Ex Parte Ubillos

Board of Patent Appeals and Interferences

Sep 28, 2004

09226526 (B.P.A.I. Sep. 28, 2004)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RANDY UBILLOS
____________
Appeal No. 2003-1480
Application No. 09/226,526
____________
ON BRIEF
____________
Before JERRY SMITH, BLANKENSHIP, and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-20, which are all of the claims pending in
this application.
We reverse and enter a new ground of rejection under 37 CFR
§ 41.50(b).
BACKGROUND
Appellant’s invention is directed to a video editing system
for controlling velocity of an object movement following a path
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in a display device. According to Appellant, a plurality of
handles provided along the path are used to control a velocity of
the object in the display.
Representative independent claim 1 is reproduced as follows:
1. A method comprising:
providing a path an object will follow in a display;
providing a plurality of handles along said path; and
controlling a velocity of said object moving on said path
using said handles.
The Examiner relies on the following references in rejecting
the claims:
Watanabe et al. (Watanabe) 5,717,848 Feb. 10, 1998
Higasayama et al. (Higasayama) 5,923,561 Jul. 13, 1999
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Higasayama and Watanabe.
We make reference to the answer (Paper No. 11, mailed
December 31, 2002) for the Examiner’s reasoning in support of the
rejection, and to the appeal brief (Paper No. 10, filed October
9, 2002) and the reply brief (Paper No. 12, filed March 4, 2003)
for Appellant’s arguments thereagainst.
OPINION
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
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obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). Furthermore, for an invention to be
obvious in view of a combination of references, there must be
some suggestion, motivation, or teaching in the prior art that
would have led a person of ordinary skill in the art to select
the references and combine them in the way that would produce the
claimed invention. Karsten Mfg. Corp. v. Cleveland Gulf Co., 242
F.3d 1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir. 2001). The
Examiner must also produce a factual basis supported by a
teaching in a prior art reference or shown to be common knowledge
of unquestionable demonstration, consistent with the holding in
Graham v. John Deere Co., 383 U.S. 1 (1966). However, “the Board
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 agency’s
conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002).
Appellant argues that Higasayama uses a CAD (computer aid
design) system for generating a curve representing a cutter path
based on the geometry data (brief, page 8). Appellant further
points out that the velocity of the cutter along the cutter path
is determined by taking into account the capabilities of the
machine and the geometry of the work piece (brief, page 9)
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instead of using handles. In that regard, Appellant further
argues that Higasayama’s discrete points, which are automatically
calculated by a computer and, if altered, will change the cutter
path simulated from the geometry of the piece (brief, pages 12 &
13; reply brief, page 4). Additionally, Appellant asserts that
the combination of Higasayama and Watanabe lacks a proper
motivation since displaying the actual path the cutting tool is
following based on the geometry of the work piece is of little
interest to the skilled artisan compared to the cutter’s physical
operation (brief, page 12). Appellant further asserts that, in
fact, any manipulation of the discrete points along the path
would be detrimental to the accuracy of the path and cause the
path to deviate away from the desired geometry of the work piece
(reply brief, page 2).
In response to Appellant’s arguments, the Examiner asserts
that Watanabe is relied on only for suggesting the displaying of
the path the object will follow whereas Higasayama teaches that
the cutter’s velocity variation depends on the placement of the
discrete points (answer, page 6). The Examiner concludes that
the discrete points of Higasayama can be reasonably interpreted
as the claimed handles as the velocity of the cutter depends on
these points (answer, page 9).
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As the Examiner and Appellant concede, Higasayama teaches
that a cutter path is defined by a succession of discrete points
which generated using the cutter path data (col. 1, lines 18-22).
The movement velocity of the cutter is determined by a curvature
radius of the path estimate and a space interval of the points
(col. 2, lines 1-7) whereas the acceleration and deceleration of
the cutter depends on the disposition of the points to be
followed by the cutter (col. 2, lines 42-46). Therefore, as
correctly identified by Appellant, the discrete points, even if
displayed, cannot be repositioned by a user since they are the
defining points along the cutter path and calculated based on a
“curve defining equation” (col. 12, lines 7-16). In fact, as
pointed out by Appellant (reply brief, page 2), any changes to
the movement characteristics of the cutter by altering the
discrete points defining the path would have to be performed
based on the geometry data of the work piece and not by using the
displayed points.
Turning now to Watanabe, we find that the reference also
relates to a method of setting object display attributes and a
method of generating an object motion path for three-dimensional
computer graphics (col. 1, lines 14-17). In particular, Watanabe
teaches that the position of an object, the magnitude and
direction of an object velocity and time may be dynamically
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changed (col. 1, lines 59-63) while an object motion path can be
more finely designated by providing a new velocity attribute at
an optional point designated on the path (col. 2, lines 8-11).
Thus, Watanabe uses additional points along the path of an object
movement to alter the movement characteristics of the object on
display. However, this altering is completely different from
defining the cutter path of Higasayama using a plurality of
points with pre-calculated positions and spacing which do not
gain any advantage or enhanced functionality by being displayed.
Therefore, one of ordinary skill in the art would not be led, let
alone motivated, to display these points as any changes to the
points must be made only by calculations, not by manipulating the
points on a display.
Based on our findings above, we agree with Appellant that
the plurality of points defining the cutter path of Higasayama
cannot simply be displayed similar to the motion path of the
object in Watanabe and be used to control the velocity of the
cutter along the path. We also remain unconvinced by the
Examiner’s arguments that one of ordinary skill in the art would
have displayed the cutter path of Higasayama in order to monitor
the motion of the cutter since the movement and velocity of the
cutter along its path requires inspecting the workpiece and not
whether the path is displayed. The Examiner has not pointed to,
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nor do we find, any teaching in Higasayama that would have
suggested the need, the benefit, or even possibility of such
combination. Therefore, as the combination of prior art fails to
teach or suggest the path, the handles and the velocity control
features of claim 1, as well as the similar features of
independent claims 6, 11 and 16, the Examiner has not established
a prima facie case of obviousness. Accordingly, we do not
sustain the 35 U.S.C. § 103 rejection of claims 1-20 over
Higasayama and Watanabe.
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-20 under 35 U.S.C. § 103 is reversed.
We make the following new ground of rejection for claims
1, 6, 11 and 16 under 35 U.S.C. § 102 as being anticipated by
Watanabe pursuant to 37 CFR § 41.50(b). We only consider the
independent claims, but encourage the Examiner to consider other
claims for possible rejections over Watanabe or in combination
with other prior art.
Claims 1, 6, 11 and 16 are rejected under 35 U.S.C.
§ 102(e)(2) as being anticipated by Watanabe.
We note that the claims recite a plurality of handles along
a path an object follows which are used for controlling a
velocity of the object moving on the path. As discussed above,
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Watanabe relates to generating an object motion path for three-
dimensional display which reads on the claimed “path an object
will follow in a display.” Watanabe specifically teaches that
the position of an object, the magnitude and direction of an
object velocity and time may be dynamically changed (col. 1,
lines 59-63) and an object motion path may be more finely
designated by providing a new velocity at an optional point
designated on the path (col. 2, lines 8-11). Watanabe uses both
or one of the position and velocity of an object at key frames to
generate a motion path between the frames (col. 2, lines 24-27).
The method of generating the object motion path of Watanabe is
performed on a computer system (Figure 1, col. 3, line 66 through
col. 4, line 5) that includes a computer having a display screen
101, a key board (alphanumeric device) 104 and a mouse 103
(cursor control device). Using a new key frame, the motion path
on the display screen is defined as described in column 6, lines
24-32 as follows:
The motion path set and displayed on the display screen
101 may be changeably designated more finely as illustrated
in FIGS. 5a-5c. FIG. 5a shows a path 500 already displayed
on the display screen 101, a start point 511, a start point
velocity 512, an end point 521, and an end point velocity
522. First, as shown in FIG. 5b, a new key frame is
designated. An operator enters from the input device a
position 501 where the path is to be corrected or changed,
the position being thereby displayed on the display screen.
[Emphasis added.]
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Therefore, the additional point 501, together with the start
and end points 511 and 521, are used to correct or alter the
movement characteristics (such as velocity) of the object moving
along path 500 on the display screen and read on the claimed
“handles along said path.” Watanabe further discloses that by
changing the velocity vector from velocity 502 to velocity 503 at
point 501, a new path 504 defines the new motion path (col. 6,
lines 52-55) which reads on the claimed “controlling a velocity
of said object.”
In view of the discussion above, Watanabe discloses all the
claimed elements and therefore, anticipates the independent
claims. Accordingly, we find that claims 1, 6, 11 and 16 are
unpatentable under 35 U.S.C. § 102 over Watanabe.
In addition to reversing the Examiner’s decision rejecting
the claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, 69
Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 CFR § 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 ground of
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rejection to avoid termination of the appeal 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 § 41.52 by the Board upon the same record. . . .37
CFR § 1.196(b) provides that “[a] new ground of rejection shall
not be considered final for purposes of judicial review.”
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 41.50(b)
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2003-1480
Application No. 09/127,442
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