first
letter of a word in a book. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
4
Appeal 2007-3710
Application 09/977,900

485 F.3d 1157, 1161 (Fed. Cir. 2007). In reaching that conclusion, the
Federal Circuit recognized that “[a]n obviousness determination is not the
result of a rigid formula disassociated from the consideration of the facts of a
case. Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not.” Id.
at 1161 (citing KSR, 127 S. Ct. 1727, 1739 (2007)). The Federal Circuit
relied in part on the fact that Leapfrog had presented no evidence that the
inclusion of a reader in the combined device was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. (citing KSR, 127 S. Ct. at 1740-41).
In the absence of separate arguments with respect to claims subject to
the same rejection, those claims stand or fall with the claim for which an
argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Dovetailing with this precedent, we note further that the test for
obviousness has been further characterized as not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. It is also not that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 414, 425 (CCPA
1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
At the outset, we note that Appellant’s statements at pages 3 and 4 of
the Brief relating to the issues presented for review misstates the actual
rejections of the claims on appeal. The manner in which Appellant states the
5
Appeal 2007-3710
Application 09/977,900

rejections as topics I and II at pages 3 and 4 of the Brief that are further
developed later in the Brief appears to indicate that claims 21 through 34 are
rejected over Suzuki in one stated rejection along with other prior art and a
separately stated rejection of the same claims 21 through 34 relying upon
Liang along with other additional prior art. The arguments in the Brief
wrongly appear to indicate that separately stated rejections, one of which
relies upon Suzuki and the other which relies upon Liang, are before us as if
there were separately stated rejections. As we noted earlier, the first stated
rejection relies upon both references among others. Thus, we are in
agreement with the Examiner’s observation at page 13 of the Brief which we
reproduce here:
As an initial matter, the examiner would like to draw the
Board’s attention to the fact that Appellant has not argued the
rejection as set forth by the examiner. Rather, Appellant has
addressed the references individually and argued that they don’t have
elements which they were not relied upon to show.

As to the merits of the positions set forth in the Brief directed to
Suzuki and Liang, we agree with the Examiner’s responsive arguments as to
these references beginning at page 13 of the Answer where the Examiner
points out that in some instances a respective reference was not relied upon
to teach limitations that appeared to be argued, whereas an unargued
reference was utilized in the rejection for the argued feature. Additionally,
the Examiner addresses Appellant’s arguments made under topic II that the
artisan could not have combined Liang with the other applied prior art; these
arguments are addressed beginning at the bottom of page 14 of the Answer.
6
Appeal 2007-3710
Application 09/977,900

The Examiner’s positions in the statements of the rejections portion of the
Answer as well as these responsive arguments appear to be consistent with
the rationales required by the earlier-noted case law. Thus, based on the
weight of the arguments and evidence before us and because no Reply Brief
has been filed to contest the Examiner’s additional observations according to
the responsive arguments portion of the Answer, we sustain the rejections
before us.
In conclusion, since Appellant has not pointed out to us any error in
the Examiner’s formulation and reliance upon the applied prior art in the two
separate rejections of the claims on appeal under 35 U.S.C. § 103, the
decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

pgc

NAVAL UNDERSEA WARFARE CENTER
DIVISION NEWPORT
1176 HOWELL STREET
CODE 000C
NEWPORT RI 02841
7